Lumenyte International Corporation v Light Transmission Cables Pty Ltd
[1995] APO 19
•10 April 1995
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 59 of the Patents Act 1952 by LIGHT TRANSMISSION CABLES PTY LIMITED
Decision: Issued .
Abstract: Opposition succeeds on the ground of section 40, but not on prior publication. Opportunity to amend.
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 59 of the Patents Act 1952 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 notice of opposition identified the grounds of opposition as those contained in sections 59(1)(c) - (i) of the Patents Act 1952. The process of serving evidence was completed on 29 May 1992.
The hearing of the matter began in Canberra on 6 August 1992. 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 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 of the Patents Act 1990 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 hearing of the section 59 opposition was resumed in Canberra on 5 and 6 December 1994 on the agreement of the parties that the hearing would be in respect of the claims as proposed to be amended and the description as accepted. The hearing was held concurrently with the hearing of the opposition to the amendments and an opposition to the divisional application number 638707. LUMENYTE and LIGHT were represented as originally.
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 60 claims, of which 11 are independent claims drawn to different aspects of the invention. The claims as proposed to be amended contain two independent claims, and a total of 31 claims. Claim 1 as proposed to be amended is directed to an apparatus for producing polymers, and claim 11 is directed to a method of polymerising a monomer mixture.
The relationship between the claims in the specification as accepted and amended 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
11 Claim 11 has some added
textNCC
13 to 29 12 to 28 Term "about" deleted from
claim 13
Term "preferably" deleted
from claims 22 and 24
30 to 60 NCC29 to 31 New claims included as a
result of amendment
NCC No corresponding claim
EVIDENCE
LIGHT's evidence in support consists of declarations by Graham William Halford (dated 14 January 1991), William John Jamieson (dated 14 February 1991) and Robert Paul Burford (dated 10 May 1991).
LUMENYTE's evidence in answer consists of 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).
LIGHT served evidence in reply in the form of a further declaration by Robert Paul Burford (dated 30 March 1992) and a declaration by Geoffrey Robert Davidson (dated 29 May 1992).
The attorney for LIGHT contacted the Patent Office by facsimile on 28 November 1994, requesting that evidence filed in the opposition to the divisional (application number 638707) be included as evidence in the present opposition. At the hearing, the attorney for LUMENYTE did not object to this course of action. This evidence consists of: evidence in support by Ross Alexander Cooper (dated 11 May 1994) and Geoffrey Robert Davidson (dated 21 June 1994); and evidence in answer by Gregory Michael Turner (dated 20 September 1994), James Zarian (dated 16 September 1994), and John Robbins (dated 16 September 1994). This evidence was the subject of submissions by both parties, and I will have regard to it in my decision.
Details of the evidence will be given where appropriate in my decision.
SUBMISSIONS
LIGHT made submissions on the following matters:
.claims 1 to 29 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 11 to 14 and 21 to 25 are prior published by certain patent specifications;
.whether the applicant should be given an opportunity to amend if the opposition is successful; 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 592654 was advertised accepted on 18 January 1990 and a notice of opposition was lodged on 12 April 1990. By virtue of section 234(3) and regulation 23.3, the present opposition is governed by Part V of the Patents Act 1952 and Division 1 of Part XIV and regulations 82 and 83A of the Regulations made under the Patents Act 1952.
The matters that have to be decided in this opposition are twofold:
.section 40 matters; and
.prior publication.
Before these matters can be decided it is necessary to construe the specification.
Construction of the specification
It was agreed with the parties that the hearing would proceed on the basis of the description as accepted and the claims as proposed to be amended. It is this form of the specification that I will consider. 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.
Claim 11 refers to using "essentially impurity free, essentially inhibitor free precursor reagents". However, there is no explanation in an appended claim (or elsewhere) of what "essentially impurity 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 7. 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 as proposed to be amended is directed to an apparatus for producing polymers:
"1. A polymerization reactor comprising:
an elongated tank having a top and a bottom;
a means for recirculating a first fluid including a plurality of first fluid distribution lines which are located at intervals along the length of the tank and are in fluid communication with the interior of the tanks and have a valve operatively positioned in each of the first fluid distribution lines:
a means for recirculating a second fluid including a plurality of second fluid distribution lines which are located at intervals along the length of the tank, are in fluid communication with the interior of the tank and have a valve operatively positioned in each of the second fluid distribution lines;
a means for sealing the tank; and
a means for pressurising the interior of the tank;
wherein the longitudinal axis of the tank is inclined so as to localise bubbles which may occur in a reactive mixture contained in the tank and extending in the direction of said longitudinal axis; and
wherein first and second fluids cooperate to raise an interface between the first and second fluids by simultaneously and equally decreasing the volume of the second fluid in the tank."
The text shown underlined was not present in the claim as accepted, and is proposed to be added by the amendment. Otherwise the claim is identical to the claim as accepted.
Claim 11 is directed to a method of polymerising a monomer mixture:
"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 is proposed to be added by the amendment. Otherwise the claim is identical to the claim as accepted.
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).
Claim 1 refers to inclining the tank so as to localise bubbles. The relevant part of the claim reads:
"wherein the longitudinal axis of the tank is inclined so as to localise bubbles which may occur in a reactive mixture contained in the tank and extending in the direction of said longitudinal axis;"
[The text shown underlined was not present in the claim as accepted, and has been added as a result of the proposed amendment]
The argument advanced by LIGHT was that the specification states that it is inclining the sheath that causes the bubbles to localise, not inclining the tank. Consequently, as inclination of the reactor does not cause bubble localisation, would a person know what degree of inclination of the reactor was being claimed?
In addition, it was argued that it is not certain whether "extending" refers to the bubbles or the mixture. I think that the only sensible construction is that "extending" refers to the mixture. Further, it follows that the reactive mixture is constrained so as to extend along one axis. I regard this as meaning that the mixture is constrained in a shape having one linear dimension greater than either of its other dimensions. In operation, the long axis of the reactive mixture is aligned with the longitudinal axis of the reactor.
Since the reactive mixture extends in the direction of the longitudinal axis of the reactor, inclining the longitudinal axis of the reactor will also cause the reactive mixture to be inclined to the same degree. The degree of inclination of the reactor that is claimed is whatever inclination of the reactive mixture is needed. The claim as proposed to be amended is clear (but is not clear without the amendment).
Claim 11 uses the term "flexible thermosetting polymer". LIGHT argued that there is no such thing as thermosetting polymers are rigid materials, and inherently inflexible. The relevant part of claim 11 reads as follows (the term in question is underlined for convenience, but the underlining was not present in the original):
"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; ..."
I previously determined that the natural meaning of a thermoset polymer is a highly cross-linked, rigid polymer. A flexible thermosetting polymer is thus a contradiction, making the claim prima facie unclear. In this case, I am guided by the principles of construction in Decor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400:
"(5) If a claim be clear, it is not to be made obscure because obscurities can be found in particular sentences in other parts of the document. But if an expression is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim."
In the body of the specification it is clear that the term "flexible thermosetting polymer" carries the meaning of a flexible cross-linked polymer. A flexible, cross-linked polymer is understandable: the degree of cross-linking is not so great as to cause rigidity in the product. Thus, claim 11 is not, in fact, unclear due to the use of the term "flexible thermosetting polymer".
Claim 11 also includes 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]
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 claim 11 lacks clarity.
Claim 12 refers to inclination of the sheath. The claim reads as follows:
"12. The method of claim 11 wherein the sheath is inclined by 30 to 45°."
LIGHT argued that the claim is not clear because it is not apparent whether the sheath is inclined from the horizontal or the vertical. I agree that it is not apparent whether the sheath is inclined from the horizontal or the vertical, and it is important for a third party to know this. I consider that the claim is not clear.
The terms "essentially" and "substantially" are used in claims 11, 23 and 28. I will repeat the relevant parts of these claims (the terms in question are underlined for convenience, but the underlining was not present in the original):
"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 ..."
"23. The method of any one of claims 11 through 21 further comprising: ...
maintaining the raised temperature of the second fluid until the polymerization is essentially complete."
"28. The method of any one of claims 11 through 27 wherein:
the interior of the fluoropolymer tube is polished, clean and substantially free from scratches."
The term "substantially" in claim 11 relates to a matter that is not central to the claim, and I do not consider it causes any ambiguity. The term "essentially" in claim 11 relates to a matter that is central to the invention. I agree that a person could not know if they were infringing this aspect of the claim. Claim 11 is thus not clear.
The term "essentially" in claim 23 relates to a matter that I do not consider is central to the claim. Claim 23 is clear.
The term "substantially" in claim 28 relates to a matter that I consider is not central to the claim. Claim 28 is clear.
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).
Claims 1 to 10 were challenged on the basis that they refer to inclining the tank, whereas there is only a disclosure of inclining the sheath containing the monomer mixture. As I have already determined that it is a feature of claim 1 that the tank is inclined to the same degree as the sheath (see page 17 above). There is a real and reasonably clear disclosure of inclining the sheath, so I believe that the claims are fairly based.
LIGHT submitted that essential features were missing from one or more of the claims. The following table summarises this contention:
REACTOR CLAIMS (1 TO 10):
FEATURE NUMBER MISSING FROM CLAIM NUMBER
(see page 14)
1 to 10
(ii) 1 to 10
(iii) 1 to 10
METHOD CLAIMS (11 TO 29):
FEATURE NUMBER MISSING FROM CLAIM NUMBER
(see page 14)
(A) 11 to 29
(B) §
(C) 11 to 29
(D) 11 to 29
(E) Nil
(F) Nil
(G) 11 to 29
§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 reactor having the combination of features (i) through (iii). A reactor 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 claims 1 to 10 in the above table are correct. Claims 1 to 10 are not fairly based.
The description contains a real and reasonably clear disclosure of a method having the combination of features (A) through (G). A method 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 claims 11 to 29 in the above table are correct, with the following qualification. I consider that feature (A) is present in claims 11 to 29: the process of claim 11 utilises reagents "capable of being polymerized into a flexible thermosetting polymer", so the product of the process will be a cross-linked polymer. In addition, feature (B) is present in all claims. Consequently, claims 11 to 29 are not 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 Reick patent is discussed fully in my decision on application number 638707]
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).
When considering the citation, it is not permissible to mosaic parts of different documents. However, if there is a sufficient connection between the documents then they can be regarded as a single disclosure (see Nicaro Holdings v Martin, supra, at 564 to 573)
LIGHT relied on the patent specifications US 2057674 and US 2238443, read together, for its argument of prior publication. It is alleged that the citations prior publish claims 11 to 14, and 21 to 25. The records of the Australian Patent Office indicate that '674 was open to public inspection on 9 March 1937 and '443 on 3 September 1941.
The '443 patent refers to '674 at several places in the specification. The relevant passages are:
"In applicant's United States Patent 2,057,674, entitled "Polymerization process", is described a method for the polymerization of liquid compositions comprising monomeric polymerizable organic compounds such as methyl methacrylate in elongated moulds at elevated temperatures. ...
Essential to the success of the process described in said United States Patent 2,057,674 is the limitation of the polymerization to a narrow zone at any given time ...
It is an object of the present invention to provide a new and improved apparatus for the polymerization of organic compounds in elongated shapes by the method mentioned."
[columns 1 and 2]
The "method mentioned" is the method of the '674 patent. I consider that the '674 patent is not mentioned merely as prior art. The applicant in the '443 patent is relying on the '674 patent as the starting point for his work. The invention in '443 is a development of the invention in '674. This is confirmed in the description of the invention at column 4, lines 16 to 19:
"The mold assembly thus described is adapted for use in the manufacture of rods of polymer of, e.g., methyl methacrylate, by the method of United States Patent 2,057,674."
I consider that it is legitimate to read the '674 and '443 patents as a single disclosure.
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).
All of the claims in question are appended to claim 11. Claim 11 is directed to a method of polymerising a monomer mixture. The claim is not limited to the preparation of light conduits. The features of the method are:
(a)substantially filling a sheath with the precursors of a thermoset polymer;
(b)the reagents are . essentially impurity free
. essentially inhibitor free;(c)placing the sheath in a sealable tank filled with a fluid, with the sheath inclined so as to localise bubbles;
(d)sealing the tank;
(e)pressurising the tank;
(f)identifying a second fluid denser than the first;
(g)maintaining the second fluid at a temperature higher than that of the first, and at a temperature that will initiate polymerisation of the mixture;
(h)introducing the second fluid at the bottom of the tank; and
(i)progressively raising the interface between the fluids.
LIGHT argued that feature (b) is standard practice. This does not mean it cannot be an essential feature. If the feature of purification does not materially affect the way that the invention works, it is an inessential feature. Given what was revealed about the importance of purity, I consider that purity materially affects the way that the process works. Consequently feature (b) is essential.
LIGHT also argued that features (c), (d) and (e) are not essential. I do not need to decide these questions as I consider that feature (b) is the key feature.
'443 and '674 disclose a method of polymerisation in which:
(i)a mold is filled with monomeric precursors;
(ii)the mold is placed in a bath containing heating fluid;
(iii)the mold is vertical;
(iv)the contents of the mold can be subjected to pressure ('674, column 4);
(v)the heating fluid is raised along the length of the mold (either by immersing the mold or raising the fluid); and
(vi)unreacted monomer is cooled by air.
The purity of the reagents is not mentioned in either document
If I consider air to be the first fluid, then '443 and '674 disclose features (a), (c), (f), (g), (h) and (j). However, there is no mention of the purity of the reagents (feature (b)). While it is a common practice to remove inhibitor from monomers, I am aware that occasionally monomers are polymerised in the presence of inhibitors (paragraph 6.9 of the Burford declaration dated 10 May 1991). Consequently I am not satisfied that there has been a clear and unmistakable disclosure of feature (b), and the claim is not prior published.
It follows as a consequence that the appended claims 12 to 14 and 21 to 25 are also not prior published.
Opportunity to amend
It was argued by LIGHT that it would not be proper to allow further time to propose amendments to the specification because of the conduct of LUMENYTE. I was referred to the recent decision of a Delegate of the Commissioner reported as Queensland Plumbing Pty Ltd v Trade Waste Diversion Pty Ltd (1993) AIPC 90-992. At page 39,391 the Delegate states:
"The issue of false suggestion may be relevant to whether or not the Commissioner, when finding an opposition upheld, exercises a discretion to allow the applicant to amend the application. As was stated in Imperial Chemical Industries (Whyte's) Patent (1978) RPC 11, 'the court will not assist a wrongdoer', and in my view that principle applies equally to the exercise of the Commissioner's discretionary powers. On the other hand, I would consider the Commissioner can justifiably act on this basis only in the clearest circumstances."
LUMENYTE stated that its conduct had not been improper, and that it should be given the opportunity to amend if the opposition went against it.
I consider that even if the conduct of the applicant is relevant to my decision whether or not to allow amendments to be proposed, there is no clear evidence that the applicant has acted in an improper manner. Consequently, as I believe that it may be possible to overcome the deficiencies of the specification, I will allow LUMENYTE the opportunity to propose amendments.
I allow LUMENYTE sixty (60) days to propose amendments to the specification.
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. It has not been established that the invention claimed is prior published.
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).
LUMENYTE submitted that it had been disadvantaged by hearing the substantive opposition before the opposition to the section 104 amendment had been resolved. It was suggested that costs should reflect the inconvenience and protest of the applicant.
LIGHT submitted that it was not at fault in disadvantaging LUMENYTE, so it should not be penalised in the awarding of costs.
I do not consider that LUMENYTE has been unfairly disadvantaged by hearing the section 59 and section 104 oppositions together. In a letter dated 29 September 1994, LUMENYTE's attorney requested that the matters be heard together:
"Our client would like to have these oppositions resolved as soon as possible. In this regard we draw attention to out letter of 16 September 1994 advising Mr Herald that we would not reinstate claims. By doing so we were clearing the way to have both oppositions heard together."
The description as accepted contained several serious defects. LUMENYTE proposed substantial changes to the specification after the first day of the hearing. The resumption of the hearing was based on the claims as proposed to be amended - the claims that LUMENYTE wished to pursue. I have found that these claims are still inadequate.
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
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