American National Can v Trigon

[1996] APO 23

official notice

decision of a delegate of the commissioner of patents

Application  :          No. 583115 in the name of AMERICAN NATIONAL CAN COMPANY

Title:          Multiple layer polymeric films and process for making them

Action: Oppositions under section 59 of the Patents Act 1952 by W.R.GRACE & CO.-CONN. and TRIGON PACKAGING SYSTEMS (NZ) LIMITED

Decision:          Issued  .

Abstract:          The specification relates to heat shrink polymer films.  The advantage possessed by the films of the invention is that they are not discoloured by irradiation.  The specification is silent on the advantage, which is only revealed by the evidence.  The invention as claimed relates to two different types of film structures.

The opposition succeeds.  The decision on the individual grounds is:

i)         the claims as a whole, although directed to numerous similar embodiments, are clear and succinct.  The claims appear bad because they are directed to two different inventions;

ii)        the specification contains the best method of performance known to the applicant as it refers to the LLDPE’s identified in the evidence as the best;

iii)       the claimed invention is novel because the citation uses the term “saran” only in the sense of VDC-VC, and does not include VDC-MA, and the citation does not disclose the feature of irradiation.
           Werner v Bailey considered;

iv)       the 3-layer films are not obvious because a) it is not obvious to combine all the elements of the invention as claimed, and b) it is not obvious to try a specific VDC-MA resin as the resin has not been demonstrated to be part of the common general knowledge.
           Grace v Asahi applied;

v)        some 5-layer films are obvious as they are no more than the standard use of known layers, which solve no special problem;

vi)       the claimed inventions are a manner of manufacture;  and

vii)      claims 25 and 26 do not define either of the inventions as they do not include the feature of VDC-MA.

The parties were given time to file submissions on costs.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 583115 by AMERICAN NATIONAL CAN COMPANY and oppositions by W.R.GRACE & CO.-CONN. and TRIGON PACKAGING SYSTEMS (NZ) LIMITED under section 59 of the Patents Act 1952

background

Patent application 56844/86 was lodged on 30 April 1986 by American Can Company.  The application claimed priority from US application number 735082 which was filed on 16 May 1985.  Application number 56844/86 was advertised accepted on 20 April 1989 and assigned the serial number 583115.  On 18 February 1992, the Commissioner directed that the application proceed in the name of American National Can Company (hereafter referred to as ANCC).

Three notices of opposition to the grant of the patent were lodged:

(1)W.R.Grace & Co.-Conn. (hereafter referred to as GRACE) lodged a notice on 13 July 1989;

(2)Trigon Packaging Systems (NZ) Limited (hereafter referred to as TRIGON) lodged a notice on 20 July 1989;  and

(3)Viskase Corporation (hereafter referred to as VISKASE) lodged a notice on 20 July 1989.

The service of evidence in the GRACE opposition was completed on 25 August 1993.  The service of evidence in the TRIGON opposition was completed on 13 July 1992.  The VISKASE opposition was advertised withdrawn on 18 May 1995.

On 23 August 1993 ANCC sought amendment of the specification under section 104.  This amendment was advertised allowed on 14 September 1995.

The matter was heard in Melbourne on 14 to 16 February 1996.  ANCC was represented by Mr G.McGowen of counsel, assisted by Mr D.Tadgell of Phillips Ormonde & Fitzpatrick, Melbourne.  GRACE and TRIGON were represented by Mr B.Caine of counsel, assisted by Mr M.Angliss of Davies Collison Cave, Melbourne.

terminology

In this decision I will use the following standard abbreviations:

EVA	a copolymer of ethylene and vinyl acetate
LLDPE	linear low density polyethylene
VDC	vinylidene chloride
VDC-MA	a copolymer of vinylidene chloride and methyl acrylate
VDC-CP	a copolymer of vinylidene chloride and another copolymer
VDC-VC	a copolymer of vinylidene chloride and vinyl chloride

grounds of opposition

The notice of opposition lodged by GRACE lists as the grounds of opposition the grounds in section 59(1)(c) to (i) of the Patents Act 1952.

The notice of opposition lodged by TRIGON lists as the grounds of opposition the grounds in section 59(1)(c) to (i) of the Patents Act 1952.

evidence

The evidence in support for GRACE consists of statutory declarations by Iain Edgar Dominey Morrison (two declarations) and Ian N.M. Woollard (hereafter referred to as the first Woollard declaration).  The evidence in answer to the GRACE opposition consists of a statutory declaration by Almar T. Widiger (hereafter referred to as the first Widiger declaration).  The evidence in reply for GRACE consists of statutory declarations by Ian N.M. Woollard (hereafter referred to as the second Woollard declaration), Ian R. Harrison and Desmond John Regan.

The evidence in support for TRIGON consists of statutory declarations by Russell Allan Cassey and Kelvin Ernest Lord (two declarations).  The evidence in answer to the TRIGON opposition consists of a statutory declaration by Almar T. Widiger (hereafter referred to as the second Widiger declaration).

The evidence in support for VISKASE consists of a statutory declaration by Stanley Lustig.  The evidence in answer to the VISKASE opposition consists of a statutory declaration by Almar T. Widiger (hereafter referred to as the third Widiger declaration).

The evidence is quoted where relevant in this decision.

submissions

Mr Caine made submissions on behalf of GRACE and TRIGON on the following matters:

• the specification does not comply with section 40 in that the claims as a whole are not clear and succinct, and the description does not include a best method of performance;

• the invention claimed in all claims is not novel in the light of US 4457960;

• the invention claimed in all claims is obvious;

• the invention claimed is not a manner of manufacture within the meaning of section 6 of the Statute of Monopolies;  and

• the award of costs.

Mr McGowen made submissions on all of these matters.

decision

1. The relevant law

Patent application 583115 was lodged on 30 April 1986, advertised accepted on 20 April 1989 and notices of opposition were lodged on 13 and 20 July 1989.  By virtue of subsections 234(2) and 234(3) and regulation 23.3 of the Patents Act 1990, these oppositions are determined under the provisions of Part V of the 1952 Act and Division 1 of Part XIV of the former Regulations.

1. Matters to be decided

The matters that have to be decided in these oppositions are:

i)         whether the specification complies with section 40;

ii)        whether the claimed invention is novel;

iii)       whether the claimed invention is obvious;  and

iv)whether the claimed invention is a manner of manufacture.

In considering these issues, I am confronted with three separate bodies of evidence served in relation to the three separate oppositions.  All parties had regard to, and relied upon, evidence from all three oppositions in their submissions.  I consider that the public interest favours determining the present oppositions on the basis of the evidence as a whole.  ANCC is not denied natural justice by such a course as they have had the opportunity to hear and answer the submissions based on the evidence as a whole, and in fact themselves relied upon the evidence as a whole.  I consider that any inadequacies in the evidence of the separate opponents is a matter that goes to costs.

Before considering the substance of the oppositions I will discuss the specification.

1. The specification

The specification relates to heat shrinkable multilayer polymer films.  Such films find use as bags for wrapping perishable foodstuffs such as meat.  After removal of air and sealing, the bag is shrunk to hug the contents (typically by immersion in hot water).

The specification describes the state of the art as follows:

“Successful shrink bags must satisfy a multiplicity of requirements imposed by both the bag producer and the bag user.  Of primary importance to the bag user is the capability of the bag to survive physically intact the process of being filled, evacuated, sealed closed, and heat shrunk.  The bag must also be strong enough to survive the material handling involved in moving the contained product along the distribution system to the next processor, or to the user.  Thus the bag must physically protect the product.

It is also highly desirable to the bag user that the bag serve as a barrier to infusion of gaseous materials from the surrounding environment.  Of particular importance is provision of an effective barrier to infusion of oxygen, since oxygen is well known to cause spoilage of food type products.  ...

Conventional shrink bags have generally been constructed with ethylene vinyl acetate copolymers (EVA).  In some cases the bags contain a layer of a vinylidene chloride-vinyl chloride copolymer (VDC-VC) to serve as an oxygen barrier.  Ethylene vinyl alcohol copolymer (EVOH) is also known as an oxygen barrier material.  ...

The film must be susceptible to orientation without distortion or separation of the multiple layers which are normally present in films of this nature.  The film must be strong enough, at the orientation temperature to withstand the stresses of stretching without the creation of holes, tears, or non-uniform zones of stretching.  ...In packaging use, the film must respond to heat rapidly enough in the shrinking process for commercial practicability and yet must not exhibit such a level of shrink energy as would cause the film to pull apart or delaminate during shrinkage, under its own internal forces.  ...  Another area where film packages are known to be susceptible to failure is at any area where portions of the film are sealed to each other by a heat seal  ...  it is critical that the seals have adequate strength to hold the package closed, and prevent leakage into or out of the package until it is intentionally opened.  ...

It is generally known that cross-linking of polymer films improves their toughness and hot strength.  It is known as a process to cross-link one layer of a multiple layer film containing a VDC-VC copolymer.  This cross-linking of a single layer of a multiple layer film consists of a plurality of steps.  For example, first the layer to be cross-linked is formed.  Second, the formed layer is cross-linked.  Third, additional layers are added to the cross-linked layer, as by extrusion coating, to form a multiple layer film.  Finally, the multiple layer film is heated to orientation temperature and oriented.  While this process may produce a functional film, it would be desirable to invent a process which might be less complex, require fewer steps, perhaps improve the inter-layer adhesion, and perhaps be more economical.”
(pages 1a to 5)

The aim of the application is stated in the following terms:

“It is an object of this invention to provide improved film structures for use in packaging, especially for use in polymeric bags;  and process for making film structures and packages.  It is a special object to make films having improved properties for packaging uses, and to make them by processes which are competitive and economical as compared to previously available processes.”
(page 5)

The solution presented by the specification is described as follows:

“Films of the invention are represented by a multiple layer polymeric film having first and second layers whose compositions have major fractions of EVA.  A third layer of a vinylidene chloride copolymer (VDC-CP) is disposed between the first and second layers.”
(page 6)

The nature of the invention is better understood by considering the claims.  The specification ends with 36 claims, of which 10 are independent.  Claims 1 to 21 are directed to multiple layer polymeric films, with the remainder directed to processes for preparing films.

The 6 independent claims directed to the multiple layer polymeric films are as follows.

1.        A multiple layer polymeric film comprising first and second layers, the compositions of said first and second layers comprising major fractions of ethylene vinyl acetate copolymer;  and a third layer of vinylidene chloride-methylacrylate copolymer disposed between said first and second layers.

4.        A molecularly oriented multiple layer polymeric film having first and second layers whose composition comprises a major fraction of ethylene vinyl acetate copolymer, and a third layer of vinylidene chloride-methylacrylate copolymer disposed between said first and second layers;  each of said first, second, and third layers having been molecularly oriented.

7.        A molecularly oriented multiple layer polymeric film comprising first and second layers wherein the composition of a least one of said first and second layers is a blend of 10% by weight to 90% by weight linear low density polyethylene and 90% to 10% ethylene vinyl acetate and a third layer whose composition is made from a vinylidene chloride copolymer, said third layer being disposed between said first and second layers;  each of said first, second, and third layers having been cross-linked in an amount equivalent to exposure to at least 1.5 megarads of electron beam irradiation.

9.        A molecularly oriented multiple layer polymeric film comprising first and second layers, wherein the compositions of said first and second layers comprising major fractions of ethylene vinyl acetate, and a third layer whose composition is vinylidene chloride-methylacrylate copolymer, said third layer being disposed between said first and second layers;  each of said first, second, and third layers having been cross-linked in an amount equivalent to at least 1.5 megarads of electron beam irradiation.

11.      An oriented multiple layer polymeric film, including:
           (a)       first and second layers, each of said first and second layers having two surfaces, said first and second layers both having essentially the same composition, each as the other, and comprising a first pair of layers;
           (b)       a third barrier layer of vinylidene chloride-methlacrylate (sic) copolymer between, and in surface-to-surface contact with, said first and second layers;  and
           (c)       fourth and fifth layers adhered to said first and second layers on the respective surfaces opposite said third layer, said fourth and fifth layers having essentially the same composition, each as the other, and comprising a second pair of layers;
wherein the combined composition of said first and second pairs of layers, the following requirements are met;

i)         the composition of at least one of said pairs includes at least 50% of an ethylene vinyl acetate component, the remainder, if any, of said one pair being a linear low density polyethylene;  and

ii)        the composition of at least one of said pairs includes at least 10% linear low density polyethylene component, the remainder if any, of said one pair being ethylene vinyl acetate,
           where requirement i) and ii) may be met by one of said pairs having both said requirements or by each of said pairs having one of said requirements.

17.      An oriented multiple layer polymeric film comprising:
           (a)       first and second layers, each of said first and second layers both having essentially the same composition, each as the other, and comprising a first pair of layers;
           (b)       a third barrier layer of vinylidene chloride copolymer between, and in surface-to-surface contact with, said first and second layers;  and
           (c)       fourth and fifth layers adhered to said first and second layers on the respective surfaces opposite said third layer, said fourth and fifth layers having essentially the same composition, each as the other, and comprising a second pair of layers;
           wherein the combined composition of said first and second pair of layers, the following requirements are met;

i)         the composition of at least one of said pairs includes at least 50% of an ethylene vinyl acetate component, the remainder, if any, of said one pair being a linear low density polyethylene;  and,

ii)        the composition of at least one of said pairs includes at least 10% linear low density polyethylene component, the remainder, if any, of said one pair being ethylene vinyl acetate,
           where requirements i) and ii) may be met by one of said pairs meeting both requirement, or by each of said pairs meeting one requirement;
           each of said layers having been cross-linked in an amount equivalent to exposure to at least 1.5 megarads of electron beam irradiation.

The films of these claims are summarised in Table 1.

TABLE 1
SUMMARY OF THE STRUCTURE OF THE FILMS OF THE CLAIMS

Layer 1	Layer 2	Layer 3	Layer 4	Layer 5	Orient?	Irrad?
Claim 1	nil	Major fraction of EVA	VDC-MA	Major fraction of EVA	nil	No	No
Claim 4	nil	Major fraction of EVA	VDC-MA	Major fraction of EVA	nil	Yes	No
Claim 7	nil	10-90% LLDPE/ 90-10% EVA	VDC-CP	Undefined	nil	Yes	Yes
Claim 9	nil	Major fraction of EVA	VDC-MA	Major fraction of EVA	nil	Yes	Yes
Claim 11	(A)	(B)	VDC-MA	(B)	(A)	Yes	No
Claim 17	(A)	(B)	VDC-CP	(B)	(A)	Yes	Yes

Explanatory Notes:

1.The layers are numbered in the order in which they would appear in a film.  This is different to the numbering used in the claims.

2.In the column headed “Orient?”, No means that orientation is not an essential feature of the claim.

3.In the column headed “Irrad?”, No means that irradiation is not an essential feature of the claim.

4.One of (A) or (B) is ³50% EVA/LLDPE,  and the other is ³10% LLDPE/EVA; or

One of (A) or (B) is ³ 50% EVA/³ 10% LLDPE.

The parties agreed that the films of the present invention fall into two broad types based on their structures:

A.films having a barrier layer of VDC-MA, and a layer having a major fraction of EVA

B.films having a barrier layer of VDC-CP, and a layer having LLDPE/EVA, in which the film has been irradiated to cross-link the layers

Type A films are not necessarily irradiated (although they can be subsequently irradiated).  Mr McGowen said that these films are characterised in that they can be safely irradiated.

Type A and B films have no obvious common structural element.  The question of plurality that this raises is not relevant to the present opposition as plurality is not a ground of opposition.  This matter does, however, mean that the analysis of the specification and the issues of the opposition must proceed on the basis of two different inventive concepts.

The films of the invention are prepared by standard methods.  These are generically described in the following terms:

“Films which are neither oriented nor cross-linked can be made by any of the conventional processes for forming multiple layer films.  Such processes include extrusion, coextrusion, extrusion coating, extrusion lamination, adhesive lamination and the like, and combinations of processes.  The specific process or processes for making a given film which is neither oriented nor cross-linked can be selected with average skill, once the desired structure and compositions have been determined.

Films which are oriented, but not cross-linked, can also be made by conventional processes, in combination, for forming multiple layer films.  A preferred process includes the steps of coextrusion of the layers to be oriented, followed by orientation in one of the conventional processes such as blown tubular orientation or stretch orientation in the form of a continuous sheet;  both being molecular orientation processes.

Films which are oriented and are cross-linked are made by a novel combination of process steps.  The first step is the formation of a multiple layer film.  The first step, of formation of the multiple layer film, is usually most easily accomplished by coextrusion of the desired layers of which the vinylidene chloride copolymer layer is one.  Other formation processes are acceptable so long as the resulting oriented film at the conclusion of fabrication processing is a unitary structure.

The second step is orienting the multiple layer film.  This is accomplished by heating the film to a temperature appropriate to molecular orientation and molecularly orienting it.  The film may then be optionally heat set by holding it at an elevated temperature while its dimensions are maintained.  The orientation step is preferentially carried out in line with the first step, which is the film formation step of the process.

The third step is subjecting the formed and oriented multiple layer film, including the vinylidene chloride copolymer layer, to electron beam irradiation.

The amount of electron beam irradiation is adjusted, depending on the make-up of the specific film to be treated and the end use requirement.  While virtually any amount of irradiation will induce some cross-linking, a minimum level of at least 1.5 megarads is usually preferred in order to achieve desired levels of enhancement of the hot strength of the film and to expand the range of temperatures at which satisfactory heat seals may be formed.  While treatment up to about 50 megarads can be tolerated, there is usually no need to use more than 10 megarads, so this is a preferred upper level of treatment;  the most preferred dosage being 2 to 5 megarads.

The third step of subjecting the film to electron beam irradiation is performed only after the multiple layer film has been formed, and after molecular orientation, in those embodiments where the film is molecularly oriented.  It should be noted that, in the irradiation step, all of the layers in the film are exposed simultaneously to the irradiation source, such that irradiation of all the layers of the film takes place simultaneously.”
(pages 14 to 15)

The specification includes three worked examples of the invention.  These examples produce the film structures shown in Table 2.

The films prepared in the examples were only tested for oxygen permeability, free shrink and hot strength of heat seals.  The results were:  (i)  oxygen permeability was not substantially affected by irradiation;  (ii)  free shrink was slightly decreased by irradiation;  and (iii)  hot strength was greatly enhanced by irradiation.  There is no data on whether the films of type A were superior to the prior art films.

At the hearing there was discussion of the property of the film that the barrier layer does not discolour or degrade upon irradiation.  This property is not mentioned in the specification.  Mr McGowen asserted that as discolouration due to irradiation is a normal expectation, the fact that the specification does not note any discolouration implicitly indicates that there is no discolouration.  I cannot accept this assertion.  A patent specification cannot be construed so as to assume that the invention has unexpected properties of which the specification is totally silent.

It was asserted on behalf of ANCC that, as a matter of fact, the films of the invention do not discolour upon irradiation.  Throughout the Widiger declarations there a large number of statements that the invention lies in the ability to irradiate without discolouration.  I will quote

TABLE 2
SUMMARY OF THE EXAMPLES OF THE INVENTION

Layer 1	Layer 2	Layer 3	Irrad’n?
Example 1	35% LLDPE/ 65% EVA	VDC-MA	35% LLDPE/ 65% EVA	The example discloses samples that are either not irradiated, or irradiated with 4.5 megarad
Example 2	30% LLDPE/ 70% EVA	VDC-MA	30% LLDPE/ 70% EVA	The example discloses samples that are either not irradiated, or irradiated with 4 or 8 megarad
Example 3	35% LLDPE/ 65% EVA	VDC-VC	35% LLDPE/ 65% EVA	The example discloses samples that are irradiated with 1, 3 or 5 megarad

one example that is representative of the tenor of these statements:

“During the Applicant’s testing of VDC-MA in a multiple layer film, the Applicant found that unlike previous VDC copolymers that had been used, VDC-MA did not discolor when the film was irradiated.  This result could not have been predicted from experience with other VDC copolymers or from the literature provided by the manufacturers.”

(second Widiger declaration, para 11 D)

I have reviewed the evidence of Mr Widiger carefully.  Mr Widiger is an inventor of the invention, and thus a man having practical experience of the invention.  I consider that it is reasonable to regard Mr Widiger’s comments on the properties of films as based on studies of actual films carried out by Mr Widiger and the other inventors.  Mr Widiger repeatedly refers to the advantage lying in the fact that VDC-MA can be cross-linked by irradiation without degradation.  There is only one clear statement that VDC-CP/[LLDPE/EVA] can also be irradiated without discolouration:

“However, the Opposer does not offer evidence to show that a film with a PVDC core and LLDPE/EVA outer layers had been irradiated to cross-link the layers without causing discoloration of the film.  The inventive merit in these claims is the cross-linking of multi-layer films without discoloration.”

(first Widiger declaration, para 30)

It appears that Woollard considers that the film does not discolour due to the use of low levels of irradiation, which do not cross-link the VDC-CP:

“Irradiation dosages such as 1.5 Mrad defined in claim 7 of the American Can application are fairly low but well within the norms in this specialized particular field.  I believe it likely that low dosages are indicated as it was known that VDC deterioration and discolouration could occur during irradiation.”

(first Woollard declaration, para 15)

Mr McGowen asserted that discolouration did not occur regardless of the level of irradiation.  I do not regard Mr McGowen’s assertion as evidence on this point.  The only evidence on this point is that of Widiger.  Widiger does not state in simple terms that discolouration does not occur regardless of the level of irradiation.  I consider that Widiger’s comments on discolouration can only relate to films that have been prepared and studied.  Widiger’s declarations do not specify the films that were prepared and studied.  The only films that I know have been prepared and studied are those of the worked examples in the specification, so I can only assume that these are the films referred to by Widiger.  These films are 3-layer films, with irradiation of up to 8 megarads.

I cannot conclude that the 3-layer films do not discolour at irradiation levels above 8 megarads as there is no basis for such an assumption.  Consequently, stability of 3-layer films to irradiation above 8 megarads is not a property that I can take into account in considering the invention defined by the claims.  Similarly, the stability of 5-layer films to irradiation has no basis in the evidence.

The specification has been drafted without reference to critical information that was known to the applicant.  This is a curious and regrettable oversight.

1. Section 40

Mr Caine submitted on behalf of GRACE and TRIGON that the specification failed to comply with section 40 in two respects:  the claims as a whole are not clear and succinct;  and the specification does not include the best method of performing the invention.

a)        Clear and succinct

Section 40(2) states “The claim or claims shall be clear and succinct ...”.  Mr Caine submitted that in the present case the invention is a combination, but the claims are not consistent as to the features of the combination.  Mr Caine submitted that all the features of each claim are known, and the claimed invention is thus a combination.  There are a large number of independent claims, with no feature common to all claims.  As the claims are inconsistent with regard to the nature of the inventive combination, they are not clear and succinct.  I was referred to the decision in Nomad Structures International Ltd v Heyring Pty Ltd (1992) 24 IPR 185. The relevant portion of the decision is at page 194:

“Turning specifically to the claims, I think an addressee would have some difficulty determining the nature of the invention in its broadest form.  For example, claims 17, 29, and 32 suggest that grooves in the tubular frame members is an essential feature of the invention; but this feature is not included in claim 1.  Claims 1, 17, and 32 suggest that a building structure comprising inverted V-frames is an essential feature of the invention; but this feature is not included in claim 29.  Also, claim 29 is not directed to a portable structure as are the other independent claims.  Finally, claim 32 does not include the features of a flexible joining strip holding and sealing the frame members.  Generally, I think the Nomad specification is suffering from an overdose of claims.  The invention is technologically not complex, and as such should be capable of being defined by less than 46 claims.  The nature of the invention is not clearly apparent due to the number of claims directed to different combinations of integers and due to the number of repetitious claims.  Such statements of claims are "eminently perplexing to the public", see J S Bancroft's Application (1906) 23 RPC 89 at 94. The claims in the Nomad specification are not clear and succinct and thus do not comply with s 40.”

In response, Mr McGowen referred to a number of cases to establish that it is not necessary for the specification to state the inventive concept, or for the claim to distinguish the invention from the prior art.  These decisions are:  British United Shoe Machinery Company Ltd v A.Fussell & Sons Ltd (1908) 25 RPC 631; James Keith and Blackman Company Ltd v Tilley High Pressure Gas Syndicate Ltd (1913) 30 RPC 537; Raleigh Cycle Coy Ltd v H.Miller and Coy Ltd (1948) 65 RPC 141; Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157; and Washex Machinery Corporation v Roy Burton & Co Pty Ltd (1975) 49 ALJR 12.

It is the right of an applicant to draft his claims so as to protect every aspect of the invention that he has disclosed.  This can lead to a large number of claims, and potentially even a large number of independent claims.  Whether such a drafting style results in claims that are not clear and succinct is a question of degree, that can only be decided by having regard to the specific claims and the specific description, rather than simply counting the number of claims.  One reason for the number of claims is that there are two types of inventions (which I previously referred to as types A and B).  There is a consistency in the claims when they are viewed as directed to two different film structures.  I consider that the claims of each type of film structure are not repetitive, and the nature of the inventions of the two types can be determined without excessive difficulty.  I am thus of the view that it has not been established that the claims are not clear and succinct. The claims appear bad because they are directed to two different inventions.

b)        Best method of performance

Section 40(1)(a) states that the specification must include “the best method of performing the invention which is known to the applicant”.  Mr Caine submitted that if safe irradiation lies at the heart of the invention, there is no proper description of that step - there are inadequate details of the irradiation step (note particularly page 15, lines 9 to 11 of the specification).  On a second point, it was submitted that there is no best method of performance with respect to the LLDPE as the resin described in the specification is not the best resin known to the applicant.  The best resin known to the applicant is revealed in the third Widiger declaration.

Mr McGowen submitted that the third Widiger declaration refers to the difficulties of perfecting the invention, and this method of working the invention is in fact described at page 11 of the specification.

The relevant part of the third Widiger declaration is para 11. E., which states in part:

“ANCC began testing LLDPE in its multiple layered films in the early 1980’s and developed films having layers of LLDPE and blends of LLDPE.  As part of the developmental work, ANCC had to overcome processing and extruding problems encountered during testing.  As a result of this developmental work, ANCC found that Dow 2050 and 2056 LLDPE yielded the best results.  ...  ANCC discovered, only after years of testing, that the LLDPE used in this blend had to have specific rheological properties or it could not be successfully processed and extruded.”

The specification refers to the LLDPE to be used in the invention at page 11:

“LLDPE polymers preferred for use in layers 16 and 18 which are blend compositions are those having a melt index (MI) of up to about 6.  Especially preferred polymers have an MI of 0.5 to 1.5.  Among the most preferred polymers are 2050 and 2056 from Dow Chemical Company.”

The LLDPE polymers used in the worked examples are Dow 2050 and Dow 2056.

I consider that the specification is consistent with the information in the third Widiger declaration.  The LLDPE’s known as Dow 2050 and 2056 appear to be the best LLDPE’s known to the applicant, and these LLDPE’s are clearly stated to be preferred, and are used in the worked examples of the invention.  Consequently, I consider that the specification does include the best method of performing the invention known to the applicant.

With regard to the irradiation step, there is very little information in the specification on how to carry out this step.  However, there is no evidence that the information provided is inadequate.  Consequently, I consider that it has not been shown that there is no best method of performance.

c)        Other section 40 matters

At the hearing, Mr McGowen stated that, due to an oversight, claim 25 does not define the third layer as VDC-MA.  Consequently, it was conceded that claim 25 does not define the invention.  I agree that claim 25 should define the third layer as VDC-MA, and consequently the claim does not define the invention.  The same is true of claim 26.

1. Novelty

Mr Caine made submissions on behalf of GRACE and TRIGON to the effect that all claims lacked novelty in the light of US 4457960.  The citation was available in the Patent Office on 12 April 1985.

a)        The relevant law

The test for anticipation is the reverse infringement test.  The classic formulation of this test is that presented by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228, at page 235:

“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”

This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at page 517). Mr Caine also referred to R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 85 ALR 679 to argue that lack of novelty could be established if a citation does not disclose one of the essential features, but instead discloses a mere workshop variation of that feature. The key passage of Werner v Bailey relied upon was (at page 708):

“In the present case King J took the view that, in effect, Griffin v Isaacs, supra, and the associated High Court cases, today stood for no more than the proposition that where the alleged anticipation disclosed all the essential integers of the claimed invention, the conclusion as to lack of novelty which would follow therefrom was not avoided and the claimed invention was not saved, merely because there were differences which might be described as mere mechanical equivalents or workshop variations.”
[emphasis added]

It appears that this passage is dealing with the situation where all of the essential features of the claimed invention are disclosed in the citation.  Consequently, I do not see that it supports the proposition advanced by Mr Caine.  I will proceed on the basis that the invention is lacking in novelty only if the citation discloses all of the essential features.

b)        The essential features

It is well established that patent claims are to be given a purposive construction, and that the initial assumption is that all features of the independent claims are essential (Catnic Components v Hill & Smith Ltd [1982] RPC 183). A feature can be regarded as not essential if it does not appear to make any difference to the inventive concept (but noting the caution in Société Technique de Pulverisation Step v Emson Europe Ltd [1993] RPC 513 at 522).

I will now consider the features of the independent claims to the films per se.  The results are presented in Table 3.

I am not aware of any reason for regarding any of the features as not essential.

TABLE 3
SUMMARY OF THE FEATURES OF THE CLAIMS

Feature  Claim No.

1

4

7

9

11 (a)

(b)

(c)

(d)

17 (a)

(b)

(c)

(d)

Film is oriented

N

Y

Y

Y

Y

Y

Y

Y

Y

Y

Y

Y

Layer 1

- ³50% EVA/LLDPE

N

Y

N

N

N

Y

N

N

- ³10% LLDPE/EVA

Y

N

N

N

Y

N

N

N

- ³50% EVA/LLDPE + ³10% LLDPE/EVA

N

N

N

Y

N

N

N

Y

- undefined

N

N

Y

N

N

N

Y

N

Layer 2

- Major fraction of EVA

Y

Y

N

Y

N

N

N

N

N

N

N

N

- 10-90% LLDPE/90-10% EVA

N

N

Y

N

N

N

N

N

N

N

N

N

- ³50% EVA/LLDPE

N

N

N

N

Y

N

N

N

Y

N

N

N

- ³10% LLDPE/EVA

N

N

N

N

N

Y

N

N

N

Y

N

N

- ³50% EVA/LLDPE + ³10% LLDPE/EVA

N

N

N

N

N

N

Y

N

N

N

Y

N

- undefined

N

N

N

N

N

N

N

Y

N

N

N

Y

Layer 3

- VDC-CP

N

N

Y

N

N

N

N

N

Y

Y

Y

Y

- VDC-MA

Y

Y

N

Y

Y

Y

Y

Y

N

N

N

N

Layer 4

- Major fraction of EVA

Y

Y

N

Y

N

N

N

N

N

N

N

N

- 10-90% LLDPE/90-10% EVA

N

N

N

N

N

N

N

N

N

N

N

N

- ³50% EVA/LLDPE

N

N

N

N

Y

N

N

N

Y

N

N

N

- ³10% LLDPE/EVA

N

N

N

N

N

Y

N

N

N

Y

N

N

- ³50% EVA/LLDPE + ³10% LLDPE/EVA

N

N

N

N

N

N

Y

N

N

N

Y

N

- undefined

N

N

Y

N

N

N

N

Y

N

N

N

Y

Layer 5

- ³50% EVA/LLDPE

N

Y

N

N

N

Y

N

N

- ³10% LLDPE/EVA

Y

N

N

N

Y

N

N

N

- ³50% EVA/LLDPE + ³10% LLDPE/EVA

N

N

N

Y

N

N

N

Y

- undefined

N

N

Y

N

N

N

Y

N

Film is cross-linked by irradiation

- at least 1.5 megarad

N

N

Y

Y

N

N

N

N

Y

Y

Y

Y

Explanatory Notes:

1.Y = yes;  N = no

2.The invention defined in claims 1, 4, 7 and 9 only requires three layers.  Consequently, layers 1 and 5 are not present.

3.The invention defined in claims 11 and 17 embraces 4 alternative possibilities, identified as (a) to (d).

c)        Disclosure of the citation

The citation discloses heat shrinkable polymer films for use in shrink bags.  The broad disclosure of the citation is stated at column 2, lines 41 to 50:

“A preferred form of the invention is an oriented multiple layer polymeric film.  In one embodiment, the film has a first barrier layer, the first layer having two opposing surfaces.  A second layer is firmly adhered to one surface of the first layer, the second layer being 10% to 90% LLDPE and 90% to 10% EVA.  A third layer is firmly adhered to the other surface of the first layer, the composition of the third layer being either (i) an EVA or (ii) a blend of 10% to 90% LLDPE with 90% to 10% of an EVA.”

The nature of the barrier layer is described at column 3, lines 25 to 28:

“In all the multiple layer films of the invention, the barrier layer is preferably either polyvinyl chloride-polyvinylidene chloride copolymer (saran) or EVOH, or a blend of EVOH.”

The examples of the invention refer to the composition of the barrier layer as “saran”.  Mr Caine referred to many sources to indicate that the name “saran” is used to denote what he called a family of VDC-CP’s, and that VDC-MA is a recognised member of that family.  I do not need to review these submissions, because the citation does not refer to the barrier layer as saran.  The citation says the barrier is VDC-VC, which it is parenthetically noted is also known as saran.  In this context, it seems to me that the term “saran” is being used only as a shorthand for VDC-VC.  Consequently, the citation does not disclose films having a barrier layer of VDC-MA.

The relevant disclosure of the citation is an oriented film having the structure [10% to 90% LLDPE and 90% to 10% EVA]/VDC-VC/[EVA or a blend of 10% to 90% LLDPE with 90% to 10% of an EVA]

d)        The question of novelty

Claims 1, 4, 9 and 11 include the feature of VDC-MA as the barrier layer, which is not disclosed in the citation.  The claims directed to films having VDC-CP as the barrier layer are those numbered 7 and 17.  These claims include the feature of irradiation, which is not disclosed in the citation.  Consequently, it has not been established that the product claims are not novel.  It follows that the claims to processes for preparing these products are also novel.

1. Obviousness

Mr Caine submitted on behalf of GRACE and TRIGON that the invention defined by all claims is obvious in the light of alleged elements of common general knowledge.  These submissions only referred to the evidence from the GRACE opposition.  Mr Caine agreed that the TRIGON opposition only advanced evidence from Mr Cassey, who is a New Zealand citizen and apparently only has knowledge of what is known in New Zealand.  Consequently, as the TRIGON opposition has presented no evidence of the common general knowledge in Australia, it must fail on the ground of obviousness.

Objection was taken to some of the material in the second Woollard declaration as not being evidence in reply.  I have not decided this question, and have considered all of the evidence, as I have reached the conclusion that, on the matters where this evidence is relevant, the oppositions do not succeed (even in the light of the evidence as a whole).

a)        The relevant law

The approach to considering obviousness under the Patents Act 1952 was set out in Minnesota Mining and Manufacturing Co. v Beiersdorf (Aust.) Ltd (1980) 144 CLR 253 and summed up by Aickin J in The Wellcome Foundation Limited v V.R. Laboratories (Aust.) Pty Ltd (1981) 148 CLR 262 at 270 in the following terms:

“It is as well to bear in mind that 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.”

The normal approach is to consider the problem solved by the claimed invention, and to ask whether that is an obvious solution in the light of the relevant common general knowledge.  This analysis can be considered as a problem-solution approach.

The present case can also be analysed under the alternative approach known as “obvious to try”.  This approach was used by the Federal Court in W R Grace & Co v Asahi Kasei Kogyo Kabushiki Kaisha (1993) 25 IPR 481, a case that concerned an invention in the same technical field as the present application. The Full Court concurred with the approach taken by Heerey J (reported as Asahi Kasei Kogyo Kabushiki Kaisha v W R Grace & Co (1991) 22 IPR 491 at 526):

“Given the addition to common general knowledge that was made by the Union Carbide articles, I do not think the steps which were taken by Grace amounted to inventiveness in the relevant sense.

A new product was taken (first Union Carbide’s UCAR 1137 and then the DSM equivalent) and was tried out in place of an existing component (EVA) in an existing product (multi-layered heat shrinkable packaging film).  There was nothing inventive in selecting the new product, particularly as it was specifically promoted as an improvement on EVA.  It is part of a converter’s craft to try out new resins.”

b)        The problem-solution approach

Mr Caine submitted that the present invention does not solve any problem, as there is no evidence of any superiority over prior art films.  I agree that the specification does not exemplify any advantage over the prior art.  The specification generally discusses the advantage of the invention as “to provide improved film structures for use in packaging” (page 5).  The specification does not substantiate any advantages of the films of the invention.

In considering the problem that is solved by the claimed inventions, it is permissible to have regard to a problem that can reasonably be inferred from the specification as a whole and the surrounding facts (the authorities for this conclusion are discussed in my decision in Application by Rhone-Poulenc Rorer S.A., Patent Office decision, 25 August 1995, patent application number 12264/92, unreported).  The surrounding facts include a property not disclosed in the specification:

“In my judgement, it is what the patentee has actually achieved and not what he has promised (provided, of course, his promise is not false) which matters from the point of view of consideration and subject-matter in the sense of inventive merit.”

(Olin Mathieson v Biorex, supra, at 195)

As I noted when construing the specification, 3-layer films of the invention do not discolour when irradiated at a level of up to 8 megarad.  I consider that a reasonable formulation of the problem solved by the type A films of claims 1, 4 and 9 is “to provide a film that can be irradiated at up to 8 megarads without discolouration”.  A reasonable formulation of the problem solved by the type B films of claim 7 is “to provide a film that has been irradiated at up to 8 megarads without discolouration”.  With regard to the 5-layer films of claims 11 and 17, I do not know what special problem is solved by the films as there is no evidence of advantage over the prior art films.  The only reasonable problem I can see is “to provide an alternative heat shrink film”.

The next issue is to determine what would have been common general knowledge in the field of heat shrink films, as distinct from what was public knowledge.  In so doing I must bear in mind the definition of common general knowledge given by Aickin J in Minnesota Mining and Manufacturing Co. v Beiersdorf (Aust.) Ltd, supra, at page 292:

“The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade in considering making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge.”

To determine the common general knowledge I must rely on the evidence of those skilled in the art, i.e. the evidence of Mr Woollard and of Mr Widiger.  Mr Caine cautioned me against placing reliance on the evidence of Mr Widiger, and referred me to an earlier decision of mine in which the same issue had arisen (W.R.Grace & Co. -Conn. v American National Can Company, Patent Office decision, 10 January 1994, patent application number 571175, unreported).  In that decision I commented on Mr Widiger’s evidence as follows:

“Before turning to the evidence of the experts, I will deal with an argument that Mr Widiger's evidence should be given little weight because he is not "a non-inventive worker in the field".  Mr Widiger is a citizen of the United States of America, with considerable experience in polymer technology in the United States.  He does not directly state that he has knowledge of the art in Australia, but this does not mean that I should reject his evidence out of hand.  It was also argued that as Mr Widiger is an expert (paragraph 9 of his declaration) he cannot give evidence on obviousness.  I consider that he can give evidence relating to the common general knowledge in Australia.  If any evidence is contested on the basis that it was not known in Australia, I will deal with that in the way that any contested evidence is considered.  However, I must treat with care Mr Widiger's evidence on what is obvious in the light of that knowledge (see Clafton Pty Ltd v Forbes Engineering Holdings Pty Ltd 19 IPR 29).”

It was argued that the present case is more extreme than in the previous case, as Mr Widiger is also a co-inventor with regard to this application.  I consider that I can have regard to Mr Widiger’s evidence, but again I will have to consider the weight to be given to any contested evidence, and I will treat with care any evidence on what is, or is not, obvious in the light of the common general knowledge.

The matters that Mr Caine alleged to constitute common general knowledge are:

i)         A multilayer film structure

Multilayer film structures were (and are) standard in the shrink wrap film art, and the declarations of all experts contain numerous references to such structures.  I accept that multilayer films are part of the common general knowledge.

ii)        LLDPE/EVA in the specific ratio, or with EVA as a major component

The first Woollard declaration states:

“LLDPE EVA blends were widely known to be an appropriate material for providing abuse resistance in films”  (para 9)

The brochure “Stretch/Cling Film ... Application Report” by Dow Chemical USA (Exhibit INMW-1 to the first Woollard declaration) was advanced as evidence that LLDPE/EVA was known.  The brochure relates to LLDPE resins 2035, 2047 and 2045.  The brochure states:  “In blown film, DOWLEX resins may be blended with conventional LDPE homopolymers or EVA copolymers, and tackifiers must be incorporated in the blend to achieve the desired cling properties.”

Although Mr McGowen objected that the brochure was not part of the common general knowledge, I accept Mr Caine’s assertion that the brochure is corroborative of what Woollard states to be common general knowledge.

I consider that the evidence establishes that LLDPE/EVA blends were common general knowledge.

iii)       VDC-CP or VDC-MA are suitable for barrier layers

It is evident that VDC-VC was a known barrier layer in multilayer films.  This is clear from the specification at page 2:  “In some cases the bags contain a layer of vinylidene chloride-vinyl chloride copolymer (VDC-VC) to serve as an oxygen barrier”.  It is acknowledged by the experts that VDC-VC was in common use as a barrier layer.

What is not so clear is whether the suitability of VDC-MA as a barrier layer was common general knowledge.  VDC-MA has been known in an intellectual sense for a long time.  US patent 3524795 (Exhibit IEDM-4 to the Morrison declaration), which was open to public inspection in Australia on 18 August 1971, relates to layered barrier packaging films.  Suitable barrier layers are described as:

“Particularly advantageous and beneficial are extrudable compositions of vinylidene-chloride polymers, wherein the polymers contain at least about 70 weight percent vinylidene-chloride, the remainder being one or more olefinically unsaturated monomers copolymerizable therewith.  Suitable vinylidene-chloride copolymers are prepared utilizing such comonomers as methyl, ethyl, isobutyl, butyl, octyl and 2-ethylhexyl acrylates and methacrylate;”

(column 4, lines 7 to 15)

Clearly the use of VDC-MA as a barrier layer in multilayer film was known at least as early as 1971.  In the first Woollard declaration it is stated:

“It was well known in Australia, before 16 May 1985, that VDC-MA was a suitable material for a barrier layer film.”  (para 5)

The declaration goes on to say in the next paragraph:

“With reference to item 5 above, I note that DOW Chemical Company, a major supplier of resins for use in multilaminate films has been proposing the sale in Australia and elsewhere of VDC-MA resins for use in barrier films for at least 10 years.”  [emphasis in original]

The fact that Dow had proposed the sale of VDC-MA does not make it more or less likely that knowledge of VDC-MA was part of the common general knowledge.  I am left with the statement in para 5 of the Woollard declaration as the only evidence on the point.  As this evidence is not contradicted, I am prepared to accept that it is more likely than not that the suitability of VDC-MA as a barrier layer was common general knowledge in Australia.

I consider that the evidence establishes the suitability of VDC-VC and VDC-MA as barrier layers was common general knowledge.  There is no evidence as to whether other VDC-CP’s were common general knowledge.

iv)       Biaxial orientation of films

There was very little discussion of this point, as the orientation of films is standard practice in order to produce a film that will shrink upon heating.  I consider that this is clearly common general knowledge.

v)        Irradiation can be used to cross-link layers

The irradiation of films to cross-link is admitted in the specification itself:

“It is generally known that cross-linking of polymer films improves their toughness and hot strength.”  (page 5)

There are also references in the evidence to irradiated products in the prior art.  I consider that the evidence suggests that it was common general knowledge to irradiate films in order to cross-link.  However, it must be added that the evidence also clearly indicates that it was accepted before the priority date that irradiation of VDC-CP’s caused discolouration (the declarations of Woollard and Widiger state this on many occasions).

vi)       A specific vinyl acetate content in EVA

It was argued that the specific vinyl acetate contents referred to in the claims were merely recognised ranges.  I was referred to a number of patents where the ranges are described.  I have no evidence that these patents are part of the common general knowledge.  While Mr Caine asserted that it is common in this art to read the patents of competitors, there is no evidence on this point.  Consequently, it has not been established that this matter is common general knowledge.

vii)      LLDPE with a specific melt index

It was argued that the melt index of LLDPE referred to in the claims were merely recognised ranges.  I was referred to a number of patents where the ranges are described.  I have no evidence that these patents are part of the common general knowledge.  While Mr Caine asserted that it is common in this art to read the patents of competitors, there is no evidence on this point.  Consequently, it has not been established that this matter is common general knowledge.

I will turn now to the issue of whether the invention is obvious in the light of this common general knowledge.  The obviousness question was explained by Aickin J in Minnesota Mining and Manufacturing Co. v Beiersdorf (Aust.) Ltd, supra, at page 286:

“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention”

This test is qualified by the following caution:

“The question is, is the invention itself obvious, not whether a diligent searcher might find pieces from which there might have been selected the elements which make up the patent.  If this were not so, there could never be a valid patent for a new combination of old integers.  The proper question is not whether it would have been obvious to the hypothetical addressee who was presented with an ex post facto selection of prior specifications that elements from them could be combined to produce a new product or process.  It is rather whether it would have been obvious to a non-inventive skilled worker in the field to select from a possibly very large range of publications the particular combination subsequently chosen by the opponent in the glare of hindsight and also whether it would have been obvious to that worker to select the particular combination of integers from those selected publications.  In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers.  The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious.  It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious.”

(Minnesota Mining and Manufacturing Co. v Beiersdorf (Aust.) Ltd, supra, at page 293)

Another way of looking at this question is:

“As the Latin derivation (obvius, in the way) makes plain something is obvious if it is lying in the way, so that one who takes the ordinary route will be likely to come upon it.”

(Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 105 ALR 247 at 262)

I shall deal first with the claims to 3-layer films.  Given my findings on the common general knowledge, it is necessary for GRACE to demonstrate that it was obvious to combine the elements in the way claimed by ANCC in order to solve the specific problems at hand (i.e. no discolouration upon irradiation).  None of the evidence directly addresses this point.  I do not feel that the specific combinations of the necessary elements would have been a self-evident solution to these problems without the aid of evidence.  Consequently, I consider that it has not been established that the 3-layer films of the invention are obvious.

I am confirmed in this view by a point made by Mr McGowen.  The result of being able to safely irradiate without discolouration is still a surprising result given all the indications in the prior art that irradiation degrades VDC-CP’s.

Turning now to the claims to 5-layer films, the problem at hand is quite different.  It only has to be obvious to select and combine the elements of the combination in order to produce a heat shrink film.  It is apparent that these films are made up of layers that were themselves well known in the heat shrink art.  ANCC have combined the layers in a standard way (i.e. a known barrier layer is used as the barrier layer, known outer layers are used as outer layers) to produce a novel structure.  A person seeking to make a shrink wrap film would have found the specific layers lying in the way of routine investigation.  Thus I consider claim 11 is obvious.  I consider that irradiation of the film would not have been a matter of routine because the common general knowledge taught against irradiating films containing VDC-CP.  Consequently I do not consider that claim 17 is obvious.

The claims appended to claim 11 add the features shown in Table 4.

The specific layer compositions in claims 12 to 15 appear to be within the common general knowledge, and would thus be lying in the way of routine investigation.  Claim 16 includes the feature of irradiation which the common general knowledge taught against, when dealing with films containing VDC-CP.  Consequently, I do not believe it would have been a matter of routine to irradiate any of the films of claims 11 to 15, and it follows that claim 16 is not obvious.

I conclude that the invention defined by claims 11 to 15 is obvious.

TABLE 4
SUMMARY OF THE ADDED FEATURES IN THE CLAIMS APPENDED TO CLAIM 11

Layer 1	Layer 2	Layer 4	Layer 5	Other features
Claim 12	10-90% LLDPE	70-100% EVA	70-100% EVA	10-90% LLDPE
Claim 13	50-90% LLDPE	100% EVA	100% EVA	50-90% LLDPE
Claim 14	50-100% EVA	50-100% LLDPE	50-100% LLDPE	50-100% EVA
Claim 15	90-100% EVA	90-100% LLDPE	90-100% LLDPE	90-100% EVA
Claim 16	Any film of claims 11 to 15	Irradiated with at least 1.5 megarads

Explanatory Notes:

1.          Layer 1 and Layer 5 have essentially the same composition.

2.          Layer 2 and Layer 4 have essentially the same composition.

c)        “Obvious to try” approach

The obvious to try analysis only relates to the use of VDC-MA as a replacement for VDC-CP in existing 3-layer film structures.

Mr Caine submitted that the present invention amounts to the use of VDC-MA as a routine investigation of a new material in the Saran family.  Widiger makes it clear that the use of a different resin requires a large amount of work:

“Before using a VDC-MA resin as a barrier layer (or any resin for that matter) in a multi-layer film, one has to determine its rheological properties,  ...  whether the screw design is suitable or whether it must be changed in view of the resin’s properties.  The extruder design must also be considered  ...  The types of and percentages of additives, stabilizers and lubricants needed to make and use the film in commercial applications must also be determined, usaully (sic) after many months of research.”

(first Widiger declaration, para 18)

I accept that the use of a new resin would require a number of tests to be carried out before a commercial product could be developed.  However, the above passage suggests that this is no more than routine testing that would be within the competence of a man skilled in the art.  Patents are granted for inventions, not hard work.

Mr McGowen submitted that VDC-MA was not commercially available in Australia before the priority date, so it was not possible to try it.  In addition, Mr McGowen asserted that information about VDC-MA was not common general knowledge.

I consider that if the state of the common general knowledge was such that it was obvious to try VDC-MA, then the fact that it was not readily available does not make it less obvious to try.  Consequently, I am not concerned whether or not VDC-MA was available on a commercial basis, on an experimental basis, or not at all.  The question is simply whether it was obvious to try VDC-MA in place of VDC-VC.

The following are the statements in the evidence on this point:

“I consider, and I believe other multilaminate engineers would have considered in 1985 that the use of the known barrier material PVDC-MA in the widely known multilaminates is entirely lacking in inventiveness, whether the multilaminate is oriented or not.”

(first Woollard declaration, para 8)

“as noted above VDC-MA barrier layers were also known in Australia prior to the priority date.  Once it is well known in this art that a range of products is suitable for a particular purpose, such as VDC-VC being a suitable barrier material, upon a new product in such a range becoming available I will assume that it will find a potential use in film application.  It is usual in this field for plastic film manufacturers to investigate and employ newer developed products as an alternative or substitute for existing products in order to remain competitive.  If a new resin in a product line such as the SARAN line was promoted as having exceptional or increased properties then it would draw may company’s immediate interest.  My company and I am sure other companies in the field, would investigate the potential uses of the new resin or film.”

(second Woollard declaration, para 20 (12) (ii))

“Again I confirm that once a resin such as VDC-MA, even on an experimental basis, becomes available, it would be obvious to people practising in the art and would be common practice to substitute such a successor in a line of constantly evolving products, for the previously used product.  It would therefore be a logical replacement for a VDC-VC barrier layer in known films having EVA outer layers or blends of EVA and LLDPE outer layers such as my company’s BARRIER BAG and the film disclosed in American Can’s Patent Application AU 571175.”

(second Woollard declaration, para 20 (14) (i))

“In my experience, there have been many new products that initially aroused my interest when the manufacturer first introduced them.  Many proved to be useful and many after testing proved to be less than expected.”

(second Widiger declaration, para 11 G)

I consider that this evidence establishes that it was a matter of routine to test new resins when they become available.  Mr Caine advanced his argument on the basis of the VDC-MA resin designated XO-64501.10, which is referred to in the Cassey declaration.

The brochure titled “SARAN Resins in Extrusion, Molding and Powder Applications” relates to the new experimental resin designated XO-64501.10 (the brochure is Exhibit RAC 2 to the Cassey declaration).  Cassey comments on this brochure as follows:  “This resin (XO-64501.10) attracted our immediate attention because of its vastly superior (for the time) barrier properties (that this is a PVDC-MA resin has been confirmed to us by Dow)” (Cassey declaration, para 6.1).  The brochure is marked “Ó 1983, The Dow Chemical Company”, and is date stamped as having been received by TRIGON on 9 September 1983.  It is probable that this brochure was also available in Australia (Cassey discussed the availability of the resin with “M.Took of Dow Australia”).  However, there is no evidence before me that the contents of the brochure were part of the common general knowledge in Australia.

I consider that the evidence establishes that the testing of a VDC-MA resin would have been a matter of routine, and that the resin XO-64501.10 was probably known in Australia.  The evidence does not establish that the resin XO-64501.10 was common general knowledge.  It is clear from the Grace v Asahi, supra, decision that knowledge of the resin must be common general knowledge in order to establish obviousness.  As that has not been established, I consider that it has not been established that the invention is obvious.

1. Manner of manufacture

Mr Caine submitted on behalf of GRACE and TRIGON that the invention defined in the claims is not a manner of manufacture within the meaning of section 6 of the Statute of Monopolies.  This submission was based on the decision in Grace v Asahi, supra, and is essentially an analogous application of that case.  In that case, the finding in relation to manner of manufacture followed as a consequence of the finding of obviousness (see page 497-498 of the report).

It follows from my finding in relation to the 3-layer films, that it has not been established that the invention is not a manner of manufacture.  My finding of obviousness in relation to the 5-layer films did not follow the approach in Grace v Asahi, supra, (i.e. the “obvious to try” approach was not appropriate) so I do not believe that I can find a lack of manner of manufacture in an analogous manner.

conclusion

I have found that the oppositions succeed only on the grounds of section 40 and obviousness.  These matters can be readily overcome by amendment.

I allow ANCC 60 days from the date of this decision in order to propose amendments to overcome these deficiencies.

costs

At the hearing it was agreed that I should invite written comments with regard to costs after this decision had been given.  I allow both parties four weeks from the date of this decision in order to file written submissions with regard to costs.  I will then issue a separate decision with regard to costs.

Dr S.D.Barker

Delegate of the Commissioner of Patents

Patent attorneys for ANCC    :  Phillips Ormonde & Fitzpatrick, Melbourne

Patent attorneys for Grace     :  Davies Collison Cave, Melbourne

Patent attorneys for Trigon     :  Kelvin Lord & Company, Perth