EASTMAN KODAK COMPANY (STIMSON'S) APPLICATION

454 [No. 15] REPORTS OF PATENT, DESIGN AND TRADE MARK CASES [1968] Eastman Kodak Co. tStimson'si Application (Amendment P.A.T.) IN THE ApPEAL TRIBUNAL Before MR. JUSTICE LLOYD-JACOB 3rd July, 1968. EASTMAN KODAK COMPANY (STIMSON'S) ApPLICATION Patent-Application-Official objection-s-Amendment-s-New subject matter- S Post-dating-Amendment containing new subject matter withdrawn-s-Appeal allowed. Patents Act, 1949, SSe 6,12. Within a few days of the expiry of the time for putting a patent application in order, the applicants submitted by way of amendment a proposal to delete certain 10 words and add others. After a hearing it was held that the deleted words had the effect of removing what had hitherto been an essential characteristic of the invention, and that the application would therefore have to be post-dated to the date when this amendment was proposed. Post-dating would have had the effect of rendering any patent granted in respect of the application worthless, because of irz,. 15 tervening publication of the invention. On appeal to the Patents Appeal Tribunal the applicants were granted leave to amend their notice of appeal to permit them to contend that the phrases added and deleted were not alternative expressions, one of which was substituted for the other, but that the added phrase was intended to meet a citation raised by the examiner, whereas the deleted phrase was a wholly indepen- 20 dent amendment. The applicants then sought leave to withdraw the amendment by way of deletion which had been the ground on which post-dating had been required by the Patent Office. Held, that although the hearing officer's decision had been right and unavoidable on the case as presented to him, as the applicants sought to withdraw the amend- 25 ment which had given rise to the necessity for post-dating, the application could be allowed to proceed with the priority date of the application. The time for putting the application in order for acceptance was extended by the Tribunal under its powers under section 12(3). This was an appeal to the Patents Appeal Tribunal in application No.1481/65 by 30 Eastman Kodak Company from a decision of an Assistant Comptroller, Mr. J. Field, holding that the application would not be allowed to proceed without postdating to the date on which certain amendments had been proposed. The facts of the case appear from the following decision dated 6th October 1967. Peter Ford, instructed by L. A. Trangmar, appeared for the applicants. 35 455 [1968] REPORTS OF PATENT, DESIGN AND TRADE MARK CASES [No. 15] Eastman Kodak Co, (Stimson's) Application (Amendment P.A.T.) Mr. Field.-The application was filed on 13th January 1965 as a convention application claiming 13th January 1964 as priority date. The application was duly examined and an official letter was issued on 13th December 1965, citing a United Kingdom specification as prior publication of the invention and specifying certain 5 other requirements. The specification was re-filed on 6th October 1967 accompanied by a letter apologising for the delay and indicating that the specification had been amended. The amendments included a significant change in the scope of the claims. A further official letter was issued on 11th October 1967 raising objection to the amended claim 1 and specified the result of a further search carried out by the 10 examiner. The specification was re-filed unamended on 12th October 1967, and on 13th October 1967 the period for meeting all requirements, as laid down by section 12 of the Act, expired. The examiner was not satisfied that all requirements had been met, and as no further amendment was possible, the matter 'Came before me at a hearing on 29th November 1967. At the hearing an objection was raised as to 15 the allowability of the amendments submitted on 6th October 1967. The hearing was adjourned to allow the applicants to consider the matter, and was resumed on 5th December 1967, the allowability of the amendments being then the only issue. The specification as amended is entitled "Exposure Control Means for Photographic Cameras". The opening paragraphs of the specification set out the problem 20 as being the compensation of exposure errors arising from differences of brightness of foreground and background of a scene to be photographed. Compensation has, it is said, hitherto required the use of two photocells; the object of the invention is to employ only one photocell. As originally filed the specification contained the following statement:- 25 "According to the present invention, there is provided a photographic exposure control means comprising a photocell; and means for exposing said photocell to illumination successively through a plurality of apertures of different sizes whereby the response from the photocell is modified". The statement agreed with claim 1 and was confirmed as a statement of invention 30 by the following passage at the end of the specification:"The invention has been described in detail with particular reference to preferred embodiments thereof but it will be understood that variations and modifications can be effected within the soope of the invention as described hereinabove and as defined in the appended claims." 35 In the embodiments described, the apertures are in a rotatable circular shutter spaced from the photocell and are either circular apertures of different diameters or arcuate apertures of different widths. The description on page 3 states- 40 "Referring to Fig. 1, the present invention is employed for illuminating a photocell by light from a scene, alternately from a central scene area, designated 'A', and from the entire or peripheral scene area, designated 'B'." The areas 'A' and 'B' are shown in Fig. 1 as concentric areas. The amended claim 1 submitted on 6th October 1967 is as follows:"1. A photographic exposure control means comprising a photocell arranged to receive light from a scene to be photographed; and means for exposing said 45 photocell to illumination successively from different areas of the scene whereby the response from the photocell is modified." 456 [No. 15] REPORTS OF PATENT, DESIGN AND TRADE MARK. CASES [1968] East/nan Kodak Co. (Stimson's) Application (Amendment P.A.T.) The statement of invention on page 2 has been similarly amended. It will be noted that exposure through a succession of apertures is not an essential feature of the invention of the amended specification; instead there must be "means" for exposing the cell to illuminate successively "from different areas of the scene." 5 Objection was raised that the specification as originally filed on 13th January 1965 disclosed only a control means having means for exposing a photocell through a plurality of apertures of different sizes and contained no justification for the amendment submitted on 6th October 1967 which discloses that other arrangements for exposing the photocell may be used. Consequently, post-dating of the ap (...truncated)