Lumenyte International Corporation v Light Transmission Cables Pty Ltd

[1995] APO 22

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 under section 59 of the Patents Act 1952 by LIGHT TRANSMISSION CABLES PTY LIMITED

Decision:    Issued            .

Abstract:    Opposition succeeds on the grounds of section 40 and prior publication, but not on obviousness or prior use.  Opportunity to amend.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 638707 by Lumenyte International Corporation and opposition thereto under section 59 of the Patents Act 1952 by Light Transmission Cables Pty Limited

background

Australian patent application number 53667/90 was lodged on 18 April 1990 by Lumenyte International Corporation (hereafter referred to as "LUMENYTE"). The application is a divisional application under section 51 of the Patents Act 1952 in respect of an invention disclosed in the complete specification of application number 75325/87 (now 592654). Patent application 592654 claimed priority from US application number 883350, which was filed on 8 July 1986.

The application was advertised accepted on 8 July 1993 and assigned the number 638707.  A notice of opposition was lodged by Light Transmission Cables Pty Limited (hereafter referred to as "LIGHT") on 23 September 1993.  The process of serving evidence was completed on 27 October 1994.

The matter was heard in Canberra on 5 and 6 December 1994.  LUMENYTE was represented by Mr G.Turner of Spruson & Ferguson, Sydney, and LIGHT was represented by Mr G.Halford and Mr G.Davidson of Halford & Co, Sydney.  The matter was heard concurrently with an opposition to application number 592654.

the specification

The specification relates to plastic light conduits, otherwise referred to as optical pipes, for use in general illumination.

Prior art thermoplastic light conduits are admitted, but it is stated that they suffer from the disadvantage that they shrink at temperatures above about 80°, and then melt into a viscous liquid.  In addition, in the presence of oxygen and temperatures of about 120° these conduits become brittle and discoloured.  The specification also states that prior art conduits often contain voids, bubbles and trapped impurities which diminish the ability of the conduit to transmit light.

The invention is broadly described in the following terms:

"These and other objects of the present invention are achieved by providing a cross-linked thermoset organic polymer light conduit"  (pages 8 to 9)

The specification as accepted contains a total of 27 claims.  There are six independent claims and an omnibus claim.  The claims are all directed to either an "optical pipe" or a "monofilament fiber optic pipe".

evidence

LIGHT's evidence in support consists of a declaration by Geoffrey Robert Davidson (dated 21 June 1994).  LIGHT advised that it also relied on the following declarations served in respect of the opposition to patent application number 592654:  declarations by Graham William Halford (dated 14 January 1991), William John Jamieson (dated 14 February 1991), Robert Paul Burford (dated 10 May 1991), Robert Paul Burford (dated 30 March 1992) and Geoffrey Robert Davidson (dated 29 May 1992).  LIGHT also relied on the following declaration served in respect of the opposition to amendments to patent application number 592654:  declaration by Ross Alexander Cooper (dated 11 May 1994).

LUMENYTE's evidence in answer consists of declarations by Gregory Michael Turner (dated 20 September 1994), James Zarian (dated 16 September 1994), and John Robbins (dated 16 September 1994).  LUMENYTE advised that it also relied on the following declarations served in respect of the opposition to patent application number 592654:  declarations by Rodney Phillip Chaplin (dated 9 December 1991), Sandford R. Willford (dated 3 December 1991), John A. Robbins (dated 3 December 1991) and Jamshid Zarian (dated 3 December 1991).

Details of the evidence will be given where appropriate in my decision.

SUBMISSIONS

LIGHT made submissions on the following matters:

.claims 1 to 26 do not comply with section 40 due to a lack of clarity, lack of fair basis, the specification does not fully describe the invention, and there is no best method of performance;

.claims 1 to 20, 26 and 27 are obvious;

.claims 1 to 22, 24, 26 and 27 are prior published by certain patent specifications;

.prior use of the material;  and

.award of costs.

LUMENYTE made submissions with regard to all of these issues.

Details of the submissions will be given where relevant in my decision.

decision

Patent application 638707 was lodged on 18 April 1990, advertised accepted on 8 July 1993, and a notice of opposition was lodged on 23 September 1993. By virtue of section 234(3), the present opposition is governed by Part V of the Patents Act 1952.

The matters that have to be decided in this opposition are fourfold:

.section 40 matters;

.prior publication;

.obviousness;  and

.prior use.

Before these matters can be decided it is necessary to construe the specification.

Construction of the specification

The construction of the specification in the present case is difficult due to the particular drafting style of the specification.

a)  Certain terminology

Some of the terminology used throughout the specification was the subject of some discussion at the hearing.  I will begin by looking at the meaning of this terminology.

Thermoset:

At various places in the specification, polymers are referred to as "thermoset".  The natural meaning of this term was addressed in the Burford declaration of 10 May 1991.  The relevant parts of this declaration are:

"5.4.1    Crosslinked polymers, also known as network polymers, are those in which the primary polymer chains are joined by crosslinks to form a three-dimensional or infinite polymer network.  These crosslinks can be formed either during the polymerisation by inclusion of multifunctional monomers having more than one functional group allowing the attachment of the crosslinks, or after polymerisation as in the vulcanisation of rubber by the addition of sulphur or by ultraviolet curing.  The network structure of crosslinked polymers prevents the disentanglement of the polymer chains which occurs during melting of a thermoplastic.

5.4.2     The properties of crosslinked polymers vary depending on crosslink density and the flexibility and length of the side chains.  Lightly crosslinked polymers may retain elasticity and flexibility, as the local freedom of movement is not restricted.  The Tg of the polymer is not raised significantly at low crosslink densities.  The crosslinking generally improves the toughness and the solvent and heat resistance of the polymer.  ...

5.4.4     There are essentially two approaches which can be taken to defining the term "thermoset", these being based on structure (and associated properties) and on the mode of manufacture.  The former approach is that generally adopted today.  Thermosets are covalent networks, having localized, permanent crosslinks.  With the exception of silicone elastomers (discussed at paragraph below) it is my observation that the term "thermoset" overwhelmingly is understood in this country as referring to crosslinked polymers having the following characteristics:

(a)  a high crosslink density;

(b)relatively stiff backbone and/or crosslink segments;  and

(c)  macroscopically stiff and strong.

This observation is based upon my experience in the field of polymer and materials science and discussions of the term "thermoset" with other polymer scientists.

5.4.5     There are classes of crosslinked polymers which would be distinguished from the thermosets.  For example, crosslinked elastomers would ordinarily not be viewed as thermosets, and would be classified quite separately, with the possible exception of "hard rubbers" in which massive levels of sulfur are used to convert rubber to a highly crosslinked hard resin.  Similarly, highly swollen, soft gels and lightly crosslinked thermoplastics such as crosslinked polyethylene would be distinguished from "thermosets".

5.4.6     The second concept which can be used to define a "thermoset" is the manufacture of resins by the application of heat to give a permanently crosslinked, hard product.  This approach, based on the method of manufacture of the resin, is an historical one, with the classification now generally made on the basis of structure and properties of the resin, as discussed above.  The "setting" of the polymer is by chemical reaction. rather than the reversible freezing of a melt or fluid, which occurs in thermoplastics.  However, many major classes of thermosets, including unsaturated polyester resins, alkyds and epoxide resins, are formed by the exothermic reaction of liquids, without external heat.  ...

5.4.8     As indicated previously, a clear distinction is made between the general group of polymers which are "crosslinked" from those known as "thermosets".  The latter will be highly insoluble, largely infusible, and have a dense network.  They will generally be hard and often (although not exclusively) brittle.  Crosslinked, soft elastomers are invariably distinguished from traditional thermosets."

This evidence establishes that thermoset polymers are a subset of the group of cross-linked polymers, being highly cross-linked, having a relatively stiff backbone and/or cross-link segments and being macroscopically stiff and strong.  This definition is not contradicted by the evidence of any other declarants.  I accept that the natural meaning of "thermoset polymer" is a highly cross-linked polymer, so that the product is stiff (and not just hard).

The specification contains a passage relating to thermoset polymers:

"This prior art all involves thermoplastic polymers, which are linear chain-linked polymers.  A polymer is a large molecule built up by the repetition of small simple chemical units, known as monomers.  The repetition of the monomer may be linear, much as a chain is linear, or branched with same morphology as linear polymers (both producing thermoplastic materials), or it may be interconnected or cross-linked to form three-dimensional networks of the repeat unit (which forms thermoset materials).

These two different classes of polymers, also recognised as thermoplastic and thermoset polymers, respectively, exhibit quite different physical properties  ...  a cross-linked or thermoset organic polymer light conduit would have physical properties greatly superior to linear or thermoplastic polymer light conduits."

[pages 6 to 7]

The specification distinguishes between thermoset and thermoplastic materials, and equates thermoset materials with those composed of cross-linked polymers.  It is apparent that the specification is using the term "thermoset" in an extended sense of "cross-linked", rather than according to its natural meaning of highly cross-linked.

b)  The admitted prior art

The specification acknowledges several specific pieces of prior art:

.US 4505543 describes a thermoplastic polymer incorporating a styrene derivative monomer, which is re-melted and spun into a fibre;

.US 3993834 describes a methylmethacrylate co-polymer stripped of volatile contents, which is melted and extruded to produce a light conduit;

.US 3930103 describes a thermoplastic light conduit formed by stretching a core of poly(methylmethacrylate) resin in a sheath of vinylidene fluoride polymer;  and

.US 3900453 and US 3252950 describe extruded thermoplastic light conduits.

The specification then states:

"All thermoplastic polymers capable of transmitting light, however, melt rapidly when exposed to heat in excess of 120°C, at the most, after shrinking.  Accordingly, they are wholly unsuitable for any application involving exposure to such temperatures.  Although probably most desired applications of light conduits require them to operate in temperatures of less than 120°C, light must be transmitted into the light conduit efficiently in order to transmit quantities of light required for many uses, and it is generally not possible to transmit significant amounts of light into a light conduit without also exposing the light conduit to temperatures well in excess of 120°C.  Therefore, use of thermoplastic light conduits seriously limits the amount of light that can be shown into the light conduit, diminishing its utility.

In addition, plastic light conduits according to the prior art often have defects including voids, bubbles and trapped impurities.  Such defects significantly diminish the ability of the light conduit to transmit light because they scatter and absorb the light, and may alter the transmitted light color temperature."  [page 5]

c)  The problem with the prior art

It is clear from the above that the prior art light conduits suffer from at least the following deficiencies:

.thermoplastic conduits shrink and melt at temperatures above 120°C;  and

.thermoplastic conduits often contain voids, bubbles and trapped impurities.

The description of the prior art ends with a paragraph that identifies eleven needs for a light conduit.  It appears that these needs are a combination of standard requirements in a light conduit and the problems with the prior art.  The eleven needs are:

.lightweight

.flexible

.will not deteriorate with age (even though the exposed to a temperature of 120°C to 350°C at the tip and 250°C throughout its length

.resistance to the surrounding environment

.good light transmission characteristics

.does not shrink substantially

.does not melt when exposed to high temperatures

.does not oxidise when exposed to high temperatures

.does not deteriorate when exposed to high temperatures

.remains flexible

.is relatively easy and inexpensive to produce

It appears that the problem confronted by the applicant was to produce an improved light conduit that would satisfy the above needs.

d)  The solution of the invention

There are two pages of the specification under the heading "SUMMARY OF THE PRESENT INVENTION".

On page 8 of the specification there are a number of objects of the invention:

.to overcome the deficiencies of the prior art;

.to overcome the deficiencies using "a cross-linked or thermoset organic polymer";

.to produce a light conduit housed in a protective sheath and isolated from oxygen;

.to produce a method for making such a light conduit;  and

.to produce an apparatus to manufacture such light conduits which is superior to polymer casting.

The specification then contains the following statement:

"These and other objects of the present invention are achieved by providing a cross-linked thermoset organic polymer light conduit, which, for example, may consist of (by volume) about 50 to 80 parts of methyl methacrylate, 20 to 80 parts of n-butyl methacrylate, 0.10 to 0.50 parts of isopropyl percarbonate, 1 to 80 parts of a cross-linking agent, (or about 1 to 5 parts of the cross-linking agent diallyl phthallate) and 0.5 to 5 parts of a chain transfer agent, such as n-butyl mercaptan.  These ingredients are well mixed and sucked into a long tube, which will become the sheath of the product, and placed into a reactor where the mixture is progressively polymerised from one end to the other by heating the length of the tube progressively at a rate of about six inches to twenty-four inches per hour, at a temperature of about 35°C to 80°C for about 20 hours."  [pages 8 to 9]

It is clear that the invention is a cross-linked polymer.  The detailed composition of the polymer in the above quote is clearly only exemplary, and is not an essential feature of the invention.  The text describing how the polymer is prepared is not clearly part of the exemplary material, but it seems to me that it is more likely to be merely exemplary.  The list of essential features revealed by this part of the specification is very short:

(1)a cross-linked polymer

The next part of the specification is headed "BRIEF DESCRIPTION OF THE DRAWINGS", and merely identifies two Figures that are attached to the specification.

The next part of the specification is headed "DETAILED DESCRIPTION OF PREFERRED EMBODIMENTS".  This part of the specification begins with a detailed description of the general components of the polymer.

The first issue raised is the importance of purity.

"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]

The method of purification of the materials is given on page 11 to 12:

"Most chemical feedstocks are not 100% pure when they are received form the manufacturer.  For example, methyl methacrylate, a highly reactive monomer, will self-polymerize upon exposure to high heat or light or in the presence of impurities.  Therefore, manufacturers add small amounts of inhibitors to it to increase shelf life and ease of handling.  These inhibitors retard polymerization and eventually impart a yellow tint to the light conduit.  Therefore, the reactants must be purified prior to reacting.  Conventional means for purifying such reactants have been developed.  Such means include, for example, distillation under reduced pressure, alkaline wash, or recrystallization.  Particulate impurities, such as solids, gels or dust are removed by filtration."

Although the methods of purification used are conventional, it is clear that it is essential to carry out purification in order to achieve light conduits satisfying the needs of the invention.

The degree of purity required was the subject of some debate at the hearing.  The passage of text on page 11 to 12 quoted above indicated to Dr Chaplin (Chaplin declaration dated 9 December 1991, paragraph 7) that the reagents must be "truly purified prior to reacting".  I do not agree.  The passage suggests to me that it is known that the reagents are supplied in an impure state, and that it is known how to remove the types of impurities that are present.  Although it is not stated whether these "conventional means" of purification are known in the polymer art, I consider that it is reasonable to so conclude, given that this is the context of the passage quoted above.  I was referred to a passage of text at page 27 that suggests that the reactive mixture does not have to be totally impurity free:

"Due to the nature of the reaction and duration of the polymerization, any materials that are not polymerizable or are not active enough, such as impurities, for example, get pushed up by increase in the viscosity of the prior polymerizing layer."

[emphasis added]

The attorney for LUMENYTE considered that the purity requirement of the invention is much higher than merely conventional purity, and referred to "going beyond pure" during his submissions.  The Chaplin declaration dated 9 December 1991 continually states the view (based on a reading of the claims) that reagents must be more than conventionally pure, they must be free of impurities (see paragraphs 7, 8, 9, 10, 11, 13).  Dr Chaplin does not state what he understands to be the meaning of impurity free, other than that it is more than conventionally pure.

I will refer briefly to what the claims have to say about purity.

Claims 1 and 7 refer to using essentially inhibitor free reagent, and claims 2, 7, 12, 13 and 17 refer to using essentially impurity free reagent.  However, there is no explanation in an appended claim (or elsewhere) of what "essentially impurity free" or "essentially inhibitor free" means.  There is nothing in the specification that indicates advantage comes from purity beyond conventional purity.

Dr Chaplin refers to two samples of light conduit in his analysis of the importance of purity.  The first is a sample of light conduit stated to have been made from monomers that included "inhibitors and other impurities"  (paragraph 7).  The second sample is a light conduit said to be made by the claimed method.  Dr Chaplin does not state where these samples came from, or the precise composition of the polymer materials.  I consider that as the identity of these samples is uncertain, they cannot be relied on.  I consider it likely that Dr Chaplin has reached his conclusion of the importance of high purity from his observations of two samples of light conduit, more than an analysis of the specification.

I am satisfied that the description is silent on the importance of purity beyond conventional levels.

I accept LUMENYTE's submission that in order to prepare the desired light conduits it is necessary to have the reagents impurity free, as claimed in the claims.  However, this degree of purity is not referred to in the description of the invention.  The examples of the invention do not specify any special degree of purity.  Example 1 states only that the reagents are "mixed, filtered, deaired" (page 51), and there is not even a reference to the need to remove inhibitor from the methyl methacrylate (which is specifically mentioned in the passage on page 11 to 12 quoted above).

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.

Next, the range of suitable monomers is described.  Acrylates and methacrylates are preferred.

The next issue relates to cross-linking.  The following statement appears at page 15 to 16:

"The monomer base, consisting of a mixture of pre-selected monomers, is then altered to produce a cross-linked thermoset polymer by adding a multifunctional monomer such as diallyl phthallate, triallyl cyanurate, dimethallyl maleate, ethylene dimethacrylate.

A multifunctional monomer for the purpose of this invention is defined as a molecule which contains two or more double bonds, such as allyl pendant, diacrylate or dimethacrylate groups, whereby each double bond can independently become an active site and subsequently capable of participating in a growing polymer chain, while the other site may facilitate the formation of branched polymer which grows and eventually connects to a growing chain and creates a cross-linked polymer."

The polymer is cross-linked using a multifunctional monomer - a compound containing two or more double bonds, each being independently polymerisable.  However, at page 19 it is stated that it is possible to eliminate the need to use a cross-linking agent if the multifunctional monomer is used as a monomer per se.

It appears that it is essential to produce cross-linking of the polymer by means of a multifunctional monomer, either as a monomer in its own right, or added to the monomer mix.

The specification then addresses the issue of initiators for the polymerisation.  The use of initiators to trigger free radical reactions is well known.  Known free radical initiators can be used, but "excessive amounts of initiator imparted a yellow tint to the polymeric light conduit"  [page 22].  The use of minimum amount of initiator is essential, but it is not necessary to separately state this as it is merely a specific example of the general requirement for purity (an initiator being a necessary impurity).

The final issue is chain transfer agents.  At page 23 it is stated:

"Finally, a chain transfer agent such as n-butyl mercaptan, or lauryl mercaptan was added in small proportions to control the propagation of the polymerisation.  Utilization of chain transfer agents such as mercaptans is well understood in the production of linear polymers, but not in cross-linked polymers."

[emphasis in original]

The function of the chain-transfer agents is described as:

"chain transfer agents help to control the reaction by retarding the quick propagation of more active monomers (which is undesirable) due to the formation of block copolymers, which may introduce microstructures in the light conduit.  Such microstructures subsequently cause significant inefficiency and attenuation in light transmission.  Further, any erratic propagation of the polymerization reaction changes the monomer composition of the immediately adjacent layer of monomers in the progressive polymerization process, causing inconsistent compositions in different sections of the light conduit.  Such inconsistencies create a light conduit of segmented layers, each having a somewhat different index of refraction.  This result is very similar to problems that can be encountered with drip-casting methods.  Much light is lost at such interfaces and the result is a very inefficient light conduit."

[pages 23 to 24]

The use of a chain transfer agent appears to be essential to the production of light conduits satisfying the needs of the invention.

The specification then describes the method that is used to polymerise the monomer mixture.  At page 24 it is stated:

"A length of tube 14 filled with a reactive mixture, will not produce a high quality light conduit if it is entirely immersed in a high-temperature environment, which causes the entire length of the reactive mixture to polymerise simultaneously.  This may cause bubbles or impurities introduced during mixing and filling to be trapped within the polymer matrix.  In addition, localized polymerisation may take place because of the uncontrolled reaction conditions.

Further, the exothermic heat of reaction of this bulk polymerization process cannot be carried away effectively, resulting in vaporization and formation of localized bubbles, voids created by shrinking (which are unavoidable in bulk polymerization because the product shrinks at the site of reaction by from about 10% to about 25% by volume) and so on.

Therefore, according to the present invention, only a very short length of tube 14 is newly subjected to reaction conditions at any time, while the remainder of tube 14 is maintained at about -10°C to 20°C to prevent any significant degree of reaction, although the preferred range is about -10°C to about 0°C.  At temperatures below about -10°C there is phase separation between some commonly used monomers."

[Note:  Although this passage of text does not relate to Figure 1  (a schematic side elevation of an apparatus for carrying out the disclosed methods), the feature "tube 14" presumably refers to feature 14 in Figure 1, which is simply "a tube":  page 25, line 8 to 9]

It is clear that the way in which the polymerisation is carried out effects the product is produced.  The above passage could be seen as only one way of carrying out the polymerisation process, and thus not limiting on the general nature of the invention.  However, this passage is part of the broadest teaching of how to carry out the polymerisation.  I consider that the reader of the description would not consider that they had been informed of any other methods of polymerisation.  It is apparent from the above passage that the polymerisation reaction must be carried out over a short length of material at a time, with the unreacted material kept cooled to about -10°C to 20°C in order to produce a light conduit satisfying the needs of the invention.

Details of the operation of the reactors in Figures 1 and 2 follow.  The description finishes with sixteen examples and three comparative examples.  The final comparative example demonstrates the effect of different heating and cooling techniques.  The first reactor "was constructed such that no oil was used and the two media inside the reactor consisted of air on top of water.  The water was static and was heated by external means"  [page 68].  The second reactor "was constructed such that, heated water was circulating within the reactor, but the oil on top of it was static and cooled externally"  [page 68].  The third reactor used circulation of the heating and cooling fluids.  The comparative example contains the following statement:

"The sample as prepared in the first reactor exhibited numerous voids and bubbles, probably due to inefficient heat removal from two sources:  first, the exothermic heat of reaction within the conduit, which travels upward;  secondly, the conductive heat transmitted from the water surface into the air ...

The sample as prepared in the second reactor exhibited minor bubbles but was markedly better than the sample prepared in the first reactor.  The bubbles were probably caused by the heat of reaction travelling upward within the conduit and not being removed by the cold static oil.  The heat of the reaction cannot be easily removed because in a static medium such as the oil volume in the reactor localized heat buildup is considerable and cannot easily be conducted outward, partially due to the viscosity of the oil, which results in less prevalent convection currents."
[pages 69 to 70]

Based on this passage LIGHT argued that light conduits satisfying the needs of the invention cannot be prepared unless the heating and cooling fluids are maintained circulating.  I do not agree.  The light conduits produced by not circulating the fluid(s) are less effective, but it is not clear to me that they do not meet the needs of the invention.  It appears to be preferable to circulate the fluids, but not essential.

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.

The sixteen examples all involve the preparation of light conduits having features (1) through (7).  LIGHT pointed out that some of the light conduits prepared by the examples have undesirable properties, and do not appear to meet the eleven needs on page 6.  These examples are:

Example 4Product noticeably more yellow

Example 8Some bubbles observed

Example 9Product mushy and yellow

Examples 12 and 13      Product less flexible

Example 16Core material mushy

I think that on a fair reading of the examples, they demonstrate that varying the composition/preparation of the light conduit leads to variations in the properties of the products.  As a consequence, some of the light conduits produced by the examples are better at some criteria and worse at others.  However, the examples do not state that when a light conduit is less effective at one of the criteria that it is thereby inadequate against that criterion.  Further, the examples provide a fair range of variations in the composition of the reagent mixture.  I do not consider that the examples complained of by LIGHT are necessarily outside the scope of the invention described.

The comparative examples demonstrate the effect of omitting the cross-linking agent, and the effect of not circulating one or both of the heating and cooling fluids.

The method of preparation of the light conduits is by a method incorporating the features (A) through (G);  i.e.

(A)a cross-linked polymer is produced;

(B)the starting materials are purified;

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

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

(E)the polymer is formed by progressive polymerisation inside a sheath;

(F)the polymerisation is carried out over a short length of material at a time;  and

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

The description also discloses a reactor which is suitable for the preparation of the light conduits of the invention.  The reactor is one capable of satisfying the requirements of features (i) through (iii);  i.e.

(i)the reactor can provide progressive polymerisation of reactive material inside a sheath;

(ii)the polymerisation can be carried out over a short length of material at a time;  and

(iii)the unreacted monomer can be kept cooled at -10°C to 20°C.

The description also discloses optional features of the invention.  I will only refer to those features that were discussed at the hearing.  One feature is described on page 47:

"The reactor may be oriented in any position that allows the unreacted mixture to flow downwardly, and allows the oil to float on water.  It has been found, however, that even when carefully controlled, bubbles occasionally form within the reactive mixture.  By inclining the reactor at an angle of about 30-45° from the horizontal, however, the defects in the final product that may result from bubbles are localized because the bubbles will not rise through the reacting and unreacted mixture."

It should be noted that as the reactor described has the reactive mixture in a sheath running parallel to the longitudinal axis of the reactor, the inclination of the reactor and the inclination of the sheath are interchangeable concepts.

e)  The independent claims

Claim 1 reads:

"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."

Claim 2 reads:

"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."

Claim 7 reads:

"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."

Claim 12 reads:

"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."

Claim 13 reads:

"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 index of refraction throughout the length and diameter of said pipe."

Claim 17 reads:

"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).

Section 40

There are four section 40 matters to be decided:  clarity, fair basis, fully describing the invention, and best method of performance.

a)  Clarity

In order to determine whether or not a claim is clear I have to consider whether a third party could ascertain whether an act would fall within the scope of a claim, and would thus infringe the claim (for example, see Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59). However, I also note that I should "give little weight to puzzles which may arise 'at the edge of the claim' if those puzzles would not, as a practical matter, cause difficulty for the skilled addressee or manufacturer wishing to satisfy himself that what he proposes to do will not infringe the patent" (Glaverbel SA v British Coal Corp [1994] RPC 443 at 495).

Claims 1, 2, 7, 12, 13 and 17 use the terms "essentially" and "substantially" in relation to several terms.  LIGHT submitted that this made the claims unclear.  I will repeat the relevant parts of the claims (the terms in question are underlined for convenience, but the underlining was not present in the original):

"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 ..."

"2.  A monofilament fiber optic pipe, the improvement comprising:
     a substantially transparent, solid, flexible, essentially impurity free, thermoset polymer, ..."

"7.  A monofilament fiber optic pope 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, ...

"12.  A substantially tubular, essentially impurity free, flexible, monofilament fiber optic pipe ..."

"13.  A substantially tubular, essentially impurity free, flexible, monofilament fiber optic pipe ..."

"17.  A substantially tubular, essentially impurity free, flexible, monofilament fiber optic pipe ..."

Where the terms in question qualify matters relating to purity (i.e. essentially inhibitor-free, essentially impurity free, essentially inhibitor free, essentially initiator free) in claims 1, 2, 7, 12, 13 and 17, they relate to a matter that is central to the invention.  Consequently, I consider that a skilled person could not know if they were infringing this aspect of the claims.  Claims 1, 2, 7, 12, 13 and 17 are thus not clear.

Where the terms qualify other matters (i.e. essentially bubble-free, essentially void-free, substantially transparent, essentially bubble free, essentially void free, substantially tubular), they relate to matters that are not central to the invention, and I do not consider they cause any ambiguity.

Claim 12 uses the term "tubular" in relation to the light conduit.  The relevant part of the claim reads:

"12.  A substantially tubular, essentially impurity free, flexible, monofilament fiber optic pipe ..."

The natural meaning of "tubular" is given in the Macquarie Dictionary as:

"of, or pertaining to a tube or tubes"

and tube is defined as:

"a hollow usu. cylindrical body of metal, glass, rubber, or other material, used for conveying or containing fluids, and for other purposes"

I conclude that the natural meaning of tubular is a hollow cylindrical body.  Thus claim 12 is directed to a hollow light conduit.  While this may be unusual (and not exemplified), I do not see that it is so unbelievable as to make the claim unclear.

b)  Fair basis

When considering the issue of fair basis, "the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification"  (Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 11 IPR 289 at 304). In carrying out this task, I note that "the answer to an issue of "fair basing" is not resolved by application of an over-meticulous verbal analysis" (Sartas No 1 Pty Limited v Koukourou & Partners Pty Limited, Federal Court decision, 2 December 1994, NG 815 of 1991, unreported, at page 38).

LIGHT submitted that features (1) and (3) through (7) are essential features of the invention described, and that these features are missing from one or more of the claims.  These features limit the light conduits to those produced by the method of preparation disclosed.  The specification describes no means for identifying the light conduits other than by the method of preparation.  I consider that the preparative features are essential features of the light conduits per se.

The following table summarises LIGHT's contention:

FEATURE NUMBER          MISSING FROM CLAIM NUMBER
(see page 12)

1. Nil
      (2)                 §
      (3)                 1 to 26
      (4)                 1 to 26
      (5)                 1 to 26
      (6)                 1 to 26
      (7)                 1 to 26

§LIGHT did not consider this feature was essential, so did not consider whether it was missing from the claims.

The description contains a real and reasonably clear disclosure of a light conduit having the combination of features (1) through (7).  A light conduit lacking any of these features is not disclosed in the description (see discussion under the heading "Construction of the specification").  LIGHT's submissions with regard to the claims 1 to 26 in the above table are correct, with the following qualification:  feature (2) is present in all claims.  Consequently, after consideration of all of the above, I consider that the claims are not fairly based.

In addition, several other matters relating to fair basis were raised by LIGHT.  It was alleged that claim 12 is not fairly based as a "tubular" light conduit is not described anywhere (the interpretation of "tubular" is discussed under the heading of "Clarity" above).  I agree with LIGHT that there is only basis for solid cylindrical light conduits, and the claim is not fairly based.  I note that "tubular" light conduits are also claimed in claims 13 and 17.  Consequently, these claims are also not fairly based.

It was also argued that claim 12 is a claim to a desirable end, and is not limited to the way that the specification achieves this end.  As such, the claim is not fairly based (see Olin Corporation v Super Cartridge Co Pty Ltd (1977) 14 ALR 149). I believe that this is another way of saying that the claim lacks the essential preparative features identified above, a submission with which I have already agreed (see two paragraphs above).

It was argued that claim 13 is not fairly based as it refers to a light conduit having a "uniform index of refraction throughout the length and diameter".  While it is clear that this is a desirable property in a light conduit, it is a matter on which the specification is almost wholly silent.  At page 23, the specification makes a brief reference to the index of refraction while discussing the undesirable effects of microstructures in the light conduit:  "Such inconsistencies create a light conduit of segmented layers, each having a somewhat different index of refraction."  There is no mention in the specification of determining the index of refraction of any light conduits or portions of light conduits.  I consider that claim 13 is not fairly based on the specification.

It was argued that claim 21 is not fairly based as it lacks the limitation of 30-45° as the angle of inclination.  Claim 21 reads:

"21. The fiber optic pipe of claim 2 wherein said polymerization reaction is carried out in a tube container inclined at an acute angle from horizontal sufficient to permit localisation of substantially all bubbles formed during said polymerization reaction."

I do not agree that the angle of 30-45° inclination is essential.  There is support for inclining the tube at whatever angle is effective to localise bubbles, and 30-45° is merely a preferred angle.  I consider that claim 21 is fairly based.

It was argued that claim 27 is not fairly based as not all of the examples are examples of the invention, i.e. examples 4, 8, 9, 12, 13, 16.  In addition, the claim includes the comparative examples.  Claim 27 reads:

"27. An optical pipe substantially as hereinbefore described with reference to any one of the Examples."

I do not believe that this claim extends to the examples that appear in the part of the specification under the heading "COMPARATIVE EXAMPLES".

I have already discussed the examples of the invention (under the heading of "Construction of the specification") and stated that the examples in question do not go beyond the invention as described.  Consequently, claim 27 is fairly based.

c)  Fully describe the invention

LIGHT asserted that the specification does not fully describe the invention because it fails to distinguish the invention from the prior art, and misdescribes the prior art.  In this regard, I was referred to the cases of May v Higgins (1916) 21 CLR 119 and Sami S. Svendsen Incorporated v Independent Products Canada Ltd (1968) 42 ALJR 259. The principle derived from these cases is conveniently summarised in Nelson v Hillmark Industries Pty Ltd (1991) AIPC 90-768 at 37,364:

"In cases where invention lies in an improvement in known apparatus (as opposed to invention being in a new combination of integers), the addressee should be able to clearly distinguish the true nature of the invention from the prior art."

The basis of LIGHT's argument was the Robbins declaration, which indicates that the applicant was aware of US patent number 3641332 by Reick (hereafter referred to as the Reick patent).  The relevant part of the Robbins declaration dated 3 December 1991 states:

"During the early 1980's I became aware of the product disclosed by U.S. Patent No. 3,641,332 in the name of Franklin G. Reick, et al.  The product produced according to the teachings of this patent did transmit light but not in the amount or quality required by Xanadu International in the course of its business activity.  However, Xanadu did acquire the exclusive rights from Mr. Reick and the other owners of the patent.  From about 1983 to July 1986, Dr. Jamshid Zarian and I worked on the development of a product which would be an improvement to the Reick product and transmit light as required.  We eventually developed the invention which is the subject matter of the Lumenyte application."
[paragraph 4]

The Reick patent refers to the use of flexible, cross‑linked polymers as light conduits.  The specification of the present application did not mention this, and asserted that the use of cross‑linked polymers for light conduits was new.

LUMENYTE replied that there is no requirement for the specification to include prior art.  There was no evidence that there had been a conspiracy to deceive the reader.

It is apparent that the Reick patent was a basis for the development of the present invention.  The differences between the Reick patent and the present invention are:

.Reick does not use a chain transfer agent;

.Reick does not disclose maintaining the unreacted monomer at -10° to 20°;  and

.Reick does not disclose circulating the heating and cooling fluids.

The specification should clearly distinguish the process of the invention from the known Reick process.  The specification 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.  I conclude that the specification does not fully describe the invention.

A further aspect in which the specification does not fully describe the invention is that there is no indication of the need for purity "beyond pure".  As I noted in my discussion under the heading "Construction of the specification", the degree of purity actually required is purity "beyond pure".  The description does not include this requirement, and there is no information as to how to identify this required degree of purity.

d)  Best method of performance

It was argued by LIGHT that the specification does not contain a best method of performance because it does not describe the degree of purity required of the reagents.  As I noted in my discussion under the heading "Construction of the specification", the degree of purity actually required is purity "beyond pure".  The specification gives no indication of purity "beyond pure", how to achieve it, or how to recognise it.  As a consequence, the specification does not fully describe the invention as there is no best method of performance of the invention claimed.

Prior Publication

The test for anticipation is the reverse infringement test.  The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228, at page 235: "The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement". This requires the alleged anticipation to disclose all the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 16 IPR 545 at page 549).

The degree of disclosure of the essential features by the alleged anticipation was described by Parker J in Flour Oxidizing Company Ld v Carr & Co Ld (1908) 25 RPC 428 at page 457:

"But where the question is solely a question of prior publication, it is not, in my opinion, enough to prove that an apparatus described in an earlier Specification could have been used to produce this or that result.  It must also be shown that the Specification contains clear and unmistakable directions so to use it."

A more recent formulation of this test was given by the Court of Appeal in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at pages 485 to 486:

"If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee's claim if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated.  ...  if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated.  ...  To anticipate the patentee's claim the prior publication must contain clear and unmistakeable (sic) directions to do what the patentee claims to have invented"

A citation must provide a clear and unmistakable disclosure of the essential features of the invention as claimed.  However, it is not necessary for a citation to reveal any inessential integers (see for example Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 16 IPR 545). I understand a clear and unmistakable disclosure to be the technical information that a citation makes public to the instructed reader (Application by American Home Products Corporation, Patent Office decision, 28 September 1994, patent application number 16397/92, unreported).

LIGHT relied on two citations for its argument of prior publication.  The first citation is US 3641332 (referred to as the Reick patent).  This patent was open to public inspection in the Australian Patent Office, Canberra, on 13 March 1973 (declaration of Davidson dated 29 May 1992).

LIGHT alleged that Reick prior publishes claims 1 to 22, 24, 26 and 27

The subject matter of Reick is well summarised in paragraph 12 of the Burford declaration dated 30 March 1992:

"This patent relates to the production of a monofilament optical fibre having a cross-linked core formed by the copolymerisation of methyl methacrylate with CR39 (column 8 lines 59-61), initiated with less than 1% by weight of an azo catalyst (claim 5).  In example 1, the monomer is vacuum-filtered (to remove impurities) and degassed (to remove oxygen and other gases which can form bubbles in the polymer).  The reaction mixture is then sucked into the teflon cladding, which is bent into a U-formation and subjected to heat treatment.  The heat treatment described at column 8 includes a temperature gradient from bottom to top to result in progressive polymerisation of the reaction mixture."

Reick discloses a light conduit having the following features:

(i)the conduit is transparent and flexible;

(ii)the conduit is a solid cylinder having extended length;

(iii)the conduit has a core of cross-linked polymer;

(iv)the reagents are purified, filtered and degassed;

(v)the polymer is formed from polymerising methyl methacrylate, CR-39 and an initiator (exemplified ratios are 50 parts methyl methacrylate, 50 parts CR-39, 0.01 parts initiator by weight, which equates to about 98 parts methyl methacrylate, 80 parts CR-39, 0.046 parts initiator by weight according to the Davidson declaration dated 29 May 1992 (Exhibit GRD8));

(vi)the reagents are polymerised inside a sheath of teflon tubing;  and

(vii)polymerisation is carried out progressively, with the tube of reagents upright (note FIG 4).

The second citation is EP 171294 (referred to as the Sumitomo patent).  It was accepted by LUMENYTE that the citation was published early enough to be a citation.  The records of the Australian Patent Office indicate that Sumitomo was open to public inspection on 21 April 1986.

LIGHT alleged that Sumitomo prior publishes claims 1 to 22, 24, 26 and 27.

The subject matter of Sumitomo is light conduits having a core of cross-linked polymer.  The light conduit is formed by bulk polymerisation to form a linear polymer, which is spun to a fibre while inserting a cross-linking agent.  The polymer is cross-linked by heating, irradiation with electrons, etc.

Sumitomo discloses light conduits having the following features:

(i)the conduit is transparent and flexible;

(ii)the conduit is a solid cylinder having extended length;

(iii)the conduit has a core of cross-linked polymer;

(iv)the monomers are oxygen free and pure;

(v)the polymer is formed by cross-linking a preformed linear polymer with a multifunctional monomer and heating or irradiating;

(vi)the multifunctional monomers exemplified include diethylene glycol diallyl carbonate (examples 3-6);  and

(vii)an outer layer (sheath) is applied to the conduit.

I must now identify the essential features of the claims.  In order to determine the essential features it is appropriate to adopt a purposive construction, where appropriate (Catnic Components Limited v Hill & Smith Limited [1982] RPC 183).

Claim 1 is directed to an "optical pipe".  I consider that this is merely a synonym for a light conduit.  The features of the light conduit are that it includes a polymer that is:

(a)transparent;

(b)flexible;

(c)elongated;

(d)cross-linked;

(e)essentially bubble-free;

(f)essentially void-free;

(g)the product of free radical polymerisation of methyl methacrylate, cross-linking agent and initiator (in specified amounts);  and

(h)surrounded by a tubular sheath.

LIGHT submitted that the amount of initiator is a workshop variation.  I interpret this as meaning that the amount of initiator is not an essential feature, but no reason was given for such a conclusion.  I cannot say that any of the features would not contribute to the working of the invention, so I consider that all the features are essential.

Reick clearly discloses features (a), (b), (c), (d), (g) and (h).  With regard to features (e) and (f), Reick does not explicitly refer to these properties.  As features (e) and (f) are desirable features of a light conduit, it is possible that a skilled reader of Reick would have read these features into the disclosure.  However, there is no evidence that a person would have so read the disclosure, so I consider that Reick does not prior publish claim 1.

Sumitomo clearly discloses features (a), (b), (c), (d) and (h).  The Sumitomo product does not possess feature (g) as the polymer is prepared by a different process.  Significantly, Sumitomo makes no mention of features (e) and (f).  As features (e) and (f) are desirable features of a light conduit, it is possible that a skilled reader of Sumitomo would have read these features into the disclosure.  However, there is no evidence that a person would have so read the disclosure, so I consider that Sumitomo does not prior publish claim 1.

Claim 2 is directed to a "monofilament fiber optic pipe".  I consider that this is merely a synonym for a single strand, light conduit.  The features of the light conduit are that it includes a polymer that is:

(a)substantially transparent;

(b)solid;

(c)flexible;

(d)essentially impurity free;  and

(e)a cross-linked polymer produced by a polymerisation involving an ester, vinyl or styrene.

There is no reason that I can see for considering any of these features as not essential.

Reick discloses features (a), (b), (c), (d) and (e).  Feature (d) is disclosed because I consider that a skilled reader would regard a polymer formed by polymerisation of impurity free reagents as equivalent to an impurity free polymer.  I consider that Reick prior publishes claim 2.

Sumitomo discloses features (a), (b), (c), (d) and (e).  Feature (d) is disclosed because the reagents in Sumitomo are pure - feature (iv).  Feature (e) is disclosed because the polymer produced in Sumitomo is both cross-linked and contains a polymer of methyl methacrylate.  I consider that Sumitomo prior publishes claim 2.

There are a number of claims that are directly or indirectly appended to claim 2.  I only need to deal with them briefly.

.Claim 3 includes the additional feature of a sheath.  This is disclosed by Reick and Sumitomo, so claim 3 is also prior published.

.Claim 4 is appended to claim 3, and includes the feature that the sheath is "highly polished, clean and essentially free of scratches".  This feature is not disclosed by Reick or Sumitomo, so claim 4 is not prior published.

.Claims 5 and 6 are appended to claim 4, so are also not prior published.

.Claim 21 reads:

"21. The fiber optic pipe of claim 2 wherein said polymerization reaction is carried out in a tube container inclined at an acute angle from the horizontal sufficient to permit localisation of substantially all bubbles formed during said polymerisation reaction."

The new feature in this claim is the angle of inclination of the tube.  The specification indicates that inclination of the tube materially effects the operation of the invention by localising bubbles.  Reick does not disclose inclination, and the Sumitomo product is not polymerised inside a sheath.  This claim is not prior published by Reick or Sumitomo.

.Claims 22 to 25 are appended to claim 21.  It follows that these claims are also not prior published.

.Claim 26 reads:

"26. The fiber optic pipe of any one of claims 2 through 25 wherein the pipe is a generally cylindrical length of at least 20 feet, whereby said pipe has the property of being able to transmit substantially white light throughout its length."

It is not apparent whether the Reick process can be used to prepare 20 foot lengths.  The Sumitomo process of melt-spinning is inherently capable of preparing any length of conduit.  As some of claims 2 to 25 are prior published by Sumitomo (see the above and following discussion), it follows that claim 26 is also prior published by Sumitomo.

Claim 7 is directed to a "monofilament fiber optic pipe".  I consider that this is merely a synonym for a single strand, light conduit.  The features of the light conduit are that it includes a polymer that is:

(a)substantially transparent;

(b)solid;

(c)flexible;

(d)essentially impurity free;

(e)essentially inhibitor free;

(f)essentially initiator free;

(g)essentially bubble free;

(h)essentially void free;  and

(i)a cross-linked polymer produced by a polymerisation involving an ester, vinyl or styrene.

There is no reason that I can see for considering any of these features as not essential.

Reick and Sumitomo do not explicitly disclose features (g) and (h) (note the discussion of claim 1, above).  Thus claim 7 is not prior published.  Consequently, the claims appended to claim 7 (i.e. 8, 9, 10, 11) are not prior published.

Claim 12 is directed to a "monofilament fiber optic pipe".  I consider that this is merely a synonym for a single strand, light conduit.  The features of the light conduit are that it has a conduit that is:

(a)substantially tubular;

(b)essentially impurity free;

(c)flexible;

(d)has length;  and

(e)has diameter

and includes a polymer that is:

(f)a cross-linked polymer produced by a polymerisation involving an ester, vinyl or styrene;  and

(g)uniform in composition throughout the length and diameter of the conduit.

There is no reason that I can see for considering any of these features as not essential.

Reick does not disclose a tubular light conduit (feature (a)).  However, even if this requirement was removed from claim 12, I do not believe that Reick clearly discloses a product with a uniform composition (feature (g)).  The same comments apply to Sumitomo.  Claim 12 is not prior published.

Claim 13 is directed to a "monofilament fiber optic pipe".  I consider that this is merely a synonym for a single strand, light conduit.  The features of the light conduit are that it has a conduit that is:

(a)substantially tubular;

(b)essentially impurity free;

(c)flexible;

(d)has length;  and

(e)has diameter

and includes a polymer that is:

(f)a cross-linked polymer produced by a polymerisation involving an ester, vinyl or styrene;  and

(g)uniform in index of refraction throughout the length and diameter of the conduit.

There is no reason that I can see for considering any of these features as not essential.

Reick and Sumitomo disclose all of the features except for (a) and (g).  Claim 13 is not prior published.

Claim 17 is directed to a "monofilament fiber optic pipe".  I consider that this is merely a synonym for a single strand, light conduit.  The features of the light conduit are that it has a conduit that is:

(a)substantially tubular;

(b)essentially impurity free;

(c)flexible;

(d)has length;  and

(e)has diameter

and includes a polymer that is:

(f)a cross-linked polymer produced by a polymerisation involving CR-39.

There is no reason that I can see for considering any of these features as not essential.

Reick and Sumitomo disclose all of these features except for (a).  Claim 17 is not prior published.  If claim 17 were amended to remove the tubular requirement, it would be prior published.

Obviousness

The approach to considering obviousness under the Patents Act 1952 was set out in Minnesota Mining and Manufacturing Co. v Beiersdorf (Aust.) Ltd (1980) 144 CLR 253, and summed up by Aickin J in The Wellcome Foundation Limited v V.R. Laboratories (Aust.) Pty Ltd (1981) 148 CLR 262, at pages 270 and 286 in the following terms:

"It is as well to bear in mind that the question of obviousness involves asking the question whether the invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that particular field as at the priority date, without regard to documents in existence but not part of such common general knowledge  ...  The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."

a)  The problem

The first step is to determine the problem that is solved by the invention as claimed.  I believe that the specification supports a formulation of the overall problem as a need to provide an improved polymeric light conduit.  An improved light conduit is one satisfying the eleven needs:

.lightweight

.flexible

.will not deteriorate with age (even though the exposed to a temperature of 120°C to 350°C at the tip and 250°C throughout its length

.resistance to the surrounding environment

.good light transmission characteristics

.does not shrink substantially

.does not melt when exposed to high temperatures

.does not oxidise when exposed to high temperatures

.does not deteriorate when exposed to high temperatures

.remains flexible

.is relatively easy and inexpensive to produce

Each of the claims is directed to the solution of this problem.

The art in which this problem lies could be described as the polymeric light conduit art.  Whatever else this art may encompass, it must include the art of polymer preparation.  It is only this art that is relevant to the following discussion.

b)  The common general knowledge

A convenient definition of common general knowledge was given by Aickin J in Minnesota Mining and Manufacturing Co. v Beiersdorf (Aust.) Ltd, supra, at page 292:

"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade in considering 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."

To determine the common general knowledge I must rely on the evidence of those skilled in the art of polymeric light conduit preparation.  LUMENYTE raised the issue of whether any of the declarants for the opponent could properly be regarded as non-inventive workers in the art, and thus whether they could give evidence as to the common general knowledge.

I make no comment on whether or not the declarants are non-inventive workers, as it is not necessary to decide the point.  If a declarant is too highly qualified to be regarded as a non-inventive worker in the art that does not disqualify them from commenting on the question of what is the state of the common general knowledge in the art (although it may render irrelevant their views on what is obvious).  The same approach was adopted in Clafton Pty Ltd v Forbes Engineering Holdings Pty Ltd (1990) 19 IPR 29 at 40:

"I think their statements on common knowledge can be given some consideration as evidence but they are overqualified to comment on obviousness or inventiveness according to the tests derived from the cases referred to above."

The matters that were alleged to be common general knowledge were as follows.

(i)Acrylic monomers form soft polymers, and can form hard copolymers with monomers such as methyl methacrylate (paragraph 6.4 of Burford declaration)

(ii)Acrylic polymers have brilliant clarity (paragraph 6.5 of Burford declaration)

(iii)Optical pipes made from polymeric materials were known (paragraph 6.6.1, 6.6.2 of Burford declaration)

(iv)Cross-linked polymers can be formed by copolymerisation including a multifunctional monomer (paragraph 6.7 of Burford declaration)

(v)Acrylic monomers are supplied with inhibitors, which is removed before polymerisation (although it is possible to polymerise in the presence of inhibitor) (paragraph 6.9 of Burford declaration)

(vi)Polymerisation of acrylic monomers is started by an initiator that decomposes into free radicals (paragraph 6.10 of Burford declaration)

(vii)Chain transfer agents are used to control the molecular weight of polymers (paragraph 6.13 of Burford declaration)

(viii)Bulk polymerisation is the process most suited to the formation of light conduits (paragraph 6.14 of Burford declaration)

(ix)The technique of bulk polymerisation is well understood (paragraph 6.15 to 6.18 of Burford declaration)

(x)Polymerisation of acrylic monomers results in shrinkage of about 20% in going from the monomer to the polymer (paragraph 6.19 of Burford declaration)

c)  Is the solution obvious?

The solution is obvious if it would have been "a matter of routine" (The Wellcome Foundation Limited v V.R. Laboratories (Aust.) Pty Ltd, supra, per Aickin J at page 286) for a non-inventive person to proceed from the prior art to the claimed solution.

LUMENYTE raised the issue of whether any of the declarants for the opponent could properly be regarded as non-inventive workers in the art, and thus whether they could give evidence as to the whether the invention is obvious.  It is not necessary for me decide this question, as the expert declarant for LIGHT (Burford) does not express an opinion as to whether he considers that the invention is obvious.

If I accept that all the elements of the claimed invention were part of the common general knowledge, the question is whether it would have been a matter of routine to select the specific combination of features claimed in each claim as a solution to the problem.  I consider that 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.  To my mind, 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.

I consider that the evidence presented does not establish that the invention claimed in any claim is an obvious solution to the problem.

Prior use

It was argued by LIGHT that there had been prior use of the light conduit of the invention by virtue of a sample of material that Mr Jamieson brought into Australia from the United States of America.

It is not contested that Mr Jamieson met Mr Robbins (President of Lumenyte Corporation) at a trade exhibition in New Orleans in November 1985, and that Mr Robbins gave a sample of a light conduit to Mr Jamieson.  (This sample of light conduit is hereafter referred to as the "SAMPLE")  Mr Jamieson was not under an obligation of confidentiality with regard to the SAMPLE.  Mr Jamieson subsequently sold a portion of the SAMPLE.  The Jamieson declaration dated 14 February 1991 does not identify the date of the sale or the identity of the purchaser.

These facts establish that the SAMPLE was available to a member of the public (Mr Jamieson) in Australia before July 1986.  There was no obligation of confidentiality regarding the SAMPLE.  The main point of contention was whether the SAMPLE was within the scope of the claims of the present application, and it is this matter that I will address.

Between July and September 1986, Mr Jamieson gave a material to Mr Wayne Simpkins at the Australian Government Analytical Laboratory (AGAL) for analysis.  LUMENYTE stated that it was not certain that the material that was given to AGAL was in fact a portion of the SAMPLE.

Mr Jamieson states (at paragraph 9 of his declaration):

"In July, August or early September 1986, Mr. Fagan accompanied me to the Australian Government Analytical Laboratories ("AGAL") at Pymble, New South Wales, and Mr. Fagan and I arranged for AGAL to analyse a sample of the Lumenyte optic pipe.  The sample provided to AGAL was a portion of the Lumenyte optic pipe which I brought back with me from the USA in November 1985 and which I had kept strictly in my control since then."

[Note:  There was some kind of business relationship between Mr Fagan and Mr Jamieson, although exactly what is not clear from the evidence.]

Exhibit SRW-1 to the declaration of Willford (dated 3 December 1991) is a portion of the transcript of evidence in the trial of Jamieson v Roo International (Supreme Court of New South Wales, Commercial Division, No 28236/88) before Cole J, during the week of 3 April 1989.  This evidence includes matters relevant to the prior use allegation.  Page 11 of the transcript, dealing with the cross-examination of Mr Jamieson, states (the significant passage is underlined for convenience):

"Q.  After he came back to you, you made enquiries of ICI, did you?  A.  They were made through various people.  We had made numerous phone calls etc.  Just who we spoke to, I'm not exactly sure.  I know that in one of the other affidavits that I have seen that that particular gentleman gives certain names which go through two and a half years.  We did talk to a Wayne Simpkins which I remember quite well from the Australian Analytical Laboratories.

Q.  That was about September 1986, was it not?  A.  Around that time, yes.

Q.  He analysed a sample of loumanyte (sic) that Mr Fagan had given to him.  That is correct, is it not?  A.  That is correct.

Q.  You knew Mr Fagan had given him that sample to analyse?  A.  I was with Mr Fagan the first time.

Q.  When you both called on Mr Simpkins?  A.  We did."

This passage indicates that the material analysed by AGAL was given to Mr Simpkins by Mr Fagan, not Mr Jamieson.  It was suggested that this contradicts Mr Jamieson's declaration.  However, I note that Mr Jamieson declared that "The report issued to Mr. Fagan because it was intended that he would be invoiced for the analysis"  [paragraph 10].

Mr Willford suggested an alternative source for the material given to Mr Simpkins:

"Mr Fagan could have supplied AGAL product for testing from the supply of product made by Lumenyte and shipped to him in August or September 1986."

[paragraph 4 of the Willford declaration dated 3 December 1991]

There is no evidence to support this speculation.

I consider that it is more likely than not that the material given to AGAL was a portion of the SAMPLE.

The AGAL analysis appears as Annex B to the Jamieson declaration.  This analysis states:

"1.3Conclusion

The core material is composed of a crosslinked poly (methyl methacrylate) synthetic resin (approx 66% by weight) plasticized with diethylene glycol bis (allyl carbonate).

2Analysis of inner Sheath

Infra-red spectroscopy shows that it is polytetrafluoroethylene (Teflon) ref H/S #642-5"

A large amount of evidence in answer was directed to the nature of the SAMPLE, and explaining that it could not be within the scope of the invention claimed.  The declarations of Robbins, Willford and Zarian consistently repeat that light conduits of the present application were never made using polytetrafluoroethylene as cladding.

What is clear is that prior to July 1986 there was use of a light conduit having the following composition:

.a sheath of polytetrafluoroethylene

.a core of a cross-linked polymer of poly (methyl methacrylate) synthetic resin (approx 66% by weight) plasticized with diethylene glycol bis (allyl carbonate)

The essential features of the light conduit of claim 1 are that it includes a polymer that is:

(a)transparent;

(b)flexible;

(c)elongated;

(d)cross-linked;

(e)essentially bubble-free;

(f)essentially void-free;

(g)the product of free radical polymerisation of methyl methacrylate, cross-linking agent and initiator (in specified amounts);  and

(h)surrounded by a tubular sheath.

The SAMPLE clearly possesses features (a), (c), (d) and (h).  It is likely that the SAMPLE also possesses feature (b).  There is no evidence whether the SAMPLE possesses features (e) and (f).  With regard to feature (g), it is clear that the polymer is cross-linked methyl methacrylate, but the ratio of methyl methacrylate/cross-linker/initiator is not apparent.  From the evidence available, I cannot be satisfied that the SAMPLE possesses features (e), (f) or (g).  Consequently, prior use of the light conduit of claim 1 has not been established.

The essential features of the light conduit of claim 2 are that it includes a polymer that is:

(a)substantially transparent;

(b)solid;

(c)flexible;

(d)essentially impurity free;  and

(e)a cross-linked polymer produced by a polymerisation involving an ester, vinyl or styrene.

The SAMPLE clearly possesses features (a), (b) and (e).  It is likely that the SAMPLE also possesses feature (c).  There is no evidence whether the SAMPLE possesses feature (d).  As I cannot be satisfied, from the evidence available to me, that the SAMPLE possesses feature (d), prior use of the light conduit of claim 2 has not been established.

The remaining independent claims (7, 12, 13, 17) all include the feature that the light conduit is essentially impurity free.  As it has not been established that the SAMPLE possesses this feature, I must conclude that it has not been established that there has been prior use of the light conduit of any of these claims.

Prior use of the light conduit of any of the claims has not been established.

conclusion

I have found that the specification does not comply with section 40 because the claims are not clear, the claims are not fairly based, the specification does not fully describe the invention, and there is no best method of performance.  The invention claimed is prior published by Reick and Sumitomo.  It has not been established that the invention claimed is obvious or that there has been prior use.

As it may be possible to overcome these deficiencies, I will allow LUMENYTE the opportunity to propose amendments.

I allow LUMENYTE sixty (60) days from the date of this decision to propose amendments to the specification.

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).

LIGHT has been successful on a substantive ground, and there are major section 40 deficiencies.  In the circumstances, I award costs against the applicant, LUMENYTE.

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