AB Tetra Pak v J Gadsden Pty Ltd

[1995] APO 53

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 590428 in the name of AB TETRA PAK

Title:    Packaging laminate with electron beam hardenable layer

Action:    Opposition by J. GADSDEN PTY LTD under Section 59 of the Patents Act 1952.

Decision:    Issued            .

Abstract:    Opposition succeeds on the grounds of non-compliance with section 40, obviousness and anticipation by prior use.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 590428 by AB TETRA PAK and opposition thereto by J. GADSDEN PTY LTD under Section 59 of the Patents Act 1952.

background

Patent application number 75098/87 was lodged on 3 July 1987 by AB Tetra Pak ("Tetra Pak") and claimed priority from Swedish application number 8602985 filed on 4 July 1986. The application became open to public inspection on 7 January 1988.

Acceptance of the application and complete specification was advertised on 2 November 1989, the accepted application then being allocated serial number 590428.

A notice of opposition to the grant of a patent was filed on 1 February 1990 by J. Gadsden Pty Ltd ("Gadsden"). The evidence stages of support, answer and reply were completed by 31 May 1991, 17 June 1992 and 22 December 1993 respectively. On 2 January 1992 the applicant filed a request to amend the complete specification and amendments were subsequently advertised allowed on 20 May 1993.

The matter was heard in Melbourne on 14 March 1995. The patent applicant was represented by Mr B. Hess of counsel, assisted by Mr S. Plymin (patent attorney of Watermark, Melbourne). The opponent was represented by Mr G. McGowan of counsel, assisted by Mr G. Chambers (patent attorney of Phillips Ormonde & Fitzpatrick, Melbourne).

As the application was advertised accepted before the commencement of the Patents Act 1990, the opposition is proceeding under the provisions of the 1952 Act and Regulations by virtue of section 234(3) of the 1990 Act and regulation 23.3 of the Patent Regulations 1991.

THE SPECIFICATION

The specification relates to a laminate for the manufacture of liquid-tight packing containers, which comprises at least one layer of paper or equivalent fibrous material, e.g. cardboard, with outer layers of plastics and which is provided on one of the outer plastic layers with a colour layer hardened through electron irradiation.

As background to the invention the specification indicates that non-returnable packages have been used for a long time which are manufactured from a laminate which consists of one or more carrier layers of paper or cardboard together with outer and inner coatings of thermo-plastics, such as polyethylene. In such packages the carrier layer provides rigidity of form but since this disappears when exposed to a liquid which is absorbed into the material, liquid-tightness is imparted to the material by laminating it with plastic.

Frequently there is a need to provide such packages with coloured printed markings or patterns, and to achieve this it is usual for printing ink to be applied onto one side of a laminate web of continuous packing container blanks. It is desirable that the printing ink composition used makes possible a production-adapted rapid drying or hardening of the web before the web is divided into individual container blanks. This requirement is said to be met satisfactorily by the known EB-hardenable (electron beam) printing ink compositions, which contain monomers and/or oligomers hardenable by electron irradiation, and with which a practically instantaneous "drying" (hardening) is possible by exposing the printed side of the web to electron irradiation of sufficient intensity.

The problem addressed by the invention is stated in the specification in the following terms:

"However such a printing method with electron irradiation ... has disadvantages ... assumed to be due to undesirable irradiation effects ... which ... bring about impaired tightness properties of packing containers manufactured from such a decoration-printed packing laminate. ...  Thus it has been found that moisture-repellent properties of a paper layer included in a known packing laminate so irradiated are drastically impaired, and that as a result thereof the packing laminate has become more moisture sensitive and consequently less suitable for the manufacture of packing containers for liquid contents."

The solution presented by the specification is to provide a packing laminate with a coating of binder and pigment, located between the layers of fibrous material and colour-carrying plastics, so as to be able to absorb electrons for hardening of the colour layer.

THE CLAIMS

The patent concludes with five claims which read as follows:

"1.  A packing laminate intended for manufacturing a liquid tight packing container, said packing laminate containing at least one layer of paper or cardboard; outer layers of a thermo-plastics material; colour layer containing monomers and/or oligomers hardened through electron irradiation and being applied onto one of said outer layers; and a coating of binder and pigment arranged between the layer of paper or cardboard layer and said one outer layer, carrying said colour layer, said packing laminate being characterised in that the coating is applied to the layer of paper or cardboard in the form of an aqueous dispersion carrying up to 12 per cent by weight binder and up to 76 per cent by weight pigment so as to be able to absorb electrons for hardening of the colour layer directed towards the said one outer layer carrying said colour layer.

2.  A packing laminate in accordance with claim 1, characterised in that the binder is chosen among styrene-butadiene polymer, polyvinyl acrylate, polyvinyl acetate and starch or combination of these, whilst the pigment is chosen among kaolin (china clay), calcium carbonate and titanium dioxide or combination thereof.

3.  A packing laminate in accordance with any one of the preceding claims, characterised in that the coating is used in a quantity of at least 5 g/m2 of the layer of paper or cardboard.

4.  A packing laminate in accordance with claim 4 wherein the coating is used in a quantity of between 10 and 30 g/m2 of paper or cardboard.

5.  A packing container for liquid contents, characterised in that it is manufactured from a packing laminate comprising at least one layer of paper or cardboard with outer layers of thermo-plastics a colour layer hardened though electron radiation and being applied onto one of said outer layers of thermo-plastics, and a coating located of binder and pigment arranged between the layer of paper or cardboard and the one outer layer carrying said colour, the coating of binder and pigment being applied to the layer of paper or cardboard in the form of an aqueous dispersion carrying up to 12 per cent by weight binder and up to 76 per cent by weight pigment so as to be able to absorb electrons for the hardening of the colour layer directed towards said one outer layer carrying said colour layer."

THE GROUNDS OF OPPOSITION

The grounds relied on in the notice of opposition are the grounds in section 59(1)(c) to (i) of the Patents Act 1952. At the hearing, however, submissions were made only in relation to section 40, obviousness and prior use.

EVIDENCE

The evidence in support consists of statutory declarations by Ian K. Williams (with Exhibits IWK1 to IWK11), Wayne P. Johnstone (with Exhibits WPJ1 and WPJ2), Allen Caffrey (with Exhibits AC1 to AC3), Alan W. Tilley (with Exhibits AWT1 and AWT2) and Colin E. Findlayson (with Exhibits CEF1 to CEF3).

The evidence in answer consists of a statutory declaration by Gert Ekdahl.

The evidence in reply consists of a statutory declaration by Matti Salste.

The Williams declaration serves to exhibit samples of laminates, copies of telexes, copies of articles from periodicals, and copies of extracts from text books, a technical report and a development report. Williams declares in part:

"4. I have been involved and employed in the packaging industry in Australia continuously for almost 20 years.

5. ... I commenced my employment with Gadsden ... in 1971.

6. ... In 1980, ... Gadsden took a licence from a German company ... for the manufacture and sale of a flexible packaging product which was marketed under the trade mark COMBIBLOC. ...  From about 1981 to 1983, ...  I was ... involved at looking at other technologies ... concerned with the production of the COMBIBLOC flexible packaging. COMBIBLOC packaging is a foil and plastics laminated paper board predominantly intended for use in holding wet foodstuffs ... .

7. ... between 1983 and 1986 I was involved in ... product development ... for Gadsden's Flexible Packaging Division.

9. ... I left Gadsden in April 1987 when I joined APM Functional Coatings.

11. The Tetra Pak specification describes a packing laminate designed to be used for the manufacture of liquid tight packing containers. At page 1, reference is made to a laminate consisting of one or more layers of paper or cardboard with outer and inner coatings of a thermoplastic material such as polyethylene optionally including a further layer of aluminium foil. I am personally aware that both Gadsden and Tetra Pak have used laminated packaging materials comprising such materials for packing containers in Australia for many years. I am personally aware of the commercial use of such laminates in Australia by Gadsden since at least 1983.

13. ... A clay coating is a good moisture barrier and also presents a whiter background for quality graphics than a non clay coated board. Clay coated boards also present a smoother surface for accepting detailed print graphics than a non clay coated board. Whilst kaolin clay is the most common pigment used other pigments such as calcium carbonate, titanium dioxide, aluminium trihydrate and various silicas have been well known ... as coatings for paper boards. The use of such pigments as coatings in Australia has been well known in the paperboard manufacturing industry since at least the early 1980's.

15. As the pigments referred to ... are not in themselves adapted to bind together or to paper board they are applied with a binder or adhesive. ... these binders are often starches. Alternatively various rubber latexes can be used (e.g. styrene butadiene) acrylic based emulsions (e.g. polyvinyl acrylate) or polyvinyl acetate. The use of such binders with the pigments described ... has been well known in the paper board industry in Australia since well before 1986.

16. Continuously since 1983 Gadsden has utilised a solid bleached sulphite("SBS") kaolin clay coated board manufactured by Enso-Gutzelt Oy ... for its COMBIBLOC containers. This board is laminated with foil on the reverse side and polyethylene coated on the inner and outermost surfaces.

17. Tetra Pak on the other hand had previously sold in Australia a container manufactured from a board which was polycoated and laminated with foil but which was not clay coated.

20. Gadsden, in this period (i.e. about 1983-84), took a non polycoated, non laminated virgin board and printed on the clay coated surface. The printed board was then re-reeled and put through a coating machine, putting the foil and polymeric layers on both sides. Whilst it was recognised that it would have been desirable from an efficiency perspective to produce the laminated board and then print over the top of the outermost polyethylene layer, Gadsden did not at that time have sophisticated enough printing machinery to do this. ... In addition, the rotogravure press (then used by Gadsden) had poor ink drying facilities and did not have the speed capability required by Gadsden during periods of peak demand.

23. ... by the beginning of 1984 there were three major methods known in Australia for curing lithographic printing inks that were seen by me as realistic alternatives to the traditional heat cure. These were:
(i) Infra-red (I.R.); (ii) Ultra-violet (U.V.); and (iii) Electron-beam (E.B.).

25. I was aware by the middle of 1984 that there were potential problems with the inks used for U.V. curing as Nampak had been experiencing difficulties with taint and odour. Infra-red was slow and accordingly by that time I considered that E.B. curing looked to be the best option.

26. At this time I was aware that a company in the United States of America known as Album Graphics Incorporated ("AGI") operated a facility which printed and cured similar laminates using EB hardenable inks and EB curing. As AGI had appropriate facilities to print COMBIBLOC laminated boards using EB curable inks, I was able to arrange ... for these facilities to be made available ... for some trials on behalf of Gadsden.

30. My objective in setting up the trial at AGI was to expedite Gadsden's development in using EB curable inks with COMBIBLOC packaging laminate. I had no doubt that EB inks could be successfully printed onto such materials. The main reason for the trial was so that Gadsden could investigate the actual convertibility of the material into a beverage container following printing.

35. As Gadsden wished to trial EB curable inks on laminates in all respects the same as the ones being used by it in Australia, I organised the supply of SBS clay coated board (both pre-coated and uncoated with polyethylene) direct from Combibloc Inc. in the United States.

37. The actual trial was conducted at AGI on 13 and 14 May, 1985. ... Mr Johnstone from Wimble met me in Chicago to assist with the printing inks. Mr Johnstone attended the trials.

38. Now produced and shown to me and marked Exhibit IKW11 is a sample of one of the boards actually produced at the AGI trial in 1985. The composition of this board is as follows:-

Outside Layer of Laminate
     Varnish

EB Curable Ink (4 colours)

Low Density Polyethylene (approx 15g/m2)

Kaolin Clay Coating (approx 15 to 20 g/m2)

SBS Board

Low density Polyethylene (approx 20g/m2)

Aluminium Foil (approx 22g/m2)

Surlyn (approx 10g/m2)

Low Density Polyethylene (approx 30g/m2)
     Inside Layer of Laminate

39. The AGI trial was conducted using the laminate described in paragraph 38 herein as the raw material to be printed (minus the varnish and colour layers).

40. This laminated board was printed using four different coloured inks and a clear gloss varnish each of which were EB curable. These were cured by irradiation ... . This printed sample board was, apart from the printing, identical to the board which was used by Gadsden at that time in Australia. The material specifications were identical and the only difference at that time was that Gadsden printed directly onto the clay coating prior to placing the top layer of polyethylene over the top of the print layer.

41. After the trial had been concluded, I returned to Australia towards the end of May or early June 1985 with a number of samples. I also sent back full rolls by ship and a smaller batch of sheet samples by airfreight which Gadsden used for  ... package manufacturing tests in Australia.

42. When I returned to Australia testing commenced on the printed sheets. They were put through the cutting and creasing tests and flame sealing tests and were also put through a filling machine in the COMBIBLOC workshop at Broadmeadows. The actual drinking containers made from this sheet and each of these tests  were done at Gadsden in Broadmeadows in 1985.

44. Throughout all of the trialling both in the United States and in Australia and during the organisation of the trials at AGI, I freely discussed the nature of the trials with Gadsden's Australian suppliers and customers. No part of the trial was seen as confidential. The COMBIBLOC packaging laminate's composition was well known and readily ascertainable because it was in commercial use. EB curing of inks was also known and was appreciated as one preferred printing option. My discussions with Wayne Johnstone at Wimble were open discussions and Mr Johnstone was invited to attend at the AGI trial and was provided with samples of the product following the trial in a completely open manner. The development was not considered new and neither Gadsden nor I imposed any duty of confidentiality on any of the persons to whom we provided information concerning these trials. Mr Johnstone returned to Australia with samples provided by me and as far as I was concerned he was free to use the information that he obtained at the trial in any way he chose. Gadsden had nothing to gain from keeping this technology a secret, In fact it was quite the opposite. The more people who knew about it, the more Gadsden stood to learn from people talking about their own experiences. At that time, Tetra Pak had virtually 100% of the aseptic juice market in Australia and I did not consider that there was anything to be gained for Gadsden by me keeping quiet about these activities. Convincing potential customers of our commitment and investment in the COMBIBLOC project was an essential feature of those days and many people outside the Gadsden group were fully aware of Gadsden's intention to convert to EB curing in conjunction with its COMBIBLOC packaging laminate.

45. Following the trial and before the end of 1985, I also supplied samples of laminate from the AGI trial identical to that described in paragraph 38 to Gadsden's other major ink suppliers in Australia, namely Collie Cooke Consolidated which company was located in North Melbourne, Victoria and Coates Bros. Aust. Pty. Ltd. of Moorabbin, Victoria. These samples were provided freely and without any obligation of confidentiality.

46. On 24 July 1990, I met with Mr Alan Tilley concerning an opposition against ... 590428. Mr Tilley produced a sample of a COMBIBLOC laminate ... .

47. I was able to positively identify that this sample was one of the samples produced at the AGI trial in Chicago in 1985 which had subsequently been brought back to Australia."

The Johnstone declaration serves to exhibit a copy of his report on the 1985 AGI trial and a sample of laminate from that trial. Johnstone declares in part:

"1. I hold the position of Technical Director of F.T. Wimble Company Limited ("Wimble"), a company incorporated in the State of New South Wales ... . Wimble is a company engaged in the manufacture and marketing of printing inks.

3. Gadsden was a customer of Colorpak Inks and Coatings Limited (Colorpak"). Colorpak and Wimble were related companies.

4. In or about early 1985, I learnt that Gadsden was investigating electron beam curing of inks applied to beverage cartons printed using an offset lithographic process. Gadsden was looking to Colorpak as a potential supplier of EB curable inks.

5. ... . It was in my opinion a matter of common knowledge in the printing and packaging industry in Australia by 1985 that the use of EB curable inks with EB irradiation was one of several alternative methods for rapid curing of printing inks. Other known methods at this time included infra red and ultra violet irradiation curing.

7. Because of my extensive experience with lithographic printing, I was requested by Wimble and Colorpak to attend Gadsden's trials at AGI in Chicago. I was aware at this time that Gadsden intended to purchase a lithographic printing press from a British firm, Chambon, fitted with an EB curing device.

9.  ... I organised the supply of the appropriate inks from Lorilleux in France so that they were available at the trial.

11. I attended the trial at the AGI plant in Chicago which commenced early in the morning of 13 May 1985 and concluded 26 hours later on 14 May 1985.

12. I retained several samples of laminates which I witnessed being printed at AGI according to Gadsden's directions. These samples were supplied to me by Ian Williams whilst I was in Chicago and I personally brought them back to Australia on my return later in May 1985. ... The samples formed part of a report which I prepared after my return to Australia.

15. The work done by me in arranging the inks for the AGI trial and in attending at the trial was at the request of Gadsden and as such, as a matter of business practice, I did not circulate my report broadly. I did however make it available to some persons employed at Colorpak whom I knew to be interested and it was circulated to Mr John Cokley and Mr Samuel Schmizzi both of whom were at that time managers at Colorpak, Braybrook, Victoria. The report was also circulated to Mr Garry Crichton, Mr Harold Wallace and Mr Alan Fitton each of whom were at that time relevant employees at Wimble. The report was circulated with the actual samples obtained by me at the AGI trials and was circulated to each of these persons in Australia in 1985. The report was a perusal report which was ultimately returned to me. It was not marked "Confidential" and recipients were not requested to keep the information confidential.

16. Whilst as a matter of good business practice I would not have provided any information obtained at the AGI trial to any of Gadsden's competitors I was not asked by Ian Williams or anyone else at Gadsden to keep this information in confidence. If I had needed to use any information gleaned from the AGI trials for any other project at Wimbles, I did not consider myself obliged from using this information. Other than Wimble's business practice and policy as described above there was in my opinion no fetter on the way in which Wimble could use this information."

The Finlayson declaration serves to exhibit laminate samples, production record sheets and a copy of a letter. Finlayson declares in part:

"1. ... In January 1975, I became a Technical Representative of Gadsden involved principally in carton sales. Since that time I have remained in the sales area and have and continue to deal with new packaging designs, print approvals and other related areas.

6. The samples forming Exhibit CEF1 are both clay-coated paperboard. They were trap printed using gravure printing equipment, whereby the printing ink was applied directly onto the clay coating with a low-density polyethylene coating being applied over the top of the printing. On the other side of the paperboard there was provided polyethylene and foil layers.

8. The sample COMBIBLOC sheet forming Exhibit CEF1 are merely representative of a great volume of identical laminate material which has been manufactured and sold in significant commercial volumes in Australia by Gadsden since the early 1980's. The composition of the laminate and the various materials used in the laminate are and have been since at least 1981 very well known in the packaging industry in Australia."

The Tilley declaration serves to exhibit a form showing that a sample had been submitted to the Australian Government Analytical Laboratory (AGAL) and a laminate sample. Tilley declares in part:

"2. In the position of Industrial Property Engineer, I now have responsibility for general administration of patent, trade mark and registered design matters for South Australian Brewing Holdings Limited's subsidiary companies in Australia of which J Gadsden Pty Ltd is one.

3. On 20 February 1990, I attended Gadsden's office at ... Broadmeadows, Victoria. Whilst at Gadsden on that day I was provided with a sample of beverage carton printed board ("the sample").

5. On 24 July 1990 I took the sample to Campbellfield, Victoria to meet with Mr Ian Williams, a former employee of Gadsden. At the meeting Ian Williams identified the sample as being part of a considerable quantity of material produced (at the request of J Gadsden Pty Ltd) at AGI, Chicago in May 1985.

7. ... Now produced and shown to me and marked Exhibit AWT1 is a standard form used by AGAL to acknowledge the submission of a sample.

8. Subsequently Mr Caffery advised me that on 19 October 1990 the tests on the test portion had been completed and that results were obtained. The substance of the results is separately attested to in a declaration by Mr Caffery.

9. Now produced and shown to me and marked Exhibit AWT2 is the said retained portion of the sample ... ."

The Caffrey declaration serves to exhibit a laminate sample and printouts of infrared spectra. Caffrey declares in part:

"1. ... I have been employed at AGAL for 23 years in conducting analytical chemistry work including approximately 20 years in which I have spent the major portion of my time in the analysis of fibrous materials including paper and textiles.

4. I was instructed by Alan Tilley to analyse the test portion ... .

5. I examined the printed side of the paperboard and found it to comprise a printed plastics film over a sheet of coated paper.

6. I used infrared spectrophotometry to identify the coating on the paper as being predominantly Kaolin Clay. I determined the mass per unit area of this clay coating to amount to approximately 16 grams per square metre. ... I am not able to attest to any particular chemical basis of ... binder."

In the Ekdahl declaration he declares in part:

"2. I am one of the inventors of the invention defined in Australian Patent Application No. 590428.

4. ... the packing container subsequently manufactured through fold forming of the so printed packing laminate demonstrated impaired liquid-tightness properties (as compared to packing containers made from similar laminates printed in other conventional methods). In particular, we observed that the edge imbibition (liquid absorption) increased with the result that the sealing joints in the laminate overlapping areas (longitudinal seal) were significantly weakened. ... .

5. In accordance with the invention ... the solution to the foregoing problem was to provide a specific and additional protective coating layer between the thermoplastics layer carrying the printing and the base layer, this coating layer being an aqueous dispersion of up to 12% by weight binder and up to 76% by weight pigment so that the coating is able to absorb electrons used in the EB-printing process. The lower limits of the binder and pigment have to be sufficient to prevent the electrons degrading the base paper or cardboard layer and the upper limits are selected on the basis of performance and economy reasons. Moreover, an aqueous dispersion of these levels of binder and pigment allow the coating to easily be applied on the base layer of the laminate in a homogeneous layer with a uniform thickness."

The Salste declaration serves to exhibit a laminate sample. Salste declares in part:

"1. I am employed by Enso-Gutzeit Oy Pulp and Board Division ("Enso") of Imatra, Finland and hold the position of Director, Product Development and Research, Liquid Packaging Boards. I have been employed by Enso since 1969.

2. Enso has manufactured packaging boards for use in making liquid tight containers since 1957. One particular product that Enso has manufactured has been ... SBS pigment coated board ... for use in making containers for holding beverages. ... the records of Enso show that in 1985 Gadsden was supplied with 859 tons of the said pigment coated board.

3. ... . The coating is and always has been applied by Enso with a binder or adhesive in an aqueous dispersion. The pigment/binder dispersion used by Enso in the manufacture of this board in 1985 and 1986 comprised a polyvinylacetate/polyvinylacrylate binder used in a quantity of 10% by weight of the dispersion and a calcium carbonate/china clay pigment used in a quantity of 55% by weight of the dispersion.

5. ... Enso was at that time (1985) the supplier to Combibloc Inc. (in the United Sates of America) of its SBS pigment coated board."

SUBMISSIONS

Mr McGowan's main submissions on behalf of Gadsden can be summarised as follows:

Section 40

- There is insufficient support in the body of the specification for the restriction "up to 12 per cent by weight binder and up to 76 per cent by weight pigment" in claims 1 and 5.

- Claims 1 and 5 are too broad and are not fairly based in that no minimum thickness of the protective layer (binder plus pigment) is specified. Thus any thickness of "protective" layer would absorb some electrons, but such a layer of insufficient thickness would not absorb enough electrons to prevent degradation of the base layer with consequent failure to moisture seal .

- As being relevant to the fair basis issues in the present case, Mr McGowan referred me to General Steel Industries Inc v State of New South Wales, 40 ALJR 464, Olin Corp v Super Cartridge Co Pty Ltd, (1977) 51 ALJR 525, Schering Biotech Corp's Application, [1993] RPC 249, Insituform Technical Services Ltd v Inliner UK PLC, [1992] RPC 83.

- The ambit of claim 4 is not clear in that it is appended to itself.

- In claim 5 the expression "a coating located of binder and pigment " is not clear.

Obviousness

- The invention is claimed as a product which is a combination of integers each of which is acknowledged to be known in the specification of 590428.

- The evidence in support establishes that in the printing and packaging industry in Australia, prior to the priority date of 590428, the following were common general knowledge:

(i) Laminates, used for the manufacture of liquid tight packing containers, consisting of one or more layers of paper or cardboard with outer and inner coatings of a thermo-plastic material such as polyethylene optionally including a further layer of aluminium foil.

(ii) Laminates, used for the manufacture of liquid tight packing containers, containing a layer of paperboard with a layer of kaolin clay (or other suitable pigment) and binder, with colour printing applied on top of the clay layer and a layer of polyethylene applied over the colour printing.

(iii) The use of EB curable inks with EB irradiation was one of several alternative known methods for rapid curing of printing inks.

- At the priority date of 590428 it would have been obvious to the non-inventive person, skilled in the art of printing and packaging in Australia, to try combining the common general knowledge prior arts of (ii) and (iii) above, in order to speed up the drying of the printing on the laminate production process, and to thus arrive at the combination of integers claimed in 590428.

- As being relevant to the obviousness issues in the present case, Mr McGowan referred me to Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd, (1980) 144 CLR 253, HPM Industries Pty Ltd v Gerard Industries Ltd, (1957) 98 CLR 424, Hallen Co v Brabantia (UK) Ltd [1989] RPC 307, John's-Manville Corporation's Patent, [1967] RPC 479.

Prior Use

- The Williams and Johnstone declarations show that Gadsden initiated trials at facilities operated by Album Graphics Incorporated ("AGI") in the USA. At a trial conducted at AGI's Chicago installation on 13 and 14 May 1985, attended by Messrs Williams and Johnstone, EB curable inks were trialled on base laminates which were in all respects the same as the ones being used by Gadsden in Australia. A colour printed laminate was produced at the trial which embodied all of the features of claims 1 to 4 of the patent application presently in suit (declarations by Williams at para 38, Johnstone at para 14, Caffrey at paras 3 and 6, and Salste at para 4). Samples of that laminate were sent back to Australia and drinking containers embodying all of the features of claim 5 of 590428 were made therefrom by Gadsden later in 1985 (Williams declaration para 42). Before the end of 1985, samples of the laminate from the AGI trial were supplied without inhibiting fetter by Mr Williams to named printing ink suppliers in Australia (Williams declaration para 45). Mr Johnstone supplied without inhibiting fetter samples of the laminate to named employees within his company (Wimble) and also to named persons at another company (Colorpak) (Johnstone declaration at para 15).

- The evidence supplied by the opponent establishes that a product, characterised by the essential features of the product as claimed in 590428, had entered the public domain in Australia, in a way which was not accidental or fortuitous, prior to the priority date of 590428. The claims of 590428 are therefore anticipated by prior use and it is not relevant that that anticipation was not by sale to the public or that Gadsden were unaware of the problem identified in 590428 and said to be solved by the product claimed in 590428.

- A laminate having the composition set out at paragraph 38 of the Williams declaration would infringe the claims of 590428.

- As being relevant to the anticipation by prior use issues in the present case, Mr McGowan referred me to Bristol-Myers Company (Johnson's) Application, [1975] RPC 127 at 157, Merrell Dow Pharmaceuticals Inc v N.H. Norton & Co Ltd, [1994] RPC 1, Gill v Coutts and Sons and Cutler, (1895) 13 RPC 125 at 136, Monsanto Company (Brignac's) Application, [1971] RPC 153 at 159, Molins and Molins Machine Co Ltd v Industrial Machinery Co Ltd, (1937) 55 RPC 31 at 40-42, Ingliss v Mayson, 3 IPR 588 at 599, Harwood v Great Northern Railway Co, [1853] Vol 8 Hayward's Patent Cases 764 at 781, Birtwhistle v Sumner Engineering Co Ltd, (1929) 46 RPC 59 at 72, Crowther's Application, 51 RPC 72, Griffin v Isaacs, (1938) 12 AOJP 739 at 740, Humpherson v Syer, (1887) 4 RPC 407, Fomento Industrial SA, Biro Swan Ltd v Mentmore Manufacturing Co Ltd, [1956] RPC 87 at 99-100, Bristol-Myers Co's Application, [1969] RPC 146 at 155, Boyce v Morris Motors Ltd, (1926) RPC 106.

Mr Hess's main submissions on behalf of Tetra can be summarised as follows:

Section 40

- For claims 1 and 5 to be fairly based it is not necessary that the actual thickness of the protective coating be specified. Claims 1 and 5 both included restrictions on the proportions of pigment and binder and that the protective layer be able to absorb electrons. The specification was directed to the person skilled in the art and it is not then necessary that the invention be limited otherwise than in terms of ability to achieve the desired result.

Obviousness

- No evidence has been produced to show that prior to the priority date of 590428 it was common general knowledge in the packing industry in Australia to combine known laminates for liquid-tight packing containers with EB printing.

- In the Williams declaration he says that before the priority date of 590428 he wrote a report (Exhibit IKW-8) recommending that it would be a good idea to use EB printing with packing laminates, but that is a long way short of establishing common general knowledge.

- No expert evidence has been produced to establish that it would have been obvious to use a pigment plus binder layer to overcome the problem identified in 590428.

- There is no indication in the evidence filed on behalf of the opponent that Gadsden recognised the problem identified in 590428. It cannot have been obvious to achieve the result of the invention if the problem was not addressed.

- As being relevant to the obviousness issues in the present case Mr Hess referred me to Graham Hart Pty Ltd v S W Hart & Co Pty Ltd, 141 CLR 305 at 329, 3M v Beiersdorf (supra) at 292-293.

Prior Use

- The laminate samples, said to have been made at the Chicago trials and brought back to Australia and having the composition set out at paragraph 38 of the Williams declaration, are not in accordance with the essential features of the laminates claimed in 590428.

- Even if samples from the Chicago trials were disseminated in Australia before the priority date of 590428, it does not follow that their characterising features became publicly available because the composition of the laminate samples could not be determined even by analysis. Thus, experienced analyst Caffery declares that "I am not able to attest to any particular chemical basis of such a binder."

- In the Williams declaration at paragraph 42 he declares that drinking containers were made in Australia in 1985 from samples of the laminate ex the Chicago trial, but does not say if they were shown to work successfully, e.g. whether there was any imbibition or whether they were liquid-tight.

- In the Johnstone declaration at paragraph 15 he declares that he showed his report about the Chicago trial and samples of laminate therefrom to persons at Colorpak, but omits to mention that Colorpak is a company related to Wimble (Johnstone's company) - see paragraph 3 of the Johnstone declaration.

- In the Johnstone declaration at paragraph 16 he declares, albeit with some qualification, that "there was in my opinion no fetter on the way in which Wimble could use this information (obtained at the AGI trial) ". In the circumstances of Johnstone's involvement with the trial this statement is a disingenuous assertion and is contested as a matter of law.

- In relation to the issue of anticipation by prior use in the present case the burden of proof is clearly upon the opponent and the benefit of any doubt should go to the applicant.

- As being relevant to the prior use issues in this case Mr Hess referred me to Merrell Dow v Norton, (supra), Bristol-Myers (Johnson's) Application, (supra), Wood v Westaflex (Aust) Pty Ltd 20 IPR 38 7, Monsanto (Brignac's) Application, (supra), Stahlwerk Becker AG's Patent, (1918) 36 RPC 13, Boyce v Morris Motors, (supra), Cullen v Welsbach (1907) 4 CLR 990.

DECISION

Before considering the issues relating to section 40, obviousness and prior use, I shall first determine which features of the claimed invention I believe to be essential to the working of the invention.

Essential Features

Claim 1 of 590428, as presently amended following acceptance, can be broken down into the following features:

- a packing laminate containing:

- at least one layer of paper or cardboard
- outer layers of a thermoplastic material
- colour layer containing monomers and/or oligomers hardened through electron radiation and being applied onto one of said outer layers
- a coating of binder and pigment arranged between the layer of paper or cardboard and said one outer layer carrying said colour layer, the coating having been applied to the layer of paper or cardboard in the form of an aqueous dispersion carrying up to 12% by weight binder and up to 76% by weight pigment so as to be able to absorb electrons.

These features would each appear to be essential to the working of the invention, except the percentages by weight of pigment and binder in the aqueous dispersion. In my view there is nothing in the specification of 590428 to indicate that the percentages of pigment and binder defined in claim 1 (and claim 5) are critical to the working of the invention. I note that in the Ekdahl declaration he says that "the upper limits (of binder and pigment) are selected on the basis of performance and economy reasons." I further note from Exhibit IKW-5 (Williams) that at page 788 of Kirk-Othmer, The Encyclopedia of Chemical Technology, 3rd Edition (Volume 16) it is stated, in relation to the coating of paper with pigments, that "Minimum amounts of adhesives are used to bind the pigments, because the adhesives are more expensive than the pigments ... ". I conclude that the percentages of pigment and binder are determinable by routine experimentation in combination with cost factors and are not essential to the working of the invention.

Section 40

At page 7 lines 23 to 26 of the description it is stated that "A suitable mixture of this kind may be, for example, an aqueous dispersion of 12% binder ... and 76% pigment ... ." I consider that this statement does not provide adequate support  for the feature " ... up to 12% by weight binder and up to 76% by weight pigment ... " in claims 1 and 5. Consequently I find claims 1 and 5 to be not fairly based in this respect.

Claims 1 and 5 define a pigment and binder coating "able to absorb electrons". Presumably, for a given electron beam density, the minimum thickness of coating required for the promise of the invention to be achieved would depend on the quality and degradability of the material used for the paper or cardboard layer. Even a thin coating of pigment and binder would absorb some electrons, with the optimum thickness being determinable by routine experimentation. I do not agree with the submission on behalf of the opponent that claims 1 and 5 are not fairly based because they do not define the minimum thickness of the coating.

Claim 4 is not clear because it is appended to itself. Claim 5 is rendered unclear by the use of the term "coating located of binder".

Obviousness

Obviousness considerations under the 1952 Act involve a determination of the common general knowledge in the art in Australia at the priority date of the claims:

"... the question of obviousness involves asking the question whether the invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that particular field as at the priority date, without regard to documents in existence but not part of such common general knowledge."

per Aicken J in The Wellcome Foundation v VR Laboratories (1981) 55 ALJR at 251.

To establish obviousness where a combination invention is involved it must be shown that each of the integers that makes up that combination is common general knowledge in the field in question, and that it would have been obvious to a non-inventive skilled worker in the field 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 3M v Beiersdorf (supra at 292-293)]. The notion of common general knowledge is said to involve that which is known by those in the relevant field and forms the background knowledge which is available to all in the field.

The invention of 590428 lies in the art, well established at the priority date, of laminated packaging materials for making liquid-tight containers carrying colour printed markings.

From the evidence exhibited to the Williams declaration, I am satisfied that it has been established, as asserted by Williams and not disputed by Tetra Pak, that the following were relevant common general knowledge in the art in Australia at the priority date:

- packing laminates intended for manufacturing a liquid tight packing container, said packing laminates containing a layer of paperboard, an outer layer of polyethylene, and a coating of binder and pigment applied as an aqueous dispersion and arranged between the layer of paperboard and the outer polyethylene layer, and with coloured markings applied to the coating of binder and pigment.

- the use of EB curable inks with EB irradiation for rapid curing of printing inks.

It seems to me that in order to provide rapid curing of the  printing ink, as is apparently desirable for high rates of production of packaging laminates, it would have been obvious at the priority date to a non-inventive worker in the field of the invention to combine the common general knowledge EB printing technique with the common general knowledge paperboard laminate having outer layers of pigment/binder and polyethylene. Furthermore, Williams declares that it always would have been more desirable to print onto the outer polyethylene layer rather than onto the pigment/binder layer and that whereas that was not practicable when using rotogravure printing it is staightforward when using EB printing. That this is so seems to me to be inherently probable from the information before me and was not contradicted by the patent applicant.

I therefore find that it would have been obvious to select the particular combination of essential features claimed in claims 1 and 5.

Having found that it would have been obvious to arrive at the claimed product by one route, I do not then agree with the submission made on behalf of the patent applicant that the product claimed can be considered to be not obvious for the reason that Tetra Pak had "invented" the claimed combination by solving a different problem to which the solution was not obvious. I find support for this view within the judgement in Hallen v Brabantia (supra), wherein Aldous J. said at 328:

" In my view a patent cannot be valid if it was obvious to select the features of the claim for one purpose, despite the fact that it was not obvious for another."

[I note that this view was upheld in the Court of Appeal, Hallen Co. and Anr. v. Brabantia (U.K.) Ltd., [1991] RPC 195 at 216].

Therefore I conclude that claims 1 and 5 fail for obviousness. No significant submissions were made about the dependant claims, which by the same reasoning are also obvious.

Prior Use

The opponent has asserted that the invention as claimed is anticipated by dissemination to the public in Australia, prior to the priority date, of samples of laminate having the composition set out in paragraph 38 of the Williams declaration.

Mr Hess asserted that because the laminate having the composition set out at paragraph 38 of the Williams declaration was characterised by an outermost layer of varnish but was not characterised by the presence of a binder, it could not anticipate the laminate claimed in 590428.

I consider that the presence of a binder in the laminate of Williams paragraph 38 is inherent because it was common general knowledge that a binder was necessary for kaolin clay to adhere to paperboard. Furthermore I am satisfied that it has been established that the base laminate used for the trials at AGI was the same as a base laminate used at that time in Australia by Gadsden which had a kaolin clay plus binder coating.

I agree with the submission by Mr McGowan that the outermost layer of varnish of the laminate of Williams paragraph 38 is a mere embellishment which does not materially affect the functional nature of the laminate.

I find that the laminate having the composition set forth at paragraph 38 of the Williams declaration is characterised by the same combination of all of the essential features of the laminate as claimed in 590428 and is therefore potentially anticipatory thereof.

I turn now to address the issue as to whether the laminate of Williams paragraph 38 was used in Australia prior to the priority date, and if it was then whether the nature and extent of that use was such as to anticipate the claimed invention by prior use.

The standard of proof required to establish prior use was dealt with by the UK Appeal Tribunal in Sellers Application [1970] RPC 103, where at 106 Graham J. stated:

"In my judgement it is necessary that proof of prior user in opposition cases should be very clear. Normally in the absence of cross-examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable. Such corroboration is often best found in documents contemporary with the fact to be proved. Each case, however, must be considered on its own facts and I say expressly that I am not attempting to lay down any rule as to what is or is not sufficient in any given case."

These comments were approved by the UK Court of Appeal in Dunlop Holdings Limited's Application [1979] RPC 523 at 548.

The standard of proof required is the civil standard, that is the balance of probabilities as set out for example by the Court of appeal in Dunlop Holdings Application (supra), in which Buckley L.J., in referring to the UK Patents Act 1949, stated;

"As to the standard of proof, there is nothing in the statute to suggest that any standard different from the normal standard of proof required in civil litigation - that is to say, the balance of probability - should be adopted. But that standard is not an absolute standard. The nature of the issue may affect the kind and cogency of the evidence necessary to bring the scales down on one side or the other. If something is inherently improbable, more weighty evidence is required to establish that it probably occurred than if it were inherently probable."

The standard of proof is also referred to in E.I. Dupont de Nemours and Company (Holland's) Application [1971] RPC 7 at 21 where Mr Justice Graham said:

"The matter is, in my view, sometimes different if the question to be resolved is one of pure fact such as may, for example, arise in cases of prior user. Then if satisfied that the evidence has dealt with the matter comprehensively, so that the Tribunal feels it is in a position to come to a correct answer on the question of fact, there seems no reason why it should not resolve the conflict and, in my judgement, is in a proper case under the duty of doing so, and in so doing should act upon the normal principles of proof in civil actions."

In the present case, where the alleged prior use of the product and the relevant facts concerning it appear to be within the knowledge of the opponent, the onus is clearly on the opponent to establish that, on the balance of probabilities, prior user has taken place.

From the declarations of Williams and Johnstone I am satisfied that samples of laminate, having the composition set out in paragraph 38 of the Williams declaration, were brought into Australia both by Williams and by Johnstone around June 1985. Further, although the corroborative evidence is not absolutely conclusive, it is my considered opinion that, on the balance of probabilities, the evidence furnished on behalf of the opponent is sufficient to establish that the following events occurred in Australia prior to the priority date:

- Johnstone circulated his report on the AGI Chicago trial and  samples of the laminate therefrom to several persons employed by his company and an associated company;

- Williams supplied samples of the laminate from the AGI Chicago trial not only to persons employed by his own company but also to persons employed by ink suppliers (other than those associated with Johnstone) in Australia;

- Samples of the laminate ex the AGI trial were made by Gadsden into packing containers in Australia prior to 1986.

In Wood v Westaflex (supra) it was held that dissemination of samples by a person to other persons within that person's own company did not constitute entry to the public domain of the product. However in Fomento, Biro Swan v Mentmore (supra) it was held that somewhat wider dissemination of samples of a product could constitute entry of that product into the public domain. In the present case, I believe that dissemination of the samples of laminate has been shown to have been sufficiently extensive as to have entailed entry into the public domain.

In my view the opponent has established that the present invention as claimed in claims 1 to 5 was anticipated by prior use in Australia before the priority date.

CONCLUSION

I find that the opposition succeeds on the grounds that the specification does not meet the requirements of section 40, all of the claims of the application are obvious, and all of the claims of the application have been anticipated by prior use. Although I am unable to identify anything disclosed in the specification that could form the subject of a valid claim, I nevertheless allow the applicant 60 days from the date of this decision in which to propose amendments directed toward overcoming my findings. Otherwise, subject to appeal, I will refuse the application.

COSTS

As the opposition has been successful, and there are no special circumstances, I award costs against the applicant.

Alan Moore
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :   Watermark, Melbourne.

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