official notice

decision of a delegate of the commissioner of patents

Application	:	No. 625497 in the name of ASAHI KASEI KOGYO KABUSHIKI KAISHA

Title	:	A photosensitive resin composition for producing a relief printing plate

Action	:	Opposition to the grant of a patent by W.R. GRACE & CO.-CONN.

Decision	:	Issued

Abstract	:	The opposition succeeds on the grounds of failure to comply with section 40, lack of novelty, and the invention not being a manner of new manufacture.  The opposition does not succeed on the issue of obviousness.  The patent application and the complete specification refused.  Costs awarded against the applicant.

patents act 1990

decision of a delegate of the commissioner of patents

Re:	Patent Application No. 625497 by ASAHI KASEI KOGYO KABUSHIKI KAISHA
Opposition thereto by W.R. GRACE & CO.-CONN.
background
Patent application No. 625497 by ASAHI KASEI KOGYO KABUSHIKI KAISHA (ASAHI) was lodged on 23 March 1989 as a convention application based on the application numbered 63-72926 made in Japan on 26 March 1988.

Acceptance of the application was advertised on 16 July 1992.  W.R. GRACE & CO.-CONN.  (GRACE) filed a notice of opposition to the grant of the patent on 16 October 1992.  Leading up to this hearing the Commissioner has allowed amendments to the statement of grounds and particulars, both before and after service of evidence in support.  The Commissioner has also allowed amendments to the specification, which were not opposed by the opponent.  After an earlier hearing ASAHI was also allowed to file further evidence.

The matter was finally set down for substantive hearing on 7 August 1996 in Melbourne.  ASAHI was represented by Mr Ross Macaw QC and Mr Louis Gebhardt.  GRACE was represented by Mr Raymond Evans.

As the application was lodged prior to but advertised accepted after commencement of the Patents Act 1990, the opposition is in substance determined, in accordance with the provisions of section 234(3) of the 1990 Act, under Part V of the Patents Act 1952 but with the procedures of the opposition governed by Chapter 5 of the Patents Regulations 1991.
THE SPECIFICATION
The invention relates to a photosensitive resin composition for producing a relief printing plate, particularly with a photosensitive resin composition containing a specific hindered amine having a piperidine ring, which composition is capable of providing a printing plate having excellent printing resistance.  In the preparation of a printing plate by the use of a photosensitive resin composition, the photosensitive resin composition is generally photopolymerized by irradiation of actinic rays, such as ultraviolet rays.  In this process, either the surface portion of the photosensitive resin composition undergoes photodeterioration due to excessive irradiation by actinic rays, and becomes brittle;  or the inner portion of the photosensitive resin composition is not sufficiently cured.  In this connection, it is noted that the photocured resin layer of a relief printing plate has a thickness as large as from 0.5 to 10.0 mm.  It is difficult to prepare a relief printing plate having a good balance of mechanical strength as between the surface portion and the inner portion.

The specification admits that an ultraviolet absorber and a cyclic hindered amine have been known as a light stabiliser for preventing the photodeterioration of a polymer.  For improving the sunlight resistance and preventing the discolouration of a polymer, it has been attempted to incorporate an ultraviolet absorber or a cyclic hindered amine into a lacquer, a coating material or an ink.  The specification then states: “Up to the present time, no attempt has been made to prevent a photosensitive resin from being photodeteriorated or to prevent the mechanical strength from being lowered by modifying the photosensitive resin composition during the irradiation of strong actinic rays having a main wavelength zone in the ultraviolet region for a short period of time, i. e., at most several tens of minutes, in order to prepare a relief printing plate.”

According to the specification, it was unexpectedly found that when a specific cyclic hindered amine is incorporated in a specific amount, into a photosensitive resin composition comprising a polymer selected from the group consisting of a prepolymer, a binder polymer and a mixture thereof, an ethylenically unsaturated monomer and a photopolymerization initiator, even if the resultant photosensitive resin composition is subjected to excessive radiation by actinic rays in the preparation of a relief printing plate, the photocured resin composition maintains excellent toughness throughout the entire thickness by virtue of the specific cyclic hindered amine, thereby providing a relief printing plate having excellent printing resistance.

The specification ends with the following claims:

.	A photosensitive resin composition, when used to produce a flexographic printing plate having a thickness in the range of 3 mm to 10 mm, said resin composition comprising:
(A)	from 5.0 to 98.0% by weight, based on the total weight of components (A), (B), (C), (D), of a polymer having at least one ethylenically unsaturated group and having a number average molecular weight of 5,000 to 100,000 selected from the group consisting of a prepolymer, a binder polymer and a mixture thereof,
(B)	from 1.0 to 94.0% by weight, based on the total weight of components (A), (B), (C), (D), of an ethylenically unsaturated monomer,
(I), and
(C)	from 0.05 to 10.0% by weight, based on the total weight of components (A), (B), (C), (D), of a hindered amine having a piperidine ring represented by the formula: 

(D)	from 0.001 to 10.0% by weight, based on the total weight of components (A), (B), (C), (D), of a photopolymerization initiator selected from the group consisting of acetophenone and a derivative thereof, benzoin and a derivative thereof,  benzophenone and a derivative thereof, anthraquinone and a derivative thereof, xanthone and a derivative thereof, and thioxanthone and a derivative thereof.
.	The photosensitive resin composition according to claim 1, wherein at least one of the components (A) and (B), contains in its structure a segment containing ether bonds which is represented by the formula:	

		(IX) 

	wherein R1 represents a hydrocarbon group having from 2 to 20 carbon atoms and n is an integer of 3 or more,
	in an amount of 50% by weight or more, based on the total weight of components (A) and (B).
.	The photosensitive resin composition according to claim 1 or 2, wherein the weight ratio of said component (A) to said component (B) is from 95.0/4.0 to 20.0/79.0.
.	The photosensitive resin composition according to any one of claims 1 to 3, wherein said component (B) has a number average molecular weight of less than 2000.
.	A method for producing a flexographic printing plate having a thickness in the range of 3 mm to 10 mm, which comprises the steps of:
	(a) providing a photosensitive resin layer, then in order of exposure;
	(b) subjecting one surface of said resin layer to relief exposure through a transparency having a transmission pattern, and
	(c) subjecting the other surface of said resin to back exposure;
	(d) subjecting the resultant exposed resin layer to development to obtain a relief printing plate;
	(e) washing said relief printing plate; and
	(f) drying the washed relief plate;
	wherein said photosensitive resin layer is composed of a photosensitive resin composition comprising
(A)	from 5.0 to 98.0% by weight, based on the total weight of components (A), (B), (C), (D), of a polymer having at least one ethylenically unsaturated group and having a number average molecular weight of 5,000 to 100,000 selected from the group consisting of a prepolymer, a binder polymer and a mixture thereof,
(B)	from 1.0 to 94.0% by weight, based on the total weight of components (A), (B), (C), (D), of an ethylenically unsaturated monomer,
 (I), and
(C)	from 0.05 to 10.0% by weight, based on the total weight of components (A), (B), (C), (D), of a hindered amine having a piperidine ring represented by the formula: 

(D)	from 0.001 to 10.0% by weight, based on the total weight of components (A), (B), (C), (D), of a photopolymerization initiator selected from the group consisting of acetophenone and a derivative thereof, benzoin and a derivative thereof,  benzophenone and a derivative thereof, anthraquinone and a derivative thereof, xanthone and a derivative thereof, and thioxanthone and a derivative thereof.
.	The method according to claim 5, comprising the step of subjecting the other surface of said resin layer to masking exposure though a masking film after step (a) and prior to step (d), wherein the sequence of said masking exposure step, relief exposure step (b) and back exposure step (c) is selected so that said masking exposure step is conducted prior to relief exposure step (b).
.	The method according to claim 5 or 6, wherein at least one of components (A) and (B) contains in its structure a segment containing ether bonds which is represented by the formula:

		(IX) 

	wherein R1 represents a hydrocarbon group having from 2 to 20 carbon atoms and n is an integer of 3 or more,
	in an amount of 50% by weight or more, based on the total weight of components (A) and (B).
.	The method according to any one of claims 5 to 7, wherein the weight ratio of said component (A) to said component (B) is from 95.0/4.0 to 20.0/79.0.
.	The method according to any one of claims 5 to 8, wherein the said component (B) has a number average molecular weight of less than 2,000.
.	A flexographic printing plate having a thickness in the range of 3 mm to 10 mm produced by the method of any one of claims 5 to 9.

EVIDENCE
The evidence-in-support consists of:
.	Statutory declaration in the name of RODNEY IAN LINDSAY CRUISE,
.	Statutory declaration in the name of ROBERT JOHN BOLTON.
.	Statutory declaration in the name of JOHN LYNDON GARNETT (first Garnett declaration),

The evidence-in-answer consists of:
.	Statutory declaration in the name of DAVID HENRY SOLOMON (first Solomon declaration),
.	Declaration in the name of MASAHIKO TAKAHASHI (first Takahashi declaration).

The evidence-in-reply consists of:
.	Statutory declaration in the name of JOHN LYNDON GARNETT (second Garnett declaration),
.	Statutory declaration in the name of RAYMOND LEWIS EVANS regarding date of publication of exhibit JLG-4.

The further evidence by the applicant consists of:
.	Statutory declaration in the name of DAVID HENRY SOLOMON (second Solomon declaration),
.	Declaration in the name of MASAHIKO TAKAHASHI (second Takahashi declaration).

The evidence-in-reply to the further evidence consists of:
.	Statutory declaration in the name of JOHN LYNDON GARNETT (third Garnett declaration).
comments on evidence
Evidence shows that the weight percentages and molecular weights of the various components are conventional.  Components A, B, C, and D were known per se before the priority date.  It was known before the priority date to produce flexographic printing plates using compositions based on components A and B.  Component D specifies a conventional photoinitiator.  Component C is known in the art as HALS (Hindered Amine Light Stabiliser).

ASAHI’s own expert witness states (the first Solomon declaration, paragraph 3.7):  “In summary, I do not consider any of the components nor the specific combination of components claimed in the description and in claim 1 to be novel per se and, indeed, similar formulations can be found in the literature.  However, I note that the opposed specification is directed specifically to a new and unsuspected use of the HALS component of the composition i. e. the HALS is added to a conventional photosensitive resin in order to produce a flexographic plate having a thickness of not less than 3 mm and having a good balance of mechanical strength as between the surface portion and the inner portion.”

Common knowledge about HALS was evidenced in the Bolton declaration by referring to the Modern Plastics Encyclopedia 1985-1986 and 1986-1987 editions.  It was known that HALS were derivatives of tetramethylpiperidines and represented the most important advance in stabilisation technology.  HALS were known to be useful in stabilising a number of polymeric compositions including polyurethanes.  Compounds TINUVIN® 144, TINUVIN® 770, CHIMASORB® 944, TINUVIN® 292 and TINUVIN® 622, corresponding with specific examples of component C, were in commercial use in Australia prior to March 1988.  GRACE has provided evidence that polymeric coating compositions containing the HALS were known to possess improved weatherability.

The evidence filed by the opponent also shows that each of the process steps (a) to (f) of claim 5 are conventional.
SUBMISSIONS
Both parties made oral submissions at the hearing.  ASAHI also submitted a written résumé about the prior art cited by GRACE.
Section 40

According to GRACE, claim 1 has a flexographic printing plate having a thickness in the range of 3 mm to 10 mm.  There is a difference between the thickness of the resin layer and the thickness of the plate (because the plate also includes a backing layer).  GRACE argued that a thick backing layer and a thin resin layer is included within the scope of the claims because the claims do not require the photopolymer resin layer to be thick.

I agree with GRACE that the claims define the plate thickness rather than the thickness of the resin layer.  Therefore, the claimed plate may have a thick backing layer and a thin resin layer.  Even though the second Takahashi declaration (paragraph 3.4) states that the substrate is usually thin and the resin layer is thick, I do not see any such limitation in the claims.  Both parties agree that the problem of degradation at the surface of thin coatings (during curing) is not experienced.  There is no danger in the case of thin coatings that the inner portion is insufficiently cured.  Page 5 of the opposed specification makes it clear that the thickness of the relief layer (and not the plate thickness) is relevant to the problem.  If a thick resin coating is a distinguishing feature of the invention, then it must be stated clearly in the claims.  The claims must make it clear that the flexographic printing plate has a thickness in the range of 3 mm to 10 mm, and has a layer of the photosensitive resin composition, the thickness of this resin layer being 1 mm or more. The specification refers to this thickness of the resin layer on page 53. The claims are not so limited and thus in my view are not fairly based. My finding applies to claim 1 as well as to claim 5, and consequently to claims dependent on them.

The opponent further argued that the restrictions on the molecular weight of the prepolymer are arbitrary, and that such trivial restrictions are not enough to give novelty.  Where a claim includes a limitation which is not related to the performance of the invention, it is an arbitrary restriction which, GRACE argued, cannot give rise to novelty on the basis of the reverse infringement test — NRDC’s Application, 24 IPR 123 at page 28.  Prior to the amendments, three molecular weights were exemplified.  After the amendments two examples have molecular weights (2,800 and 130,000) outside the claims and only one example (11,000) is within the claims.  Some of the so-called prepolymers (around 2000 molecular weight) are now considered monomers.

I note that these amendments were made while the opposition was in progress and that GRACE did not object to these amendments when they were proposed.  In any case, if the amendments meet the provisions of the Patents Act, they are not objectionable merely because the amended claims are not the same as the earlier claims.

Claims 2 to 4 are appended to claim 1, and define the photosensitive resin composition according to earlier claim(s) with further features.  Claim 1 itself defines a composition when used to produce a plate.  The question arises whether the appendancy of claims 2 to 4 import the when used aspect of claim 1 into these claims.  In my opinion it does, particularly when I note that claim 1 was amended during the opposition proceedings to the when used form.  I will therefore interpret claims 2 to 4 as defining a composition when used to produce a plate. 
Novelty
GRACE argued that US 4609612  (Berner et al), referred to as JLG-18, teaches all features of claim 1.  US 4279720 (Berner), JLG-19, also anticipates the claims. The paper by Berner et al, JLG-4 (second Garnett declaration), was published in J. Oil Col. Chem. Assoc. (1978, 61, 105-113), a journal commonly read in Australia.  GRACE argued that it is a part of the common general knowledge. Furthermore, with regard to novelty, this paper also anticipates the claimed invention.

The compositions disclosed by JLG-18 and JLG-19 include the combination of A, B, C and D of amended claim 1.  JLG-18 is directed to photoresists and printing plates having a resin thickness of 60 m.  JLG-19 is concerned with decreasing the yellowing of a piperidine-derivative-containing photocured composition after UV curing.  However such differences between the cited art and the present invention are not reflected in the language of the present claims.  In other words, the composition and process actually claimed are old, and mere novelty of purpose cannot found a valid claim — see Adhesive Dry Mounting v Trapp (1910) RPC 341.  I find that all the claims of the opposed specification lack novelty in light of the proper construction of these claims.  None of the claims of the opposed specification define the thickness of the resin layer, and would therefore include thin films or coatings of JLG-18.

However I note that none of the documents cited by GRACE discloses the process of making flexographic printing plates with a thick polymeric layer (greater than 1 mm) by using the specified composition.  These documents would not satisfy the “reverse infringement test” as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) CLR 228 at page 235 provided that the claims are amended to define the thickness of the resin layer.

In summary, the present claims are not novel.  Amended claims defining the thickness of resin layer as 1 mm or more would be novel.

obviousness
According to GRACE the alleged invention resides in component C.  Component C is a component known as Hindered Amine Light Stabiliser (HALS) and it was well known before the priority date.

According to ASAHI, HALS were used to prevent or minimise deterioration of various polymer systems when exposed to the elements, particularly UV radiation and air, but not for solving the problem that the opposed specification is directed towards solving.  HALS were known to prevent the inhibition caused by oxygen in the formation of the polymer film, and were also known to stabilise the film (or plate) against long term exposure to light.  However  ASAHI assert that there was no suggestion on the use of HALS to prevent “overcure” at the surface during the short period of intense radiation used in making a printing plate of thickness 3 mm or more.  The Berner et al paper does not connect printing plate, films of thickness 3 mm or more, and HALS.  According to ASAHI, photosensitive compositions combining A, B, C and D were known, but the invention is directed to a new and unexpected use of HALS, that is the protection of printing plates of more than 3 mm thickness against UV induced photodegradation.

Some of the publications cited by GRACE merely give background information.  JLG-11 (UV Curing Science and Technology, Volume II, edited by S. P. Pappas, pages 314-316) states that HALS are not UV absorbers.  JLG-12 (an extract from the Encyclopedia of Chemical Technology) states that HALS are radical scavengers and anti-oxidants, and have outstanding activity.  JLG-13 and JLG-14 (extracts from Modern Plastics Encyclopedia) state that HALS are effective and are used at relatively low concentrations of 0.25 to 0.50% by weight.

JLG-16 (Light Stabilization of UV Cured Coatings, by Puglisi and Vigeant, Radiation Curing, August 1980, pages 31-32) discloses that HALS have advantages in curing as well as long term weatherability.  This paper states that the HALS “prevent degradation in the coating by a means other than UV absorbance.  They are effective at lower levels than typical stabilizers and it is believed that their mechanism is self-generating.  That is, these stabilizers are not used up by incident UV radiation, rather they regenerate themselves as a part of the stabilization mechanism.  As a result, these stabilizers have good long-term efficiency.”  The paper presents a table showing the cure efficiency of 300-micron films with a benzotriazole UV absorber.  It states that “As normal, the films have been irradiated only by one side which resulted in big difference of the hardness values at the same cure cycle.”  JLG-17 (Improving the Weatherability of Radiation-Cured Coatings, by Gatechair and Evers III) discloses that “Hindered amines do not interfere with the UV curing process because, unlike common UV absorbers, HALS are aliphatic and thus transparent to most wavelengths of actinic radiation used in the curing process.”

Among the publications cited by GRACE, the most relevant appears to be the paper “Recent developments in photoinitiators” by Berner et al (J. Oil Col. Chem. Assoc. 1978, 61, 105-113).  This paper presents a survey of the photoinitiators which were commercially used at that date.  The paper gives information on the products of their photolysis and their performance in different UV curing systems.  The problems encountered in the light stabilisation of UV curing systems are also discussed.  The introduction to the paper states:

In the past few years UV curing has found a broad field of applications in the area of coatings and inks for metal, paper, plastics, in manufacture of printing plates, and adhesives.

Berner et al discuss light stabilisation in UV cured systems on pages 112 and 113.  The relevant passage is quoted in full below.

Light stabilisers in UV cured systems

Light stabilisers in UV cured systems seems to be a contradiction in terms, since the photoinitiator needs UV light for its performance and the object of the light stabiliser is to protect polymers against the negative influence of UV light.  Consequently, using conventional UV absorbers it was found that the cure efficiency may be affected as indicated in Table 8.

Table 8	
Cure efficiency in the presence of a UV absorber 300 films, benzo-	
triazole type UV absorber	
	exposure time	pendulum hardness	
%UV-absorber	(sec)	top side	under side	
none	4.5	163	148	
0.1	4.5	117	30	
0.1	9.0	169	131	

The films have been irradiated only on one side which resulted in big differences of the hardness values at the same cure cycle.  On the other hand, by doubling the exposure time it was possible to obtain a well cured film on the reverse side.

In thicker films, like 2 mm unsaturated polyester plates, the difference in cure efficiency was even more pronounced.

Table 9	
Cure efficiency in the presence of a UV absorber (benzo- triazole type)	
		residual	
	exposure time *	styrene content **	
%UV-absorber	(sec)	(%)	
none	6	0.9	
0.1	18	8.2	
0.1	24	3.2	
0.2	48	3.3	
—	cold cured	2.3	
* From both sides	
** According to DIN 16 945	

The conclusion from these tests is that, depending on the film thickness used, it is possible to use conventional UV absorbers at low levels for the stabilisation of UV cured coatings.  Retardation of cure rate and the risk of “overcuring” the surfaces has to be considered, which may provide weak links in the light stability of the binder.

UV curing in the authors’ opinion opens a new interesting outlet for a new class of light stabilisers—the hindered amines.  These light stabilisers do not function by the absorption of UV light as do conventional UV absorbers and consequently do not affect UV curing.

The performance of these light stabilisers in stabilising a clear coating based on an aromatic urethane-acrylate pre-polymer is presented in Figure 8.

Fig.  8

The initial discolouration of the coating is due to a reversible yellowing caused by the photoinitiator used.  This discolouration disappears gradually during further exposure.  The sample which does not contain the light stabiliser shows a further increase in the yellowness index caused by the degradation of the polymer.

The Berner paper clearly presents the problem (retardation of curing rate balanced against the risk of overcuring) that arises when conventional, UV absorbing light stabilisers are present during the UV curing of photopolymer systems.  In my view the paper states that the problem is more pronounced in plates having a thicker photopolymer layer.  This is because the UV light is absorbed by the stabiliser and cannot penetrate through the photopolymer layer to cure the portion furthest from the light source without overcuring the portion nearest to the light source.  I believe the paper recommends the use of HALS instead of a conventional stabiliser, in order to solve the problem and also explains that this works because HALS do not function by absorption of UV light as do conventional light stabilisers.

The opposed specification states that in the prior art process, either the surface portion of the photosensitive resin composition undergoes photodeterioration due to excessive irradiation by actinic rays, and becomes brittle; or the inner portion of the photosensitive resin composition is not sufficiently cured due to the UV light is absorbed.  According to the Berner paper, HALS solve both the problems, i. e., overcuring at the surface portion (because less actinic radiation is required), and retardation of curing at the inner portion (because the UV in the lower level of actinic radiation used is not absorbed and therefore reaches the inner portion).

In their submissions (second Solomon declaration) ASAHI argued that in the opposed specification, HALS obviously do affect the curing process, whereas Berner et al states that HALS “...  do not affect the curing process” (page 112).  ASAHI argued that therefore Berner et al leads away from the opposed specification’s teaching which uses HALS deliberately to affect the cure.  However, in my opinion, this argument is specious and spurious.  Both Berner et al and the opposed specification clearly imply the same thing, i. e., the HALS do not absorb UV light and therefore do not have the adverse effect on the cure efficiency that the conventional (UV-absorbing) light stabilizers would have.  I think that the words used by Berner et al only appear contradictory because they have been quoted out of context — see the full text above.
To summarise the evidence before me, it was known (from various documents) to produce thin resin coatings having components A, B, C, and D as defined in the claims.  These coatings incorporated HALS as component C.  It was also known from the Berner paper that HALS do not absorb ultraviolet rays, and therefore with the right photosensitive resin system would solve the problems of overcuring at the surface portion and retardation of curing at the inner portion.  Such problems arise in UV curing of photopolymer composition, and are more pronounced when thicker layers of photosensitive resin are produced on printing plates.

In light of the disclosure of the Berner paper, interpreted according to the common general knowledge in the art, I would have found the claimed invention to be obvious, if the Berner paper itself was shown to be common general knowledge.  Under the Patents Act 1952, scientific papers cannot be used to prove obviousness unless the papers themselves are common general knowledge in the relevant art.

As regards scientific papers generally, it has been said by Luxmore, J.  in British Acoustic Films v Nettlefold Prod.  (53 R.P.C. 221, at 250):

“In my judgment it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates.  A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less because it is widely circulated.  Such a piece of knowledge only becomes common general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art.”

There is no satisfactory evidence before me to indicate that the disclosure of any of the documents cited by GRACE was common general knowledge in Australia before the priority date.  Therefore I consider that GRACE has not made out any case regarding the issue of obviousness under the Patents Act 1952.
Manner of new manufacture
I have already decided that on a fair construction the claims, as presently drafted, include within their scope both thin photosensitive resin layers on relatively thick flexographic printing plates as well as layers greater than 1 mm thick on a relatively thin backing plate.  I have also decided that the thin-layer-on-thick-plate construction is both not novel and not fairly based.  I do not propose to consider this construction in relation to manner of new manufacture, but rather to ascertain if the novel and fairly based construction of the claims is a manner of new manufacture.

GRACE submitted that many papers (in evidence-in-support) contain compositions claimed in the opposed claims.  The only difference is that there is no disclosure of use in printing plates having a thickness of 3 to 10 mm.  In the case of Commissioner of Patents v Microcell Ltd., 102 CLR 232 at page 251, the High Court held that there was “in truth nothing but the claim for the use of a known material in the manufacture of known articles for the purpose of which its known properties make that material suitable.”  Therefore, GRACE argued, the claimed invention is not a manner of new manufacture.

According to GRACE, all that ASAHI appears to have done is to use HALS, as recommended in the Berner paper, to produce a thick plate using a conventional resin composition.  The relief printing plate was found to have a good balance of mechanical strength as between the surface portion and the inner portion, exactly as would be expected.  Following Commissioner of Patents v Microcell Ltd. [supra], the claimed invention is not a manner of new manufacture.

In Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd and Another, 34 IPR 255 at pages 272-273, the full Federal Court ruled that:

“Counsel for Ramset said that the point raised in the particulars of objection was not one of obviousness; that was covered by para 3 of the particulars of objection, and it was abandoned at the commencement of the trial.  What the relevant particulars of objection sought to raise was the assertion that there is no quality of invention — no inventive merit — involved in the alleged invention the subject of the Australian patent.  It was submitted that, just as it was raised in other cases, notably Werner v Bailey and Grace v Asahi, this is exactly what can be raised according to what the High Court said in Mirabella, namely, that in determining whether there is a manner of manufacture (or manner of new manufacture), the court is not confined to the face of the specification itself.  The court may look to prior publications, including the advertisements of the Frimeda clutch here which reveal that there is nothing that could be said to constitute inventive merit for the purposes of s 100(1)(d).”  (emphasis added)

Ramset is an authority for me to look to earlier publications to see if they reveal whether there is something in the opposed specification that could be said to constitute inventive merit.  Therefore I am entitled to refer to the Berner paper while deciding the issue of manner of new manufacture.

I have already assessed the technical disclosure of the Berner paper above.  I agree with the submissions made by GRACE.  All that ASAHI has done is to use HALS, as recommended in the Berner paper, to produce a thick plate using a conventional resin composition.  The relief printing plate was found to have a good balance of mechanical strength as between the surface portion and the inner portion, exactly as would be expected.  Following Commissioner of Patents v Microcell Ltd. [supra], I conclude that the claimed invention is not a manner of new manufacture.
CONCLUSION
I have found that since the claims fail to specify the thickness of the resin layer, they fail to comply with section 40. Therefore GRACE succeeds on this ground of opposition. GRACE also succeeds on the issues of manner of new manufacture and the claims lacking novelty. The opposition, however fails on the issue of obviousness.

These grounds of objection (section 40 and novelty) could, in my view, be overcome by amending the claims so that they are limited to the thickness of the resin layer in addition to the thickness of the printing plate.  However, in my view, the invention would not still be a manner of new manufacture in spite of any such amendment being made. Therefore, I refuse the patent application and the complete specification, subject to any appeal that may be made.
COSTS
Both parties submitted that their arguments regarding the costs were the same as those in the related case of patent application no. 624994. [Patent Office decision issued 11 November 1996.] (The circumstances regarding amendments and Senior Counsel were the same.)  In that case, GRACE submitted that costs should follow the event; however there are two additional factors that should be considered.  (1) The opponent has already been partially successful in requiring the applicant to amend the specification and clearly had good reasons for opposing.  (2) Regardless of the result it was not necessary for ASAHI to be represented by Counsel let alone Senior Counsel in addition to a patent attorney.  The matter could have been adequately dealt with by a patent attorney and there was no need for counsel.  (Alcon Laboratories v Allergen Inc.  handed down on 1 August 1995.) 

In the light of their submissions, I believe that ASAHI has agreed that GRACE was successful in getting ASAHI to amend the application prior to this hearing and should therefore be entitled to their costs prior to this hearing regardless of the outcome.  ASAHI further submitted that in spite of the amendment, GRACE decided to persist with the substantive opposition, and therefore GRACE should not be entitled to costs subsequent to the amendment.

However, I disagree; and since GRACE has been successful in its opposition, I therefore award full costs against ASAHI.

Rob Melvin
Delegate of the Commissioner of Patents

Patent attorneys for the applicant: Watermark, Melbourne
Patent attorneys for the opponent: Phillips, Ormonde & Fitzpatrick, Melbourne