Sumitomo Electric Industries Ltd v Metal Manufactures Limited
[1993] APO 41
•27 May 1993
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 MANUFACTURES LIMITED.
Decision: Issued . Application not a valid "selection", claims anticipated. Applicant given opportunity 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 1952 Act by METAL MANUFACTURES LIMITED.
background
Patent application 597151 for an invention entitled "Optical Cable" was filed on 25 February 1988 as 12185/88 and claims priority from a Japanese basic application made on 25 February 1987.
The Office advertised acceptance on 24 May 1990.
METAL MANUFACTURES LTD filed notice of its opposition on 18 September 1990, and were granted an extension of time for filing notice of opposition, validating the notice filed on that date.
Evidence-in-support was served on 1 April 1992, evidence-in-answer on 7 September 1992 and no evidence-in-reply was served. The matter was set down for hearing in Canberra on 23 February 1993. Mr J.G. Hinde, patent attorney of Spruson & Ferguson, represented the applicant at the hearing and Mr R.J. Strickland, patent attorney of Griffith Hack & Co represented the opponent.
As the application was advertised accepted before the commencement of the Patents Act 1990, the provisions of section 234(3) of the 1990 Act, and regulation 23.3, are applicable.
The notice of opposition states the grounds of opposition are those specified in paragraphs (c) through (i) of section 59 of the Patents Act 1952. At the hearing submissions were mainly directed to the ground of prior publication, i.e. ground (e).
SPECIFICATION
The specification commences by indicating that the invention relates generally to the structure of high density optical fibre cables and more particularly to the configuration of grooves in the walls of the core of an optical cable having a plurality of tape shaped optical fibre bundles located in each groove. Each optical fibre bundle, often known in the art as a "ribbon", consists of a number of optical fibres (perhaps five) located adjacent one another and sheathed in plastic.
This is followed by a discussion of the prior art where it is admitted that a known cable has tape shaped optical fibre bundles inserted into grooves in one or more cores of the optical fibre cable. These cores are then taped and sheathed.
The dimensions of the grooves have not previously been considered important, the specification states, and the width of the grooves is typically made slightly larger than the width of each tape-shaped optical fibre bundle and the depth of each groove is made to accommodate the thickness of the number of tape-shaped bundles to be placed on top of one another.
The specification goes on to state that although it was thought that easily accommodating the bundles to be inserted would result in a well functioning fibre, it has been found that performance is affected by groove dimensions, the fibre requiring sufficient room to make moderate bends as it winds around the core without being free to "un-uniformal" twist the optical fibres of the bundle. If such twisting occurs transmission loss is increased and mechanical strength decreased. The specification then suggests that if the groove dimensions are not properly selected, bundles are subject to side pressures which degrade performance and may reduce the lifetime of the cable. Further the specification states no particular attention has previously been paid to dimensions of bundles and grooves when trying to prevent deterioration of transmission signals and mechanical strength.
The specification then includes a consistory statement which sets out formulae to select the groove dimensions having regard to fibre bundle dimensions. This statement is essentially equivalent to claim 1. In the subsequent description the invention is described with reference to figures illustrating the dimensions and tables tabulating the dimensions and performance of optical cables having various groove widths and depths.
The specification ends with 6 claims of which claims 1 and 6 are independent claims. The claims read as follows:
an (sic) optical cable comprising:
a predetermined plurality n of tape-shaped optical fibre bundles having a thickness T and a width WT; and
at least one core having at least one groove therein, said groove having a width WS and a depth DS satisfying the equations:
WS
1.2<────── <1.45
WT
DS
1.3<────── <1.55
nT
said bundles being disposed in said groove.
An optical cable according to claim 1 further including a tape which covers said core.
An optical cable according to claim 2 further including an outer sheath.
An optical cable according to claim 3 further including a tensile member disposed through the centre of said core.
An optical fibre cable according to claim 1 wherein said core has at least two grooves therein, said plurality of tape-shaped optical fibre bundles being disposed in one of said grooves, said cable further including a pair of stranded copper wires disposed in said other groove.
An optical cable comprising:
a rod shaped tensile member;
a predetermined plurality n of tape-shaped optical fibre bundles, each of said bundles having a thickness T and a width WT;
a plurality of cores, each core having at least one groove therein, said groove having a width WS and a depth DS satisfying the equations:
WS
1.2<────── <1.45
WT
DS
1.3<────── <1.55
nT
said bundles being disposed within each of said grooves;
a tape wrapped around each core having said bundles in its grooves; and
a sheath which covers all of said cores each having a tape wrapped there around and said tensile member.
EVIDENCE
The evidence-in-support of the opposition consists of a statutory declaration by Robert James Strickland, registered Patent Attorney. This declaration has five exhibits, three of which are prior art documents. These documents are RJS2, Australian application 554844; RJS3, a paper presented at the proceedings of the International Wire and Cable Symposium (1977); and RSJ4, US patent specification 4110001. There was no dispute that these documents were published at the relevant date.
The declaration discusses the claims in the light of these documents, drawing particular attention to one example in exhibit RJS2.
The evidence-in-answer consists of a statutory declaration by John Gordon Hinde, registered Patent Attorney. Mr Hinde considers the declaration of the evidence-in-support and indicates that the claims are novel in accordance with the principles which apply to a selection type patent.
No evidence-in-reply was served.
I shall not discuss the evidence here but will refer to the relevant parts of the evidence at the appropriate points in my decision.
SUBMISSIONS
On behalf of the opponent Mr Strickland indicated that the major ground of opposition was prior publication. He submitted that Australian application 554844 discloses an optical fibre cable comprising a predetermined plurality of tape shaped optical fibres disposed in at least one groove in at least one core. Further that using specific values (not ranges) of the width and depth of the groove disclosed in 554844 at pages 5 and 6 with reference to figure 3 and table 1, he calculated the ratios WS/WT = 1.33 and DS/nT = 1.33, i.e. values falling specifically within the ranges defined by claim 1, thus 554844 prior publishes present claim 1. Further, that if 554844 was not a patent and he followed the example given in table 1 of this earlier application (554844), the cable made would fall within the scope of claim 1, i.e., he would not be free to use the information of the earlier application.
He then referred to cases like Meyers Taylor v Vicarr Industries 1977 13 ALR 605 and Harwood v Great Northern Railways Co (35 LJQB 27) with reference to page 931 of 'The Law of Intellectual Property' by Rickardson where the test for lack of novelty is the same as that for infringement, i.e. the so called reverse infringement test.
Furthermore, Mr Strickland submitted that the subsidiary claims lacked novelty in the light of admissions of known techniques in optical fibre communication technology and/or disclosures in 544844 or exhibits RJS3 and RJS4.
With regard to the second independent claim, Mr Strickland submitted that this claim was also not novel, the extra indices being admitted in the description of prior art as known.
In response Mr Hinde indicated that optical cable technology was an art that had rapidly developed over recent years and was a crowded art. The citation on which the opponent relies is an earlier application by Sumitomo (the applicant) and another.
Mr Hinde submitted that the reverse infringement test relied on by Mr Strickland was correct but there is one exception to the want of novelty rules in the reverse infringement test and that is found in the field of selection patents, which are well recognised in the art. Mr Hinde then quoted from Terrel 12th edition on the "rules" for selection patents, the requirement for more than a mere selection amongst possible alternatives and the requirement that the selection secure some advantage or avoid some disadvantage and requires the exercise of the inventive faculty. He submitted that this application met these requirements and the rules from I.G. Farbenindustrie A.G.'s patents 47 RPC 289 at 322-323 and is a legitimate selection application.
He submitted that the substantial disadvantage overcome was the "un-uniformal" twisting of fibre bundles, the problem of mechanical strength decrease, degraded transmission performance and the possible shortening of the cable lifetime. Mr Hinde agreed that, should a patent be granted on the present application, then the public could not use one of the examples of 544844 but submitted that this is a feature of selection patents. He then reiterated parts of his declaration comprising the evidence-in-answer, noting in passing that there was no evidence-in-reply and suggesting that on the laws of evidence this was a matter of considerable importance to these proceedings.
Mr Hinde then referred to Mr Strickland's declaration and submissions. He submitted that the claims are clearly for a selection patent, claim 1 defining two separate ranges each bounded by selected values, the selection being based on the avoidance of a perceived disadvantage, providing an optical cable which is prevented from having a non-uniform twisting arrangement which would otherwise result in the degradation of transmission and mechanical strength characteristics, this perceived disadvantage is avoided only by the cable having the actual selected ranges defined in claim 1 as is supported by the laboratory tests described at page 7 of the specification.
Further, Mr Hinde quoted from the examiner's manual paragraph 35.105, that a selection only exists if there is a single prior art disclosure to which it is compared, which in this case is 554844, which discloses an optical cable which has all the mechanical features of claim 1 and further discloses ranges which wholly embrace the selected ranges of claim 1. Mr Hinde also drew to my attention the House of Lords decision on selection patents in the chemical field, reference (1982) FSR 303, i.e. E.I. DuPont De Nemours & Co (Witsiepe's) Application. Further, since the independent claims are novel it follows that the dependent claims are also novel.
Mr Hinde also submitted that since there was no evidence-in-reply which calls into question the evidence-in-answer as to selection, it seems that the tribunal is obliged, on the basis of the laws of evidence and the tribunal's function, to allow the application to proceed to grant because it cannot be certain a court would find the claims invalid in revocation proceedings (cases cited: Universal Oil Products v Monsanto (1973) AOJP 1070 and Montecatinie v Eastman Kodak (1971) 45 ALJR 593).
Mr Strickland submitted that while he did not dispute Mr Hinde's summary of the law relating to selection patents he did find difficulty relating this type of subject matter to the more conventional chemical applications. He also questioned the applicability of the DuPont case (supra) to the facts of the present case. In the present case included within the scope of the later claim is a specific example disclosed in the earlier application. He submitted again that this is an infringement situation and that it is contrary to a fundamental principle that when a patent ceases or a published application lapses then generally the specific disclosure in that document is open to use by any member of the public. He did not accede to the claim by Mr Hinde that he may use any but that smaller part monopolised by the selection patent.
Mr Hinde submitted that was precisely the situation in the DuPont case (supra). There was a selection of one of five previously disclosed components of a plastic, which was found to be a valid selection. Further that while Mr Strickland may have trouble applying chemical precedent, there was nothing to suggest that a mechanical selection patent could not be granted. In which case, he stated, the tribunal is constrained to find for the applicant.
DECISION
It was submitted at the hearing that it may be difficult to apply the case law on selection applications to the present case, since in most cases the subject matter is chemical. This is true, but selection issues can legitimately arise in mechanical and electrical inventions, see Clyde Nail Co Ltd v Russell 33 RPC 291 and Bosch's Application 26 RPC 710.
Selection
Mr Hinde contends that the invention is a selection patent while Mr Strickland concedes that while in some circumstances the application could be seen as a selection that it is not so here because it is anticipated.
The tests for selection were set out in the I.G.. Farbenindustrie (supra) and ClydeNail (supra) decisions. In summary the tests for selection are:
- there exists a single prior art document against which the claimed invention is compared and only the portion of the claim falling within the prior disclosure may have the selection test applied to it;
- the selection must be based on some substantial advantage gained or disadvantage avoided;
- all the selected members must possess the advantage in question;
- the selection must be in respect of something peculiar to the selected group;
- the specification must describe that advantage; and
- the selection must not be a mere choice of presented alternatives.
Mr Hinde submitted that there was indeed a single prior art disclosure, which, in this case does encompass all of the claim under consideration (see paragraph 7 of the statutory declaration comprising the evidence-in-answer) and that it meets the criteria laid down in the I.G. Farbenindustrie (supra) decision and clearly describes the advantage possessed by the selected members.
The single prior art disclosure is, of course, 554844 which, as admitted by the applicant, contains all the features of claims 1 and 6 except the specified ratios. At page 4 lines 2 to 8 this document does indeed describe a range of values for the width and depth of the groove which wholly encompasses the range defined by the application.
The opposed application states at page 2 that the invention selects the groove dimension ratio range such that an irregular arrangement is prevented and mechanical strength and transmission characteristics are improved, this having been previously identified (pages 1a to 2) as a significant disadvantage of this type of cable. The opponent has not challenged these statements, however the application fails the selection tests on at least two grounds.
Firstly, not all the selected members possess the advantage in question. Both experiments #1 and #2 (specification page 5, table 2) fail the test item regarding the transmission loss caused by bending, the test indicating an increase in loss. However only #1 has calculated ratios which fall outside the specified ranges. I conclude that #2 has failed the test item because the magnitude of the transmission loss is the same as the transmission loss for another experiment, #6 (calculated ratios outside the specified ranges), whose only failure is transmission loss of the same magnitude under another test item, namely transmission loss by side pressure.
Secondly, experiment #9 fails none of the tests and also has dimensions which result in the calculated ratios falling outside the specified ranges, thus the selection is not in respect of something peculiar to the selected group.
For these reasons I conclude that the application has not satisfied the criteria set out in I.G. Farbenindustrie (supra) for selection. I now consider whether the subject matter claimed is anticipated.
Anticipation
The applicant admits that application 554844 discloses all the features of claims 1 and 6 except the specified ratios. This document also discloses specific values of the width and depth of grooves which produce ratios within the ranges of claims 1 and 6. Since the ratios are also anticipated it follows that claims 1 and 6 are anticipated.
Further, claims 2 and 3 are anticipated because the additional integers are described in the specification of the instant application as known prior art, see page 1a of the specification, and they are also disclosed in 554844. Claim 4 is anticipated because such a tensile strength member is also disclosed by the document 554844. Finally, claim 5 can not be said to confer novelty on the application because the addition of electrical current carrying capacity to optical fibre cables is well known in the art.
If the application were for a selection, guidance on anticipation may be found from the DuPont case (supra). In this case the application in suit claimed three compounds especially effective in a particular application. An I.C.I. specification published in 1952 described a class of compounds generic to those described in the application in suit in that a particular compound claimed in the application in suit was the third member of a series defined by a general formula, one of five specifically named members, but was not used in the working example given by way of illustration in the I.C.I. application. Further, carrying out the I.C.I disclosure with the particular compound would produce a result falling within claim 1 of the application in suit, but the I.C.I specification contained nothing to suggest that the use of that particular compound would achieve the advantages promised by the application in suit.
However in the present case, and in contrast to the facts of the Dupont case, the ranges claimed do include a specific working example of the prior specification. In this case there is a clear statement in the prior art document that the dimensions have in fact been used, whereas in the DuPont case it was clear that the compound had not in fact been made. As a result, even were the application a valid selection, it would be anticipated.
CONCLUSION
I have found that the opposition succeeds. The application is not a valid selection application and the claims have been anticipated by the prior art.
It is not clear to me that the objections to this application can be overcome, however I will allow the applicant the opportunity to propose suitable amendments within 60 days from the date of this decision, failing which I will refuse the application.
COSTS
Normal practice is for costs to follow the event. I award costs against the applicant accordingly.
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
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