COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION (PATENTS COURT)
The Hon Mr Justice Lewison
HC 05 C02523
Strand, London, WC2A 2LL
B e f o r e :
THE RT HON LORD JUSTICE JACOB
THE RT HON LORD JUSTICE WALL
| Vector Corporation
|- and -
|Glatt Air Techniques Inc
Simon Thorley QC (Douglas Campbell was present at the 31 July hearing only)
(instructed by Cripps Harries Hall LLP) for the Respondent
Hearing dates: 3 and 31 July 2007
Crown Copyright ©
Lord Justice Jacob:
A European patent application or a European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed.
So far as is relevant here, the Patents Act 1977 provides:
76(3) No amendment of the specification of a patent shall be allowed … if it-
(a) results in the specification disclosing additional matter…
Section 76 must be given a purposive construction. Its purpose is to stop patentees inserting information after filing which enables them to support their claims. The addition of information irrelevant to claims as sought to be amended is a mere explanation which harms no one and assists the public. There is apparently no direct authority in the United Kingdom relating to amendments of a patent specification by way of an additional acknowledgement of prior art.
However, there is a more general principle stated by Aldous J in Bonzel v Intervention (No 3)  RPC 553 at 574. He stated the test for examining whether amendment involved the adding of subject matter to be as follows:
(1) To ascertain through the eyes of the skilled addressee what is disclosed, both explicitly and implicitly in the application.
(2) To do the same in respect of the patent as granted.
(3) To compare the two disclosures and decide whether any subject matter relevant to the invention has been added whether by deletion or addition. The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application either explicitly or implicitly.
It will be noted that Aldous J used the expression "subject matter" whereas s 76 does not use that expression; it merely uses the expression "matter". Is there a difference? Article 123 of the European Patent Convention provides [I set it out].
It might be suggested that our draftsman in s 76 was intending to do something different from that in art 123 and more especially so because s 76 is not one of those sections which by s 130(7) of the Patents Act 1977 is expressly stated to be intended to have as near as is practicable the same effect as the corresponding article of the European Patent Convention. However, I have come to the firm conclusion that s 76 is not intended to have a different effect from art 123.
Mr Thorley points out that any such construction could lead to a perfectly absurd result. An amendment could be effected in the European Patent office to a patent application or, in the case of opposition proceedings, a granted patent which would be perfectly in accordance with the European Patent Convention but which, if there was a difference of meaning between s 76 and art 123, could result in invalidity here. That is too absurd for words. I think s 76 in this respect has exactly the same meaning as art 123.
"I think the test of added matter is whether a skilled man would, upon looking at the amended specification, learn anything about the invention which he could not learn from the unamended specification."
I went on to quote Aldous J in Bonzel. His formulation is helpful and has stood the test of time.
"With regard to Article 123(2) EPC, the underlying idea is clearly that an applicant shall not be allowed to improve his position by adding subject-matter not disclosed in the application as filed, which would give him an unwarranted advantage and could be damaging to the legal security of third parties relying upon the content of the original application."
The applicant or patentee could gain an unwarranted advantage in two ways if subject-matter could be added: first, he could circumvent the "first-to-file" rule, namely that the first person to apply to patent an invention is entitled to the resulting patent; and secondly, he could gain a different monopoly to that which the originally filed subject-matter justified.
 A number of points emerge from this formulation which have a particular bearing on the present case and merit a little elaboration. First, it requires the court to construe both the original application and specification to determine what they disclose. For this purpose the claims form part of the disclosure (s.130(3) of the Act), though clearly not everything which falls within the scope of the claims is necessarily disclosed.
 Second, it is the court which must carry out the exercise and it must do so through the eyes of the skilled addressee. Such a person will approach the documents with the benefit of the common general knowledge.
 Third, the two disclosures must be compared to see whether any subject matter relevant to the invention has been added. This comparison is a strict one. Subject matter will be added unless it is clearly and unambiguously disclosed in the application as filed.
 Fourth, it is appropriate to consider what has been disclosed both expressly and implicitly. Thus the addition of a reference to that which the skilled person would take for granted does not matter: DSM NV's Patent  RPC 25 at -. On the other hand, it is to be emphasised that this is not an obviousness test. A patentee is not permitted to add matter by amendment which would have been obvious to the skilled person from the application.
 Fifth, the issue is whether subject matter relevant to the invention has been added. In case G1/93, Advanced Semiconductor Products, the Enlarged Board of Appeal of the EPO stated (at paragraph  of its reasons) that the idea underlying Art. 123(2) is that that an applicant should not be allowed to improve his position by adding subject matter not disclosed in the application as filed, which would give him an unwarranted advantage and could be damaging to the legal security of third parties relying on the content of the original application. At paragraph  it explained that whether an added feature which limits the scope of protection is contrary to Art 123(2) must be determined from all the circumstances. If it provides a technical contribution to the subject matter of the claimed invention then it would give an unwarranted advantage to the patentee. If, on the other hand, the feature merely excludes protection for part of the subject matter of the claimed invention as covered by the application as filed, the adding of such a feature cannot reasonably be considered to give any unwarranted advantage to the applicant. Nor does it adversely affect the interests of third parties.
 Sixth, it is important to avoid hindsight. Care must be taken to consider the disclosure of the application through the eyes of a skilled person who has not seen the amended specification and consequently does not know what he is looking for. This is particularly important where the subject matter is said to be implicitly disclosed in the original specification.
"If the specification discloses distinct sub-classes of the overall inventive concept, then it should be possible to amend down to one or other of those sub-classes, whether or not they are presented as inventively distinct in the specification before amendment. The difficulty comes when it is sought to take features which are only disclosed in a particular context and which are not disclosed as having any inventive significance and introduce them into the claim deprived of that context. This is a process sometimes called 'intermediate generalisation."
The spray nozzle itself is shielded, preferably by being surrounded by a cylindrical partition extending from the orifice plate or screen at the bottom end of the product container to shield the spray nozzle tip.
It has been observed in the course of several laboratory Wurster coating trials that material, including substrate, from the fluidization or processing air stream has been drawn into the spray nozzle liquid/air jet before the spray pattern has been fully developed. In some cases, when the material being coated has abrasive properties, it was found that the material was moving with sufficient force to cause erosion of the nozzle tip.
Accordingly, the present invention introduces a shielding or barrier means around the lower portion of the nozzle, within the upbed, for shielding the nozzle and allowing up flow of air within the shielding means around the nozzle. This ensures that particles, disposed in the product container outwardly of the barrier, are prevented from entering the spray pattern before the spray pattern is sufficiently developed. This allows the droplet density to decrease before contact therewith by the particles of the fluidized bed and, accordingly, the particle surface will be more evenly wetted preventing excessing particle agglomeration. The liquid contact with the particles can be more precisely controlled and higher spray rates can be achieved with less agglomeration.
A principal object of this invention is to shield the spray discharging nozzle. The shield prevents the entry of particles into the spray pattern before the spray pattern has had an opportunity to develop.
Another object of this invention is to provide an apparatus by which particles to be coated are prevented from entering the spray pattern until such time as the droplet density of the spray pattern has been substantially reduced.
Yet another object of this invention is to provide a columnar shield of upwardly moving air about the lower portion of the spray pattern formed by a spray nozzle of a Wurster system processor and wherein the shield may be adjusted vertically according to the spray pattern being discharged and the air flow velocity of the processing air.
A further object of this invention is to provide a shield such as that set forth in the immediately preceding object and whereby the vertical positioning of the shield may be utilized to alter the associated spray pattern.
Yet another object of this invention is to provide a coating zone within the upbed of a Wurster system coater whereby the coating zone is protected by a surrounding column of upwardly moving air in order to allow the coating zone to more fully develop and the liquid droplet density thereof to be substantially reduced prior to entry of particles into the coating zone.
The partition 40, as well as the tubular column of upwardly rising air about the spray nozzle assembly, shields the lower, beginning portion, of the spray pattern 56. The particles 60, passing upwardly through the upbed 30, are not drawn into this spray pattern. The annular column of air thereby allows spray pattern 56 to substantially develop, and the liquid droplet density of the spray pattern is substantially reduced before particles 60 enter into the spray pattern 56.
Various modifications to the above-described preferred embodiment may be utilized. For example, a spray nozzle may be utilized in systems other than Wurster coater type systems where shielding is desirable. Such systems may not require the spray nozzle to be upwardly disposed; the spray nozzle may be angled with respect to the major axis of the container. The shielded spray nozzle may also be utilized without a Wurster-type cylindrical partition 22. The shielded spray nozzle may also be within an expansion chamber instead of the product container. Further, although an air distribution plate or screen is depicted, gas flow may originate into the processor through other structural arrangements. In addition, although the shielding of the spray nozzle is preferably provided by an inner cylindrical partition 40, other shielding arrangements may be utilized. For example, shielding of the spray nozzle may be accomplished by formation of an air wall or stream that surrounds the nozzle and prevents particles from prematurely entering into the spray pattern. Alternatively, a deflector or shield may be formed integral with the spray nozzle itself to prevent particles from interfering with the developing spray pattern.
I have italicised the key passage.
i) He suggested the skilled man would not read the passage as saying gas alone would do because the acknowledgement of the prior art talked about gas alone systems. But, as I have said, not a gas alone system which provided shielding of the spray pattern.
ii) Next he pointed to several passages in the specification which refer to adjustment of the shield. I have quoted one (the third "object of the invention") but there are others, particularly in relation to the preferred embodiment which describes the adjustability of the partition 42 relative to the nozzle. Mr Arnold suggested that such adjustability could only be provided by a physical barrier. I do not see why, but in any event I do not see adjustability as forming a key part of the invention.
iii) He suggested that the italicised portion was tied to the preceding sentence about gas flow other than through a plate because of the initial words "In addition". I do not agree. There is no connection between the two ideas.
iv) He pointed to the fact that there was no detailed disclosure as to how you could provide shielding using just a gas wall. How could you get "clean air" without a physical shield? There would have been something in this point if insufficiency had been raised as an objection to the claim. But it was not.
Mr Arnold suggested that because the onus lay on an applicant for amendment to justify his amendment, it followed that the onus lay on him to prove that his claim was enabled. I do not agree. An attack on a proposed amended claim is no different from an attack on an unamended claim. The onus lies on the attacker in each case.
Mr Thorley QC for Glatt, ventured to suggest on this point, without any evidence, that one way one could provide an air wall would be to provide extra and/or larger holes in the plate near the nozzle. That may be right, but it forms no part of my reasoning.
Mr Davis had a separate point on claim 13 relating to added matter. The point is this. Claim 1 of the patent application as filed required the combination of both the physical shield (the means) and also the upwardly moving column of gas (the gas stream). I have held that this construction of the application is correct. Although claim 13 requires both a means and a gas stream, it is only the gas stream that shields the initial spray pattern. Thus, says Mr Davis, there is added matter, because the application does not reveal that the gas stream alone can shield the initial spray pattern. The place to look for disclosure is the specification. One passage in the specification reads [he then set out the words I have italicised and added]. In my judgment this is sufficient disclosure to support amended claim 13.
 …. So far as claim 1 is concerned, the effect of the amendment is that the claimed invention requires both the "means" and the "gas stream" to act together to shield the initial spray pattern. The application in my judgment also requires both. It points out that in the cited prior art, some patents do not disclose protection of the spray pattern "by an upwardly moving column of air", and others do not disclose a structure having this effect.
"Fluidized bed processor having a product container section (12) opening downwardly into a plenum chamber (16) through a gas distribution plate or screen (18) having openings (20) formed therethrough for upward flow of fluidizing gas, particularly air, from the plenum chamber (16) into the product container section (12) for fluidizing particles (60) therein so as to form a fluidized bed, the product container section (12) including a spray nozzle (32) and a substantially cylindrical partition (22) with an upbed (30) defined therein,
characterised thereby, that a means is provided within the upbed (30) which means is adapted to form in operation a gas stream that surrounds the spray nozzle (32) so that said gas stream shields in operation the initial spray pattern developed by said nozzle (32) against the entrance of particles (60) moving through the fluidized bed."
Lord Justice Wall:
Lady Justice Smith: