Sumitomo Electric Industries Ltd v Metal Manufacturers Limited

[1995] APO 33

official notice

decision of a delegate of the commissioner of patents

Application        :   No. 597151 in the name of SUMITOMO ELECTRIC INDUSTRIES LTD

Title:   Optical Cable

Action: Opposition under section 59 (Patents Act 1952) by METAL MANUFACTURERS LIMITED

Decision:   Issued            .

Abstract:   Specification amended after a first hearing and decision; second hearing.

Findings in first decision cannot be reconsidered. Finding that claims anticipated by the prior art stands. Direction to amend.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 597151 by SUMITOMO ELECTRIC INDUSTRIES LTD and opposition thereto under section 59 of the Patents Act 1952 by METAL MANUFACTURERS LIMITED.

background

The invention the subject of this application is an optical fibre cable, of generally known construction, characterised by a certain range of dimensions.  It is therefore in the nature of a "selection", and stands to be tested against the rules for selection patents, as set out in I.G. Farbenindustrie A.G.'s Patents 47 RPC 289.

After a first hearing, a first decision was issued, dated 27 May 1993, in which I found that the invention described and claimed failed to satisfy these rules.  In particular, the reported test results in the specification showed that one of the test cables was within the claimed range of dimension, but failed to exhibit the improved performance alleged for the selection.  Also, another of the test cables, which was outside the claimed range, was reported as exhibiting the improved performance.

In addition, I found that the invention claimed was anticipated by the prior disclosure of a specific working example of such a cable, with dimensions placing it within the claimed range - E.I. DuPont De Nemours & Co Application (1982) FSR 303 distinguished.

I allowed a time for amendments to be proposed, and in due course amendments were proposed and allowed.  It is this amended specification which is the subject of these proceedings.

The nature of the amendments was, as to the first-mentioned point above, to narrow the claimed range, and as to the second, the filing of evidence which established a typing error in the description, with consequential amendments being allowable.  No amendment was proposed to address the issue of anticipation, which remains outstanding.

The applicant requested to be heard before I further considered the application.  The opponent did not wish to be heard.

Accordingly, a hearing was set down for 18 May 1995 in Canberra, with Mr Robert Miller, patent attorney of Spruson & Ferguson, appearing for the applicant.

SUBMISSIONS

At the commencement of the hearing I stated that, although I was prepared to hear whatever Mr Miller had to say, in my opinion, the only issue to be decided was, whether or not the amendments overcame  the findings I made in my first decision.  It was my understanding, I said, that it was not open to me to reconsider my original findings.

Mr Miller acknowledged that this was the policy (his word) set out in the Manual of Practice and Procedure Volume 3, which policy is based on the judgement in the case of Ex parte Mole Engineering Pty Ltd (1981) 35 ALR 119, and proceeded with three lines of submission, to be taken in the alternative.

There had been, he said, a change of office policy in the treatment of selection inventions, as was shown by the different wording in the relevant parts of the old Patent Examiner's Manual and the current Manual of Practice and Procedure Volume 2.  This had the effect, it was argued, of changing the merits of the applicant's case, and it would be inconsistent with established principles of administrative law to apply the policy (of not reconsidering the first decision) without regard to the changed merits.

Alternatively, it was briefly put that Ex parte Mole (supra) does not provide authority for the stated office policy, as it was limited by its particular facts.

For either of these reasons, it was submitted, I was entitled and indeed obliged, to reconsider my first decision, and when I did, it was said, I would find that there was in fact no anticipation.

While it was admitted that there was a prior disclosure of such a cable with dimensions which fell within the range claimed, it was argued that the disclosure was not of a kind to anticipate a selection, as the advantages gained or disadvantages avoided were different in each case.

Alternatively again, if I was to find that I was unable to reconsider my first decision, or that I was and on doing so still found that there was anticipation, then the applicant requested that I provide an opportunity to further amend the specification.

The amendment suggested at the hearing would raise the lower bound of Ws/Wt from 1.3 to 1.37.  It was put that this, together with the amendments already allowed, would result in the exclusion from the claims of the prior art, and the satisfaction of the selection rules - I.G. Farbenindustrie (supra).

DECISION

I cannot agree that, in the circumstances of this case, inflexible application of a policy without regard to merits is an issue.  Neither can I agree that there has been a change of policy in the way in which selection inventions are treated.  In my opinion it is not a question of policy application at all; what is applied are the tests and principles set out in the relevant decided cases.  Further, these cases are all old in relation to this application.  As for the changed wording in office manuals, and I was not informed of the exact nature of the difference, this can only reflect the work of different authors.  Of course the law is to be found in the cases, not necessarily in an office manual.

It was then argued that the Ex parte Mole decision does not authorise the office policy of not reconsidering an issued decision.  Again, I do not think that this is a "policy" either; it involves the application of the law made by that judgement.

It is true, as Mr Miller submitted, that the facts of that case were quite different, and also that the main issue before the Court concerned the power of the Commissioner to order a rehearing.

However, from reading the report of that case, it is quite clear that it was the view of the Court that a decision of the Commissioner, however styled (eg "interim" as was common then), is a decision which is final, in the sense that it finally determines all matters which are then capable of being finally determined.  Such a decision cannot be reheard or challenged, except by way of appeal.  See for example Mason J at page 125 and the comments of Wilson J through much of page 131.

The only exception would appear to be when the decision, by error or omission, was not clear or was ambiguous, or failed to reflect the actual intentions of the Commissioner.  That is not the case here.

Therefore I conclude that I cannot reconsider my first decision, and consequently I do not need to consider Mr Miller's submissions regarding my finding of anticipation.

I turn now to the amendment to the claimed range which was suggested at the hearing.  I agree that such an amendment, if allowed, would exclude the prior disclosure from the claims, and would not introduce any new problem with the test cables.   Mr Miller submitted that the invention now satisfies the three rules for selection stated by Maugham J in I.G. Farbenindustrie (supra), and that the application would then be able to proceed to sealing.  Actually, the history of this case, which has advanced in large part by reducing the selected range, raises some doubt in my mind as to whether it is a proper selection at all.

However I think it is appropriate in all the circumstances to give the applicant the benefit of any such doubt, and to afford the opportunity to propose suitable amendments.  The allowance of any such amendments can of course be opposed.

CONCLUSION

I have decided that I am not able to reconsider the findings in my first decision.  As it has been amended, the application may  not proceed to sealing for one of the reasons given in that decision, namely, that the claims are anticipated by the prior art.  I direct the applicant to propose amendments to the claims so as to exclude the prior disclosure, within 28 days from the date of this decision, else I will refuse the application.  Subject of course to any appeal.

COSTS

In the circumstances the applicant naturally bears its own costs.

R G Tolhurst
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Spruson & Ferguson, Sydney

Patent attorneys for the opponent   :  Griffith Hack & Co, Melbourne