Nemoto & Co Ltd v Shino Kaneko
[2003] APO 24
•18 June 2003
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No 690742 in the name of NEMOTO & CO LTD
Title : Phosphorescent Phosphor
Action : Opposition by SHINO KANEKO to an amendment to the specification
Decision : Issued .
Abstract
Amendments allowed.
As a result of the amendment the claims would not be unclear. The term “comprising” is capable of interpretation. Other amendments to the specification have no bearing on the clarity of the specification.
As a result of the amendment the claims do not go beyond the scope of the claims as accepted. In particular the changing of europium to europium oxide in some of the tables has no bearing on the claims, as the claims do not refer to the amended tables but only to europium as originally claimed.
As a result of the amendment the specification would not claim matter not in substance disclosed in the specification as filed. The opponents submission that deletion of some elements from the claims has somehow created a new sub-class, which was not originally disclosed, has not been established in this particular instance
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re: Patent Application No.690742 by Nemoto & Co Ltd, and an opposition by Shino Kaneko to an amendment to the specification
BACKGROUND
Australian patent application 690742 in the name of Nemoto &Co Ltd (hereafter referred to as Nemoto) was advertised accepted on 30 April 1998. The grant of a patent was opposed by Shino Kaneko (hereafter called Shino) on 29 July 1998. It is a patent of addition to patent number 661941 sealed on 9 January 1996.
During the course of filing and serving of the evidence in the substantive opposition, on 26 September 2000 and 23 February 2001, Nemoto proposed amendments. These amendments were advertised on 3 May 2001. On 3 August 2001 Shino filed a notice of opposition to the amendments. The service of evidence in respect of the amendments was completed on 8 December 2002 when Shino indicated that they were not filing any declarations in reply.
The opposition to the amendments was heard in Melbourne on 17 April 2003. Nemoto was represented by Mr M. Grant, patent attorney, of Patent Attorney Services, Melbourne. Shino was represented by Mr M Caine, patent attorney, assisted by Mr M. Lucas technical assistant both of Davies Collison Cave, Melbourne.
THE GROUNDS AND PARTICULARS OF THE OPPOSITION
The grounds specified in the Statement of Grounds and Particulars are as follows:
That as a result of the amendments, the specification claims matter not in substance disclosed in the specification as filed.
That as a result of the amendments a claim of the specification would not in substance fall within the scope of the claims of the specification before the amendment.
That as a result of the amendment, the specification does not comply with sub-section 40(2) or 40(3).
The particulars specified for these grounds are:
1. As a result of the deletion of particular elements from claim 1 and 4, claims 1 to 5 claim a sub-class of Lanthanides that has not been previously disclosed. In this regard the specification is wholly silent with respect of the sub-class of Lanthanides in amended claim 1.
2 The patentee has made amendments to the examples by replacing “europium” (in the examples) with “europium oxide” (see pages 9,14 and 17). The description of the invention is amended indicating that a reference to europium as an activator (see page 9, line 8) includes, or is equivalent to, a reference to europium oxide. However the claims define a phosphorescent phosphor activated with “europium”, not “europium oxide”. As a result of the amendments made to the examples it is possible that the use of europium oxide as an activator would fall within the scope of the claim, whereas prior to amendment the claims were limited to europium. Accordingly the scope of the claims is notionally broader than originally filed.
3 (a) The complete specification (as amended) does not specifically and clearly describe the invention or the best method of performing it known to the applicant, as it now implies that elemental europium and europium oxide, and perhaps other forms and oxidation states of europium, are interchangeable as activators in the phosphors of the invention. However, this is not supported by the description of the invention. For instance a person skilled in the art would recognise that 1 mol of Europium oxide (Eu2O3) corresponds to 2 mols of elemental europium. However at page 9 lines 23-29, the specification includes the following statement about the results shown in table 2: “…if the amount of added europium is between 0.0005 mol and 0.1 mol,…”. It is unclear how this statement relates to Table 2 which refers to europium oxide.
4 As a result of the amendments changing the activators in the examples from europium to europium oxide, it is not clear if the specification is referring to the use of elemental europium as an activator, the use of europium oxide or the use of europium compounds in general (in any of its oxidation states). Accordingly, as a result of the amendments, the specification does not describe the invention fully, including the best method known to the applicant of performing the invention.
5. As a result of the deletion of particular elements from claims 1 and 4 and the corresponding part of the description, the claims now claim subject matter in the form of a sub-class of Lanthanides, which was not identified or described in the specification as filed or prior to amendment. Accordingly, the amended claims lack fair basis in the specification as a result of the amendment.
6. On pages 55 and 58 of the description the applicants have replaced the phrase “at room temperature” with “at room light”. This amendment removes details of the temperature at which the experiments were conducted and introduces a reference to room light. Accordingly, as a result of the amendments, the invention is not fully described, including the best method known to the applicant of performing the invention.
7. As a result of replacing the word “including” with “comprising” (on new page 65), the scope of claim 1 has become unclear. The use of the word “including” implies that the phosphors of the invention can have further unspecified components. It has been noted that claim 1 as originally filed used the word “comprising” not “including”. This implies that the applicants have made a distinction between the two terms. Accordingly, it is unclear what interpretation should be given to the term “comprising” in its current context.
EVIDENCE
The evidence in support consists of a declaration by Dr Brendan James Kennedy, he is a senior lecturer in chemistry at the University of Sydney.
The evidence in answer consists of a declaration by Takashi Matsuzawa, he a co-inventor of the present invention.
There is no evidence in reply.
DECISION
The relevant law
The present case is an opposition to the allowance of amendments. The right to oppose arises from section 104(4). By virtue of section 104(5), the criteria for determining whether the amendments are allowable are those laid down in section 102.
(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.
An amendment of a complete specification is not allowable after the specification has been accepted if, as a result of the amendment:
a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
the specification would not comply with subsection 40(2) or (3).This section does not apply to an amendment for the purpose of correcting a clerical error or an obvious mistake made in, or in relation to, a complete specification.
Section 102(1) is not offended by an amendment that merely alters the descriptive part of the specification while leaving the scope of the claims unchanged (see Lumenyte International Corporation v Light Transmission Cables Pty Ltd (1995) AIPC 91-191, 31 IPR 520). However, where an amendment leads to a change in the emphasis of the invention claimed to something not originally disclosed, that will offend against section 102(1) (see Enichem Synthesis SpA v Ciba-Geigy AG (1996) AIPC 91-276).
The issues
The issues raised in this opposition are these:
1. As a result of the amendments do the claims now claim matter not in substance disclosed in the specification as filed with regard to the deletion of lanthanum and terbium from claim 1. More particularly has this in effect created a new sub-class of co-activators.
2. As a result of the amendments do the claims fall within the scope of the claims before amendment with regard to the replacement of europium by europium oxide in the examples?
3. As a result of the amendment are the claims unclear insofar as they use the term “comprising” instead of “including”?
4. As a result of the amendment does the specification now not fully describe the invention and the best method of performing it, particularly with respect to:
the terms europium and europium oxide being interchanged and confusion arising as to which is intended;
the phrase “at room temperature” being replaced with the term “at room light”?
The amendments:
10. The amendment schedule is very extensive and recording full before and after text in this decision would only serve to confuse.
11. In summary the amendments of 26 September 2000 [actually dated 20 September 2000 by the attorney] have the effect of reducing the total number of claims from 16 down to 5. The additional restriction of claim 2 has been incorporated into claim 1 and the list of elements used as a co-activator dopant has been reduced by two by removing lanthanum and terbium from the original 11. Also the claim now uses the term “comprising” instead of “including”.
12. New claim 4 has had its list of co-activator dopants reduced by 5, by removing lanthanum, terbium, manganese, tin and bismuth from the original 14 so as to correspond to claim 1.
13. The body of the document has two significant changes. The first is to delete references to the the examples being left at “room temperature” and substitute a reference to “room light”. The second is to substitute “europium oxide” for “europium” in some of the tables of examples.
Clarity
14. Shino submitted that as a result of the amendment that the specification and claims would be unclear because of the change of europium to europium oxide in some of the tables. I note that there is no reference to europium oxide either directly or indirectly in any of the amended claims. There is direct evidence from Mr Matsuzawa that a person skilled in this art would understand when the amended tables are read in conjunction with the description. Here it is clear that the manufacturing route includes the use of europium oxide. Whether the manufactured phosphor and the tables express the europium content as oxide or metal is just a matter of drafting. In any event for the opponent’s expert Mr Kennedy to submit that the claims are unclear as to whether they are expressed as europium or its oxide, is not valid. The claims clearly define what is required and would be understood by the skilled addressee. In my view they are clear, as is the description.
15. In respect of the amendment to change the term “at room temperature” to at “room light” it is submitted by the Nemoto that it is merely to correct an error and thus to make the description clearer. It seems plain to me that a person skilled in the art of phosphors would be concerned with light conditions not temperature. This change is just to show how the examples were tested and has very little bearing on the invention. In my view the description and claims are no more or less clear as a result of this amendment.
16. In respect of changing the term “including” to “comprising” in the claims the opponent submitted that this somehow made the term unclear, as the applicant had amended “ comprising” to “including” and then back to “comprising”. I cannot see how the history of the chain of amendments is relevant. All I must determine is whether the proposed amendments comply with the Act. There is clear case law that the term “comprising” is capable of being interpreted [See General Clutch Corp. v Sbriggs Pty Ltd (1997) 38IPR 359]. Consequently the claims have not become unclear as a result of this amendment.
17. Thus in my view the claims as proposed to be amended do not, as a result of the amendment, fail to comply with subsection 40(2) or 40(3).
Claiming beyond the claims as accepted
18. Mr Caine submitted for the opponent that changing europium to europium oxide in the examples on pages 9,14 and 17 of the description has cast doubt on whether the claims now include the use of europium oxide as an activator when they did not before amendment. Were this to be the case I would agree with Mr Caine that the claims as proposed to be amended would claim beyond the claims as accepted.
19. However all of the amended claims except claim 5 are clearly directed to the use of europium not europium oxide. Claim 5 is slightly different in that it refers to tables 26, 27 and 28. However all three of these tables also refer to europium not europium oxide.
20. Thus in my view the claims, as proposed to be amended, clearly do not travel beyond the claims as accepted
Claiming matter not in substance disclosed in the specification as filed
21. Mr Caine asserted at the hearing that the deletion of some elements from the list of co-activators in claims 1 and 4 has somehow created a new subclass of co-activators not contemplated by the specification as filed. This he argues results in the claims as proposed to be now claiming matter not in substance disclosed in the specification as filed, since they claim this new subclass.
22. The courts have drawn no significant distinction between fair basis and in substance disclosed [see Merck & Co. Inc. v Sankyo Co. Ltd. (1992) 23 IPR 415 and Enichem Synthesis S.P.A. v Ciba Geigy AG (1996) AIPC 91-276].
23. Thus the law to be applied is the same as that for fair basis, that is are the amended claims fairly based on the specification as filed. Consequently the applicable law is the application of the Mond Nickel Rules [ Mond Nickel Company Ltd’s Application(1956) RPC at 194] as considered by the High Court in relation to classes and subclasses in Hoffman La Roche and Co., AG v Commissioner 1973 RPC at 44 where Gibbs J states the following:
24. “It seems to me that the lines of investigation suggested by Lloyd-Jacob J. lead to the conclusion that proposed claims 2, 3 and 4 in the complete specification are fairly based on the matter disclosed in the first basic application. It is critical in my view that it is not suggested that the compounds the subject of proposed claims 2,3 and 4 have been selected because they have any special utility. If a basic application disclosed a large class of compounds, all of which were claimed to be of pharmaceutical utility, and if it were found that the claim was false, in that only some of the compounds were useful or it appears that some of the compounds had a particular and peculiar value, there would be much to be said for the view that a claim limited to those compounds selected for their utility or special value would not be fairly based on the matter disclosed in the basic application, at least if the basic application did not itself provide a guide to that selection, and a fresh inventive step were necessary to enable it to be made. Here however a large class of compounds is disclosed, and clearly disclosed, in the basic application, and proposed claims 2,3 and 4 in the complete specification are for compounds forming part of that class, but not selected because they alone are useful or because they have utility greater than other members of the class.”
25. The question then is now a matter of evidence as to whether the shortened list of co-activators claimed in the claims as proposed to be amended have been selected because they alone are useful.
26. At this point I note that the claims are directed to a matrix of a metal aluminium oxide from where the metal selected is at least one of three. This matrix is doped with europium and at least one co-activator selected from a group of nine. The opponent’s argument is that by reducing the number of co-activators to 9 [from 11 and 14 respectively] a special subclass has been created.
27. Dr Kennedy in his statutory declaration refers back to Mr Matsuzawa’s declaration in the main opposition [dated 27 September 2000] at paragraph 12.4. Here Mr Matsuzawa explains that a co-activator and a sensitizer are not synonymous and that a sensitizer is a subclass of co-activator. Dr Kennedy asserts that this supports his view that the applicant has in fact amended the claims to exclude known sensitizers from the group of co-activators used to dope the matrix, thus creating a subclass of co-activators, which excludes sensitizers. He asserts that this subclass is not even hinted at in the specification as filed.
28. Mr Matsuzawa in his declaration in this action [dated 2 August 2002] states that the term co-activator is applied to those elements which enhance the brightness of the emission of phosphorescence [afterglow] of europium (Eu 2+ ion) distributed in the matrix of M 1-x Al2O4. He then explains that the mechanism by which this occurs is not always well understood. The sensitizer family is relatively well studied but the term co-activator is applied generally to all elements which enhance the brightness of the emission of phosphorescence [afterglow], even if the mechanism of operation is unknown. He states that for Dr Kennedy to suggest that the deletion of some elements from the list of co-activators in the claims somehow creates a sub class consisting of only non-sensitizer lanthanides is wrong. He further states that in reality an element while always remaining a co-activator can also be a sensitizer with one host and not with others. Thus the subclass consisting only of non-sensitizer lanthanides postulated by Dr Kennedy does not exist. All the amendment has done is to narrow the claims.
29. At this point I note that the opponent had the opportunity to file evidence-in-reply, and chose not to do so. Thus in some respects Mr Matsuzawa’s statement stands unchallenged.
30. On balance I feel that the opponent has not made their case for establishing the existence of a new sub-class of co-activators that the specification as filed was silent on. Thus the amendments do not result in the specification claiming matter not in substance disclosed in the specification as filed.
CONCLUSION
31. The opponents have not made out their case that the amendments should not be allowed. The amendments do not claim matter not in substance disclosed in the specification as filed; they do not claim matter not within the scope of the claims as accepted; as a result of the amendments the specification does not fail to comply with section 40. I therefore allow the amendments. Consequently the opposition to the amendments fails.
COSTS
32. The power for the commissioner to award costs is based on section 210 and regulation 22.8. The power to award costs is discretionary, so I must take into account all relevant considerations (see American National Can Company v W.R.Grace Co.-Conn (1994) AIPC 91-063, 30 IPR 292).
33. In the present case the opposition was not successful on any of the grounds relied on in their statement of grounds and particulars. It is therefore appropriate to award cost against the opponent.
34. I award costs in accordance with Schedule 8 against Shino Kaneko.
Rob Melvin
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Patent Attorney Services, Melbourne
Patent attorneys for the opponent : Davies Collison Cave, Melbourne.
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