American National Can Company v W.R.Grace & Co. -Conn

[2000] APO 47

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 571175 in the name of American National Can Company

Title:          Polymeric and film structure for use in shrink bags

Action:          Final determination in an opposition to the grant of a patent by W.R.Grace & Co. -Conn.

Decision:          Issued            .

Abstract

The application is directed to proceed to sealing.

1.  The amendments overcome the deficiencies identified in the earlier decision.

2.  The claims as amended do not take a deferred priority date under section 114.

3.  There is no bar to sealing in the light of a European patent application.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 571175 by American National Can Company, and an opposition to the grant of a patent by W.R.Grace & Co. -Conn.

BACKGROUND

Patent application number 571175 in the name of American National Can Company (more conveniently referred to as ANCC) was opposed by W.R.Grace & Co. -Conn. (hereafter referred to simply as Grace). I issued a decision in the opposition on 10 January 1994 (which I will refer to as the earlier decision, now reported at [1994] APO 1), finding that the opposition succeeded on the grounds of prior claiming and non-compliance with section 40. I allowed ANCC 60 days to propose amendments to overcome these deficiencies.

Amendments to the specification were opposed by Grace, and refused following a hearing by the Commissioner (decision reported at [1997] APO 55). A second attempt to amend the specification was opposed by Sealed Air Corporation. Due to technical problems with the amendment, the amendment was refused by the Commissioner with the agreement of the parties on 5 February 1999. A third attempt to amend the specification was opposed by Cryovac, Inc, and that opposition was dismissed following a hearing by the Commissioner (decision reported at [2000] APO 20). These latter amendments have now been incorporated into the specification.

The present matter is the final determination of the opposition to the grant of the patent.  The matter was heard in Melbourne on 17 July 2000.  ANCC was represented by Mr David Tadgell, patent attorney of Phillips Ormonde & Fitzpatrick, Melbourne.  Grace was represented by Mr Andrew Dark, patent attorney of Davies Collison Cave, Melbourne.

ABBREVIATIONS

In this decision I will use the following standard abbreviations:

EVA               a copolymer of ethylene and vinyl acetate
LLDPE           linear low density polyethylene
PVDC             a copolymer of vinyl chloride and vinylidene chloride

DECISION

The present matter is part of the opposition to the grant of a patent that was commenced on 13 July 1988.  Consequently, this matter is governed by Part V of the 1952 Act and Division 1 of Part XIV of the former Regulations (by virtue of section 234(3) of the Patents Act 1990 and regulation 23.3 of the Patents Regulations 1991). A final determination is an opportunity to examine whether the amendments to the specification overcome the deficiencies identified in the earlier decision, and whether the amendments introduce any new deficiencies. Matters that were decided in the earlier decision have been decided once and for all, and are not open to challenge in this hearing. This is made very clear in Perkin-Elmer Corp v Varian Techtron Pty Ltd (1985) 5 IPR 321 at 322-323.

At the hearing it was agreed that all deficiencies identified in the earlier decision had been overcome.  The only issue raised was a contention that the new claims are anticipated.  The basis of this argument is that the claims now claim new matter, and should take a deferred priority date.  Mr Tadgell agreed that if the claims take a deferred priority date, then there are likely to be a number of documents that could anticipate the claims.  No new citations are presently in evidence.

Priority date of the claims

Section 114 specifies that claims take a deferred priority date if they claim new matter as a result of an amendment:

114  (1)  Where a claim of a complete specification claims matter that was in substance disclosed as a result of amending the specification, the priority date of the claim must be determined under the regulations.

The relevant regulation is 3.14:

3.14  If subsection 114(1) of the Act ("priority date of certain amended claims") applies to a claim of a specification, the priority date of the claim is  …  the date of filing of the statement of proposed amendments that resulted in that disclosure referred to in subsection 114(1) of the Act.

The critical question is whether any of the claims claim matter that was in substance disclosed as a result of the amendment.  Another way of considering this question is to ask whether any of the claimed subject matter was not in substance disclosed prior to the amendment.

The test for whether matter is in substance disclosed is the same as the test for fair basis (Merck & Co, Inc v Sankyo Co Ltd (1992) 23 IPR 415 at 421). The generally accepted test for fair basis is to ask whether there has been a "real and reasonably clear disclosure" of the subject matter (see for example CCOM Pty Ltd v Jiejing Pty Ltd (1994) 28 IPR 481). In the context of the present matter it is relevant to note that fair basis does not require a textual concordance between the description and the claims. Instead, a broader consideration is required:

"Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification."
[Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 95]

It was suggested by Mr Tadgell that it is not appropriate for me to consider matters that could have been considered during an opposition to the amendment.  It is true that the final determination is not an opportunity to challenge the appropriateness of amendments that have already been incorporated.  However, it is allowable for an opponent to raise new issues where it is alleged that the amendment introduces new problems that were not previously present.  Lack of novelty arising as a result of deferred priority date is clearly an issue that it is appropriate to raise, and the determination of this issue necessarily involves questions that could also have been raised in an opposition to the amendments.  The question of "in substance disclosed" is relevant to the final determination, so I must have regard to the issue.  In examining whether matter was in substance disclosed, the sole purpose is to determine the priority date of the claims.  I will not make any finding on whether the amendment was allowable.

The thrust of the challenge to the priority date of the claims is that the claims have been narrowed by amendment, but they have been narrowed to particular values or forms that were not disclosed in the specification.  I will now examine the relevant claims in turn.

Claim 1

Mr Dark pointed out that claim 1 as amended differs from the unamended claim in that the second and third layers are defined as "self-adhered" to the first layer.  In the original version of the claim these layers were defined as "adhered to" the first layer.  Mr Dark stated that the previous description did not mention self-adhered layers, and thus he contended that there is no disclosure of a self-adhered film.

In my earlier decision I discussed the meaning of "adhered to" in the context of the specification:

"This term could mean that the layers are joined by self-adhesion, or by the use of an intermediate adhesive layer.  …  I see no reason to limit the term 'adhered to' to one of these definitions, and consequently interpret it as encompassing both meanings.

Clearly "self-adhered" is narrower than the former "adhered to" terminology.  This alone does not mean that "self-adhered" is in substance disclosed.  The examples of the invention involve three-layer films prepared by melt extruding the three layers into a three-layer die.  I understand that this produces a three layer film in which the layers are self-adhered.  Consequently, there is a clear disclosure of a "self-adhered" film, and claim 1 does not take a deferred priority date.

Claim 2

Mr Dark indicated that claim 2 as amended differs from the unamended claim 1 in that it ends with the following proviso:

"with the proviso that one or both of the second and third layers is a blend of from 10 to 19% or 71 to 90% linear low density polyethylene with the remainder being ethylene vinyl acetate."

There was no specific text equivalent to this proviso in the specification before amendment.  The values of 20 and 70% LLDPE have been excluded apparently to avoid the disclosures in the prior claiming documents (discussed in the earlier decision), where outer layers having 20-70%LLDPE/80-30% EVA are disclosed.

The description previously referred to layers having an LLDPE content of between 10% and 90%.  The indication was that the invention was equally applicable throughout the entire range.  The illustrative three-layer structures listed on pages 11-12 of the specification have an LLDPE content in the outer layer of 10-70%.  This reinforces the conclusion that a wide range of LLDPE contents are disclosed.  I am satisfied that there is a broad disclosure of LLDPE contents ranging from 10-90%.  The choice to limit the content to "10 to 19% or 71 to 90%" is motivated by avoiding the prior claiming documents, and does not amount to a change in the invention.  Claim 2 does not take a deferred priority date.

Claim 7

Claim 7 is equivalent to the former claim 6, but it has a proviso in similar terms to that of claim 2:

"with the proviso that if the first pair of layers does not include linear low density polyethylene the second pair of layers contains from 10% to 19% linear low density polyethylene with the remainder being ethylene vinyl acetate."

For similar reasons, claim 7 also does not take a deferred priority date.  The specification refers to the LLDPE content broadly, and the limitation is a mere choice selected to avoid what would otherwise be a prior claiming citation.

Appended claims

Mr Dark submitted that the claims appended to claims 1, 2 and 7 should also take a deferred priority.  It follows from my finding in relation to the independent claims that this is not correct.

Conclusion

None of the claims take a deferred priority date.  Consequently there is no issue of lack of novelty.  The amendments have overcome all matters raised in the earlier decision, and have not introduced any new problems.

BAR TO SEALING

In the earlier decision, I noted that there was a document (EP 32027) that would have to be considered in a bar-to-sealing context at the conclusion of the opposition.  It is now appropriate to deal with that document.  At the hearing Mr Tadgell provided me with written submissions in relation to this document.

EP 32027 relates to heat-shrinkable multilayer films having the general structure:

*         outer layer of a poly-a-olefin, or a blend of at least 20% of the poly-a-olefin
*         an intermediate layer of a thermoplastic resin
*         a core layer of PVDC
*         an intermediate layer of a thermoplastic resin
*         outer layer of a poly-a-olefin, or a blend of at least 20% of the poly-a-olefin

The poly-a-olefin is defined in such a way that it includes LLDPE.  Mr Tadgell's written submissions suggest a different opinion, so I will explain my interpretation of the citation.  The examples of the poly-a-olefin states, inter alia,

"Examples of a-olefin polymers [include] … copolymers comprising ethylene as the principal constituent and another a-olefin (for example, copolymers of ethylene having a limiting viscosity of from 0.8 to 4.0 and a minor proportion of an a-olefin having 5 to 14 carbon atoms such as 'Ultzex' (trade name) supplied by Mitsui Sekiyu-Kagaku K.K. (Mitsui Petrochemical Co., Ltd., Japan))"

Mr Tadgell acknowledged that Ultzex is an LLDPE.  Mr Tadgell stated that the above passage is stating that Ultzex is the minor a-olefin in the copolymer.  I believe that Ultzex is in fact the copolymer (LLDPE is normally made by copolymerisation of ethylene and an a-olefin).  This is reinforced by the information in Table 1, where it is indicated that symbol "e" refers to "Ethylene / a-olefin copolymer *1", and the footnote (i.e. *1) explains that this is "Ultzex (Mitsui Petrochemical)".  I am satisfied that the citation is dealing with films in which the outer layers can be 20-100% LLDPE.

The examples 1 and 2 of the citation have the structure:

LLDPE / EVA / PVDC / EVA / LLDPE

Example 8 of the citation has the structure:

(50:50 LLDPE/EVA) / EVA / PVDC / EVA / (50:50 LLDPE/EVA)

Concentrating on the outer layer for the moment, it is clear that the citation is broadly teaching the use of layers of 20-100% LLDPE.  The remainder of the layer can be EVA.  There is a specific teaching of 100% LLDPE and 50% LLDPE/50% EVA.  These two specific values are clearly and unmistakably disclosed.  The LLDPE contents between 50 and 100% are disclosed in general terms, and a flag is clearly planted at each end of the range.  I am uncertain whether this amounts to a clear and unmistakable disclosure of all values in between. 

The intermediate layers are defined in such a way that they include EVA.  The examples demonstrate EVA and mixtures of EVA with either medium-density polyethylene or low-density polyethylene.  There is a clear and unmistakable disclosure of EVA as the intermediate layer, but not of EVA blended with LLDPE.

I will now consider each of the independent claims with regard to this disclosure.  Claim 1 is directed to a three-layer film (due to the construction of "comprising" in the earlier decision).  Consequently, this claim is novel.

Claim 2 is directed to a three or five layer film. When a five-layer film is involved, there would be two intermediate layers of an adhesive. EVA is an adhesive layer. At least one of the outer layers has 10-19% or 71-90% LLDPE, with the remainder being EVA. It is uncertain whether an outer layer of 71 to 90% LLDPE is disclosed in the citation. Given the high standard of proof applying to bar-to-sealing matters ("patent would be clearly invalid", see Re Applications by Gould Inc (1998) 13 IPR 644 at 651), I am not satisfied that this claim is lacking in novelty.

Claim 7 is directed to a five-layer film.  The pair of layers adjacent to the core layer can be 100% EVA.  The second pair of layers (the outer layers) would have to be 10 to 19% LLDPE.  This is outside even the broad suggestion of the citation.  Thus claim 7 is novel in the light of the citation.

Claim 13 is directed to an asymmetric five-layered film.  There is no suggestion of asymmetric films in the citation.  Thus claim 13 is novel in the light of the citation.

Conclusion

There is no bar to sealing the present application.  Provided there is no appeal against this decision, I direct that this application proceed to sealing.

COSTS

ANCC have been entirely successful in this action.  It is appropriate to award those costs associated with the final determination against Grace.

I award costs in accordance with Schedule 8 against W.R.Grace & Co. -Conn.

Dr S.D.Barker

Delegate of the Commissioner of Patents

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

Patent attorneys for the opponent  :  Davies Collison Cave, Melbourne