Amcor Ltd v Visy Board Pty Ltd

[1990] APO 48

PATENTS ACT 1952

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Action:  Application for a patent No. 567833 by AMCOR LTD, and Request to Amend under Section 77; Opposition by VISY BOARD PTY LTD under Section 59 and Section 82.

Background
         The Office advertised acceptance of application No. 567833 in the Official Journal on 3 December 1987.  Visy Board lodged notice of opposition under s.59 on 3 March 1988.
         After Visy Board served its evidence in support, Amcor proposed amendments under s.77, for the stated purpose of more clearly defining the invention and preferred aspects thereof.  The Office advertised the s.77 amendments pursuant to s.81(3) in the Official Journal of 18 May 1989.  Visy Board lodged notice of opposition under s.82, and on 12 October 1989 lodged its evidence in support.  The parties agreed that this evidence should be treated as further evidence in connection with the substantive opposition.  Amcor did not lodge evidence in answer on the s.82 matter.
         As the result of the circumstances set out above, the delegate of the Commissioner determined that the s.59 and s.82 matters were to be heard together, and set the hearing for the Melbourne sessions scheduled for February 1990.  At the hearing, Mr
D.B. Mischlewski, patent attorney, represented Amcor and Mr T.N. Beadle, patent attorney, represented Visy Board.

The Specification as Accepted
         The specification states that the invention relates to an improved corrugated paper board panel which provides substantially greater compression strength when used in the manufacture of prior art paper board box structures.  Known paper board usually consisted of alternate single fluted or undulating layers and flat sheets.  In the present invention, two fluted layers are sandwiched between two flat sheets with no flat sheet interposed between the fluted layers.  This omission results in a higher compression strength to weight ratio of the board when used in box manufacture, not predicted in previous theories on box compression strength.
         The "consistory" statement and claim 1 are substantially identical and the latter reads:

"A corrugated structural paperboard panel having improved box and collar compression strengths and improved buckling resistance, for forming corrugated boxes comprising two outer layers of flat sheet and two inner fluted layers bonded together at the flute peaks."

Claims 2 and 3 are (separately) appended to claim 1.  Each defines variations in the peak shape of the flutes.
         Claim 4 defines a method of forming a corrugated paperboard panel.  At the hearing, Mr Beadle formally withdrew all grounds of opposition against this claim.
         Claim 5 is a product claim reading:

"A container formed from corrugated paperboard panels as defined in claim 1."

I note that the specification calls the new paperboard structure "the X‑flute structure".
The Specification as Proposed to be Amended under S.77
         The proposed amendments consist of a new statement of claims, and changes to the description to accord with the new claim 1.  The claims read:

"1.A corrugated structural paperboard panel having improved box and collar compression strengths and improved buckling resistance, for forming corrugated paperboard boxes comprising two fluted layers between two flat sheets wherein the fluted layers are bonded together at the flute peaks.

2.A paperboard panel as defined in claim 1 wherein the panel thickness is no greater than 7.55mm.

3.A method of forming a corrugated paperboard panel as claimed in claim 1 wherein two strips of paperboard are separately passed over corrugating rollers to form 2 fluted layers, adhesive is applied to the peaks of at least one of the 2 fluted layers and the fluted layers are aligned and brought into contact to bond the two fluted layers together at the peak of the flutes and subsequently bonding two flat sheets to the bonded fluted layers.

4.A method as claimed in claim 3 wherein the aligned and bonded fluted layers are constrained and supported in the aligned position until at least one flat sheet is bonded to one of said fluted layers.

5.A corrugated paperboard container having improved collar compression strength formed from a panel as claimed in claim 1 or claim 2."

The Evidence (S.59 Action)
         The opponent's evidence consists of a statutory declaration with two exhibits submitted by John Patrick O'Dea, the General Manager of the Noble Park Corrugated Paper Board Plant of Visy Board Pty Ltd.  The essence of the evidence is exhibit B, which is the specification of United States Patent No. 3700518 in the name of Koichiro Ohmori and published in Australia on 3 July 1973.
         The Ohmori patent relates to a method for manufacturing the "X‑wave" type corrugated paper board ‑ so called because of its cross sectional appearance.  The method is inherently different from the presently claimed method because, first, it joins two flute layers to separate flat sheets and then joins the two parts together at the flute peaks. The claimed method, in the present patent application, involves first joining the flutes together at their peaks and then enclosing this structure between two flat sheets.
         Mr O'Dea interprets the Ohmori specification as disclosing a corrugated board identical in all essentials to the board described in the present application.  In particular, he highlights the similarity of the drawings and the similarity of the terms "X‑wave" and "X‑flute" and the use of standard flutes.  He states that if he was asked to make a product in accordance with the disclosure of figure 2 of the Ohmori specification, it would result in a product having an identical structure to, and performance characteristics the same as the corrugated board structure described in the Amcor patent specification.  I note at this stage, however, that Ohmori discloses only a panel construction and a method of making the panel; it refers also to the cushioning properties of that panel.
         With reference to claim 5 of the Amcor specification, the opponent's declarant claims it to be clear that the board structure of the Ohmori patent was intended to be used to make containers even though this is not specifically mentioned.
         Applicant's evidence in answer consists of two statutory declarations and thirteen exhibits.  The first declaration is by Peter Robert McKinlay, the Manager of the New Packaging Technology department of Amcor Ltd.  He makes the following points:

.the words "corrugated structural paperboard" are used in the claims to clearly distinguish it from other paper products which are not used for structural purposes;

.the product and use is based on a new theory and the previous theory on box compression strength did not predict the improved compression to weight strength of the present invention;

.the Ohmori patent is concerned with "cushioning quality" and as such is directed at cushioning material or packing material as distinct from structural paperboard as used in making corrugated paperboard boxes.

Mr McKinlay has selected his exhibits to show that, although "corrugated structural paperboard" is not a standard term in the art, the terms "corrugated board" and "structural" have specific meanings and so the combination of the terms has a distinguishing meaning.  He takes a similar approach to the term "cushioning quality", which appears in the Ohmori patent specification, and the standard terms "cushioning material" and "packing".
         Neil W. Shaw, the General Manager Research & Technology of Amcor, has made the second declaration from the position of Amcor as a company in the forefront of research in the industry.  He also questioned the experience of the opponent's declarant.
         The evidence in reply consists of a declaration by Graeme John Bailey, the General Manager of Engineering Testing & Research Services Pty Ltd, a company which performs independent consulting, testing and inspection services to the engineering, packaging and transport industries.  This declarant states that the disclosure of the Ohmori patent is identical to the invention of claims 1 and 2 of the present application, and not materially different from claim 3.  Also he declares he would interpret the Ohmori patent as describing a corrugated paperboard structure suitable for use in the manufacture of boxes or cartons.
Submissions (S.59 Action)
Mr Mischlewski stated that superior properties of the inventive structure have been discovered which were not predicted and that the product is difficult to make and unlikely to have ever been made. He emphasised that meaning must be given to all words in a claim including the words "a corrugated structural paperboard panel" which appear in claim 1. He argued that although the appearance of the structure in the diagrams of the present specification and the Ohmori citation do look the same, in practice they would not have the same precision in alignment of flute tips. Furthermore, he said, the present patent application and the citation are directed at different problems; whereas the invention is concerned with structural panels for making boxes, the citation relates to the "cushioning properties" of the disclosed material. On this basis, Mr Mischlewski supported his arguments by reference to the rules expressed in L. & G.'S Application, 58 RPC 21.
         Mr Beadle responded that Visy Board's declarants had concluded that each and every feature of claims 1 and 2 is disclosed in the citation and that while claim 3 is not specifically disclosed, it includes nothing inventive.  The extra words "corrugated structural paperboard", in claim 1, he said, constitute a matter of semantics only.  The words only otherwise appear in the consistory statement.  Also he pointed out that figure 2 of Ohmori and figure 1 of the present application show an identical structure.  Mr Beadle submitted that although the Ohmori patent does not disclose any use, in 1969 the primary use of its disclosed structure was for making boxes.  He stated that there was no need for the opponent to prove that the primary use of corrugated board is and was for making boxes as this is plainly obvious and has always been so.  Also he pointed out that whilst the Ohmori specification is concerned with the cushioning properties of the material disclosed, there was no restriction such that the disclosed panels could not be used as panels for box construction.
The Evidence (S.82 Action)
         Only claim 2 requires real consideration here.  Whereas the other claims are proposed to be altered only in minor ways, claim 2 as proposed includes the feature ‑
         "wherein the panel thickness is no greater than 7.55mm."
         The notice of opposition states the grounds of opposition under the provisions of section 82 as:

"The amendment of the specification to include new claim 2 is not allowable since the claim is directed to new matter.  There is no disclosure in the specification as lodged that the panel thickness should be no greater than 7.55mm.  The specification envisages that any flute type may be used and at least two flute types would provide a panel thickness greater than 7.55mm.  While one example provides a panel thickness of 7550um, there is no indication that this thickness should be exceeded (sic)."

The only evidence in this matter is a declaration by Graeme John Bailey, one of the opponent's declarants in the s.59 action.  Mr Bailey deposes that he can find no support in the specification as accepted for the feature in question, and furthermore that there is no indication that any particular advantage should be expected from confining the panel thickness to that dimension.  He goes on to declare that the height of B flute and C flute is a matter of common general knowledge and that if either of these flute types had been chosen for use in the Ohmori structure, the thickness of the composite board would not have exceeded 7.55mm.  The final paragraph of his declaration reads as follows:

"7.I regard the choice of the flute size used in the manufacture of a composite corrugated paperboard in accordance with the disclosure of United States Patent 3,700,518 to be a matter of workshop choice open to the experienced board maker, and I see no inventive merit or novelty in choosing the flute size in such a manner that the panel thickness is no greater than 7.55mm."

Decision
         I will first deal with the s.59 action, and then consider the s.82 action, and the effect the proposed amendments would have on the former action, if the proposed amendments were allowed.
         The Ohmori patent specification is the basis for the opposition.  I think there is no doubt that the structure disclosed by Ohmori is not distinguishable in appearance from that presently claimed.  Column I of the specification recites:

"This invention relates to a composite paper board, and more particularly to a method for manufacturing a composite paper board which may be conveniently termed "X‑wave type double wall corrugated paper Board".

By "X‑wave type", I refer to a double wall paper board having two sheets of flutings or corrugations interposed between two liner sheets instead of three liner sheets as seen in the ordinary double wall paper board.  The X‑wave type paper board has its two layers or plies of flutings bonded together without being interposed by a liner sheet so that the ridges of one fluting are adhesively secured to the ridges of the other flutings.

The advantages of the X‑wave type corrugated board are that it has a cushioning quality which cannot be approached by any double wall paper board heretofore proposed and that, since the intermediate liner sheet may be dispensed with, it allows substantial reduction in the cost of the sheet material to be used."

In my view this extract is a good summary (in a broad sense) of the disclosure. There is no evidence that the panel of the Ohmori patent has ever been made or used in this country. Consequently, the rules of "paper anticipation" apply, e.g. see Canadian General Electric Co Ltd v Fada Radio Ltd [1930] 47 RPC 69, wherein it was stated:

"Any information as to the alleged invention given by any prior publication must be for the purpose of practical utility, equal to that given by the subsequent patent.  The latter invention must be described in the earlier publication that is held to anticipate it, in order to sustain the defences of anticipation.  Where the question is solely one of prior publication, it is not enough to prove that an apparatus described in an earlier specification could have been used to produce this or that result.  It must also be shown that the specification contains clear and unmistakable directions so to use it.  It must be shown that the public have been so presented with the invention that it is out of the power of any subsequent person to claim the invention as his own."

It is quite clear that the description of the packaging material, the subject of the Ohmori patent, (see also figure 2), reveals the same general construction as that claimed in the present application.  The only possible distinguishing elements of the presently claimed invention as defined in claim 1 reside in the following expressions:

(a)"a corrugated structural paperboard panel";

(b)"having improved box and collar compression strengths and improved buckling resistance"; and

(c)"for forming corrugated boxes".

The applicant has stressed the use of the present invention for making boxes as against the (presumed) only use of the Ohmori panel as cushioning material.  The applicant makes this assertion on the basis that corrugated paperboard did not have structural properties because it is made of reconstituted paper, hence having irregular constitution.
         Mr Mischlewski's summation of the differences was to the effect that, because the paperboard panel of the invention has improved box and collar compression strengths and improved buckling resistance, it is suitable "for forming corrugated boxes", as claimed.
         My comment on this view is that it is well established law that there is no novelty only in novelty of purpose, and that if the panel of claim 1 has the properties defined in expressions (a) and (b) above, so does the panel disclosed by Ohmori, since it is of identical construction.  It follows of course, that the Ohmori panel would be suitable "for forming corrugated boxes", if credence is to be given to applicant's submissions.  On this basis, I find claim 1 to be prior published.  Claim 2 is also prior published, and claim 3, which merely adds a standard well known shape variation in the form of flattened flute peaks, lacks novelty.  Claim 5, however, falls into a slightly different category.  This claim defines a container formed from the panels as defined in claim 1 : this definition constitutes an invention one step further from the Ohmori disclosure than does claim 1.  I reiterate that Ohmori does not disclose a container, or even that the panels are for the purpose of making a container.  Furthermore, there is no evidence on file that the Ohmori panels were ever made, or used for box construction or otherwise in this country.  Consequently, claim 5 is not prior published (see Canadian General Electric Co Ltd v Fada Radio Ltd, supra). 
         Mr Beadle (for Visy Board) submitted that the use of corrugated paper board panels for box construction has been common knowledge for very many years, and was certainly so on 3 July 1973, when the Ohmori specification became open to public inspection.  On this point Mr O'Dea declared that:

"... it would have been clear to me from a reading of United States patent Specification 3,700,518 (Ohmori) that the corrugated board structure described therein was intended to be used to make containers, even though this is not specifically mentioned in the United States patent specification."

As I have stated previously when dealing with the question of prior publication, Amcor took the view that Ohmori was directed to a cushioning material only.  I have considered a number of texts in the art which were available in this country many years before the date of publication of the Ohmori specification.  It seems to me that the submissions made by Visy Board are correct.  For example, the "Handbook of Pulp and Paper Technology", Ed. K.W. Britt, published 1964 by Reinhold (London and New York), became available to the public through the Patent Office Library in June 1965.  At page 431 the following passage occurs:

"The manufacture of corrugated paperboard has developed during the past fifty years to the point where it is now one of the major tonnage items of the paper industry....

Because of its low cost and high strength characteristics corrugated paperboard has become an ideal material for manufacturing shipping cartons."

I note particularly the reference to "... the past fifty years".  Whilst I appreciate that this text is not necessarily representative of the position in Australia, I find it inconceivable that experts in the art such as the relevant staff of Amcor would be so far behind the US or UK in their knowledge of technology that this particular information (as appearing in the various Paper Technology texts) was not well known to them long before the date of Ohmori.  Also from a consideration of those texts it seems to me that the various "strength properties" of paperboard were well known and well considered in the design of various constructions of paperboard.  I therefore disagree with the Amcor submission that Ohmori discloses paperboard suitable for cushioning purposes only, and conclude rather that it discloses paperboard having good cushioning qualities also.  Consequently, I find that claim 5 lacks novelty over Ohmori.
         I will now consider the s.82 action.  S.82 opposition can be based only on the grounds of allowability as specified in s.78.  Here the relevant grounds are those stated in s.78(1) and s.78(4) i.e. that as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as lodged, or would not comply with s.40.  The only matter at issue is the allowability of proposed amended claim 2 by reason of the introduction therein of the feature that:

         "the panel thickness is no greater than 7.55mm."
The specification as lodged does not disclose this feature as such, nor does the proposed amended specification do so except in claim 2.  "Disclosure" as such, however, is not a requirement of s.78(1) ‑ rather the requirement relates to "in substance disclosed".  His Honour, Jacobs J., explained the significance of the term "substance" in this type of context in AMP Inc v Commissioner of Patents (1974) AOJP 3224 at p.3227 in the following terms:

"The reference to substance imports the kind of test which is appropriate to a consideration of the question whether or not a particular act or particular article is an infringement of the patent.  Although each claim is a definition it is well recognised that an interpretation of the claim in the light of the state of the art may and probably will disclose that there are in it what may be described as essential as distinct from inessential integers.

... The substance must appear from the language itself interpreted in accordance with ordinary rules of interpretation with a knowledge of the prior state of the art to which the claim relates."

Here the substance of the invention is the particular structure and this is not altered by limiting the thickness of the panel.  There would be a natural upper limit but this is supposedly much larger than 7.55mm as both the citation and the present specification intimate at larger boards.  Therefore the panels greater than 7.55mm would not require any special consideration in construction nor result in any special qualities in comparison with panels not greater than 7.55mm.
         This view is supported by the submissions of both parties.  In particular I refer to paragraph 7 of Mr Bailey's declaration quoted earlier in this decision, in which he states that the selection of flute sizes is a matter of choice and he sees no inventive merit or novelty in choosing the size so that the panel thickness is no greater than 7.55mm.  On this basis the proposed amendments are, of course, allowable, and the worst that could be said is that there is a certain inconsistency between the new claim 2 and the description, which does not refer to the 7.55mm figure.  This, however, is hardly a matter that would affect validity if a patent were to be sealed on the proposed amended specification, and consequently, does not affect the allowability.  By the same token, however, the feature in question does not add any novelty and the proposed amended claims are in no better position regarding Ohmori than are the accepted claims.
Conclusion
         I have found that the opposition under s.59 succeeds as, with the exception of claim 4 which defines a method, the claims are anticipated.  I have also reached similar conclusions with respect to the proposed amended claims, consequently, pursuant to the exercise of my powers under s.83, I refuse to allow the amendment.
         I allow 60 days from the date of this decision for Amcor to propose amendments with the purpose of removing the grounds of opposition to the application as upheld.
         I award costs in favour of Visy Board.

(J.L. ROVETA)

Attorneys for Amcor     : Watermark