American National Can Company v W.R. GRACE & Co Conn
[1997] APO 55
•7 November 1997
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 BAG
Action : Opposition under Section 104, Patents Act 1990 by W.R.Grace & Co.-Conn.
Decision: Issued .
Abstract
The opposition has succeeded.
The amendments are not allowable under Section 102(2)(a) or 102(3). The correction of an obvious mistake must be determined from the disclosure of the specification. The existence of prior art which the applicant seeks to avoid provides motivation for amendment but does not, of itself, make a particular amendment obvious.
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 under Section 104 0f the Patents Act 1990 by W.R.GRACE & CO-CONN.
background
Australian patent application number 12308/83 was filed on 9 March 1983 by American Can Company claiming priority from United States Serial No. 371,781, which was filed on 26 April 1982. By virtue of an Assignment to American Can Packaging Inc. and the merger of American Can Packaging Inc. into American National Can Company, the application is now proceeding in the name of American National Can Company (AMERICAN).
The application was advertised accepted on 14 April 1988 and assigned the number 571175. A notice of opposition to the grant of a patent under Section 59 of the Patents Act was filed by W.R.Grace & Co.-Conn. (GRACE) on 13 July 1988. After many extensions of time, the service of evidence was completed on 6 July 1993.
During the opposition process amendments were made to the specification by AMERICAN under Section 104 following a request for leave to amend the specification dated 6 July 1992. GRACE was invited to comment on the amendments but made no comments. Leave to amend was granted, the amendments were advertised and allowed on 4 November 1993.
However during the opposition which was heard in Canberra on 28 and 29 September 1993 it became apparent that this amendment was flawed in that it created an internal inconsistency within claim 6. The decision on the opposition issued on 10 January 1994. The opposition succeeded on the grounds that the specification did not comply with Section 40 and that the claims were prior claimed. The delegate allowed the applicant 60 days from the date of the decision to propose amendments to overcome these deficiencies.
AMERICAN filed a request for leave to amend the complete specification on 9 March 1994. Leave to amend was granted and particulars of the request advertised on 20 October 1994. GRACE commented on 16 May 1994 and 3 August 1994 that, in their view, as a result of the amendments a claim of the specification did not fall within the scope of the claims before amendment.
On 20 January 1997 GRACE filed a Notice of Opposition to the amendments. No evidence was served in relation to this matter and it was heard in Melbourne on 11 August 1997. GRACE was represented by Mr Michael Angliss assisted by Mr Andrew Dark of Davies Collison Cave, and AMERICAN was represented by Mr David Tadgell assisted by Mr Neil Ireland of Phillips Ormonde & Fitzpatrick, all patent attorneys of Melbourne.
ABBREVIATIONS AND TERMS
In this decision I will use a number of standard abbreviations. They are:
EVA a copolymer of ethylene and vinyl acetate
EVOH a copolymer of ethylene and vinyl alcohol; the same as saponified EVA
LLDPE linear low density polyethylene
PE polyethylene
PVDC a copolymer of vinyl chloride and vinylidene chloride
PVC polyvinyl chloride
Throughout this decision the term "instructed reader" and "skilled addressee" are used interchangeably.
GROUNDS AND PARTICULARS
The statement of grounds and particulars states:
“The grounds of opposition upon which the Opponent relies are:
As a result of the amendments a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment.”
The particulars are:
“Claim 7 does not in substance fall within the scope of claims of the specification before amendment. Claim 6 before amendment required in a proviso that ‘wherein if the first pair of layers does not include LLDPE, the second pair of layers contains from 10 to 20%, or greater than 90% linear low density polyethylene’. After amendment the proviso requires that ‘with the proviso that if the first pair of layers does not include linear low density polyethylene the second pair of layers contains from 71 to 90% linear low density polyethylene.”
Equivalent particulars were stated for claim 10, and for claims 8 and 9, appendant to claim 7, and claims 11 to 13 appendant to claim 10.
THE CLAIMS
The claims relevant to the present action are set out in full, with underlining to indicate the amendments in dispute:
Claim 6 as accepted:
6.An oriented multiple layer polymeric film comprising:
(a)a first barrier layer consisting of a single layer, said first layer having two opposing surfaces;
(b) second and third layers adhered to said surfaces of said first layer, said second and third layers both having essentially the same composition and comprising a first pair of layers; and
(c) fourth and fifth layers adhered to said second and third layers on the respective surfaces opposite said first layer, said fourth and fifth layers having essentially the same composition and comprising a second pair of layers;
in the combined composition of said first and second pairs of layers, at least one of said pairs comprising at least 50% of an ethylene vinyl acetate component, the remainder of said one pair being linear low density polyethylene; and at least one of said pairs comprising at least 10% linear low density polyethylene component, the remainder of said one pair being said ethylene vinyl acetate, where the requirement for said components of at least 50% ethylene vinyl acetate may be met by one of said pairs having both said components or by each of said pairs having one of said components and at least one of said pairs of layers consisting of a blend of 10% to 90% ethylene vinyl acetate and 90% to 10% linear low density polyethylene.
Claim 6 , as filed 6 July 1992:
6.An oriented multiple layer polymeric film comprising:
(a)a first barrier layer consisting of a single layer, said first layer having two opposing surfaces;
(b) second and third layers adhered to said surfaces of said first layer, said second and third layers both having essentially the same composition and comprising a first pair of layers; and
(c) fourth and fifth layers adhered to said second and third layers on the respective surfaces opposite said first layer, said fourth and fifth layers having essentially the same composition and comprising a second pair of layers;
in the combined composition of said first and second pairs of layers, at least one of said pairs comprising at least 50% of an ethylene vinyl acetate component, the remainder of said one pair being linear low density polyethylene; and at least one of said pairs comprising at least 10% linear low density polyethylene component, the remainder of said one pair being said ethylene vinyl acetate, where the requirement for said components of at least 50% ethylene vinyl acetate may be met by one of said pairs having both said components or by each of said pairs having one of said components and at least one of said pairs of layers consisting of a blend of 10% to 90% ethylene vinyl acetate and 90% to 10% linear low density polyethylene, wherein if the first pair of layers does not include LLDPE, the second pair of layers contains from 10% to 20%, or greater than 90% linear low density polyethylene.
Proposed claim 7, filed 10 June 1994:
7.An oriented multiple layer polymeric heat shrinkable film comprising:
(a)a first barrier layer consisting of a single layer, said first layer having two opposing surfaces;
(b) second and third layers adhered to said surfaces of said first layer, said second and third layers both having essentially the same composition and comprising a first pair of layers; and
(c) fourth and fifth layers adhered to said second and third layers on the respective surfaces opposite said first layer, said fourth and fifth layers having essentially the same composition and comprising a second pair of layers wherein in the combined composition of said first and second pairs of layers,
i) at least one of said pairs comprises, at least 50% of an ethylene vinyl acetate component, the remainder if any, of said one pair being linear low density polyethylene; and
ii) at least one of said pairs comprises at least 10% linear low density polyethylene component, the remainder if any, of said one pair being ethylene vinyl acetate; where the requirement for i) and ii) may be met by one of said pairs meeting both conditions i) and ii), or each of said pairs meeting one condition each; and
iii) at least one of said pairs of layers consists of a blend of 10% to 90% ethylene vinyl acetate and 90% to 10% linear low density polyethylene;
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%, or from 71% to 90% linear low density polyethylene with the remainder being ethylene vinyl acetate.
Similar changes were made in claim 8, later renumbered as claim 10.
THE SPECIFICATION
The invention relates to the polymeric composition of the layered structures of heat shrinkable plastic bags for use as bags for wrapping perishable foodstuffs. After removal of air and sealing, the bag is shrunk to hug the contents, by the application of heat typically in the form of hot water. Shrink films are usually multilayered, and include a barrier layer which is impervious to oxygen, moisture, grease, and so on and outer protective layers. In the present invention the barrier layers are most desirably a blend of PVC and PVDC (also known as Saran resin) or EVOH, and the outer layers are blends of EVA and LLDPE.
Such films are usually used to create bags, for example, to be used in the packing of meats. The films are created by stretching the films in all directions (known in the art as "orienting" the film). By the subsequent application of heat, the film or bag will shrink, assuming the shape of the article to be wrapped.
The films of the invention have at least 3 layers, a barrier layer and outer layers where at least one outer layer is a blend of EVA and LLDPE. The outer layers provide protection for the barrier layer. The blend of EVA and LLDPE maximises the benefits gained from the film. The EVA provides a high level of adhesion to the barrier layer particularly when the barrier layer is Saran (PVC-PVDC) or certain EVOH blends. The LLDPE is highly desirable for its capability of surviving intact the process involved in shrinking the shrink bags. The problem with known films which are constructed from EVA with, in some cases, a layer of PVDC or EVOH as the barrier layer, is that they are prone to rupture when used to wrap irregular articles such as meat containing bones. The greater the component of LLDPE, the greater the ability of the bag to remain intact during shrinking. However films having 100% LLDPE are not preferred because of difficulties in manufacturing them.
Three worked examples of the invention are provided. They are each directed to films having three self-adhered layers. The structures of these films can be summarised as follows:
| Outer layer | Barrier layer | Outer layer | |
| Control | EVA | PVDC | EVA |
| Example 1 | EVA | PVDC | 30% LLDPE / 70% EVA |
| Example 2 | 30% LLDPE / 70% EVA | PVDC | 30% LLDPE / 70% EVA |
| Example 3 | 30% LLDPE / 70% EVA | PVDC | 30% LLDPE / 70% EVA |
Examples 2 and 3 involve different commercial forms of EVA.
The claims as first accepted may be summarised as follows:
Claim 1 defines an oriented multiple layer polymeric film with the following structure:
second layer first (barrier) layer third layer
The second layer is 10 to 90% LLDPE and 90 to 10% EVA. The third layer is EVA or the same as the second layer.
Claims 2 to 5, 7 to 12 are either directly or indirectly appended to claim 1, and define further restrictions to the compositions of the layers.
Claim 6 relates to an oriented multiple layer polymeric heat shrinkable film having a 5 layer structure. The structure of the film is as follows:
fourth layer second layer first (barrier) layer third layer fifth layer
The second and third layers are also referred to as the first pair of layers. The fourth and fifth layers are also referred to as the second pair of layers. The claim imposes a number of requirements on the composition of the respective layers:
(1) At least one of said pairs comprises at least 50% of an EVA component, the remainder if any of said one pair being LLDPE;
(2) At least one of said pairs comprises at least 10% LLDPE, the remainder if any of said one pair being EVA;
where the requirement for (1) and (2) is met by one of said pairs meeting both conditions (1) and (2), or each of said pairs meeting one condition each;
(3) At least one of said pairs of layers consists of a blend of 10 to 90% EVA and 90 to 10% LLDPE.
Claim 13 defines an oriented multiple layer polymeric film having the following structure:
EVA 10 to 90% EVA and 90 to 10% LLDPE EVA barrier layer EVA
Claims 14 to 16 are either directly or indirectly appended to claim 13, and define further restrictions to the compositions of the layers.
Claim 17 is appended to any one of claims 1 to 16 wherein the overall composition of the film comprises 20% to 30% LLDPE.
Claims 18 to 22 are omnibus claims, variously appended to claims 1, 1 to 19, and 20.
Amendments were filed on 6 July 1992 during the opposition to grant to overcome alleged prior claiming by two Australian Patents Nos 544001 and 549600. Each of these disclosed specific five layered structures wherein at least one of the layers included a blend of from 20 to 70% LLDPE and from 80 to 30% EVA. The amendments resulted in a fourth condition being added to claim 6 (Similar amendments were made to claim 9.):
(4) “wherein if the first pair of layers does not include LLDPE, the second pair of layers contains from 10% to 20%, or greater than 90% linear low density polyethylene.”
This condition comes into play when, for example, the first pair of layers is 100% EVA. However this amendment introduced an internal inconsistency within claim 6. For example, if the first pair of layers was 100% EVA, the second pair of layers could not be greater than 90% LLDPE as this would mean that the third condition would not be met. This internal inconsistency was not recognised at the time it was proposed. GRACE made no comments at this time. The amendments were allowed on 4 November 1993.
The opposition to grant was heard on 28-29 September 1993 and the inconsistency raised by the GRACE. The decision issued on 10 January 1994. It was found that the opposition succeeded on the grounds that the specification did not comply with Section 40 and that the claims were prior claimed. In the decision at page 15, the delegate stated that "claim 6 is not clear due to the conflict between qualification (3) and (4)".
Following the decision, on 9 March 1994 AMERICAN filed amendments which resulted in claim 6 being renumbered as claim 7, clarification of the wording in some parts of the claim and, most significantly, changing the ranges in the fourth condition. This became:
“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%, or from 71% to 90% linear low density polyethylene with the remainder being ethylene vinyl acetate.”
A similar change was also made to the relevant part of claim 9.
SUBMISSIONS
The opponent’s submissions may be summarised as follows:
It is common ground that the amendments do not fall in substance within the scope of the claims before amendment. The claims, specifically claim 7 as proposed and the claims dependent therefrom, do not fall within the scope of the claims before amendment and claim 7 claims subject matter not claimed prior to amendment. Specifically, detailed analysis shows that the range for LLDPE of 71%-90% together with 10% -29% of EVA in the second pair of layers is outside the scope of the claims as accepted.
The onus is on the applicant to prove that a clerical error or obvious mistake has occurred.
Although it is clear that the claims prior to the proposed amendment contain an error, there is no indication as to what the correction should be. The correction has to be obvious on the face of the specification and the "broader view of file history" approach proposed by the applicant is invalid.
It is not clear what correction might be made based on the disclosure of the specification. The opponent asserts that no correction is obvious. Although the opponent understands where the proposed restriction comes from, this does not address the issue of the correction of the error because it doesn't provide an obvious correction on the face of the document.
The case law cited by the applicant, Robertshaw Controls Company v. GSA Industries Ltd. (1991) AIPC 90-784, refers to an Australian Standard, which was considered there to be part of the common general knowledge of the skilled addressee in the art under consideration. It is not relevant to the present situation because the case history of a particular patent application would not be something that the skilled reader would be appraised of, and be aware of, in their interpretation of the specification. The interpretation has to be "on the basis of what was there and the baggage that the skilled addressee brings with them".
The opponent submits that reliance on the prior claiming documents as to the determination of the correction of the error is not obvious on the face of the documents.
The applicant should be allowed in order to make amendments only the unexpired period of the 60 days allowed by the delegate in the opposition to grant if the request to amend is not allowable and refused.
Costs should follow the event. The issue of delays raised by the applicant is irrelevant.
The applicant’s submissions may be summarised as follows:
The applicant concedes that the amendment is not within the scope of the claims before amendment. It is common ground that the amendment goes beyond that scope and that the error is obvious.
The applicant asserts that the amendment was for the purpose of correcting a clerical error or obvious mistake as permitted by Section 102 (3) of the Patents Act. The dispute concerns: "is the correction the correct correction to make".
In the earlier decision the delegate observed that claim 6 (before the proposed amendment) was confusing and lacked clarity. The delegate identified conflict between the 3rd and the 4th conditions. The applicant asserts that the proper answer to be made by way of correction is evident from the specification on file.
The applicant asserts that with regard to the conditions "clearly one is wrong and in need of amendment". Claim 1 defines 10 to 90% EVA and 90 to 10% LLDPE in at least one of the layers. Page 4 of the specification (before amendment) describes the same. Therefore greater than 90% LLDPE is in obvious conflict with the description and also produces internal conflict within the claims. Therefore the instructed reader would appreciate the existence of the problem and would also appreciate that condition (4) could not define LLDPE greater than 90%. LLDPE must be less than 90%.
The applicant asserts that the instructed reader would "form a broader view of the file history", would have appreciated the existence of the prior claim issue and hence recognised that the correct lower limit of the upper range would be 71%, especially as the delegate offered the applicant the opportunity to amend the specification to overcome the prior claim problems.
The applicant asserts that the relevant case law is Robertshaw (supra)
The applicant asserts that the delegate gave the applicant the opportunity to avoid prior claiming and gave 60 days in which to propose amendments and that the amendment does not extend past that "direction". Because of the invitation to amend to overcome the prior claiming problem by the delegate at the earlier hearing, the applicant does not have to comply with Section 102.
The applicant agrees that costs should follow the event, but notes that the opponent is merely being vexatious, as demonstrated by requesting six extensions to supply evidence without any evidence being ultimately supplied.
THE DECISION
Section 102 (2) of the Patents Act states:
'An amendment of a complete specification is not allowable after the specification has been accepted if, as a result of the amendment:
(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment'
This is qualified by Section 102 (3):
'This section does not apply to an amendment for the purpose of correcting a clerical error or obvious mistake made in, or in relation to, a complete specification.'
It is common ground between the parties that the amendment in question results in a claim which does not in substance fall within the scope of the claims of the specification before amendment. I agree with this. Specifically, detailed analysis shows that the range of 71%-90% for LLDPE in the second pair of layers, as proposed by condition (4) is outside the scope of the claims before amendment.
At the hearing the applicant submitted that section 102(3) of the Act was applicable to the amendment they proposed. They proposed arguments only in support of the amendment being for the purpose of correcting an “obvious mistake”. However I will deal also with “clerical error”.
To show that a clerical error has been made, the onus is on the applicant to make out an appropriate case for the proposed amendment, including proof of the error. See The Distillers Co. Ltd.'s Application, (1953) 70 RPC 221. Usually this requires evidence in the form of a statutory declaration which fully explains the facts surrounding the clerical error and the amendment sought. AMERICAN has filed no evidence in relation to the nature of any clerical error that may have been made and the only arguments presented by the AMERICAN are in relation to an obvious mistake having been made. Thus there is no support for the amendment being in response to a clerical error.
An obvious mistake is one for which "the instructed public can, from an examination of the specification, appreciate the existence of the mistake and the proper answer by way of correction". See General Tire and Rubber Co. (Frost's) Patent, (1972) RPC 259 at page 297.
In considering whether the instructed public could, from an examination of the specification, appreciate the existence of the mistake, it is clear as found in the delegate’s decision in the opposition to grant, that there is a mistake, once the claim is fully construed. Both parties are in agreement that a mistake occurred in the drafting of claim 6, as filed on 6 July 1992, and that the amendment the subject of this action was filed on 9 March 1994 to comply with the delegate’s decision of 10 January 1994.
It is common ground that the error is in the range of “greater than 90% LLDPE” stated as the last condition in claim 6 because in this context LLDPE cannot be greater than 90%. It would seem obvious that LLDPE must therefore be less than or equal to 90%. But it is not at all obvious that this condition is both necessary and sufficient to define adequately the aspect of the invention sought to be defined by this claim, whatever that may be. On analysis, the “less than or equal to 90%” results in a situation which is already defined within the alternatives defined without the extra condition. For example, when the first pair of layers is 100% EVA and 0% LLDPE and the second pair of layers, in accord with condition (2), is at least 10% LLDPE and the remainder if any EVA: in accord with condition (3), the second pair must be 10% to 90% EVA and 90% to 10% LLDPE. Thus the fourth condition is redundant.
The applicant contends that the existence of patents whose claims fall within the scope of these claims provides support for the particular ranges sought to be introduced; that the instructed reader would "form a broader view of the file history", would have appreciated the existence of the prior claim issue and hence recognised that the upper range would need to be 71% to 90%, especially as the delegate offered the applicant the opportunity to amend the specification to overcome the prior claim problems.
The applicant has referred to Robertshaw Controls Company v. GSA Industries Ltd. (1991) AIPC 90-784 as being case law relevant to the present situation because a document other than the specification itself was considered in relation to the correction of an obvious mistake, and because the amendments were there allowed on the basis of that other document. In that case the other document was an Australian Standard, which was considered to be part of the common general knowledge of the skilled addressee in the art under consideration.
While a specification may be read in the light of common general knowledge, as occurred in Robertshaw, it is a different matter to suggest that it be read in the light of two prior patents which were discovered only after acceptance and by an opponent in the course of opposition proceedings; and for which no evidence has been presented that they were part of the common general knowledge in the art. I agree with the opponent that this case is not relevant to the present situation because the case history of a particular patent application would not, in general and there is no evidence to show that it is so in this case, be something that the skilled reader would bear in mind in their interpretation of the specification.
The earlier patents certainly provide parameters which it is desirable for the applicant to avoid but this is not necessarily the same as making the particular correction of the original mistake obvious. A correction to be obvious must be able to be determined “from an examination of the specification.” General Tire and Rubber (supra).
Even were the need to avoid prior art a basis for the correction of an obvious mistake, a number of alternatives may be possible to avoid the prior art. In the present case it is clear that the applicant would need to provide an answer that effectively disclaimed 20% to 70% LLDPE in the layer in question. The applicant has proposed 71% to 90%. This would give them the maximum range available to avoid the prior art, and is clearly highly desirable to the applicant. However, ranges such as 80% to 85% would also avoid the prior art. In my view, desirability does not equate to an “obvious correction”.
Again following General Tire and Rubber (supra) it is necessary to look to the disclosure of the specification to find what is an obvious correction. The decision in Re Mond Nickel Company Ltd’s Application [1956] RPC 189 at 194,and recently referred to in Wimmera Industrial Minerals Pty Ltd v RGC Mineral Sands Ltd (1997) 1063 FCA (15 October 1997) in which a comprehensive review of the law on “in substance disclosed” was made, is applicable.
In the present case, there is no disclosure within the specification of a 5 layer structure which falls within the scope of the claim when the proposed fourth condition applies, ie when the 2nd pair of layers includes 71% to 90 % LLDPE. The examples of 5 layer structures are described at page 4 , line 11 to page 5, line 15. What is clear, even without detailed analysis of the embodiments described, is that neither the ranges themselves nor any specific instances are disclosed for any of the pairs of layers in which the LLDPE content falls within the proposed 71% to 90% range, nor for the EVA content within the equivalent proposed 10% to 29% range. Thus the amendment fails the third Mond-Nickel guideline, ie it includes: “as a characteristic of the invention a feature as to which the basic application is wholly silent.”
Consequently I do not find that the proposed amendment is an obvious correction of the mistake made in the earlier amendment to the claim. I find similarly for proposed claim 10.
The Applicant also contends that the opportunity given by the delegate to propose amendments to overcome the problems found in the opposition to grant constituted a “direction”, and because of that the applicant did not have to comply with Section 102. However the powers of a delegate are circumscribed by the Act. Compliance with an invitation to amend for a particular purpose is still subject to the statutory requirements for amendment.
CONCLUSION
I have found the opposition succeeds on the basis that as a result of the amendment a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment. I have also found that the amendment does not fall within the exception from this requirement provided by section 102(3), ie correction of an obvious mistake.
Consequently I refuse the proposed amendments, the subject of the request dated 9 March 1994. However I believe that some of the changes encompassed by the amendment are allowable and I allow the applicant 30 days from the date of this decision to propose amendments to overcome the deficiencies in relation to the issues of clarity and prior claim identified in the earlier hearing.
COSTS
In their submissions both parties agreed that costs should follow the event. I note that AMERICAN requested 6 extensions of time to serve evidence in support and ultimately did not serve any evidence. I note also that the applicant did not oppose these extensions. Thus I find no reason to vary the usual practice and I award costs against AMERICAN.
Wanda Gunawardana
Delegate of the Commissioner of Patents
Patent attorneys for the Applicant :Phillips Ormonde & Fitzpatrick, Melbourne
Patent attorneys for the Opponent Davies Collison Cave, Melbourne
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