Pacific Dunlop Ltd v Metal Manufacturers Limited

[1991] APO 53

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No 578742 by PACIFIC DUNLOP LTD and Opposition thereto under S.82 of the Patents Act 1952 by METAL MANUFACTURERS LIMITED

Background
Pacific Dunlop (formerly Dunlop Olympic Limited) lodged application No 578742 on 4 October 1985. The application was advertised accepted in the Official Journal on 3 November 1988 and on 2 February 1989 Metal Manufacturers Limited lodged a Notice of Opposition to the grant of the patent under s.59(1)(a)-(i) of the Patents Act 1952. Evidence in Support was lodged on 21 November 1989. In response to the Evidence in Support, the applicant lodged s.77 amendments to the accepted specification which were advertised accepted by the Patent Office on 18 December 1990. On 10 April 1991 the opponent lodged a Notice of Opposition under s.82 of the Patents Act 1952 on the grounds that the amendments did not comply with sub-sections (1) and (4) of s.78 of the Patents Act 1952. The opponent declined to lodge Evidence in Support of the s.82 opposition. Evidence in Answer to the s.59 opposition was lodged on 19 July 1991.
          The matter was heard in the Patent Office on Tuesday 17 September.  At the hearing, the applicant was represented by Mr Antony J.F. Ward, patent attorney of Griffith Hack & Co, and the opponent was represented by Mr Peter Heathcote, patent attorney of Shelston Waters.

Specification
          Application 578742 prior to the s.77 amendment described and claimed a fire resisting cable.  Claim 1 read as follows:

1.A fire resisting cable comprising at least one insulated conductor surrounded by a halogen-free flame retardant outer sheath, each insulated conductor comprising, in combination, a metallic conductor, a layer of flexible mineral material, and a layer of halogen-free polymeric insulating material, wherein said layer of flexible mineral material is placed directly on the metallic conductor beneath the polymeric insulating material.

The stated reason for the s.77 amendments was is "by way of disclaimer to further distinguish the invention from known prior art".  The amendments sought to restrict claim 1 to claim at least two layers of flexible mineral material, and added the statement "of the kind described herein" referring to the fire resisting cable.  The amendments sought are as follows:

(a)to replace pages 3 and 4 of the description, which achieves the following changes -

(i)"a cable that may be adapted to comply with any of the known tests" with "a cable that is adapted to comply with any of the known tests, but more particularly this invention relates to a fire resisting cable that passes clause 5.3 requirement of the 1979 Australian Standard 2293 Part I" at page 3 lines 2-6;

(ii)an insertion at page 3, line 25, where it is now stated "The object of the present invention is to provide an economic cable which is fully halogen-free and capable of passing the clause 5.3 requirements of the 1979 Australian Standard 2293 Part I";

(b)to amend the examples at pages 7-9 so that they all include the use of two layers of flexible mineral material, (only example 17 includes 2 layers in the specification before amendment),

(c)to insert at page 11 line 22 "The cables also pass the more rigorous Australian Standard 2293 Part I 1979 clause 5.3 requirement of capacity to withstand 1000° for two hours.  Clause 5.3 should be considered with Australian Standard 1530.4-1985 which details the test parameters",

(d)to replace claim 1 with a new claim 1 which, inter alia, incorporates claims 1 and 3 before amendment:

1.A fire resisting cable, of the kind described herein comprising at least one insulated conductor surrounded by a halogen-free flame retardant outer sheath, each insulated conductor comprising, in combination, a metallic conductor, at least two layers of flexible mineral material, and a layer of halogen-free polymeric insulating material wherein said at least two layers of flexible mineral material are placed directly on the metallic conductor beneath the polymeric insulating material.

Note: the underlining indicates the changes proposed to claim 1.
          Claims 2 to 23 essentially correspond to claims 2, 4 to 25 before amendment but incorporate changes largely consequential on the changes to claim 1.
Submissions
          On behalf of the applicant, Mr Ward submitted that the amendments to the accepted specification were made by the applicant in order to distinguish the invention from the prior art.  He submitted that the cables in the prior US patents (provided by the opponent in the Evidence in Support) were thought not to fulfill the rigorous Australian Standards.
          The stated intention of the applicant was to restrict the scope of the broadest claim by:

(a)specifically inserting the feature of "at least two layers of flexible mineral material";

(b)referring to the fact that it was a cable of a particular kind by inserting "of the kind described herein".

In this way, the applicant believed the claim would be restricted to a cable that would fulfill Australian Standard 2293 Part I.  In addition, the applicant amended the description to include examples which only described the use of two layers of flexible mineral material.
          A letter from the attorney acting on behalf of the applicant to the opponent's attorneys, dated 10 December 1990 states:

"The essence of this restriction is that the cable that is the subject of the claims of the application must be capable of passing the test that requires withstanding a temperature of 1000 degrees Centigrade for two hours.  The structure that provides these characteristics is the provision of at least two layers of flexible mineral material between the metal conductor and the layer of halogen-free polymeric material."

On behalf of the opponent, Mr Peter Heathcote opposed the amendments on two grounds available under s.78(1) and s.78(4). He submitted that:

(1)the amendments would result in the specification claiming matter not in substance disclosed in the specification as lodged;

(2)the amendments would result in the specification not complying with the requirements of s.40.

Mr Heathcote argued that "the proposed amendments would make the application, for the first time, into one based on a promise that a particular useful result can be achieved by selecting features that would be insubstantial if they achieved no surprising result".  He submitted that the choice of 1, 2 or more layers of flexible mineral material in themselves would not confer novelty on the claimed invention unless linked to the specific requirement of achieving the surprising result of meeting the Australian Standard 2293 Part I.
          Mr Heathcote made reference to I.G. Farbenindustrie A.G.'s Patent 47 RPC 289, Sami S. Svendson Incorporated v Independent Products 1968 119 CLR 156, May and Baker Ltd v Ciba Limited 65 RPC 255, British Thompson-Houston Company Ltd's Patent 36 RPC 251, Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd 6 IPR 545 and the same case before the Full Court in 11 IPR 20, in order to support his argument that the applicant was now seeking to establish a link between the provision of the two layers of flexible mineral material and meeting the requirements of Australian Standard 2293 Part I. He contested that there was no disclosure of the link in the original specification and that it was possible that a cable having one layer of flexible mineral material could meet the Australian Standard. As a result, Mr Heathcote maintained that the applicant was now attempting to claim a different invention in that selecting two or more layers changes the invention into something different from that described in the specification as lodged.
With reference to s.40 Mr Heathcote submitted that the present claims as proposed to be amended do not meet the requirements of s.78(4).
          With regard to the term "of the kind herein described" Mr Heathcote asserted that it is indefinite in the context of the specification as a whole and that there is no indication in the description as to which of the many forms of cables described is the one referred to by the claims.  He noted several references to cables in the description:

(1)at page 3, lines 2-6 where there is a reference to a cable that is "adapted to comply with all the known tests",

(2)at page 3 there is a reference to prior art cables,

(3)at page 3 there is a reference to a cable capable of passing Australian Standard 2293 Part 1,

(4)the preferred embodiments refer to numerous examples of different forms of cables structure,

(5)at page 11 there is a reference to cables "of the kind described above" which refers to the specific features of those cables,

Mr Heathcote also raised the following s.40 issues:

(1)Claim 1 states "wherein said at least two layers of flexible mineral material are placed directly".  It isn't clear whether both layers are to be placed directly on the metallic conductor or whether a first layer is directly on the metallic conductor covered by a second layer.

(2)Claim 3 refers to a "first layer" and a "second layer".  It is not clear whether these layers are the same layers defined in claim 1 or additional layers.

(3)Claim 4 refers to "both layers".  It is unclear whether these are the two layers of claim 1 or of claim 3, or both.  If the layers referred to in claim 4 are the layers in claim 3, then these claims contradict each other.  Claim 3 requires the second layer to be a glass tape or braid, whereas claim 4 requires the second layer to be a tape of mica on glass.

(4)Claims 5 to 8 refer to "the tape" and are appended to claim 3.  It is not clear whether this term refers to both the layers, either layer, or just the second layer.

(5)Claim 8 refers to the term "braid".  It is unclear whether this term refers to "braid" as defined in claim 3 or whether it is an additional "braid" not previously defined.  In contrast, claim 9 refers to "the braid".

(6)claim 17 is appended to claim 14 (or 16), however "the core" of claim 17 is first defined in claim 15.

(7)claim 18 refers to "the tape" and it is unclear whether this "tape" is the metallic tape of claim 17 or the earlier tapes referred to in claims 3-8.

Decision
          In the specification as lodged, several references are made to "two layers of flexible mineral material" and Example 17 describes the use of more than one layer of flexible mineral material.  Also, claim 3 of the specification is directed to the specific use of two layers.
          It is apparent, then, that the feature of two layers of flexible mineral material has been disclosed in the specification as lodged and can therefore be inserted into claim 1 for the purpose of restricting the scope of the claim.
          I need now to interpret the term "of the kind described" which is inserted into proposed claim 1.
          Firstly, in my view the term "of the kind described" has no clear meaning, the specification has diverse references to various types of cables.  Nowhere does the specification attempt to identify the features of cables which are within the ambit of "of the kind described".  I am thus not able to put a definitive meaning on this term, and as a result the amendment is not allowable.
          Secondly, the attorney for the applicant argued that the term is no more than a limitation on claim 1 - that is, claim 1 is restricted so that it only claims cables having the constructional features specified and also meets the Australian Standard 2291 Part I.  On the other hand the attorney for the opponent has argued that the inclusion of the term implies that the compliance with the Australian standard is achieved solely by the inclusion of 2 layers, and that this was not disclosed in the specification as lodged.
          I do not agree with the attorney for the opponent.  In the specification as lodged, there is no indication that the provision of two layers of flexible mineral material is what enables the cable to meet the Australian standard; indeed, the specification implies that the Australian standard can be met by the provision of only one layer (see, for example, page 11 lines 20 to 26).  The description has been amended in both the statement of the invention, and in the examples, to restrict the cable to one having at least two layers of insulation.  However, there is nothing in the amended specification that asserts that the nature of the invention has been changed (eg any inference that the provision of only one layer would be inadequate to comply with the Australian standard).  Thus I do not consider the specification to be claiming matter not in substance disclosed in the specification as lodged (Roussel-Uclaf v Herchel Smith AOJP (1974) p.1549).
          Considering the other s.40 issues raised by Mr Heathcote; firstly the point in claim 1 about the "two layers of flexible mineral material are placed directly ..." I do not accept as being valid (see page 6 of this decision).  In my mind it is quite clear that the two layers are placed one on the metallic conductor and the second layer on top of the first. Secondly, the alleged deficiency in claim 8 relating to the term "braid" is also present in claim 9 before amendment.  Therefore this alleged deficiency is not introduced as a result of the amendment.  Apart from these two issues in my view Mr Heathcote is correct in his submissions that the amendments to claims 3, 4, 5 to 8, 17 and 18  result in the specification not complying with section 40.
Conclusion
I find that the amendments are not allowable because they result in the specification not complying with s.78(4).

I therefore refuse to allow the amendments and I award costs against the applicant.

(R.A. MELVIN)
  Delegate of the Commissioner of Patents

Attorneys for the applicant: Griffith Hack & Co, Melbourne
Attorneys for the opponent : Shelston Waters, Sydney