Sumitomo Electric Industries Ltd v Pacific Dunlop Limited

[1995] APO 68

official notice

decision of a delegate of the commissioner of patents

Application        :  No. 631009 in the name of Sumitomo Electric Industries, Ltd.

Title:  Optical-fiber incorporated longer-sized subaqueous unit

Action:  Opposition thereto by Pacific Dunlop Limited, including a request to amend the Statement of Grounds and Particulars.

Decision:  Issued            .

Abstract:  Request to amend Statement of Grounds and Particulars refused. Late stage in opposition procedure and delay in making request main factors leading to undue prejudice.  Federal Court procedures of no practical relevance.

In substantive opposition, A-level publication version of B-level document served in evidence in support as a result of an obvious error admissible as evidence, even though served as evidence in reply. Document obtained overseas and brought to Australia not published absent evidence of disclosure to any other person within this country. Relied-upon grounds of novelty and obviousness not made out on the evidence. Opposition dismissed.

No bar to sealing in respect of document subject of the request to amend the Statement of Grounds and Particulars.

Costs awarded against the opponent, except for half costs in relation to the substantive opposition up to the date on which section 104 amendments during the opposition process were advertised as made.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 631009 by Sumitomo Electric Industries, Ltd., and opposition thereto by Pacific Dunlop Limited

background

Application 631009 for an invention entitled "Optical-fiber incorporated longer-sized subaqueous unit" was lodged as a Convention application by Sumitomo Electric Industries, Ltd. on 13 September 1990, with priority claimed from applications     1-237740, 1-239333 and 1-286764 made in Japan on 13 September 1989, 14 September 1989 and 1 November 1989, respectively.  Application 631009 was advertised accepted on 12 November 1992, and a notice of opposition was filed by Pacific Dunlop Limited on 12 February 1993.

As the application was lodged before, but accepted after, the commencement of the Patents Act 1990, Section 59 of the Patents Act 1952 applies to the opposition, but Chapter 5 of the Patents regulations 1991 applies in relation to these opposition proceedings.

The evidence in support, evidence in answer and evidence in reply were duly served, with some extensions of time, on 12 September 1993, 15 March 1994 and 14 September 1994, respectively.  The evidence in reply was accompanied by a request to amend the Statement of Grounds and Particulars.  The applicant subsequently objected to this amendment, and by agreement between the parties that matter was heard in conjunction with the substantive opposition.  This decision is in respect of both those matters.

On 9 December 1993 the applicant filed a request under sec 104 to amend its complete specification.  These amendments were made on 10 August 1994 and advertised made on 25 August 1994.

The hearing took place in Melbourne on 10 August 1995.  The applicant was represented by Greg Noonan assisted by Karen Yeilds, patent attorneys of the firm Davies Collison Cave, Melbourne, and the opponent was represented by Tony Ward assisted by Andrew Morton, patent attorneys of the firm Griffith Hack & Co, Melbourne.

The Specification

The invention is concerned with underwater cables and the like, such as power cables and water supply pipes, having incorporated in them a plurality of optical fibres.  According to the specification, it is conventional in the prior art for such arrangements to consist of a single-core or three-core cable surrounded by a plastic sheath having grooves on its outer surface in which the optical fibres are located.  The plastic sheath/optical fibres are in turn surrounded by iron wire armouring.  Alternatively, the optical fibre can be located directly on the cable, usually in the grooves between the cable strands, and surrounding this arrangement is a plastic sheath and then iron wire armouring.  Such arrangements are said by the specification to be weak in mechanical strength, and susceptible to buckling.

The invention as described resides in accommodating each optical fibre within a metal pipe having a plastics coating layer on its external surface.  This imparts rigidity to each optical fibre and to the cable unit as a whole.  Two forms of the invention are described, correlating with the above-mentioned two prior art arrangements.  The specification concludes with 15 claims.  Claims 1 and 7 are, except for the omnibus claim,  the only independent claims and read as follows:

"1.An optical-fiber incorporated longer-sized subaqueous unit comprising:

a core body of said longer-sized subaqueous unit;

a plastics sheath provided about the periphery of said core body;

a plurality of optical fiber units wound on the outside of said plastics sheath, each of said optical fiber units including an optical fiber accommodated in a metal pipe having a plastics coating layer on its periphery; and

a plurality of armoring iron wire bundles provided on the periphery of said plurality of optical fiber units which are wound on the outside of said plastics sheath."

"7.An optical-fiber incorporated longer-sized subaqueous unit comprising:

a core body of said longer-sized subaqueous unit;

a plastics sheath provided about the periphery of said core body;

a plurality of optical fiber units arranged inside said plastics sheath, each of said optical fiber units including an optical fiber accommodated in a metal pipe having on its periphery a coating layer made of plastics material with a higher melting point than that of the material of said plastics sheath; and

a plurality of armoring iron wire bundles provided on the outside of said plastics sheath on the periphery of said core body."

The evidence

The evidence in support consists of one statutory declaration, by Dr Francis Donaghy.  Dr Donaghy is an independent expert in the field of the present invention.  Annexed to his declaration are three documents purported to be prior art publications.  The first of these is the specification of Australian patent application 609915, the second is what is described in the evidence as a brochure (at the hearing the applicant questioned the accuracy of this description) by Armortech Underwater Cables, a United States manufacturer, and the third document was not relied upon as an anticipation by the opponent at the hearing as no publication date prior to the priority date of the claims could be established for it in Australia.

The evidence in answer also consists of just one statutory declaration, by Ryosuke Hata.  Mr Hata is one of the inventors of the present invention and is resident in Japan.  His declaration essentially reviews the specification in suit and explains the advance made by the invention over the prior art in general.

The evidence in reply consists of two statutory declarations:

· a declaration by Mr Derek Hatton, who is a consultant to the opponent company and who claims to be skilled in the art of the present invention; as well as comprising evidence as to the state of the common general knowledge in the art this declaration also has five exhibits annexed to it, notable among them being the specification of Australian patent application 563499 and a copy of the same Armortech brochure as that in the evidence in support; this brochure is stated to have been given to Mr Hatton in the United States and subsequently brought by him back to Australia before the priority date of the present claims

· a declaration by Tony Ward, the object of which is to enter as evidence the two exhibits annexed to it; the first exhibit is the specification of Australian patent application 27024/88 (the "A" publication of the "B" publication Australian patent application 609915 in the evidence in support), and the second is evidence of the date on which 27024/88 became open to public inspection.

I will discuss the evidence in more detail, where appropriate, in my decision.

Amendment of the Statement of Grounds and particulars

The effect of the proposed amendment of the Statement of Grounds and Particulars would be to include Australian Patent 563499 as a new particular for the grounds of prior publication, novelty and obviousness .

The reasons given by the opponent for the amendment are:

" Since serving the Statement of Grounds and Particulars on 12 March 1993 and the Evidence in support on 15 June 1993, the applicant has amended the specification and claims of the opposed Application 631009 on 10 December 1993.  On 15 March 1994 the applicant served on the opponent Evidence-in-Answer in the form of a Statutory Declaration by Ryosuke Hata dated 4 March 1994 (hereinafter referred to as the "Hata Declaration").  Both the amendments to the specification and claims and the Hata Declaration emphasise the significance of the coating of a metal tube with plastics having a higher melting point than the material of the plastic sheath.  Australian Patent 563499 which is sought to be added to the Statement of Grounds and Particulars and is referred to in the Evidence-in-Reply as a prior publication discusses the coating of tubes in hard plastics.  This disclosure reinforces the assertion that was made in the Evidence-in-Support that it was known before the priority date of the opposed application to coat tubes in plastics."

The applicant objected to the amendment in the following terms:

" .....[The reason put forward by the opponent] implies that the proposed inclusion of the additional particular is consequential to the amendments made to the specification and claims of the present specification and the contents of the Hata declaration.  In this regard, we wish to emphasise that independent claim 5 as accepted stated that each of the optical fiber units includes "an optical fiber accommodated in a metal pipe having on its periphery a coating layer made of plastic material with a higher melting point than that of the material of said plastic sheath".  Thus, the feature of the coating layer of a plastics material having a higher melting point than the material of the plastics sheath was clearly recited in claim 5 as accepted.  Furthermore, amended independent claim 7, which corresponds to accepted independent claim 5, is substantially identical to accepted claim 5.  The only difference between these two claims is that the term "plastic" as used throughout claim 5 has been replaced with the term "plastics" in claim 7.

.....[therefore] we do not consider that the proposed amendment to the Statement of grounds and particulars is consequential to the amendment to the complete specification.  Furthermore, we submit that the applicant will be unduly prejudiced by the amendment.

.....The inclusion of this additional particular in the amended Statement of grounds and particulars is prejudicial to the applicant and changes the case that the applicant has to answer......

We also wish to point out that neither the request to amend the Statement of grounds and particulars nor the statutory declaration by Derek William Hatton indicates the circumstances by which the opponent became aware of Australian patent 563499.  Accordingly, it is not clear how or when the opponent became aware of Australian patent 563499 or whether the opponent actively pursued further particulars in the opposition after having filed their Statement of grounds and particulars.  In the event that the opponent pursued such further particulars the applicant will be unduly prejudiced by the amendment according to the decision in Diamond Scientific Company v CSL Limited [(1992) AIPC 90-927].

As a further consequence of the opponent failing to indicate how or when they became aware of the existence of Australian patent 563499, it is not clear whether the amendment to the Statement of grounds and particulars was made at the earliest reasonable opportunity.  We note that in the application for an extension of time filed by the opponent on 15 September 1994, it was indicated that the opponent had "commenced the collection of material for inclusion in evidence-in- reply".  Thus, it would appear that the opponent may have been aware of the existence of Australian patent 563499 at that time and thus the amendment to the statement of grounds and particulars was made some three months after becoming aware of the existence of the additional particular.  Accordingly, the amendment to the Statement of grounds and particulars was not made at the earliest opportunity.

In view of the points outlined above the applicant believes that it will be unduly prejudiced by the amendment to the Statement of grounds and particulars and therefore objects to any such amendment."

Submissions at the hearing

The hearing took place in two parts.  The first was concerned with the request to amend the Statement of Grounds and Particulars, the second concerned the substantive opposition.

Amendment of the Statement of Grounds and Particulars

At the hearing, Mr Ward elaborated the opponent's concern to amend its Statement of Grounds and Particulars.  He said the opponent believed that the applicant may call into question whether the Armortech brochure had been published in Australia before the earliest priority date, and wished to reinforce that disclosure by reference to a patent specification.  Mr Ward contended that the amendment of the Statement of Grounds and Particulars does not add new material in the sense that all that is said in the new document repeats what the Armortech brochure already says: it simply backs up evidence already served in the evidence in support.  Mr Ward admitted that the opponent had been aware of application 563499 from when the notice of opposition was first filed, but did not consider it a particularly relevant citation, because the construction of the cable was not the same as in the present case.

Mr Ward strongly criticised the Diamond Scientific Company v CSL Limited decision, describing it as being ridiculous.  He asserted that the object of the Statement of Grounds and Particulars was to give "an initial taste of the case; where the opponent is coming from", whereas the way the system operated at present meant that unless all your evidence was in your statement at the time of serving it, you cannot put any more in.  This was, he said, to be contrasted with the approach of the courts, which have no qualms whatsoever in allowing you to amend your statement of claim at any stage.

Mr Ward concluded the case for the opponent by saying that the new evidence does not add anything further to the opponent's case, in the sense that the piece of prior art it was seeking to serve as evidence shows that metal tube-enclosed cables were known in the cable industry, and it was also known to coat the tubes with plastics and these plastics had to be harder than was used elsewhere in the cable.  That, according to Mr Ward, is what the Armortech document says.

Mr Noonan commenced the case for the applicant by indicating that as well as the Diamond Scientific Company v CSL Limited decision the applicant would be relying on a more recent Patent Office decision, namely Sumitomo Electric Industries, Ltd. v BICC Plc and Another (unreported decision issued 10 April 1995 in respect of application 617173).  Mr Noonan reiterated the position taken in the reasons for objecting to the amendment of the statement, namely, that the section 104 amendment made to the claims did not significantly alter their scope and that while the Hata declaration does talk about the feature of coating the metal tube with plastic, this is not surprising in light of it being a feature of the claims.  He surmised that the true reason the opponent wanted to adduce the new evidence was because of the doubt surrounding whether the Armortech brochure could be proven to have been published in Australia.  Mr Noonan argued that, given this doubt, the new evidence does dramatically alter the case the applicant has to answer.

Mr Noonan then drew my attention to the delay that had occurred in seeking the amendment of the statement, which could be accounted as being as far back to the date of filing of the notice of opposition.  Even if the delay was only measured from the serving of the evidence in answer, there was a delay of about six months.  No reason had been given in the request to explain this delay.

Mr Noonan noted Mr Ward's comments on the Patent Office approach to these matters, as reflected in Diamond Scientific Company v CSL Limited, but submitted that the fact of the matter is that we are dealing here with a different piece of legislation - we are bound by the actual wording of subregulation 5.9(2), which is an actual piece of legislation requiring interpretation.  Diamond Scientific Company v CSL Limited is, he said, still the definitive case in this area, as it has not been over-ruled by the Federal Court or the Administrative Appeals Tribunal.

He then turned to Sumitomo Electric Industries, Ltd. v BICC Plc and Another.  In terms of the five factors the hearing officer in that case found were relevant to his decision, Mr Noonan contended that:

(i) if the delay was taken to extend from the filing of the opposition, it extended for a very long period of time; even if it is only taken as extending from the date of serving of the evidence in answer, as Mr Ward asserted it should be, this is still a substantial delay;

(ii) there would be no automatic right for the applicant to serve evidence in reply to the new evidence;

(iii) the factor of evidence in reply not being appropriate in the Statement of Grounds and Particulars is not relevant in the present matter;

(iv) further delay was possible to serve further evidence, thus implying excessive detriment to the applicant;

(v) the applicant's action in amending is not relevant in this case as the amendment did not alter the scope of the claims;

from which the conclusion is that the amendment in the present case is plainly excessively detrimental to the applicant.

In response, Mr Ward stated that the difference between this case and Sumitomo Electric Industries, Ltd. v BICC Plc and Another is that in that case the opponent found new evidence that materially affected the case, but however even if the opponent finds new evidence which is fundamental to a case the day before the hearing, it has a right to seek leave to amend its Statement of Grounds and Particulars and put that evidence in.  He went on to say that it is the duty of the Commissioner to see that invalid patents are not granted.  He emphasised that here the opponent was not changing the thrust of the case, but simply reinforcing what was already said.  Finally, he conceded that considerable delay had occurred in filing the request to amend the Statement of Grounds and Particulars.

The substantive opposition

Mr Ward commenced by indicating that as a consequence of the section 104 amendments advertised as made on 25 August 1994 the opponent did not wish to maintain the section 40 issues stated in the Statement of Grounds and Particulars as a ground of the opposition.  The grounds on which the opponent would rely in its opposition would be lack of novelty and obviousness.

Mr Ward submitted that the industry relevant to this application is the optical fibre cable industry, in which there are "only so many players", and these players are specialists having a comprehensive knowledge of the small number of products in this area.  Mr Ward asserted that what is claimed in this application would not be considered innovative by those skilled in this field.  He said that the applicant has simply taken a known product - the optical fibre in a metal tube arrangement disclosed in the Armortech brochure - and applied it in optical fibre cables.  Furthermore, coating of tubes is perfectly well known to those skilled in the art - in the cable industry metal components are frequently coated with plastics material for insulation and other purposes.  Therefore, the opponent was disputing the technical merit and alleged innovation of this invention, and considered that the difference between what is disclosed in application 609915 and what is claimed in the broadest claims of the present application - the plastics coating - is nothing more than a mere workshop variation or part of the common general knowledge of those skilled in the art.  Mr Ward cited several court decisions as supporting the opponent's position: Griffin v Isaacs, (1938) 12 ALJ 169, Acme Bedstead v Newlands Brothers (1937) 58 CLR 689 and Windsurfing International v Petit, 3 IPR 449. These were said to provide support for the approach that if what was not shown by a prior art disclosure was obvious, then that disclosure was an anticipation.

On the topic of obviousness, Mr Ward conceded that a difficulty faced by the opponent was in establishing that all the integers of any of the claims were common general knowledge in Australia at the priority date of the claims.  However, he advanced the argument that the Armortech document is common general knowledge, and if one combines this with other known cable constructions such as are admitted to by the applicant in the introduction to its specification, namely, putting optical fibres in helical grooves in a core member, then the development of the present invention is an obvious extension of this; if you are going to put optical fibres in hardened tubes, you do not have to put them in grooves, you simply wind them on the outside, as was done in application 609915.

Mr Ward summed up by saying that the Armortech tubes were around from the mid-1980's and were known to persons skilled in the art, and what the applicant has done is simply apply for a patent on using the tubes in an optical fibre configuration.  According to Mr Ward, they have done exactly what the Armortech people would have wanted them to do, and that is to buy these tubes and put them into particular cable constructions, such as submarine applications, and he submitted that the Armortech brochure, brief though it is, gives you plenty of hints on how to go about it.

In his submissions on behalf of the applicant, Mr Noonan emphasised that the onus was on the opponent to present its case and prove its case.  He criticized the evidence of Donaghy, both from the point of view of Dr Donaghy's qualifications to give such evidence, as well as from the point of view of what it said (or did not say).  He also submitted that both application 609915 and the Armortech document could not be considered as anticipatory documents, since the former had not been published by the earliest priority date of the claims, and the latter had not been satisfactorily established as having been so published.  Also, Australian application 27024/88 (the "A" level publication of 609915) was not admissible, since it had not been particularized and was in the nature of further evidence but did not qualify as such.

On obviousness, Mr Noonan argued that even by the standards of the minimalist position currently taken by the courts on what amounted to sufficient evidence to establish something as being common general knowledge (said by Mr Noonan to have been that of the court in WR Grace v Asahi, (1993) AIPC 90-974), the evidence in the present matter fell well short of being adequate.

I will discuss the parties' submissions in more detail in my decision.

Decision

Amendment of the Statement of Grounds and Particulars

The amendment is only allowable if I reasonably believe that it would not "unduly prejudice" the applicant (paragraph (e) of sub-regulation 5.9(2) of the Patents Regulations). The only guidance as to what does or does not constitute undue prejudice is the substantial number of Patent Office decisions in point. At the hearing, Mr Ward criticized the whole basis of the current Patent Office approach, and I will address those concerns later in this decision. However, firstly I will assess the present situation vis à vis the current approach.

In essence, the decision in Diamond Scientific Company v CSL Limited concluded that undue prejudice will occur if

· the amendment is detrimental or disadvantageous to the patent applicant; and

· the circumstances surrounding the amendment cause the degree of that detriment or disadvantage to be unwarranted, excessive, improper, inappropriate or unjustified

and where

- the applicant objects to an amendment, and

- the amendment of the statement can reasonably be said to prejudice the applicant (such as by the addition of extra particulars), and

- the circumstances are such that there is a reasonable inference that the prejudice is undue - such as by the time at which the amendment is sought, or the nature or extent of the amendment sought;

there is a reasonable basis for the Commissioner to prima facie conclude the applicant will be unduly prejudiced by the amendment.

In the case at hand, the main factor against allowing the amendment is its timing so late in the opposition procedure and the extent of the delay in seeking the amendment once the relevance of the document which is the subject of the new particular was known.  The amendment was sought at the same time the evidence in reply was served, and it was conceded by the opponent that it had been aware of the document since the notice of opposition was filed.  There was an apparent suggestion by the opponent in its reasons for requesting the amendment of the Statement of Grounds and Particulars that this document only assumed any importance in the opposition after the section 104 amendments which were made during the opposition procedure.  Mr Ward maintained this position at the hearing, but I believe that the applicant's objection to the amendment of the statement, quoted previously, which was reiterated at the hearing, amounts to a persuasive rebuttal of this.  I am also guided in this by the decision in Sumitomo Electric Industries, Ltd. v BICC Plc and Another (supra).

In apparent recognition that, as a result of the timing and belatedness of the amendment the amendment was on somewhat shaky ground on the basis of the criteria laid down in Diamond Scientific Company v CSL Limited, the opponent tried at the hearing to circumvent this by contending that because the new particular merely backed up evidence already in the evidence in support, it did not alter the case the applicant had to answer (Abundant Lawn Grass Industries v Crancove, (1993) AIPC 90-973), and therefore, according to Diamond Scientific Company v CSL Limited, was not prejudicial.  However, Diamond Scientific Company v CSL Limited merely says that any amendment that changes the case the applicant has to answer is potentially prejudicial to the applicant - it does not say that an amendment which does not change the case the applicant has to answer is not prejudicial.  The fact remains that according to the test formulated later in the decision, the amendment here requested is prima facie unduly prejudicial.

At the hearing the applicant drew my attention to the Sumitomo Electric Industries, Ltd. v BICC Plc and Another decision (supra), which it submitted was highly relevant to the matter at hand.  Mr Ward attempted to distinguish this case from the present one by the fact in the former the opponent had found new evidence that materially affected that case.  However, the addition of a new citation, as in the present case, is the addition of a new material fact (see Sumitomo Electric Industries, Ltd. v BICC Plc and Another, (1993) AIPC 90-988), and, in my view, the circumstances of the two cases are on all fours.

In weighing up the factors relevant to his decision on whether there would be undue prejudice in allowing the amendment, the hearing officer in Sumitomo Electric Industries, Ltd. v BICC Plc and Another listed them as follows;

" (i) a delay of 5 months since the allowance of the section 104 amendment, and 34 months since the filing of the statement of grounds and particulars:

(ii) the absence of a right for the applicant to serve rebutting evidence;

(iii) evidence in reply is not appropriate in the statement of grounds and particulars;

(iv) there is a possibility of further delay; and

(v) the amendment is not consequential upon the section 104 amendment."

The decision continues:

" Factors (ii), (iii) and (iv) indicate excessive detriment.  Factor (v) is relevant to determining which delay in factor (i) is appropriate: in this case it is the delay of 34 months, which is clearly excessive.  I note that factors (ii) and (iii) are based on different presumptions: factor (ii) is based on the particular being part of the case in chief, and factor (iii) is based on the particular relating to evidence in reply.  I recognize that both situations are unlikely to apply simultaneously.  However, I do not need to determine which situation actually applies, as there is excessive detriment in either case.  I consider that it is established that the prejudice is undue, and the amendment should not be allowed."

In the case of factor (i), the delay in the present matter is comparable to that obtaining in the earlier situation, and the circumstances in regard to the other factors seem the same in each case.  If I were to follow the earlier decision (because they are only decisions of a tribunal I do not necessarily have to do so), I would conclude that the amendment should not be allowed.

However, it was argued by Mr Ward that the previous decisions in this area are, in effect, unsound.  As I understand it, he was mainly concerned that the approach adopted was too strict and inflexible.  He may also have been concerned at the complexity of the tests formulated in these decisions, but if so, any criticism in this regard would appear to be misplaced.  By formulating detailed tests and comprehensively specifying the factors to be taken into consideration in determining whether undue prejudice will occur, guidance is provided to participants in opposition proceedings and ensures consistency of decision making.

Mr Noonan's response to Mr Ward criticism of the earlier decisions was that the Commissioner is bound by the legislation contained in the Patents Act and Patents Regulations, and where decisions made by the Commissioner have not been overturned by the courts or the Administrative Appeals Tribunal then those decisions should be regarded as correct. I fully agree.

Mr Ward seemed to base his argument primarily on the view that because the opposition procedures had been modelled on Federal Court procedures, the same flexibility should apply to the opposition procedures as with the Federal Court in the way it treats amendments to pleadings.  According to Mr Ward, it is the practice of the Federal Court to allow such amendments right up to the hearing.

While I accept Mr Ward's account of the way that the Federal Court operates (see, for example, National Australia Bank v Nobile, 100 ALR 227), I do not see any reason to conclude because of that that the present approach, exemplified by Diamond Scientific Company v CSL Limited, to allowing amendments of statements of grounds and particulars in opposition proceedings is unsound. There is a legislated procedure for serving evidence in support, answer and reply in opposition proceedings, and further evidence can be served at the Commissioner's discretion. That procedure, which has been in existence since the Patent Regulations of 1904, is a particularly efficacious one given the often complex nature of the expert and documentary evidence in these proceedings and the ability of an applicant to amend its complete specification at any time during the opposition procedure. While there is no doubt that the concept of a Statement of Grounds and Particulars is an adaptation of Federal Court procedures, given the legislative frame-work of the opposition procedures, which, as I understand it, does not have any counterpart in Federal Court procedures (at least not as reflected by, for example, section 160 of the Patents Act 1990 and Chapter 12 of the Patents Regulations), I see little basis for the analogy which Mr Ward sought to draw.

Accordingly, I refuse the amendment to the Statement of Grounds and Particulars.  The document which is referred to by the particular (Australian patent application 563499) is not admissible in the evidence of the opposition, but will be addressed in a bar-to-sealing consideration later in this decision.

The substantive opposition

Preliminary issues

At the hearing Mr Ward indicated that one of the three documents in the evidence in support as evidence of the prior art could not be proven to have been published before the priority date of the claims in suit, and would not be relied upon.  Mr Noonan also disputed whether the other two, Australian patent application 609915 and the Armortech brochure, had been satisfactorily shown to have been published before the earliest priority date. 

Application 609915 is referred to in the Statement of Grounds and Particulars as "AUB 609,915", and the document in the evidence in support is the accepted application, that is, the B-level publication.  Mr Ward conceded that this had not been published in time.  However, in the evidence in reply is the complete specification as lodged of application 609915, the A-level publication 27024/88.  This had been published in time, but Mr Noonan submitted it had not been particularized and was not evidence which was actually in reply and was therefore not admissible.  The Statement of Grounds and Particulars does include a particular:

" All published patents or applications falling within the families of each of the patents referred to......"

However, as Mr Noonan pointed out, the decision in CSIRO v CEM Corp, (1994) AIPC 91-066, found that such a particular was deficient, and could not be relied upon at the hearing. In my opinion, the same holds here, though given that the evidence in question, application 27024/88, was served as evidence in reply and in light of what I have said earlier on the relationship between such evidence and the Statement of Grounds and Particulars I doubt whether much of consequence flows from this.

Mr Noonan referred me to two unreported Patent Office decisions - Sandvik AG v Kennametal Inc., issued 7 May 1992 concerning patent application 587141, and WR Grace & Co.-Conn v American National Can Company, issued 10 January 1994 concerning patent application 571175.  The circumstances of both these cases were similar to those in the present matter, in that the evidence consisted of the B-level publication of a document that was published after the relevant priority date, instead of the A-level publication which was published before.  However, both these cases differ from the matter in hand, in that it appears from the decisions that the A-level document was not in evidence even by the time of the hearing.  In the present case the A-level document was included in the evidence in reply.

I believe that the crucial point in all of this is that it was clear on the face of the evidence in support that the opponent would have intended the A-level document be in the evidence in support, rather than the B-level document, provided it, the opponent, had been aware of the implications involved in choosing one over the other.  Mr Noonan, as I understand it, agreed that the applicant had been aware from the outset that the opponent had mistakenly used the B-level document in evidence.  Moreover, the documents in question are substantially identical in what they disclose.

If I were to find that application 27024/88 was not admissible, this would be tantamount to a finding that it is in the nature of further evidence.  I find this outcome impossible to reconcile with the actual circumstances of this matter.

Therefore, I find that the Australian patent application 27024/88 is admissible as evidence in the opposition.

I turn now to the Armortech brochure, which is in the evidence of both Dr Donaghy and Mr Hatton.  There is no evidence that Dr Donaghy was aware of the document prior to the time of making his declaration.  Mr Hatton, according to his evidence, was given the document in 1985 while he was in the United States.  He brought the document back to Australia.  There is no evidence of the document having ever been published to anyone in Australia.  At one stage in the Hatton declaration it appears there is a possibility that may have been intending to declare to something along these lines, but the passage contains a typographical error and its meaning is lost.  The wording in question is:

" I brought this brochure back to Australia and conducted research into cables utilising the ARMORTECH product.  ARMORTECH cables that was given to a colleague, also from Olex Cables during a visit to the U.S.A. in 1984/85."

At the hearing, Mr Noonan drew my attention to the fact that there was no evidence on the circumstances under which Mr Hatton had been given the Armortech brochure, for example, if there was a duty of confidence involved.  He also drew my attention to the fact that the so-called "brochure" appeared to comprise a collation of disparate documents which had not been satisfactorily established as having all been published before the priority date of the present claims.

While I consider Mr Noonan's submissions have some force, I believe that they are only side issues.  The central problem with the Armortech document as a publication is that it was published to Mr Hatton outside Australia, and there is no evidence of Mr Hatton having made it public in Australia.

One of the main authorities in this area is Bristol-Myer's Co.'s Application, [1969] RPC 146. In that case it was said:

" .....if the invention, whether in documentary form or in the form of the invention itself, has been communicated to a single member of the public without inhibiting fetter that is enough to amount to a making available to the public...."

The facts of that case are that someone in the United Kingdom had seen a reference to a South African patent application in a journal, and had had the specification sent to him.  The court concluded its decision with the following:

" We should add that it was at one point suggested by Mr Bagnall that the relevant communication upon which the issue of publication depends in this case might not have been a communication in the United Kingdom.  This point was not canvassed before the superintending examiner or the Patents Appeal Tribunal and the exact facts are not known.  Accordingly we do not think it is open to us to consider it upon an application for certiorari.  We have assumed, as was assumed below, that the relevant communication by a third party to a servant or agent of Boots was a communication in the United Kingdom."

The facts of the case at hand differ significantly from Bristol-Myer's Co.'s Application, in that the communication to Mr Hatton clearly took place outside Australia and does not qualify as prior publication in Australia - see Wood v Westaflex (Aust), 20 IPR 387.

In order to reach a finding that there had been publication of the Armortech brochure in Australia before the priority date of the claims in suit would, I think, require evidence that Mr Hatton had communicated the document without fetter to at least one member of the public in Australia, and, given the onus on the opponent in this regard, some corroborating evidence would also appear essential.  There is no such evidence, and I will not make any further reference to this document.

Section 40

At the hearing the opponent indicated that it no longer wished to rely on this ground.  Mr Noonan conceded that some of the language employed in the document (such as, in the claims, "subaqueous" instead of, for example, "underwater",  and "longer-sized") could be better expressed, and I agree that the wording of the specification leaves something to be desired.  However, I also agree that the document is readily understandable and that the claims are clear.

I find that the specification satisfies the requirements of section 40 of the Patents Act.

Novelty

The only document in evidence as anticipating the present invention and which was prior published before the earliest priority date of the present claims is Australian patent application 27024/88.  Mr Ward conceded that there was one feature defined in the claims which did not appear in the citation, namely, the plastics coating on the metal tube containing the optical fibre.  In arguing lack of novelty, Mr Ward resorted to a line of decisions typified by Griffin v Isaacs (supra).  In effect, it appears that the opponent's case on novelty is that the plastics coating did not involve an inventive step.  Consideration of inventive step in determining novelty is contrary to the prevailing orthodoxy on this, as, for instance, has been set down in Nicaro Holdings v Martin Engineering, (1990) AIPC 90-670. That, and the other cases of recent vintage on this point, have held that the appropriate test is the so-called "reverse infringement test" as set out in Meyers Taylor v Vicarr Industries, 137 CLR 228, in which Aickin J stated:

" The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged invention would, if the patent were valid, constitute an infringement."

In Rodi & Wienenberger v Henry Showell, (1969) RPC 367, it was held that infringement of a claim occurs where "each and every one of the essential features of that claim has been taken." It was common ground between the parties in the present matter that the present invention is a combination one. It is established law that all features of a true combination are essential, and that the present invention is in this category is clear from the description of the invention in the specification. Factors such as workshop variations and features of common general knowledge are therefore rendered irrelevant, and since the prior art disclosure omits at least one feature (the plastic coating) of the claimed combination, then there is no lack of novelty in light of that disclosure.

Accordingly, I find that the invention defined by the claims is novel.

Obviousness

A determination of whether an invention is obvious requires that, firstly, all the integers of a claim be common general knowledge, and, secondly, that it would have been obvious to a non-inventive skilled worker in the field (that is, the person skilled in the art) to not only select the separate integers which make up that combination, but also to select the particular combination of those integers in question (see Minnesota Mining & Manufacturing v Beiersdorf (Australia), 144 CLR 253).

Mr Ward commented on the difficulty faced by opponents after 3M v Beiersdorf in proving lack of inventive step under the 1952 Act, due to the need to establish the common general knowledge.

I consider that, at the very least, in order to establish that the present invention is obvious would require that the opponent show that the arrangement of an optical fibre in a metal pipe coated with plastics and capable of being wound on a core body was common general knowledge in the art of the present invention.  An item of evidence in point is Australian patent application 27024/88.  However this does not, as I have previously said, disclose a plastic coating on the metal tube.  More evidence appears in Dr Donaghy's declaration, which includes the statement:

" I am of the view that the concept of placing optical fibres in a small metal tube and then winding that tube onto a cable construction was well known at the priority date of the opposed application."

However, from the reading of his declaration, this "view" seems to derive from his awareness of Australian patent application 609915 (the B-level publication of application 27024/88).  I note that in the case of the Armortech brochure (which I have found was not published before the priority date of the claims), he definitely appears to conclude that something was "well known" only on the basis of its disclosure in this one publication.  Moreover, although Dr Donaghy is independent of the opponent, given his employer's apparent involvement in the area of manufacture of the present invention, that independence may be less than it would appear on the face of it to be.  Otherwise, I am prepared to accept that Mr Donaghy's background was such that his evidence on common general knowledge should carry a reasonable amount of weight.

Mr Hatton, after discussing the prior art relating to coating cables in general with plastics, states:

" Before the priority date of the opposed application, I was aware that small metal tubes containing optical fibres could be coated in plastics material.  I was also aware that such tubes could be could be coated in plastics material with comparatively high melting points."

This knowledge seems to be a result of Mr Hatton's dealings with ArmorTech Cables.  There is no suggestion that that knowledge extended beyond himself, insofar as Australia is concerned.

Weighing up the evidence, I am not satisfied that it is sufficient for me to conclude that the arrangement of an optical fibre in a metal pipe coated with plastics and capable of being wound on a core body was common general knowledge in the relevant art at the relevant time.

At the hearing Mr Ward put forward an argument on obviousness based on what was admitted prior art in the specification in suit and the presumption that the inventors were aware of the Armortech brochure.  I do not believe that there is any basis for that presumption, but even so the argument would fail because the invention was made in Japan.

Accordingly I find that the opponent has not established its ground of obviousness.

Bar to sealing

Because I found that Australian patent application 563499 was not admissible as evidence in the opposition, a bar to sealing consideration applies in respect of that publication.

This document discloses a metal tube enclosing at least one optical fibre, and states that the tube may optionally be covered with an extrusion of high melting point plastic.  The tube is surrounded by a number of conductor strands, which in turn are surrounded by a number of armouring wires then more armouring wires.  Interstitial optical fibres may be inserted between the conductor strands and armouring wires.

The invention defined by the claims in suit differs from what is disclosed in this prior art document in the following aspects:

·there is no core body in the prior art arrangement corresponding to that defined in the claims, as construed from the reading of the document as a whole, around which optical fibre units are wound

· the claim defines a plurality of optical fibre units each of which includes an optical fibre accommodated in a metal pipe, from which it must be inferred there is a plurality of metal pipes; however, in the prior art arrangement there is just one metal pipe.

In light of these differences the claims are clearly not anticipated by Australian patent application 563499, and hence there is no bar to sealing a patent on this application.

Conclusion

I have found that none of the grounds of the opposition have been established, and so I dismiss the opposition filed by Pacific Dunlop Limited.  I have also found that no bar to sealing applies to this application.  I direct that the application proceed to sealing, subject, of course to any appeal being filed to this decision.

Costs

Costs in these matters normally follow the event.  Accordingly, in the matter of the request to amend the Statement of Grounds and Particulars, I award costs against the opponent, Pacific Dunlop Limited.  In the matter of the substantive opposition, the applicant has made some section 104 amendments to its specification during the opposition process.  While these amendments are only of marginal significance, they are not absolutely inconsequential.  Having regard to all the circumstances, I award half costs against the opponent, Pacific Dunlop Limited, up to the time the section 104 amendments were advertised as made, namely, 25 August 1994, and full costs thereafter.

Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Davies Collison Cave, Melbourne

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