Shino Kaneko v Nemoto & Co., Ltd - [2004] APO 17

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 under section 59 of the Patents Act 1990

Decision: Issued 12 July 2004.
Abstract

The opponent raised grounds of novelty, inventive step, manner of manufacture, and section 40/fair basis. The opponent did not pursue the ground of manner of manufacture at the hearing. During the period covering the service of evidence, the opposed application was changed (by virtue of an amendment) from a standard patent to a patent of addition to Australian patent application No. 661941.
Under Section 40 the opponent pursued four issues. The opponent was unsuccessful in showing that claim 4 when appended to claim 1 (either directly or via claim 2 or claim 3) lacked clarity.
In the matter of lack of novelty the opponent raised the parent application against the opposed additional application. The opponent was unsuccessful in establishing that the opposed claims lacked novelty in light of the disclosure in the parent application. A disclosure of "the matrix configuration M_1-xAl₂O_4-x, where x is in the range -0.33 ≤ x ≤ 0.60 (except x = 0)" was not established in the citation.
Eight items of alleged common general knowledge disclosed across eleven citations were raised under the ground of inventive step. Only one of these items (disclosure of a commonly available textbook) was shown to be part of the common general knowledge in Australia in the relevant art at the priority date. This single item did not render the opposed invention as obvious. Two other citations were raised which in combination with the alleged common general knowledge were stated to show that the opposed invention lacked an inventive step. The opponent was unable to show a lack of inventive step based on the individual citations in combination with the established common general knowledge.
An award of costs against the applicant Nemoto & Co., Ltd was made up to the date on which the amendments were allowed. Subsequent to the allowance of the amendments, costs were awarded against the opponent Shino Kaneko.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 690742 by NEMOTO & CO., LTD and an opposition under section 59 of the Patents Act 1990 by SHINO KANEKO.

BACKGROUND

Nemoto & Co., Ltd filed patent application No. 690742 on 1 November 1995. The application claims convention priority from JP 6-268463 filed in Japan on 1 November 1994. The application was examined and advertised accepted on 30 April 1998.
Shino Kaneko filed a notice of opposition on 29 July 1998. A statement of grounds and particulars was filed on 29 October 1998. The service of evidence in support, evidence in answer and evidence in reply was completed on 7 November 2003.
A hearing to deal with the substantive opposition was held in Melbourne on 15 April 2003. Michael Grant and Elizabeth Eadie, both patent attorneys of Patent Attorney Services, Melbourne, represented the applicant. Michael Caine, patent attorney and Matthew Lucas, technical assistant, both of Davies Collison Cave, Melbourne, represented the opponent.
EVIDENCE
Evidence in support consists of declarations made by:
· Michael James Caine, dated 24 May 1999 and 9 July 1999 and exhibits MJC-1 to 11 and exhibits MJC-12, 13 respectively. He states that he is the attorney having care and conduct of the proceedings on behalf of the opponent. He provides a list of documents provided as exhibits. He further states that each document is a true copy of the original and with the exception of the Australian specifications each of the above documents was published prior to 1 November 1994. His second declaration provides verified English translations of four documents listed in the first declaration.
· Dr Brendan James Kennedy, dated 24 December 1999 and exhibits BJK-1 to 8. He states that he is currently a senior lecturer in inorganic chemistry at the School of Chemistry in the University of Sydney. He states that his research interests predominantly involve the study of the nature of condensed matter (solid state), the mechanism of solid state transformations and the nature of structure-property relationships in metal oxides. He further states that he is also involved in X-ray absorption and fluorescence studies concerning Cu and Zn complexes of non-steroidal anti-inflammatory drugs (NSAIDs), and in the use of phosphorescent phosphors for imaging plates for X-ray detectors in which the phosphors used are generally doped with europium and optionally co-activators, such as gadolinium.
Evidence in answer consists of a declaration made by:
· Takashi Matsuzawa, dated 27 September 2000 and exhibits N1 to 10. He states that he is currently the Managing Director and Board Member of Nemoto and Co Ltd, as well as the Director of the Research Center of Nemoto. He further states that he has worked in the research and development of new types of thermoluminescent phosphors and phosphorescent phosphors with long afterglow decay and in the research and development of gas sensing devices. He also states that he is the inventor and co-inventor of at least 22 inventions, which are subject of patents and patent applications in Japan and other countries.
Evidence in reply consists of a declaration made by:
· Dr Brendan James Kennedy, dated 6 November 2003 and exhibits BJK-9 to 14
THE SPECIFICATION
The specification under consideration is the specification as amended after acceptance. Proposed amendments were filed on 26 September 2000 and 26 February 2001 which were allowed by virtue of an Office decision issued on 18 June 2003. The allowance was advertised on 14 August 2003. By virtue of the amendment the application was changed from a standard patent to a patent of addition. The parent patent was identified as Australian patent application No. 661941.
The specification states :- "The present invention relates…to a novel phosphorescent phosphor which shows excellent photo-resistance required for the…phosphor to be utilised both indoors and outdoors mainly as a night-time display, and which shows an extremely long afterglow characteristics." The specification then describes the prior art and its deficiencies. This is followed by a detailed description of the parent invention. The aims/objects of the invention are set out as:
"…to provide a phosphorescent phosphor having excellent afterglow characteristics lasting for a considerable period of time."
"… to provide a phosphorescent phosphor of a type having a composition in which M, Al and O are contained at an optimum ratio among phosphorescent phosphors exhibiting afterglow characteristics lasting for a considerably longer time and significantly higher luminance as compared with the currently available phosphor, and is chemically stable because the phosphorescent is made of an oxide substance and having excellent photo-resistance."
This is followed by the consistory statement of the invention, which is similar to claim 1. A detailed description of the embodiments is then provided. The specification ends with 5 claims. The claims are as follows:
1.        A phosphorescent phosphor comprising a matrix expressed by M_1-xAl₂O_4-x, wherein X is in a range -0.33 ≤ x ≤ 0.60 (except X = 0) in which M is at least one metal element selected from a group consisting of calcium, strontium and barium, wherein europium is doped to said matrix as an activator and at least one element selected from a group consisting of cerium, praseodymium, neodymium, samarium, gadolinium, dysprosium, holmium, erbium, thulium, ytterbium, and lutetium is doped to said matrix as a co-activator.
2.        A phosphorescent phosphor according to claim 1, wherein 0.002% to 20% of europium is doped to said matrix as an activator in teams (sic) of mol% relative to said metal element expressed by M.
3.        A phosphorescent phosphor according to claim 1or 2, wherein 0.002% to 20% of at least one element selected from a group consisting of cerium, praseodymium, neodymium, samarium, gadolinium, dysprosium, holmium, erbium, thulium, ytterbium, and lutetium is doped to said matrix as a co-activator in teams (sic) of mol% relative to said metal element expressed by M.
4.        A phosphorescent phosphor according to claim 1, 2 or 3 wherein said metal element expressed by M is partially substituted by magnesium.
5.         A phosphorescent phosphor as hereinbefore described with reference to any one of Tables 26 to 28.
STATEMENT OF GROUNDS AND PARTICULARS
The opponent raised grounds of novelty, inventive step, manner of manufacture, and section 40/fair basis. The opponent did not pursue the ground of manner of manufacture at the hearing. At the hearing the opponent filed a request to amend the statement of grounds and particulars to incorporate reference to a citation raised in the evidence in support but not previously included in the statement of grounds and particulars.
I stated at the hearing that the issue of amendment of the statement of grounds and particulars would be dealt with after the hearing. I also indicated that, as the particular citation was already in evidence, then it would be addressed for the grounds where it was relevant.
DECISION
Both parties made written and oral submissions at the hearing and I shall refer to those submissions wherever relevant in my decision.
Preliminary Matters
Priority Dates
Prior to proceeding with the main grounds of the opposition the opponent raised a matter of priority. They submitted:
·    the invention claimed in the current claims lacked support in the basic application.
·    As a result of amendments during prosecution of the case there is no support in the basic application or the application as filed for the presently claimed subset of co-activators which are now said by Nemoto to be related through their postulated "trapping" mechanism.
However, they did not cite any documents which challenged the priority at the relevant dates between the filing of the basic document and the filing of the relevant amendments.
A copy of an English translation of the basic Japanese document, JP-6-268463, filed in Japan on 1 November 1994 has been provided as exhibit BJK-4 to Dr. Kennedy's first declaration. As the issue is one of establishing support for the presently claimed invention I shall apply the fair basis test of real and reasonable disclosure:
The general principle underlying fair basis is that in order for a claim to be fairly based, there must have been a "real and reasonably clear disclosure of its subject matter in the specification" - see CCOM Pty Ltd v Jiejing Pty Ltd, 28 IPR 481 and (1994) AIPC 91-079, and Sartas No. 1 Pty Ltd v Koukourou & Partners Pty Ltd and Nicola Leonardis, 30 IPR 479 and (1995) AIPC 91-121
Claim 1 of the opposed application reads as:
A phosphorescent phosphor comprising a matrix expressed by M_1-xAl₂O_4-x, wherein X is in a range -0.33 ≤ x ≤ 0.60 (except X=0) in which M is at least one metal element selected from a group consisting of calcium, strontium and barium, wherein europium is doped to said matrix as an activator and at least one element selected from a group consisting of cerium, praseodymium, neodymium, samarium, gadolinium, dysprosium, holmium, erbium, thulium, ytterbium, and lutetium is doped to said matrix as a co-activator.
The opponent noted that the subset of co-activators currently claimed were not previously disclosed in the basic document and the application as filed. Looking at the basic document (BJK-4), Claims 1 and 2 read as follows:
1.        A phosphorescent phosphor comprising a compound serving as a matrix and having a composition expressed by M_1-xAl₂O_4-x (except x = 0) in which M is at least one metal element selected from a group consisting of calcium, strontium and barium, wherein europium is doped to said matrix as an activator and at least one element selected from a group consisting of lanthanum, cerium, praseodymium, neodymium, samarium, gadolinium, terbium, dysprosium, holmium, erbium, thulium, ytterbium, and lutetium is doped to said matrix as a co-activator.
2.        A phosphorescent phosphor according to claim 1, wherein X is in a range -0.33 ≤ x ≤ 0.60 (except X = 0).
The as filed version of the application (BJK-3) discloses the same claim 2 as in the basic document. Claim 1 is similar except for the introductory portion which reads as:
"1.       A phosphorescent phosphor comprising a matrix expressed by M_1-xAl₂O_4-x (except x = 0)….."
Claim 1 of the opposed application differs from the disclosure of claims 1 and 2 of the basic document (and as filed application) in that it does not refer to lanthanum and terbium in the list of co-activators. Thus the currently claimed subset of co-activators has excluded lanthanum and terbium. New claim 1 does not expand its scope by claiming new co-activators but has instead narrowed its scope to exclude lanthanum and terbium from its list of co-activators. In particular the co-activator was claimed as "…at least one element selected from a group consisting of lanthanum, cerium…ytterbium and lutetium…" The opponent has not shown that the removal of some members of the group has resulted in a different invention being claimed from the one described. Further they have not shown that the co-activators currently claimed were not disclosed in the basic document or that current claim 1 has claimed any matter going beyond the real and reasonable disclosure of the basic application and/or as-filed application. Based on the disclosures of the basic document and the as filed application I am satisfied that opposed claim 1 is entitled to its priority date from the basic document and as-filed application.
Statement of Grounds and Particulars
The opponent filed an application under Regulation 5.9 to amend the statement of grounds and particulars on 14 April 2004. The amendment sought to include the parent application as a citation against the opposed application. The opposed application was changed to an application for a patent of addition during the pre-hearing opposition period. The applicant was given up to 28 April 2004 to object to the regulation 5.9 application. As no objection was filed the amendment of the statement of grounds and particulars was allowed on 8 June 2004.
Claims Construction, Section 40/Fair Basis
The opponent raised four issues under section 40/fair basis and I shall consider them on an individual basis in the order in which they were raised.
Issue 1.           The claims lack clarity in respect of the use of the terms "comprising" and "co-activator".
Issue 1A:         Meaning of the term "comprising" in claim 1
The teachings of the Courts in this matter have varied. In WR Grace & Co.-Conn v Asahi Kasei K.K.K. (1991) 22 IPR 491 it was held that in the circumstances of that case "comprise" was being used exhaustively. The decision in NV Philips Gloeilampenfabriken v Mirabella International, (1993) AIPC 91-025, appears to take a similar line. In General Clutch Corp. v Sbriggs Pty Ltd (1997) 38 IPR 359, after a review of the authorities and several dictionaries, the judge concluded that the normal linguistic meaning is that comprising means made up of, composed of, or constituted by the integers listed.
Accordingly, the word "comprise" must be given an interpretation appropriate to the context of its use. In some situations, the word will clearly exclude the presence of other elements. In other situations, the presence of other elements will clearly not be excluded. Looking at the specification at hand the consistory statement discloses:
"…there is provided a phosphorescent phosphor comprising a matrix expressed by M_1-xAl₂O_4-x, wherein X is in a range -0.33 ≤ x ≤ 0.60 (except X=0) in which M is at least one metal element selected from a group consisting of calcium, strontium and barium, wherein europium is doped to said matrix as an activator and at least one element selected from a group consisting of cerium, praseodymium, neodymium, samarium, gadolinium, dysprosium, holmium, erbium, thulium, ytterbium, and lutetium is doped to said matrix as a co-activator."
thus indicating what it considers to be the constituents of the matrix. Further on the description states:- "In one possible embodiment, said metal element expressed by M is partially substituted by magnesium." Apart from the reference to magnesium, the description does not disclose any additional material other than those listed in the consistory clause. The substitution of magnesium is referred to in the description as "…where magnesium was doped to strontium, calcium and barium as the metal element (M),…", but no examples of the same are provided in the tables/examples.
I note that 'comprising' in claim 1 relates to the phosphor (of which the matrix is a part). The matrix is "expressed" by a particular formula. The description and claims allow for the matrix to additionally include magnesium (Mg). The disclosure in the description does disclose a component of the matrix other than the specified group of metals (M). In particular, it discloses magnesium as a partial substituent for any one or more of the three metals specified. Looking at claim 4 which introduces the substituent for the metal M there is a link in claim 1 (to which claim 4 is appended) of a metal substituent. It is clear that the term "comprising" has been used in a context that allows for the partial substitution of magnesium for the metal elements, such as claimed in claim 4.
Issue 1B:         Meaning of the term "co-activator" in claim 1.
The opponent contended that "co-activator" did not include "sensitiser" in its scope, whereas the applicant contended that "sensitiser" was a kind of "co-activator". The specification does not make any reference to the term "sensitiser" but clearly indicates the elements, which it considers to be co-activators. The dispute appears to relate to the precise mechanism by which the "co-activator" or "sensitiser" operates. Looking at the claims I note that the term "co-activator" is not used in isolation. The claims refer to "…at least one element selected from a group consisting of cerium,……and lutetium is doped to said matrix as a co-activator…". Thus there is no doubt or ambiguity raised as to the elements which are considered to be co-activators. The mechanism of their behaviour is not shown to be relevant to the ambit of the claims. I do not consider that the specification lacks clarity by use of the term "co-activator".
Issue 2: The claims are not fairly based because, in particular, the examples do not support the current claim breadth.
The opponent submitted:
·    The exemplification provided…for the claimed phosphors is relatively limited and extends to those phosphors listed in Tables 26-28. The phosphors all comprise Eu as an activator and Dy is the only element listed in these tables from the claimed set of co-activators.
·    Although the applicants have deleted Tb from the originally claimed list of co-activators, the D3 document (US 3,502,592) illustrates the unpredictability associated with replacing components (in particular, co-activator elements) in such phosphors. This is most prominently illustrated in Tables 26 to 28 themselves, where it is shown that a small variation in the Sr:Al ratio can cause dramatic effects on the observed luminance.
·    The importance of the +2 oxidation state of Eu is emphasised in the specification as well as the documents submitted in evidence, yet the claims are not restricted to Eu²⁺ as the co-activator.
The applicant responded as follows:
·    There is no statutory requirement or developed principle of law requiring worked examples or specific description for everything within the full scope of the claims if there is a reasonable expectation that the boundaries defined by the claims properly do not extend beyond the scope of the invention. In the opposed specification there are examples of the full range of values of "X". In the specification there are examples of phosphor with the three metals Sr, Ca, and Ba. There is also reference to partial substitution of the metal by magnesium (page 1, lines 12-15, page 62, lines 9-12). We agree that there are no "Examples" of co-activators other than Dy with X not equal to 0, but there are many such Examples of other co-activators given in the description of the parent invention with the 1:2:4 ratio. So, given that the proven effectiveness with Dy, there is obviously a reasonable expectation that the other co-activators useful with the 1:2:4 ratio will be effective in the invention of the opposed application.
·    No limitation is required for the Eu²⁺ state. The state is intrinsic to what is defined in the claim. Eu adopts a position in the crystal lattice equivalent to Ca, Sr, Ba. Thus Eu is to be in the Eu²⁺ state.
Two issues arise from the above. The first relates to the claims being speculative in relation to the co-activators claimed and described but not exemplified. The second relates to a lack of fair basis arising from describing the use of Eu²⁺ but not claiming the same in the claims. I shall address the matter relating to the speculative nature of the claims. The teachings of the courts in this matter are:
1.        A claim will extend beyond the consideration by being speculative if it is not a reasonable extrapolation of what, on the face of the specification, the applicant has actually done. Esau's Application (1932) 49 RPC 85 at 86 is an example of speculative extrapolation. The claim was broadly drawn, and claimed in a field that was largely unexplored. It was held that this was an attempt to claim anything that worked in a large area, whereas the disclosure was directed to two specific embodiments.
2.        In Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 193, the Court said:- " If it is possible for the patentee to make a sound prediction and to frame a claim which does not go beyond the limits within which the prediction remains sound, then he is entitled to do so. Of course, in so doing he takes the risk that a defendant may be able to show that his prediction is unsound or that some bodies falling within the words he has used have no utility or are old or obvious so that some promise he has made in his specification is false in a material respect; but if, when attacked, he survives this risk successfully, then his claim does not go beyond the consideration given by his disclosure, his claim is fairly based on such disclosure in those respects, and is valid."
The first issue is the claiming of co-activators other than dysprosium, which is exemplified in the opposed application. The applicant has indicated that the other co-activators though not exemplified have been described and claimed. They state that the other co-activators have been described and exemplified in the parent application for a similar matrix. The opponent was successful in showing that one of the co-activators previously claimed did not show the behaviour expected as per the opposed application and this co-activator was withdrawn from the claims and description. The opponent has not provided any material to challenge the predicted behaviour of the remaining co-activators. This application is an additional application and is linked to its parent application in that it must be for an "improvement" or "modification" of the invention claimed in the parent. Thus I consider that use of the parent to base a prediction of behaviour of the disputed claimed co-activators is not unreasonable. The opponent has raised doubts, but not provided evidence, which shows that the claims are speculative in respect of the claimed co-activators. I consider that the opponent has not shown the claims to be speculative in respect of co-activators other than dysprosium.
I shall now consider the second issue relating to claiming of Europium as a dopant without specifying the relevant oxidation state. The Courts in Australia have addressed this issue in Universal Oil Products v Monsanto, (1973) 46 ALJR 658, in which Gibbs J. stated:
"The specification is sufficient if the patentee makes the nature of his invention, and how to perform it, clear and intelligible to persons having a reasonably competent knowledge of what was known before on the subject to which the patent relates, and having reasonably competent skill in the practical mode of doing what was then known."
The opponent's declarant, Dr. Kennedy does not show that he is unable to determine the relevant oxidation state being referred to. In his first declaration he clearly refers to a +2 state of oxidation of Europium. I do not consider that the claims lack clarity or fair basis in not specifying the oxidation state of Europium.

Issue 3: The claims do not define the invention because, the claims fail to define that the relationship between the activator and the co-activator is such that the mechanism of co-activation is via the proposed trapping mechanism rather than through other methods of co-activation, such as sensitisation.
The issue relates to a specific mechanism of co-activation via a trapping mechanism. The claims of the opposed application do not define any mechanism, but are directed to the components of a phosphorescent phosphor matrix.
The applicant made the following submissions:
"The applicant is referring to an external document, namely the Matsuzawa declaration (evidence in answer), and to a document published after the filing of the application to place an interpretation on what the essential features of the invention are. Reference to external sources in this matter is not permissible. An external document is irrelevant to decide if the specification is insufficient. The teaching of the mechanism in the specification is unnecessary to understand the invention sufficiently to put it into practice. (i.e. for the specification to be sufficient) and is unnecessary for deciding whether the claims define the invention described, are clear, succinct and have fair basis in the description."
The requirement that a complete specification shall end with a claim or claims "defining the invention" is specified in sec 40(2)(b) for a standard application. This requirement is not the same as the requirement of fair basis, which is specified in sec 40(3). Rather, it is a requirement that claims will define the monopoly for which application has been made. Thus in AMP v Utilux, (1971) 45 ALJR 123 at page 128, McTiernan J. states:
"The description of the invention is not the definition of it. A claim is a portion of the specification which fulfils a separate and distinct function. It, and it alone, defines the monopoly; and the patentee is under a statutory obligation to state in the claims clearly and distinctly what is the invention which he desires to protect."
Further, the full bench of the High Court indicated on appeal (see AMP v Utilux, (1974) 48 ALJR 17) that:
"the definition of any invention must be found in the claims read with the specification as a whole."
Thus the definition of the invention must be found from the specification and claims. No reliance can be placed on any external document. The mechanism referred to by the opponent has not been identified in the opposed specification as essential to the working of the invention. The applicant's declarant, Matsuzawa in his declaration at paragraph 10.4.6, page 8, states:
"…the essential composition of the present invention….is:
(1)       The matrix is M_1-xAl₂O_4-x (especially SrAl₂O₄)
(2)       Europium (Eu²⁺) is the activator.
(3)       Rare earth element(s) are provided as co-activator (especially Dy³⁺).
Based on the description and claims I do not find any matter therein, which discloses the trapping mechanism referred to the by the opponent as an essential feature of the invention. The opponent has not established that the claims do not define the invention because they fail to define a particular relationship between the activator and the co-activator.
Issue 4: The specification does not fully describe invention/no best method because:
·    the specification provides insufficient description to enable a person skilled in the art to select co-activators which act through the proposed "trapping" mechanism required to achieve the promise of the invention.
·    The specification provides no description of how to work the invention if Eu is in an oxidation state other than +2.
·    For the reasons stated above the specification provides insufficient description to enable a person skilled in the art to work the invention throughout the full scope of the claims.
I have previously dealt with dot points one and two above and determined that the opponent had not established any deficiencies in the claims as a result of the claims not defining the trapping mechanism and the oxidation state of Europium.
Consequently dot point three is also not established. I shall also look at the opponent's evidence in this regard. The opponent's declarant, Dr Kennedy refers to an excessively large number of inconsistencies in the specification. He has also referred to errors and omissions in the specification. However Dr. Kennedy has not shown that the inconsistencies/errors/omissions were such that they prevented him from working the invention.
Regarding insufficiency, in AMP v Utilux, (1971) 45 ALJR 123, at page 128, McTiernan J. pointed out that:
"Specifications very frequently contain mistakes; they also have omissions. But if a man skilled in the art can easily rectify the mistakes and can readily supply the omissions, the patent will not be held to be invalid. The test to be applied for the purpose of ascertaining whether a man skilled in the art can readily correct the mistakes or readily supply the omissions, has been stated to be this: Can he rectify the mistakes and supply the omissions without the exercise of any inventive faculty? If he can, then the description of the specification is sufficient. If he cannot, the patent will be void for insufficiency."
Dr. Kennedy has described the procedures he followed in working the invention at paragraph 28, page 17 of his first declaration. He indicates that he did not have to carry out any detailed modification (he refers to a trivial modification) of the experiments to practise the invention. Hence, I consider that the opponent has not established that the claims are lacking in sufficiency.
I have found that claim 1 does not lack clarity when using the term "comprising". I have also determined that "comprising" has been used non-exhaustively in claim 1. Consequently I found that claim 4 when appended directly (and indirectly via claim 2 and claim 3) to claim 1 does not lack clarity, as the term "comprising" in claim 1 does encompass a metal substituent in the matrix.
Novelty
The opponent submitted that the invention claimed in the opposed application lacked novelty in light of the parent patent AU 661941 (56309/94). As the parent application was published on 3 November 1994 and the earliest possible priority date of the opposed application was 1 November 1994, the parent application could still be used for 'whole of contents' novelty. They contended that:
· the subject matter of a Patent of Addition need not be inventive over the parent invention.
· however the Patents Act 1990 did not shield a Patent of Addition from its parent in respect of novelty.
The basis of the 'whole of contents' objection exists in the definition of the "prior art base", which provides that, for the purpose of assessing novelty, the prior art base includes:
"... information contained in a published specification filed in respect of a complete application where:
(A) if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
(B) the specification was published after the priority date of the claim under consideration; and
(C) the information was contained in the specification on its filing date and when it was published."
So long as a document satisfies these criteria, the citation can be considered for the purpose of lack of novelty. The applicant agreed that the opposed patent could face a novelty challenge in light of the parent patent, but considered that it did not lack novelty in light of the parent.
The reverse infringement test from Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1976) 137 CLR 228 at 235 sets out the basic test for anticipation or want of novelty:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
It follows from the reverse infringement test that if a citation discloses all the features of the claim, the claim will lack novelty. If the citation does not disclose all the features of the claim, the claim will still lack novelty provided the citation discloses all the essential features of the claim; but if the essential features are not disclosed in the citation, the claim is novel (Nicaro Holdings v Martin Engineering 16 IPR 545 and Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183).
Both parties did not show that any of the features of claim 1 were inessential to the working of the invention. I shall, therefore, begin by assuming that all features of the independent claim are essential (Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183):
1. A phosphorescent phosphor comprising:
2. a matrix expressed by M_1-xAl₂O_4-x, wherein X is in a range -0.33 ≤ x ≤ 0.60 (except X=0) in which,
3. M is at least one metal element selected from a group consisting of calcium, strontium and barium,
4. wherein europium is doped to said matrix as an activator and
5. at least one element selected from a group consisting of cerium, praseodymium, neodymium, samarium, gadolinium, dysprosium, holmium, erbium, thulium, ytterbium, and lutetium is doped to said matrix as a co-activator.
AU B 661941 (56309/94) (Exhibit MJC-4)
The opponent refers to a disclosure of the opposed invention in the parent application, specifically in Tables 1, 3 and 5. In particular the opponent submits that a phosphor with the formula M_1-xAl₂O_4-x, where x is in the range 0 ≤ x ≤ 0.21, with europium as the activator and a co-activator selected from dysprosium or neodymium is disclosed. The opponent further contends that the sample 2-(7) disclosed in the parent patent is substantially the same material described on page 55 of the opposed specification as sample 5 where x = 0.2
The applicant rejected this argument submitting that there was no such disclosure. They contended that the total moles of metal M should include the activator and co-activator and referred to the opponent's declarant as applying the same understanding. Based on this submission, the applicant found that the parent patent disclosed a formula of MAl₂O₄.
I consider Table 1 is not relevant as no co-activator (feature 5) is disclosed. I have considered the disclosure of Tables 3 and 5 of the parent application (exhibit MJC-4). These tables represent embodiments of the invention illustrated in samples 2-(2) to 2-(7) through to 3-(1) to 3-(7). For Table 3, the description discloses that samples 2-(2) to 2-(7) are phosphorescent phosphors (represented as SrAl₂O₄ : Eu, Dy) manufactured from strontium carbonate, alumina, europium oxide (activator) and dysprosium oxide (co-activator). For Table 5, the description discloses that samples 3-(1) to 3-(7) are phosphorescent phosphors (represented as SrAl₂O₄ : Eu, Nd) manufactured from strontium carbonate, alumina, europium oxide (activator) and neodymium oxide (co-activator). Thus features 1, 3, 4 and 5 of the opposed invention are disclosed in the citation.
The issue in dispute is the feature, “a matrix expressed by M_1-xAl₂O_4-x, wherein X is in a range -0.33 ≤ x ≤ 0.60 (except X=0)”. The opponent is of the view that the ratios of the metal M aluminium and oxygen is to be read such that the activator and co-activator are not included in the metal M for calculation of the ratio. Dr. Kennedy in his first declaration at paragraph 14(i) refers to the substitution of metal M with activator and co-activator metals having a like valency to the metal M. The description of the citation refers to:
“…a phosphorescent phosphor comprising a matrix expressed by MAl₂O₄, in which M is at least one metal element selected from a group consisting of calcium, strontium and barium wherein of (sic) europium is doped to said matrix expressed by MAl₂O₄as an activator, and wherein 0.001% to 10% of at least one element selected from the group consisting of lanthanum, cerium, praseodymium, neodymium, samarium, gadolinium, terbium, dysprosium, holmium, erbium, thulium, ytterbium, lutetium, tin and bismuth is doped to said matrix expressed by MAl2O4 as a co-activator.”
Thus the ratio M:Al:O has the metal M incorporating the activator and co-activator. The applicant in its submissions discussed sample 2-(7) of table 3, showing that when the moles of activator and co-activator were incorporated into the metal M the ration of M:Al:O satisfied the 1:2:4 ratio. The opponent did not provide evidence to show that this finding was in error. Similarly the sample of Table 5 complied with the 1:2:4 ratio. Thus I do not find a disclosure of the matrix configuration M_1-xAl₂O_4-x, where x is in the range -0.33 ≤ x ≤ 0.60 (except x = 0) in the citation. A comparison with Sample 5 of Table 27 in the opposed application shows Ca_0.80Al₂O_3.80: Eu, Dy. The activator (Eu) and co-activator (Dy) are present as 0.01 mol each with respect to the quantity of calcium. This gives a formula of M_0.82Al₂O_3.8. Thus this does not disclose the ratio MAl₂O₄.
I find that AU B 661941 (56309/94) does not show claims 1 to 5 of the opposed application as lacking in novelty.
Inventive Step/Obviousness
Subsections 7(2) and 7(3) of the Patents Act 1990 indicate that a claimed invention will lack an inventive step if it is obvious to a person skilled in the relevant art in the light of:
(a) common general knowledge in the art; or
(b) common general knowledge considered together with information publicly available in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
Aickin J set out the following test for obviousness in Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at page 286:
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
Application of this test in light of Subsections 7(2) and 7(3) of the Patents Act 1990, would require:
·    a determination of the problem sought to be solved by the opposed patent specification
·    a determination of the non-inventive worker in the field (or the person of ordinary skill in the relevant art) in Australia
·    a determination of the common general knowledge in Australia at the priority date (5 January 1994)
The problems identified in the opposed specification relate to phosphorescent phosphors of the prior art which:
·    are chemically unstable
·    show degraded light resistance
·    display limited afterglow (30 minutes to 2 hours)
·    need radioactive substances to prolong afterglow
The problem lies in the area of phosphorescent phosphors. The hypothetical non-inventive skilled worker in the field would be an inorganic chemist with specialist expertise in phosphors and their manufacture.
The common general knowledge (hereinafter also referred to as cgk) relevant to the question of obviousness was described by Aickin J. in Minnesota Mining& Manufacturing Co v Beiersdorf (Australia) Limited, (1980) 144 CLR 253 at 292 as:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
The first step to applying the tests set out above for determining inventive step would involve the determination of those declarants who were persons skilled in the relevant art as set out above.
I consider that Dr. Kennedy is the person of ordinary skill in the art in Australia, but as he has more of an academic background, I shall expect that any assertions he makes regarding cgk in Australia be supported up by published evidence such as textbooks and other publications which could be considered to be providing/establishing the common general in the art in Australia.
Regarding the applicant's declarant, Mr. Matsuzawa has not worked in the art in Australia. However he is the inventor of the opposed invention and he can provide background information on the general state of the art and detailed information on the various technical aspects of the invention.
The opponent submitted in the statements of grounds and particulars that the common general knowledge (henceforth cgk) in Australia at/before the priority date included eight items of information. I shall address these items on an individual basis.
The applicant challenged the common general knowledge asserted by the opponent. They contended that some of the statements arose out of:
·    disclosures in a single document.
·    disclosures across a small number of documents with large time difference in the publication dates.
In one instance the relevant document had been published after the priority date. In some instances they said the asserted cgk was the finding of the declarant Dr. Kennedy but had no backing evidence to support the finding of cgk. The applicant stated that the opponent had made impermissible use of hindsight and had not established how the asserted cgk came to form part of the cgk in Australia.
I shall now evaluate the alleged cgk raised by the opponent which is based on the assertions of Dr. Kennedy. I have listed the supporting documents referred to by exhibit number in parentheses.
1. Knowledge that the luminescence properties of a phosphor could be precisely tailored by varying the phosphor composition and/or manufacturing conditions. (BJK-5)
2. It was well known to dope host materials with europium and that such a dopant would serve as an activator or luminescent centre in the resultant phosphor. (BJK-5)
3. Eu²⁺ activated phosphors expressed by MAl₂O₄ (or MO.Al₂O₃) where M = Ba, Sr, Ca and Mg were well known in the field. (MJC-5, 6, 9, BJK-10)
4. The commercially available phosphor SrAl₂O₄:Eu was well known to those working in the field. (MJC-5, BJK-12)
5. The addition of a co-dopant to co-activate or sensitise an activator or luminescent centre was commonly employed in the field. (BJK-5, 6, 7)
6. The use of lanthanides as co-activators of phosphors in which the activator (or luminescent centre) is Eu²⁺ was well known in the field. (MJC-9,10)
7. The introduction of vacancies into a host lattice by using a less than stoichiometric M:Al ratio (where M is Sr, Ca, or Ba or mixtures of Sr and Mg or Ba and Mg) was a well-understood practice. (MJC-7, 8)
8. It was also known that different metals have different lifetimes for particular transitions and accordingly doping a host with another f or d-block element will alter the electronic transfer process which may lead to the enhancement of luminescence lifetime of process. (BJK-6, 7)
The documents raised by the opponent are:
1. “West Solid State Chemistry and its Applications" published in 1984 by Wiley at chapter 17, pages 583 to 590 (exhibit BJK-5).
2. CN 1053807A (exhibit MJC-5).
3. JP A 59-102979 (exhibit MJC-9).
4. "Study on Synthesis and Luminescence Property of Europium-Activated Strontium Aluminate" Chinese Journal of Luminescence, Vol. 12, No.2, pages 144-150, published in 1991 (exhibit MJC-6).
5. "Optical study of SrAl_1.7B_0.3O₄:Eu, R (R = Nd, Dy) pigments with long lasting phosphorescence for industrial uses", published 2003 (exhibit BJK-10).
6. "Optical and Electrical Properties of SrAl₂O₄:Eu²⁺", V. Abruscato, Journal of the Electrochemical Society, published June 1971 (exhibit BJK-12).
7. “Effect of Pr-Codoping on the X-ray Induced Afterglow of (Y, Gd)₂O₃:Eu”, Journal of Physics and Chemistry of Solids, Vol. 56 No. 7, pp. 907-913, published sometime in 1995 (exhibit BJK-6).
8. "Growth Parameter Optimization and Tb³⁺ Sensitization of Ce³⁺ Activated Y₃Al₅O₁₂ Phosphor", Journal of the Electrochemical Society Vol. 34, No. 10, pp. 2624-2628, published October 1987 (exhibit BJK-7).
9. JP A 4-248895 (exhibit MJC-10).
10. US 3,502,592 (exhibit MJC-7).
11. GB 1,452,083 (exhibit MJC-8).

The citations raised by the opponent consist of patent applications, research publications, and a textbook. I shall apply the tests set out by the courts to determine if these disclosures form part of the common general knowledge in the art. In ICI Chemicals & Polymers Ltd v Lubrizol Corp, 45 IPR 577, Emmett J stated:
"The common general knowledge is the technical background to the hypothetical skilled worker in the relevant art. It is not limited to material which might be memorised and retained at the front of the skilled workers mind but also includes material in the field in which he is working which he knows exists and to which he would refer as a matter of course. It might, for example, include:
standard texts and handbooks;
standard English dictionaries;
technical dictionaries relevant to the field;
magazines and other publications specific to the field"
Before I apply this teaching to the citations raised I shall consider only those citations where a publication date prior to the earliest priority date has been established. Thus document items 5 and 7 shall not be considered for the purposes of cgk. Based on the above teaching, the disclosure of document item 1 can possibly form part of the cgk in Australia as the exhibit shows it to be a textbook publication. The applicant did not challenge the teachings of this disclosure and neither did they assert that it did not form part of the cgk in Australia. I shall consider the disclosure of document 1 to form part of the cgk in Australia.
I shall now consider those publications which were specific to the field, in particular, document items 4, 6, and 8. Of these, document 4 was published in the Chinese Journal of Luminescence. Dr Kennedy has listed the journals he reads regularly, but the list does not include the Chinese Journal of Luminescence. He indicates that the teaching of this disclosure formed part of the cgk in Australia. However, no evidence has been provided to show that the skilled addressee in Australia had studied and made themselves familiar with the teachings of the document in question and that they had accepted these teachings as part of their common general knowledge. I consider that this document did not form part of the cgk in Australia at the relevant date and hence the teachings referred to in item 4 cannot be considered to be part of the cgk in Australia. The other two documents were published in the Journal of the Electrochemical Society in 1971 and 1987. Even though these might have been read by Dr. Kennedy, there is no supporting evidence to show that the skilled addressee in Australia had studied and made themselves familiar with the teachings of the document in question and that they had accepted these teachings as part of their common general knowledge. I do not find that the teachings of documents 6 and 8 constituted part of the cgk in Australia.
Finally I shall consider the patent publications listed as items 2, 3, 9-11. The relevance of patent documents to establishing cgk has been addressed by the courts as follows:
1. In general
"... it is clear that individual patent specifications and their contents do not normally form part of the relevant common general knowledge .."
General Tire & Rubber Company v Firestone Tyre and Rubber Company Ltd (1972) RPC 457 at page 482.
2. However, as was stated in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at page 294:
"There may be some fields of endeavour in which those who work therein study and make themselves familiar with all patent specifications as they become available for inspection in one or in many countries so that what was contained therein becomes common general knowledge in that particular trade or field of manufacture in the country in question." Examples are provided by Vidal Dyes Syndicate Ltd v Levinstein Ltd. (1912) 29 RPC 245 at pages 279-280 and British Celanese Ltd v Courtaulds Ltd. (1933) 50 RPC 259 at page 280.
Dr. Kennedy’s declaration does not show that the skilled addressees in Australia studied and made themselves familiar with the patent specifications identified above such that their contents became part of the cgk. I do not consider that the teachings of patent documents listed in items 2, 3, 9-11 have been shown to be part of the cgk in Australia.
Thus only the disclosures of document item 1, “West Solid State Chemistry and its Applications" published in 1984 by Wiley at chapter 17, pages 583 to 590 (exhibit BJK-5), can be considered to be part of the cgk in Australia. The relevant portions of cgk disclosed in this document are:
"Photoluminescent materials generally require a host crystal structure, ZnS, CaWO₄, Zn₂SiO₄, etc., which is doped with a small amount of an activator, a cation such as Mn²⁺, Sn²⁺, Pb²⁺, Eu²⁺. Sometimes a second type of dopant is added to act as a sensitizer."
A further disclosure at page 585 refers to Ag⁺, Sb³⁺, Eu²⁺, Eu³⁺ and Ti activators. Other host crystal structures such as Cd₂B₂O₅, 3Ca₃(PO₄)₂.Ca(Cl, F)₂, Y₂O₃, CaMg(SiO₃)₂, CaSiO₃, (Sr, Zn)₃ (PO₄)₂, Ca₅(PO₄)₃(F, Cl) have also been disclosed.
I note that the phosphors disclosed have a host crystal structure which does not include Al₂O₃ (alumina). The reference to the use of second dopant (of which no examples have been provided) would only be relevant to the crystal structures and activators disclosed therein. Thus the assertion at cgk Item 1 is a general statement which refers to the state of the art in 1984 and does not show that it is applicable to the phosphors now claimed. The cgk at item 1 does not disclose use of the specific co-activators and crystal structures of the opposed application. Regarding cgk Item 2 it asserts that, “It was well known to dope host materials with europium and that such a dopant would serve as an activator or luminescent centre in the resultant phosphor.” The textbook disclosure refers to the use of europium for particular phosphors, none of which disclose alumina (Al₂O₃). I do not consider that this establishes that it was well known to use europium as an activator for metal alumina phosphors. I do not find that the invention of the opposed application lacks an inventive step in light of the established common general knowledge in Australia.
The opponent submitted that the claimed invention was obvious in light of the established cgk when combined with any one of the following documents.
1. CN 1053807 A (exhibit MJC-5 [abstract] and MJC-12 [full translation])
2. "Study on synthesis and luminescence property of Europium-activated strontium aluminate", Chinese Journal of Luminescence, Vol. 12, No. 2, June 1991 (exhibit MJC-6 [abstract] and MJC-12 [full translation])
I have to determine if these documents would have been ascertained, understood and regarded as relevant by the skilled addressee in Australia at the priority date when faced with the problem of the opposed application (as outlined in paragraph 22 of this decision).
The applicant questioned whether these documents would have been available to the skilled addressee in Australia at the relevant date. In particular, they note that as the documents were in the Chinese language, their availability to the skilled addressee in Australia would be highly unlikely. The opponent has not indicated how these documents were located in Australia. In my opinion the issue is more how the documents were located rather than the language they were in. There remain some doubts over whether the opponent has established that the documents would have been ascertained. However, even assuming the documents would have been ascertained, the opponent's case on inventive step is not sustained for the reasons discussed below.
In Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59 at [53] the High Court approved the approach:
"Would the notional research group at the relevant date in all the circumstances…directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce a useful [product/process/desired result]…"
I will now consider (in light of each document and the cgk combined on an individual basis) whether the hypothetical addressee faced with the same problem would be directly led from the prior art to the invention.
MJC-5 discloses a phosphor of strontium aluminate activated with europium, which comprises the elemental components of strontium, europium, aluminium, wherein it further comprises boron oxide. The structure claimed is:
m(Sr_1-xEu_x)O . nAl2O3 . yB2O3,
wherein the respective ranges of the coefficients are:
1 ≤ m ≤ 5, 1 ≤ n ≤ 8, 0.001 ≤ x ≤ 0.1, 0.005 ≤ y ≤ 0.35
The citation further states that the described matrix is an improvement over the prior art phosphors as it has good chemical stability and a long persistence time. Also there is no indication that any radioactive materials are used and that the invention is degraded by exposure to light. Thus this matrix has overcome the defects of the prior art set out in the opposed application. Given the cgk disclosed in exhibit BJK-5, listing various phosphors, activators and the option of a sensitizer; I do not see what would persuade the skilled addressee to add a co-activator to the matrix of MJC-5 and also change the proportions to those of:
"M_1-xAl₂O_4-x, wherein X is in a range -0.33 ≤ x ≤ 0.60 (except X=0), wherein,
M is selected from Ba, Ca, Sr and wherein europium is doped to said matrix as an activator and at least one element selected from a group consisting of cerium, praseodymium, neodymium, samarium, gadolinium, dysprosium, holmium, erbium, thulium, ytterbium, and lutetium is doped to said matrix as a co-activator."
as there are no special advantages to be gained in doing so. I find that the opposed invention does not lack an inventive step in light of the cgk and MJC-5.
MJC-6 discloses a study on the synthesis and luminescence property of Europium activated strontium aluminate - 4 (Sr, Eu) O . Al2O3 . nB2O3. Aspects such as:
·    influence of boron and phosphorous on emission spectra and luminous intensity of the phosphor
·    influence of content of activator Eu²⁺ on luminescence properties of the phosphor
·    influence of Eu²⁺ content on fluorescence life
are discussed. No mention is made of any of the disadvantages of the prior art. There is no suggestion that co-activators be added or that the composition be altered to enhance performance. The cgk does not hint at any changes that could be carried out apart from the suggestion to use a second type of dopant as a sensitizer for specific types of phosphors. I do not find that the teaching of MJC-6 when combined with the cgk in Australia would directly lead the skilled addressee to the invention of the opposed application. I find that the claims of the opposed application do not lack an inventive step in light of the citation MJC-6 when read with the cgk.
CONCLUSION
The opponent pursued grounds of novelty, inventive step and section 40/fair basis. The opponent has been unsuccessful on all grounds.
I direct that the application be sealed after twenty-eight (28) days from the date of this decision.
If the Commissioner of Patents is served with a notice of appeal from this decision before that time, I direct that sealing not occur until the appeal has been decided or discontinued.
COSTS
The applicant sought costs subsequent to the amendments they made in response to issues raised in the original statement of grounds and particulars. They also sought costs arising from grounds not particularised. They stated that quite a few particulars relating to section 40 and inventive step had not been set out but had been raised in the evidence of the opponent. They referred in particular to Section 40 matters in relation to the terms, "trapping mechanism", "comprising", "co-activator" and to new citations raised with regard to novelty and inventive step.
The opponent contended that these particulars arose out of responses by the applicant's declarant and/or had been identified in the evidence in support. The opponent submitted that costs should follow the event.
The applicant has not sought costs prior to the amendments they made in response to issues raised in the statements of grounds and particulars. As the amendments were in response to issues raised by the opponent, the opponent is entitled to costs up to the allowance of those amendments. After, amendment of the specification, I find that the opponent raised matters arising from the evidence in answer filed by the applicant. The opponent had raised the parent application as a citation in the Kennedy declaration in evidence in support. I do not see that the applicant was completely unaware of this particular. Thus I do not consider that the applicant was faced with a completely new citation which it had to deal with. However the opponent had raised several new citations for inventive step in its evidence in reply. The opponent was unsuccessful on all grounds. Given all the circumstances, subsequent to the allowance of the amendments, I award costs against the opponent Shino Kaneko.
I award costs against the applicant Nemoto & Co., Ltd up to allowance of the amendments filed by the applicant. Subsequent to the allowance of the amendments, I award costs against the opponent Shino Kaneko.
Jacob Elijah
Delegate of the Commissioner of Patents
12 July 2004
Patent attorneys for the applicant : Patent Attorney Services, Melbourne
Patent attorneys for the opponent : Davies Collison Cave, Melbourne