Lumenyte International Corporation v Light Transmission Cables Pty Ltd

[1995] APO 21

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 592654 in the name of LUMENYTE INTERNATIONAL CORPORATION

Title:    Method, apparatus and composition of matter for a high temperature plastic light conduit

Action: Opposition under section 104(4) by LIGHT TRANSMISSION CABLES PTY LIMITED

Decision:    Issued            .

Abstract:    Amendment allowed.  The requirements of section 102(1) considered.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 592654 by Lumenyte International Corporation and opposition thereto under section 104(4) of the Patents Act 1990 by Light Transmission Cables Pty Limited

background

Australian patent application number 75325/87 was lodged on 8 July 1987 by Lumenyte Corporation.  The application claimed priority from US application number 883350, which was filed on 8 July 1986.  During the prosecution of the application the applicant was changed to Lumenyte International Corporation (hereafter referred to as "LUMENYTE").

The application was advertised accepted on 18 January 1990 and assigned the number 592654.  A notice of opposition was lodged by Light Transmission Cables Pty Limited (hereafter referred to as "LIGHT") on 12 April 1990.

The matter was heard in Canberra on 6 August 1992.  The hearing was adjourned at the end of this day because the attorney for LUMENYTE was not available on the following day.

LUMENYTE proposed amendments under section 104 on 18 August 1992.  The amendments were advertised accepted on 6 May 1993, and a notice of opposition to the amendments was filed by LIGHT on 6 August 1993.  The service of evidence was completed on 13 May 1994.

The section 59 opposition was resumed and heard in Canberra on 5 and 6 December 1994, concurrently with the hearing of the opposition to the amendments and an opposition to the related application number 638707.  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 amendment

The proposed amendment makes changes to both the description and the claims.

The description is changed by the deletion of certain passages, and the addition of "preferred" to qualify some statements.

The claims are proposed to be deleted, and replaced by a new set of claims.

grounds and particulars of opposition

The statement of grounds and particulars states:

"Grounds

1.As a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.

2.As a result of the amendment, the specification would not comply with Section 40(2) or (3)."

The particulars of ground 1 indicate that amendments to pages 7-9, 10 and 11, 16, 23, 24, 25, 26 and 27, and 70 cause the specification to claim matter not in substance disclosed in the specification as filed.

The particulars of ground 2 state:

"2.(a)  Claim 11 has been made unclear as the expression "so that the sheath is inclined so as to localise bubbles which may form within the sheath" is unclear.

(b)As a result of the amendment of page 1A, the invention now relates to plastic conduits.  The specification does not describe the invention as there is no description of the manufacture of plastic conduits other than light conduits."

evidence

Evidence in support of the opposition consists of a declaration by Ross Alexander Cooper (dated 11 May 1994).

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

submissions

LUMENYTE's submissions can be summarised as follows:

.there is only a ground of opposition if the claims claim new matter (section 102(2)), and no ground if the specification contains new matter;

.the declaration of Cooper is not relevant because there is no evidence that he has carried out a process in accordance with the invention as claimed;  and

.all that is being done is to amend the body of the specification to bring it into line with the claims.

LIGHT's submissions can be summarised as follows:

.it is a ground of opposition if the specification as a whole would claim matter not in substance disclosed in the specification as filed (section 102(1)).  I was referred to May & Baker Limited v Boots Pure Drug Company Limited (1950) 67 RPC 23, F.Hoffmann-La Roche & Co Aktiengesellschaft v Commissioner of Patents (1969) 123 CLR 529, Monsanto Co's Application (1965) 35 AOJP 3362, International Playtex Corporation's Application [1969] RPC 362, Re Application by Rosen (1989) 17 IPR 33, Kornelis' Kunsthars Producten Industrie B V v W R Grace & Co, -Conn (1992) 25 IPR 463 as relevant to this point;

.the amendments result in the specification claiming matter not in substance disclosed in that
-  many of the characteristics of the invention that are essential are changed to preferred features only
-  the specific objects of the invention are deleted
-  these amendments change the nature of the invention;  and

.claim 11 as proposed to be amended is unclear because no clear meaning can be ascribed to the requirement "so as to localise bubbles which may form within the sheath".

decision

Relevant law

The allowability of amendments is governed by section 102, which states:

"What amendments are not allowable?
  102.  (1)  An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.
  (2)  An amendment of a complete specification is not allowable after the specification has been accepted if, as a result of the amendment:

(a)a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or

(b)the specification would not comply with subsection 40 (2) or (3).

(3)  This section does not apply to an amendment for the purpose of correcting a clerical error or an obvious mistake made in, or in relation to, a complete specification."

This must be read in the light of Schedule 1 to the Act:

"In this Act, unless the contrary intention appears:

...

"claim" means:

(a)when used as a noun in relation to a patent‑a claim (including a dependent claim) of the specification relating to the complete application on which the patent was granted; and

(b)when used as a noun otherwise than in relation to a patent‑a claim (including a dependent claim) of a complete specification; and

(c)when used as a verb‑to claim in a claim (including a dependent claim) of a complete specification;"

a)  Section 102(1)

The word "claim" is used as a verb in section 102(1).  Consequently, "claim" is to be read as "claim in a claim (including a dependent claim) of a complete specification".  Section 102(1) should thus be read as saying:

An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim in a claim (including a dependent claim) of the complete specification, matter not in substance disclosed in the specification as filed.

This is in contrast to the corresponding provision under the Patents Act 1952. There was no definition of "claim" in the 1952 Act, and the term was given an expanded meaning:

"the word 'claim' does not refer to the monopoly claims at the end of a specification but rather to the assertion, of what is the invention, by the specification itself"

(Roussel-Uclaf v Herchel Smith (1974) AOJP 1549 at 1550)

Consequently, there is no ground of opposition under section 102(1) if an amendment alters the descriptive part of the specification, and does not result in any change to the scope of the claims.

b)  Section 102(2)

This subsection only operates if the specification has been accepted.  An amendment is not allowable if:

(a)a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or

(b)the specification would not comply with subsection 40 (2) or (3).

c)  Section 102(3)

The limitations on allowable amendments do not apply if the amendment merely corrects a clerical error or obvious mistake.

Application of the law

In the present case there is no suggestion that the amendment is for the purpose of correcting a clerical error or obvious mistake (so section 102(3) is not relevant).

a)  Section 102(1)

The effect of the amendments on the claims is summarised in the following table.

Claim no.  Corresponding   Comments on the amended
in claim no. in          claim
unamended  amended
specif'n   specif'n

1 to 10    1 to 10        Claim 1 has some added
  text
  Term "preferably" deleted
  from claim 4

1. 11            Claim 11 has some added
     text

2. NCC
   13 to 29   12 to 28       Term "about" deleted from
     claim 13
     Term "preferably" deleted
     from claims 22 and 24
   30 to 60   NCC

   29 to 31       New claims included as a
     result of amendment

NCC  No corresponding claim

It was not argued that any of the claims would claim matter not in substance disclosed in the specification as filed.  I am satisfied that as a result of the amendment, the claims would not claim matter not in substance disclosed in the specification as filed.

There are a number of changes proposed to the description of the specification which were alleged to change the broad assertion of the invention.  These matters are irrelevant to section 102(1).

b)  Section 102(2)

It was argued that as a result of the amendment the specification would not comply with section 40 because:

(i)  claim 11 would not be clear;  and

(ii)the specification would not fully describe the invention.

(i)  Would claim 11 become unclear?

Claim 11 as proposed to be amended reads:

"11.  A method of polymerising a monomer mixture comprising the steps of:
     substantially filling a length of elongated sheath with essentially impurity free, essentially inhibitor free precursor reagents which are capable of being polymerized into a flexible thermosetting polymer;
     placing the substantially filled sheath in an elongated sealable tank which has been filled with a first fluid so that the sheath is inclined so as to localise bubbles which may form within the sheath;
     sealing the tank;
     pressurizing the interior of the tank;
     selecting a second fluid which is more dense than the first fluid;
     maintaining the second fluid at a temperature higher than the temperature of the first fluid;
     introducing the second fluid into the bottom of the tank, thereby creating an interface with the second fluid on the bottom and the first fluid on top;
     progressively initiating polymerization by raising the interface by simultaneously and equally decreasing the volume of the first fluid and increasing the volume of the second fluid in the tank until the second fluid encompasses the length of the portion of the elongated sheath which contains the precursor reagents."

The text shown underlined was not present in the claim as accepted, and has been added as a result of the proposed amendment.  Otherwise the claim is identical to the claim as accepted.

The proposed amendment would cause claim 11 to include a requirement to incline the sheath "so as to localise bubbles".  It was argued that this is unclear on the basis of the declaration of Cooper dated 11 May 1994.  Cooper declared:

"1.  I am employed as a Production Manager with responsibility for the manufacture of polymeric light pipe.  Since November 1989, my duties have included the control and operation of a progressive polymerisation reactor for the production of polymeric light pipe.  In the production of the light pipe, a polymeric sheath is filled with a degassed and purified mixture of monomer and initiator, and the filled sheath is placed in a tubular reactor.  Hot fluid is added to the bottom of the reactor to raise the hot fluid level in the reactor, thus initiating the polymerisation reaction along a front which moves progressively up the sheaths.

2.   When the above reaction is carefully controlled, the resultant light pipe is entirely free of bubbles.  It is not therefore possible to anticipate what would happen if it was formed.

3.   In my experience, the formation of bubbles in the light pipe will occur only when the reaction is allowed to run away such that the polymerisation progresses too quickly.  This can occur if the reaction temperature is too high.  In such cases, the product is unusable as the bubble surface interferes with the total internal reflection of the light within the core.  This is so regardless of the position of the bubble within the cross section of the light pipe core.  Any product with bubbles is discarded.

4.   In January 1990 I participated in experiments to determine the limits to which reaction parameters could be modified without adversely affecting the quality of the product.  The experiments were carried out with the sheath inclined.  As part of those experiments, the reaction temperature was deliberately increased to increase the rate of reaction.  The product of these increased temperature experiments contained bubbles trapped within the core of the light pipe.  I recall that the bubbles were scattered randomly across the cross-section of the core and were not concentrated along one side of the core.  The product formed in those experiments were discarded as it was unusable."

[The passages shown underlined are the significant portions, and were not underlined in the original]

The evidence of Cooper establishes that in the preparation of light conduits by polymerisation inside a sheath it is possible to carry out the reaction in a controlled way, so as to avoid bubble formation.

LUMENYTE stated that Cooper does not say whether the experiments used processes within the scope of the processes claimed in the present application.  It is possible that Cooper was not using processes according to the present invention, and this is why the bubbles did not localise.

The evidence of Cooper shows that in the experiments that he carried out, inclining the sheath did not localise bubbles.  However, as it is not apparent whether Cooper used processes according to the present invention, I do not know whether his observations are relevant to the present case.  As it has not been shown that a skilled person would be unable to determine the inclination of the sheath necessary to localise bubbles, I conclude that it has not been shown that the proposed claim 11 lacks clarity.  Consequently, the amendment is allowable in this respect.

(ii) Would the specification fully describe the invention?

The amendment to page 1A of the specification can be easily summarised.  The relevant part of page 1A is shown below, with the text removed by the amendment shown with double underlining, and the inserted text shown underlined:

"1.  FIELD OF THE INVENTION

The present invention relates to plastic light conduits, or fiber optics, and a method and apparatus for making them.  More specifically, the present invention relates to a high temperature plastic light conduit, having good light transmitting characteristics, low light leakage, few, if any flaws, that does not melt, even above 150°C, to about 350°C, and which remains flexible indefinitely.  The present invention also relates to a method and apparatus for making such a light conduit.  and more particularly, but not exclusively to light conduits, or fiber optics, and a method and apparatus for making them.

There was very little discussion of this matter at the hearing.  I do not consider that the proposed change to page 1A would result in the specification failing to fully describe the invention (deficiencies on this point were already present in the description before amendment - see my decision on the section 59 opposition).  Consequently, the amendment is allowable in this respect.

CONCLUSION

The amendment is allowable.  I allow the amendment.

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).

LUMENYTE has been successful on all grounds.  I award costs against the opponent, LIGHT.

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