Arrow Plastics Pty Ltd v NCI Packaging Pty Ltd
[2008] APO 12
•15 May 2008
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 782642 in the name NCI Packaging Pty Ltd
Title: Tamper Evident Container
Action: Opposition under section 59 of the Patents Act 1990 by Arrow Plastics Pty Ltd
Decision: Issued 15 May 2008
.
Abstract
The invention relates to improvements in tamper evident containers suitable for foodstuffs such as ice cream and yoghurt.
The application was opposed on the grounds of novelty, inventive step, manner of manufacture and non-compliance with section 40 of the Patents Act.
The main focus of the opposition was on the novelty of the claims. All bar five of the fifty-six claims of the complete specification were found to lack novelty in light of three prior art documents and two instance of prior use. The other grounds of opposition were not pressed, although an omnibus claim was found to have section 40 deficiencies.
The applicant was given an opportunity to amend.
Costs were awarded against the applicant.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 782642 by NCI Packaging Pty Ltd, and an opposition thereto by Arrow Plastics Pty Ltd under section 59 of the Patents Act 1990.
BACKGROUND
Patent Application 782642 was filed on 20 October 2000 by NCI Packaging Pty Ltd (hereinafter referred to “NCI”) as application 66665/2000. It was associated with provisional application PQ3588 filed on 20 October 1999. Application 66665/00 was advertised accepted on 18 August 2005 and given the six-figure number 782642.
A notice of opposition to application 782642 was filed on 18 November 2005 by Arrow Plastics Pty Ltd (hereinafter referred to “Arrow”) and the statement of grounds and particulars was served on 20 February 2006. The grounds of opposition specified in the statement of grounds and particulars are that the specification does not comply with paragraphs 18(1)(a) or (b) and sub-sections 40(2) or 40(3) of the Patents Act 1990.
The service of evidence in support, answer and reply was somewhat protracted, requiring a number of extensions of time, but was completed on 15 October 2007.
The matter was heard in Canberra on 21 February 2008. The applicant was represented by Mr Ian P. Horak of counsel, assisted by Mr Anthony Selleck, of the patent attorney firm Allens Arthur Robinson, Melbourne, and the opponent was represented by Mr Greg Turner of the patent attorney firm Spruson & Ferguson, Sydney.
THE PARTICULARS
The statement of grounds and particulars cites a number of prior patent documents in relation to the grounds of novelty and inventive step. These patent specifications consist of a number of Australian patent specifications (including 753242 in the name of the present applicant), as well as three foreign patent specifications and two Australian registered designs. The statement of grounds and particulars also cites certain containers which were manufactured and sold in Australia prior to the priority date of the claims. In relation to sub-section 40(3), several aspects of non-clarity and two of fair basis are raised. Manner of manufacture is raised as a ground of opposition on the basis that the invention is a mere collocation of known integers.
THE SPECIFICATION
The present invention relates to improvements in tamper evident containers suitable for foodstuffs such as ice cream and yoghurt.
The impetus for the present invention appears to have come from a range of difficulties associated with both manual and automated processes for securing closures to containers for foodstuffs. The specification indicates that prior art closures are generally constructed so that they may simply be pressed down upon the mouth of the container to form a snap-fit engagement. However, in some cases the closure construction is such that there must be very accurate alignment between the container and closure when the closure is applied thereto. Where misalignment occurs, the closure may not be properly applied and the contents of the container may therefore remain exposed. In other constructions, the removal of the tamper-evident means can have the effect of reducing the degree of locking between the closure and the container with the result that the closure when reused after the initial opening is not securely fitted or locked on the container. In other constructions, there may be recesses or hollows formed between the closure and the container which are open to receive unwanted contaminants or debris. The object of the invention is to provide a container which obviates or ameliorates one or more of the aforesaid disadvantages.
The specification concludes with fifty six claims of which, apart from an omnibus claim, only claim 1 is independent. The claims read as follows:
“1. A container and closure therefor having:
downwardly directed ramp means external to the container extending from a side wall of the container,
an upwardly directed strip extending from the ramp means to define a recess between the ramp means and the upwardly directed strip,
tamper indicating means associated with the strip,
a closure having a lid for closing off a mouth of the container, and
a circumferential skirt depending from the lid,
the construction of container and closure being such that during application of the closure to the container, the ramp means push outwardly against the skirt without otherwise contacting the lid so as to guide the skirt into the recess so that a lower portion of the skirt is located in the recess out of reach of fingers until such time as the tamper indicating means are disturbed.
2. A container and closure according to claim 1 wherein the container is moulded from plastic materials in an injection moulding process.
3. A container and closure according to claim 1 or claim 2 wherein the container has means in the wall of the container to improve rigidity thereof.
4. A container and closure according to claim 3 wherein the means is a step in the container wall.
5. A container and closure according to claim 4 wherein the step is located below but close to the lip of the container.
6. A container and closure according to any one of the preceding claims wherein the container has means in the base of the container to improve rigidity thereof.
7. A container and closure according to any one of the preceding claims wherein the downwardly directed ramp means is provided immediately below the lip of the container.
8. A container and closure according to claim 5 wherein the ramp means is located between the step and the lip.
9. A container and closure according to any one of the preceding claims wherein the ramp means extends around the entire perimeter of the container.
10. A container and closure according to any one of claim 1 to 8 wherein the ramp means extends for one or more portions of the perimeter.
11. A container and closure according to any one of the preceding claims wherein the ramp means takes the form of an angled skirt.
12. A container and closure according to claim 11 wherein angled skirt depends at an angle from the container rim.
13. A container and closure according to any one of the preceding claims wherein the upwardly directed strip extends substantially entirely around the circumference of the container.
14. A container and closure according to any one of the preceding claims wherein the upwardly directed strip includes securement means for securing the closure to the container.
15. A container and closure according to claim 14 wherein the securement means is an inwardly directed rib provided on the strip.
16. A container and closure according to any one of the preceding claims wherein the upwardly directed strip includes sealing means to seal off the recess from contamination.
17. A container and closure according to claim 16 when depending from claim 15 wherein the sealing means is the inwardly directed rib provided on the strip.
18. A container and closure according to claim 15 or claim 17 wherein the rib is provided at the top of the strip.
19. A container and closure according to claim 15 or claim 17 wherein the rib is constructed so that it abuts the skirt of the closure.
20. A container and closure according to claim 16, claim 17, or claim 18 or 19 when depending from claim 16, wherein the skirt of the closure includes complementary sealing means to interact with the sealing means of the strip to seal off the recess.
21. A container and closure according to claim 14, or any one of claims 15 to 20 when depending from claim 14, wherein the skirt of the closure includes complementary securement means to interact with the securement means of the strip to hold the closure on the container.22. A container and closure according to claim 21 wherein the complementary securement means are in the form of a rib provided externally on the skirt, the rib being shaped so that it either abuts an internal wall of the strip, or a lower edge of the rib formed on the strip or both.
23. A container and closure according to any one of the preceding claims wherein the lower portion of the skirt and the ramp means are in sealing engagement when the closure is applied to the container.
24. A container and closure according to claim 23 wherein the lower portion of the skirt and the ramp means are constructed so that they abut each other.
25. A container and closure according to claim 24 wherein the skirt and strip abut each other in such a manner that there is no channel or recess formed between the two.
26. A container and closure according to any one of the preceding claims wherein one or more ribs are provided on the closure to aid sealing.
27. A container and closure according to any one of the preceding claims wherein one or more ribs are provided on the container to aid sealing.
28. A container and closure according to claim 27 wherein the container is provided with a circumferential rib immediately below the rim.
29. A container and closure according to claim 28 wherein the rib is arranged to seal against a circumferential flange depending from the underside of the lid of the closure.
30. A container and closure according to any one of the preceding claims wherein an upstanding internal wall is formed in the lid of the closure.
31. A container and closure according to claim 30 wherein the internal wall is constructed so as to abut the inside surface of the wall of the container.
32. A container and closure according to claim 30 or claim 31 wherein the internal wall includes a circumferential rib to aid sealing between the closure and the container.
33. A container and closure according to any one of claims 30 to 32 wherein the upstanding internal wall in the lid and depending flange creates a downward facing recess underneath the lid.
34. A container and closure according to claim 33 wherein the downward facing recess is shaped so as to receive the lip of the container.
35. A container and closure according to any one of the preceding claims wherein the ramp means includes a portion which makes an acute angle with the walls of the container.36. A container and closure according to any one of claims 1 to 34 wherein the ramp means is substantially parallel to the walls of the container.
37. A container and closure according to claim 36 wherein the substantially parallel portion is joined to a connecting portion which joins the ramp means to the upwardly directed strip.
38. A container and closure according to any one of the preceding claims wherein the strip extends for at least most of the way around the perimeter of the container.
39. A container and closure according to any one of the claims 1 to 37 wherein the strip extends all of the way around the perimeter.
40. A container and closure according to any one of the preceding claims wherein the strip is joined to the ramp means by a region of weakening.
41. A container and closure according to claim 37, or any one of claims 38 to 40 when depending from claim 37, wherein the region of weakening is in the connecting portion.
42. A container and closure according to claim 40 or claim 41 wherein the region of weakening is adapted to facilitate detachment of at least part of the strip from the ramp means.
43. A container and closure according to claim 42 wherein the tamper indicating means includes the detachable part.
44. A container and closure according to any one of the preceding claims wherein tab means are provided on the strip to facilitate at least partial tearing away of the strip from the ramp means.
45. A container and closure according to any one of the preceding claims wherein the strip is joined to itself by way of a line of weakening to facilitate detachment of the strip from itself to indicate tampering.
46. A container and closure according to claim 44 wherein the tab means are attached to the strip at or near the line of weakening.
47. A container and closure according to any one of the preceding claims wherein the container has corners and the tamper indicating means is located at a corner of the container to assist removal of the closure from the container when the tamper indicating means have been broken.
48. A container and closure according to claim 40, or any one of claims 41 to 47 when depending from claim 40, wherein the region of weakening in the joint between the strip and ramp means takes the form of a bridge.
49. A container and closure according to claim 40, or any one of claims 41 to 48 when depending from claim 40, wherein the region of weakening in the joint between the strip and ramp means takes the form of a region of lesser thickness.50. A container and closure according to claim 45, or any one of claims 46 to 49 when depending from claim 45, wherein the weakened portion constituting the join of the strip with itself near the tab means takes the form of a bridge.
51. A container and closure according to claim 45, or any one of claims 46 to 50 when depending from claim 45, wherein the weakened portion constituting the join of the strip with itself near the tab means takes the form of a region of lesser thickness.
52. A method of filling a container and closing it with a closure, the method including the steps of providing a source of contents for the container, filling the container with the contents, and closing the container by securing a closure to the container, the closure and container being in accordance with any one of claims 1 to 51.
53. A method according to claim 52 wherein the closure is fitted to the container in an automated fashion by the use of a vacuum lifter or similar to lift and move the closure to bring the closure into substantial alignment with the container.
54. A container according to any one of claims 1 to 51.
55. A closure according to any one of claims 1 to 51.
56. A container having a tear tab substantially as herein described with reference to figures 3 and 4.
Figures 1 and 2 of the opposed specification are as shown below.
EVIDENCE
The evidence in support consists of a single statutory declaration by Mr Jim Stafford, a single statutory declaration by Mr Andre Razums and two statutory declarations by Mr Edward Ian Genocchio.
Mr Jim Stafford is the owner, Chief Executive Officer and Chief Design Engineer of Arrow Plastics Pty Ltd, the opponent in the present case. The Stafford declaration relies on the following exhibits in support of opponent’s case:
JS-2 Australian Patent No. 753,242
JS-3 Australian Patent Application No. 48386/96
JS-4 Australian Patent Application No. 33169/84
JS-5 Australian Patent Application No. 28340/97
JS-6 United States Patent No. 5,437,386
JS-7 European Patent No. 0 280 488
JS-8 Australian Registered Design No. 134,502
JS-9 Australian Patent No. 589,952
JS-10 Australian Patent No. 662,724
JS-11 Australian Registered Design No. 93485
JS-12 Japanese Patent Abstract 09-255010
JS-13 Photographs of a two litre white ice-cream container
JS-14 Photographs of a two litre blue ice-cream container and lid
JS-15 Fax dated 12 December 1997 from Stafford to StreetsJS-16 Fax dated 10 September 1998 from Stafford to Norco
JS-17 Fax dated 3 September 1998 from Stafford to Nestle
JS-18 Supply agreement between Sara Lee/Universal Foods and Arrow Plastics
for 1 July 1999
JS-19 Photographs of a clear container and lid
JS-20 Arrow invoice to Dairy Farmers dated 4 August 1999
JS-21 Arrow invoice to Dairy Farmers dated 5 August 1999
JS-22 Arrow invoice to Dairy Farmers dated 6 August 1999
JS-23 Arrow invoice to Dairy Farmers dated 17 August 1999
JS-24 A compilation disk containing the photographs of JS-13, JS-14 and JS-19
JS-25 Photographs of tooling used to produce the containers of JS-14 in
1997-1999
The Stafford declaration elaborates on a number of non-clarity and two fair basis issues, and also elaborates upon why each of the claims is not novel in the light of eleven documentary publications (JS-2 to JS-12) and three prior use publications (JS-13, JS-14 and JS-19).
Mr Andre Razums is the Managing Director of Dairy Bell Ice Cream (Aust.) Pty Ltd. The Razums declaration relies on the following exhibits in support of the opponent’s case:
AR-2 Photographs of a two litre white ice-cream container
AR-3 Fax dated 24 December 1998 from Andre Razums to Coles
AR-4 Fax dated 30 June 1999 from Andre Razums to Coles
AR-5 Fax dated 1 July 1999 from Andre Razums to Ruskin (now NCI)
AR-6 Compilation disk containing the photographs of AR-2 – the white container
The Razums declaration is largely confined to confirming that Dairy Bell purchased the containers shown at AR-2 from Ruskin and sold them to Woolworths and Coles prior to 20 October 1999.
Mr Edward Ian Genocchio is the patent attorney for the opponent. The first Genocchio declaration confirms that the containers shown as exhibit AR-2 of the Razums declaration are the same containers shown as exhibit JS-13 of the Stafford declaration, and that he took the photographs exhibited as JS-13, JS-14, JS-19 and AR-2. The second Genocchio declaration confirms that the attached physical exhibits EIG-1, EIG-2 and EIG-3 were the containers photographed and exhibited as JS-13, JS-14 and JS-19 respectively of the Stafford declaration.
The evidence in answer consists of a single statutory declaration by Mr Ronald Edward Morley, a consultant to NCI Packaging Pty Ltd (the applicant in the present case) and one of the co-inventors of the present invention. The Morley declaration rebuts the statements made in Stafford and Razums declarations mainly in regard to the fair basis and novelty aspects.
The evidence in reply consists of just one statutory declaration, which is a second declaration by Mr Jim Stafford. The second Stafford declaration provides a further analysis of the prior art in regard to novelty rebutting the statements made in the Morley declaration.
I will provide the details of what is contained in the evidence, and the details of parties’ submissions, where relevant, later in my decision.
DECISION
Onus of Proof
In proceedings such as these before the Commissioner, the onus rests with the opponent to clearly establish its case in reaching a conclusion on any issue, and the standard of proof required is the civil standard of proof on the balance of probabilities (see, for example, Dunlop Holding's Ltd's Application [1979] RPC 523). As a tribunal, I am entitled to act on any material which is "logically probative" (T. A. Miller Ltd. v The Minister for Housing and Local Government and Another (1968) 1 WLR 992). In F. Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283, Emmett J of the Federal Court found that in opposition proceedings, the Court (and by implication the Commissioner of Patents in her role as a tribunal) should be "clearly satisfied that the patent, if granted, would not be valid". Where questions of fact such as obviousness and existence of invention are involved "the grant should not be refused unless it has been clearly shown that the grounds of opposition have been clearly made out" (Montecatini v Eastman Kodak (1971) 45 ALJR 593).
Section 40 Matters
Clarity and Construction of Claims
In my view, there are three features of claim 1 which require analysis in determining the present matter. These features are “downwardly directed ramp means”, “extending from a side wall” and “extending from the ramp means”.
In construing the above features, I am guided by the rules of construction which state that the words of a specification should generally be given their ordinary English meaning (Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 478) except where a word or an expression has a special meaning in the relevant art, in which case the specialised meaning should be adopted (Electric & Musical Industries Ltd v Lissen Ltd (1939) 56 RPC 23 at 41). I am also aware that a specification may indicate that a special meaning is to apply to a word (known as Dictionary Principle, as reflected in British Thomson-Houston Company Ltd v Corona Lamp Works Ltd (1922) 39 RPC 49 at page 67). Other rules of construction having relevance in this matter are that the specification must be read as a whole (Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69), must be given a purposive construction rather than a purely literal one (Catnic Components Limited v Hill and Smith Limited (1981) FSR 60), and that where a claim is capable of more than one construction, then an absurd construction should be rejected in favour of an alternative construction (Henriksen v Tallon (1965) RPC 434).
There is no evidence before me which suggests that any of these three features carry special meaning in the relevant art. Therefore, I will construe these features according to my understanding of their ordinary English meanings. With regard to the first feature, the term “downward” itself is clear in its everyday meaning, and is to be understood as referring to the downward direction in the normal orientation of the container. The Macquarie Dictionary defines a “ramp” as meaning “a sloping surface connecting different levels”. Thus it would appear that a ramp inherently has a downward direction. In order to avoid a tautology, it would seem that “downwardly” in the phrase “downwardly directed ramp means” must be taken to be used in some other sense. That sense would seem to be that, rather than referring to the sloping surface as being downwardly directed, it is the levels between which the ramp extends which are downwardly directed. The sloping surface may be planar or non-planar, but must be able to function as a ramping surface. The phrase “extending from a side wall” is also clear enough in its ordinary meaning. It means abutting or integral with the wall and extending in any manner consistent with the function of the ramp. Thus I consider that falling within the scope of “downwardly directed ramp means external to the container extending from a side wall of the container” would be any arrangement where a surface of the ramp means which is opposed to the sloping surface partially or completely abuts or is integral with the sidewall of the container. Similarly I construe “extending from the ramp means” to mean extending in any direction from any point on the ramp means, provided that it does not interfere with operation of the ramp means.
These three features so defined thus encompass within their scope a wide range of possible structures. However it needs to be borne in mind that the “downwardly directed ramp means external to the container extending from a side wall of the container” is further “defined by result” (see No- Fume Ltd v Frank Pitchford & Co Ltd (1935) 52 RPC 231) by the subsequent definition in claim 1 that
“the ramp means push outwardly against the skirt without otherwise contacting the lid so as to guide the skirt into the recess so that a lower portion of the skirt is located in the recess out of reach of fingers until such time as the tamper indicating means are disturbed.”
The opponent has asserted that the claims are not clear or succinct and are insufficient as they do not support the alleged invention and do not provide the best method of performing the alleged invention.
The specific clarity issues pointed to by the opponent are as follows:
· “(a) There is no direction within the specification to what ‘plastics material’ (claim 2) refers.” Arrow argues that the composition of the material of which a container is made is critical to what content can be placed in the container, and in some cases the contents can leak into plastic preventing the container being recycled. NCI has submitted that the term “plastics material" is a term of the art and there is no evidence that it could not be understood by a person skilled in the art. I am not sure that Arrow is not raising a utility issue here, but in any case in my view the addressee of the specification would well understand the scope of the term “plastics material” as used in its present context.
· “(b) Claim 5 lacks antecedence as ‘the lip’ has not previously been defined.” The container is defined in claim 1 as having a “mouth”, from which I consider the presence of a lip may be inferred.
· “(c) Claim 6 lacks antecedence as “the base” has not previously been defined.” I read claim 6 as expressed in a manner which introduces the notion of the container having a base.
· “(d) Claim 7 lacks clarity as claim 7 is appended to ‘any one of the preceding claims’. The lip first appears in claim 5.” The container is defined in claim 1 as having a “mouth”, from which I consider the presence of a lip may be inferred.
· “(e) Claim 9 lacks antecedence as ‘the perimeter of the container’ has not previously been defined.” The container is defined in claim 1 as having a “mouth”, and in my view it is clear that it is this mouth to which the reference to “the perimeter of the container” relates.
· “(f) Claim 10 lacks clarity as claim 10 is appended to ‘any one of claims 1 to 8’. The perimeter first appears in claim 9.” The container is defined in claim 1 as having a “mouth”, and in my view it is clear that it is this mouth to which the reference to “the perimeter of the container” relates.
· “(g) Claim 12 lacks antecedence as ‘the rim’ has not previously been defined.” The container is defined in claim 1 as having a “mouth”, and in my view it is clear that it is this mouth to which the reference to “the container rim” relates.
· “(h) Claim 13 is not clear as to the meaning of ‘substantially entirely’.” I agree with NCI’s assertion that the skilled addressee would understand that the term “substantially entirely” to be construed that a strip extends almost entirely around the circumference of the container. It would do so at least to an extent that would achieve its function.
· “(i) Claim 18 lacks antecedence as ‘the top’ has not previously been defined.” The addressee of the specification would take this as referring to the normal orientation of the container.
· “(j) Claim 28 lacks clarity as claim 28 is appended to claim 27 which in turn is appended to ‘any one of the preceding claims’. The rim first appears in claim 12.” As stated previously, the container is defined in claim 1 as having a “mouth”, and in my view it is clear that it is this mouth to which the reference to “the [container] rim” relates.
· “(k) Claim 29 lacks antecedence as “the underside" has not previously been defined.” In my opinion, “the underside” of the lid of the closure would be clear to a skilled addressee from reading the specification as a whole.
· “(l) Claim 31 lacks antecedence as ‘the inside surface’ has not previously been defined.” In my opinion, “the inside surface” of the wall of the container is implicit in the notion of a container.
· “(m) Claim 37 lacks antecedence as “the substantially parallel portion" has not previously been defined.” I agree with NCI’s assertion that the skilled addressee would understand that the term “substantially parallel portion” is a reference to the “ramp means” of claim 36, which is specifically defined in claim 36 as being “substantially parallel to the walls of the container”. The term “portion” introduces the notion that is only a portion of the ramp means which is “substantially parallel”.
· “(n) Claim 38 lacks clarity as claim 38 is appended to ‘any one of the preceding claims’. The perimeter first appears in claim 9.” The container is defined in claim 1 as having a “mouth”, and in my view it is clear that it is this mouth to which the reference to “the perimeter of the container” relates.
· “(o) Claim 39 lacks clarity as claim 39 is appended to “any one of the claims 1 to 37”. The perimeter first appears in claim 9.” As stated in relation to claim 38, in my opinion ‘the perimeter’ of the container does not require antecedence.
· “(p) Claim 48 lacks antecedence as ‘the joint’ has not previously been defined.” The fact that the strip is defined in claim 40 as being “joined to the ramp means” provides a clear antecedent.
· “(q) Claim 49 lacks clarity as claim 49 is appended to ‘claim 40 or any one of the claims 41 to 48’. The joint first appears at claim 48.” As stated in relation to claim 48, “joined to the ramp means” in claim 40 provides a clear antecedent.
· “(r) Claim 50 lacks antecedence as ‘the join’ has not previously been defined.” “Joined to itself” in claim 45 provides a clear antecedent.
· “(s) Claim 51 lacks clarity as claim 51 is appended to ‘claim 45, or any one of the claims 46 to 50’. The join first appears in claim 49.” As with claim 50, “Joined to itself” in claim 45 provides a clear antecedent.
Therefore, I conclude that none of the above issues are such as to occasion any doubt in the mind of the addressee of the specification as to what falls within the scope of these claims.
Fair Basis
The test for fair basis accepted in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 69, 98-99 as being relevant to the consideration of fair basis is:
· whether there is a real and reasonably clear disclosure of the claimed invention in the specification [from Société Des Usines Chimiques Rhône-Poulenc v Commissioner of Patents (1958) 100 CLR 5 and cited with approval in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79] or
· whether the claims travel beyond the subject matter of the invention described in the specification [Olin v Super Cartridge (1977) 180 CLR 236].
In regard to fair basis, the specific issues raised by the opponent are as follows:
· “(t) The tear tab 25 is an essential feature of the invention and is not defined in claim 1. For example, see page 7, line 11 to line 19. Without the tear tab it is not possible to open the bottom of the skirt for finger manipulation to remove the closure.” In response, the applicant has argued that the tear tab is not an essential feature of the invention and that any tamper means that is associated with the strip, and must be disturbed before the lower part of the skirt is accessible, is suitable in this context.
An essential feature of an invention cannot be used for the determination of fair basis. In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd ( supra), the High Court stated:
“The comparison which s40(3) calls for is not analogous to that between a claim and an alleged anticipation or infringement. It is wrong to employ ‘an over meticulous verbal analysis’ [76]. It is wrong to seek to isolate in the body of the specification ‘essential integers’ or ‘essential features’ of an alleged invention and to ask whether they correspond with the essential integers of the claim in question [77].”
In view of the above, whether the tear tab is an essential feature of the invention is unnecessary in the present context. However, applying the test for fair basis as accepted in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd ( supra), I find that there is a real and reasonably clear disclosure of the invention in the specification and that claim 1 is fairly based.
· “(v) The specification does not fully describe the alleged invention and the claims are not clear and succinct and fairly based on the matter described in the specification of the opposed application.” The applicant did not provide any evidence or further particulars in support of this assertion, apart from as mentioned in the previous dotpoint. My view is that only the omnibus claim, claim 56, presents any difficulties of construction, and to be consequently unclear and potentially lacking in fair basis. Although the words “as herein described” in an omnibus claim normally invoke all the features of the inventive concept described by the specification, there is considerable doubt, occasioned by the other words of the claim, as to whether this is in fact the case here. By specifically referring to “a tear tab as herein described”, and by referring only to Figures 3 and 4, which do not seem to illustrate certain other features of the inventive concept, claim 56 appears to be directed to any container having the particular tear tab as described in the specification. I will so construe it, but find also that it contravenes section 40 in respect of clarity and fair basis.
Other Issues
Finally, under this general section 40 ground the opponent included the following particular: “(u) Contrary to the Patent Regulation the abstract does not contain reference numerals or a title.” However, I observe that this is not a ground of opposition under section 59 of the Patents Act.
In light of the foregoing, I find that all claims except claim 56 are clear and fairly based and, apart from the exception of claim 56, the specification satisfies the requirements of sub-section 40(2) and 40(3) of the Patents Act 1990.
Novelty
Law Relating to Novelty
The test for novelty has been discussed recently in the Full Federal Court decisions of Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [ 2005] FCAFC 224 (see paragraphs 311 et seq) and Bristol-Myers Squibb Company v FH Faulding & Co Limited (2000) 97 FCR 524. As noted in both decisions, the basic test for novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries (1977) 137 CLR 228 at page 235 where Aickin J stated:
"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 invention would if the patent were valid, constitute an infringement."
Infringement is said to occur where "each and every one of the essential features of that claim have been taken" (Rodi and Wienenberger AG v Henry Showell Ltd (1969) RPC 367).
However, as Pfizer Overseas Pharmaceuticals v Eli Lilly and Company (supra) noted, it is not sufficient for a citation to contain all the essential features of the claim, there must be "clear and unmistakable" directions to the claimed invention. In that regard, the Full Court referred to three key decisions:
Canadian General Electric Co v Fada Radio Limited [1930] AC 97:
"it is not enough to prove that an apparatus described in an earlier specification could have been used to produce this or that result. It must also be shown that the specification contain clear and unmistakeable directions to use it."
General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd [1972] RPC 45:
"a signpost, however, clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee."
ICI Chemicals v Lubrizol Corp (2000) 106 FCR 214:
“.. skilled addressees are not required to rummage through the prior patentee's "flag locker" to find a "flag which the [prior patentee] possessed and could have planted.”
Novelty can however be found where a feature is not explicitly mentioned but nonetheless present as an inherent feature as an inevitable result of the disclosure. As noted in General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (supra) at page 486:
"if in carrying out the directions contained in a prior inventor's publication will inevitably result in something being made or done which, if the claim of the opposed specification were a claim of a valid patent, would constitute an infringement of that claim, then that claim would have been anticipated."
However, as also observed by the same court:
"If ... the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way that would not do so, the patentee's claim will not be anticipated."
In addition, as noted in the Pfizer Overseas Pharmaceuticals v Eli Lilly and Company (supra) decision, a citation to deprive a claim of its novelty must be the same as the claimed invention for the purposes of "practical utility". In other words, the citation has to "enable" the skilled worker to produce the invention from the written disclosure. The basic principle is explained in Hill v Evans (1862) 4 De G F & J 288; 45 ER 1195be where the court noted:
"the antecedent statement must be such that a person of ordinary knowledge in the subject would at once perceive, understand, and be practically able to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful. If something remains to be ascertained which is necessary for the useful application of the discovery that affords sufficient room for another valid patent."
Novelty Determination in the Current Case
In his submissions at the hearing Mr Horak conceded at the outset that there were a number of items of close prior art in the evidence of this matter. That this is the case is rather understandable given the ubiquitous nature in general household use of the sort of container to which the present invention relates. However Mr Horak sought to rely principally upon the feature that the ramp means “guide the skirt into the recess” in present claim 1 to distinguish the present invention from the prior art. He stated that this “alignment” characteristic was not taught in the prior art, and thus the prior art does not give “clear and unmistakeable directions” to the present invention.
I cannot agree that the prior art in the evidence of this matter does not disclose this feature. The use of ramps or rounded, bevelled or chamfered edges when accurate alignment of two mating components is required is so universally recognized as standard good engineering design, it is unlikely that the draftsperson of a document such as patent specification would feel the need to explicitly state this as the purpose when such a design feature is used. The ramps located on the prior art containers of this matter are clearly provided to ensure self-centring of the lid upon the container. It must be noted that we are dealing here with of-the-order-of millimetre-sized tolerances. I note also that Mr Horak did not put forward any other possible reason for the existence of the ramps.
Mr Horak also contended that the arrangement defined by claim 1 differed from much of the prior art in that the ramp as claimed could not be “a part of the sidewall”. I am not entirely sure what Mr Horak intended to convey by use of this phraseology, or even if his assertion was sustainable given the definition in claim 1 that the ramp means is “extending from the side wall”, but in any case I have already given my perception of these words based on their plain meaning. I think Mr Turner’s point that it was not until Claim 11 that the ramp is defined as “an angled skirt” was also telling in regard to this.
Mr Turner expressed some puzzlement as to what the feature “the ramp means push outwardly against the skirt without otherwise contacting the lid” [emphasis added] means, but asserted that because the prior art appeared to function in precisely the same manner as the present invention, it could equally well be said of the prior art. I agree that this is a reasonable way of treating this feature for novelty purposes.
There are several items of prior art advanced by the opponent as rendering the present invention not novel. I will now consider each of these items of prior art separately.
AU 753242 (Exhibit JS-2)
Figures 6 and 7 of AU 753242 as referred to in the following paragraphs are shown below.. Figure 7 shows a container, and Figure 6 shows a closure for the container.
AU 753242 relates to tamper evident lidded containers used for packaging foodstuffs. The container has a downwardly directed ramp means 25 external to the container extending from a side wall of the container 1, an upwardly directed strip 52 extending from the ramp means to define a recess between the ramp means and the upwardly directed strip, a tamper indicating means associated with the strip, a closure 3 having a lid for closing off a mouth of the container, and a circumferential skirt 38 depending from the lid. The strip 52 is connected to the main part of the container by a series of reinforcing webs 23a located at angularly-spaced-apart locations around the circumference/periphery of the container 2.
Arrow has submitted that during the application of the closure to the container, the ramp means pushes outwardly against the skirt 38 to guide the skirt 38 into a recess to keep a lower portion 41 of the skirt out of the reach of fingers until the tamper evident indicating means is disturbed. NCI has argued that a ramp that only contacts a closure at its circumferential skirt during the application of the closure to the container (as defined in claim 1 in suit) is not disclosed, and that in addition to contacting the skirt 38, the ramp also contacts the substantially horizontal section 37 of the closure. NCI further argued that AU 753242 falls short of required enabling disclosure, and that there is no disclosure to any pushing by the ramp.
Although I agree that there is no explicit disclosure of the ramp means pushing outwardly against the skirt, it is clear from Figures 6 and 7 of AU 753242 that some outward pushing will inevitably result while applying the closure to the container because of the primary engagement bead 42 located on the circumferential skirt. It is also clear from the figures that during the application of the closure to the container, the ramp 25 would contact the closure only at the circumferential skirt and not at the horizontal section 37 as argued by NCI. My understanding of AU 753242 is that it is only when the closure reaches its final resting position that contact with the horizontal section occurs. Therefore, I find that claims 1, 54 and 55 lack novelty in the light of AU 753242.
AU 753242 discloses a step 22 in the wall of the container below the lip 24 of the container. Therefore, I find that claims 3-5 lack novelty in the light of AU 753242.
AU 753242 discloses a ramp 25 below the lip of the container. The ramp is located between the step 22 and the lip 24, and extends around the entire perimeter of the container. Therefore, I find that claims 7-10 lack novelty in the light of AU 753242.
AU 753242 discloses a ramp 25 in the form of an angled skirt depending at an angle from the container rim 24. Therefore, I find that claims 11, 12 and 35 lack novelty in the light of AU 753242.
AU 753242 discloses upwardly directed strip 52 extending around the entire circumference of the container. The strip includes securement means 54 for securing the closure to the container. The securement means are in the form of an inwardly directed rib 54. Therefore, I find that claims 13-15, 18, 38 and 39 lack novelty in the light of AU 753242.
Regarding claim 16, Arrow has submitted that the strip 52 includes sealing means in the form of rib 54 to seal the recess from contamination. However, as argued by NCI, it is clear from Figures 8 and 9 of AU 753242 that the closure does not abut with the inwardly directed rib 54 or the strip 52 resulting in a region between the closure and the strip which is not sealed. Therefore, I find that claim 16, 17, 19, 20, 22 and 27 are novel in the light of AU 753242.
AU 753242 discloses a skirt including a foot 41 to interact with the rib 54 to hold the closure. Therefore, I find that claim 21 lacks novelty in the light of AU 753242.
Contrary to the submission made by Arrow, AU 753242 does not disclose sealing engagement between the lower portion of the skirt and ramp means. Therefore, I find that claim 23 and the depending claims 24 and 25 are novel in the light of AU 753242.
AU 753242 discloses a rib 42 on the closure to aid sealing. Therefore, I find that claim 26 lacks novelty in the light of AU 753242.
AU 753242 discloses an upstanding internal wall 36 formed in the lid which abuts the inside surface 23 of the container. Therefore, I find that claims 30 and 31 lack novelty in the light of AU 753242.
Contrary to the submission made by Arrow, AU 753242 does not disclose a depending flange which creates a recess with the upstanding internal wall in the lid. Therefore, I find that claims 33 and 34 are novel in the light of AU 753242.
AU 753242 discloses a portion 26 of the ramp 25 substantially parallel to the wall of the container as seen in Figure 7. The parallel portion 26 joins a connecting portion 51 to strip 52. Therefore, I find that claims 36 and 37 lack novelty in the light of AU 753242.
AU 753242 discloses the strip 52 joined to the ramp means by a region of weakening (see the joint between 50/ and 23a/ as shown in Figure 9 of AU 753242) in the form of a bridge of lesser thickness. Therefore, I find that claims 40, 41, 48 and 49 lack novelty in the light of AU 753242.
AU 753242 discloses the region of weakening adapted for detachment of the strip 52 from the ramp means 26. Therefore, I find that claim 42 lacks novelty in the light of AU 753242.
AU 753242 discloses the tamper indicating means including the detachable part as seen in Figure 3. Therefore, I find that claim 43 lacks novelty in the light of AU 753242.
AU 753242 discloses a tab to assist tearing away of the strip as seen by the enlarged flange in Figure 1. Therefore, I find that claim 44 lacks novelty in the light of AU 753242.
AU 753242 discloses the strip 52 joined to itself by way of a line of weakening as seen in Figures 1 and 3. Therefore, I find that claim 45 lacks novelty in the light of AU 753242.
AU 753242 discloses tab means as seen in the form of enlarged flange in Figure 1 near the line of weakening. Therefore, I find that claim 46 lacks novelty in the light of AU 753242.
AU 753242 discloses the containers having corners and the tamper indicating means located at a corner of the container as seen in Figures 1 and 3. Therefore, I find that claim 47 lacks novelty in the light of AU 753242.
AU 753242 discloses the weakened portion of the strip taking the form of a bridge as seen in Figures 1 and 3. Therefore, I find that claims 50 and 51 lack novelty in the light of AU 753242.
AU 753242 does not disclose a container having a tear tab as described with reference to Figures 3 and 4 of the opposed specification. Therefore, I find that claim 56 is novel in the light of AU 753242.
AU 753242 does not disclose the features additionally defined in claims 2, 6, 28, 29, 32, 52 and 53. Also, Arrow did not make any submission in regards to these claims. Therefore, I find that claims 2, 6, 28, 29, 32, 52 and 53 are novel in the light of AU 753242.
Accordingly, I find that the claims 1, 3-5, 7-15, 18, 21, 26, 30, 31, 35-51, 54 and 55 lack novelty in light of AU 753242.
AU 48386/96 (Exhibit JS-3)
Figures 2 and 3 of AU 48386/96 as referred to in the following paragraphs are shown below.
AU 48386/96 relates to tamper evident lidded containers used for packaging foodstuffs. In reference to Figures 2 and 3, the citation discloses a container and a closure having a downwardly directed ramp means 6 external to the container extending from a side wall 2 of the container, an upwardly directed strip 10 extending from the ramp means to define a recess between the ramp means and the upwardly directed strip, tamper indicating means 21, 22, 23, a closure 3 having a lid for closing off a mouth of the container, and a circumferential skirt 16 depending from the lid.
Arrow has submitted that when closing the container the ramp means 6 push outwardly against the skirt 16 without contacting the lid to guide the skirt into the recess so that the lower portion 17 of the skirt 16 is out of reach of fingers until the tamper indicating means 21, 22, 23 is disturbed. NCI has submitted that in AU 48386/96 there is no disclosure of the depending limb 6 and the nib 18 being of a construction that the apparatus would be capable of co-operating, during application of the lid, to guide the skirt. NCI also submitted that AU 48386/96 (Figures 2 and 3) shows the crest portion 5 of the ramp contacting the horizontal web 14 of the lid, in addition to contacting the skirt 16 as seen in Figures 2 and 3 of the citation.
AU 48386/96 teaches that there is sufficient resilience of the lower part to enable enough deflection of the skirt 16 for nibs 18 to snap into engagement with slots 12, which means that the ramp means push outwardly against the skirt while the closure is applied to the container. It is also clear to me that during the application of closure to the container, the ramp 6 would contact the closure only at the circumferential skirt and not at the crest portion 5 as submitted by NCI. Therefore, I find that claims 1, 54 and 55 lack novelty in the light of AU 48386/96.
AU 48386/96 (page 5, first paragraph) discloses the container and the lid being plastic mouldings. Therefore, I find that claim 2 lacks novelty in the light of AU 48386/96.
AU 48386/96 discloses reinforcing webs 11 at angularly spaced apart positions around the container and joined integrally to the circumferential wall 7 as seen in Figure 2. Therefore, I find that claims 3 lacks novelty in the light of AU 48386/96.
AU 48386/96 discloses a ramp 6 below the lip of the container, which extends around the entire perimeter of the container. Therefore, I find that claims 7, 9 and 10 lack novelty in the light of AU 48386/96.
AU 48386/96 discloses a ramp 6 in the form of an angled skirt depending at an angle from the container rim 5. Therefore, I find that claims 11, 12 and 35 lack novelty in the light of AU 48386/96.
AU 48386/96 discloses upwardly directed strip 10 extending around the entire circumference of the container. Therefore, I find that claims 13, 38 and 39 lack novelty in the light of AU 48386/96.
AU 48386/96 does not disclose lower portion of the skirt 16 and ramp means 6 in sealing engagement. Therefore, I find that claim 23 and the depending claims 24 and 25 are novel in the light of AU 48386/96.
AU 48386/96 discloses one or more ribs 18 provided on the closure to aid sealing. Therefore, I find that claim 26 lacks novelty in the light of AU 48386/96.
AU 48386/96 discloses an upstanding internal wall 15 formed in the lid which abuts the inside surface 2 of the container. Therefore, I find that claims 30 and 31 lack novelty in the light of AU 48386/96.
Contrary to the submission made by Arrow, AU 48386/96 does not disclose a depending flange which creates a recess. Therefore, I find that claims 33 and 34 are novel in the light of AU 48386/96.
AU 48386/96 discloses a portion of the ramp 6 substantially parallel to the wall of the container (see Figure 2). The parallel portion joins a connecting portion 9 to the strip 10 as seen in Figure 2 of the citation. Therefore, I find that claims 36 and 37 lack novelty in the light of AU 48386/96.
The features of tamper indicating arrangement as described in AU 48386/96 are unclear. Therefore, I find that claims 40-46 and 48-51 are novel in the light of AU 48386/96.
AU 48386/96 discloses the containers having corners and the tamper indicating means located at a corner of the container as seen in Figure 3. Therefore, I find that claim 47 lacks novelty in the light of AU 48386/96.
AU 48386/96 does not disclose a container having a tear tab as described with reference to Figures 3 and 4 of the opposed specification. Therefore, I find that claim 56 is novel in the light of AU 48386/96.
AU 48386/96 does not disclose the features additionally defined in claims 4-6, 8, 14-22, 27-29, 32, 52 and 53. Also, Arrow did not make any submission in regards to these claims. Therefore, I find that claims 4-6, 8, 14-22, 27-29, 32, 52 and 53 are novel in the light of AU 48386/96.
Accordingly, I find that the claims 1-3, 7, 9-13, 26, 30, 31, 35-39, 47, 54 and 55 lack novelty in light of AU 48386/96.
AU 33169/84 (Exhibit JS-4)
AU 33169/84 relates to an injection moulded plastic container having a circumferential lock rib which engages a circumferential lock rim of a container lid. The purpose of the invention is to provide an easily manufactured container to be closed with a lid which though easily removable will stay safely and sealingly on the container during transport, especially if the container is dropped.
Arrow has asserted that AU 33169/84 discloses a downwardly directed ramp, an upwardly directed strip to define a recess between the ramp and the strip, tamper indicating means and a closure having a lid and circumferential skirt depending from the lid as seen in Figures 1 and 2 such that during application of the closure, the ramp means pushes against the skirt without otherwise contacting the lid to guide the skirt into the recess so that the skirt is out of the reach of fingers until the tamper indicating means is disturbed. NCI has argued that the citation teaches a completely different configuration, making it impossible for the ramp to push outwardly against the skirt during application of the closure to the container.
AU 33169/84 discloses that a rim portion is swung downward to remove the lid and swung upwards to apply the lid. The rim portion may also be moulded in situ with the container. I agree with NCI that it is a very different configuration to what has been defined in claim 1 of the opposed specification. In AU 33169/84, there is no teaching of the closure being applied to the container which will result in outward pushing of circumferential skirt depending from the lid by a ramp means. Therefore, I find that claim 1, and the depending claims 2-55 are novel in the light of AU 33169/84.
AU 33169/84 does not disclose a container having a tear tab as described with reference to Figures 3 and 4 of the opposed specification. Therefore, I find that claim 56 is novel in the light of AU 33169/84.
Accordingly, I find that the claims 1-56 are novel in light of AU 33169/84.
AU 28340/97 (Exhibit JS-5)
Figures 9-12 of AU 28340/97 as referred to in the following paragraphs are shown below.
AU 28340/97 relates to tamper evident containers and associated closure members used for packaging foodstuffs. In reference to Figures 9 to 11, the citation discloses a container and a closure having a ramp means external to the container extending from a side wall 12 of the container, an upwardly directed strip 23 extending from the ramp means to define a recess between the ramp means and the upwardly directed strip, a closure 13 having a lid for closing off a mouth of the container, a circumferential skirt 19 depending from the lid, and tamper evident means.
Arrow has submitted that during application of closure to the container, the ramp means (inclined portion above shoulder 25) pushes outwardly against the skirt without otherwise contacting the lid to guide the skirt into the recess to keep the lower portion of the skirt away from fingers until the tamper indicating means is disturbed. NCI has argued that the inclined portion above shoulder 25 is the side wall which is upwardly directed, and the ramp means 22 makes no contact with the skirt 19.
According to my construction of the phrase “downwardly directed ramp means” as discussed earlier, I consider that the inclined portion above shoulder 25 is a downwardly directed ramp means extending from a side wall of the container, and my understanding of the mode of operation of this arrangement is that Arrow is correct in its assertion that this ramp pushes outwardly against the skirt. Therefore, I find that claims 1, 54 and 55 lack novelty in the light of AU 28340/97.
AU 28340/97 discloses step 26 in the wall of the container below the lip of the container. Therefore, I find that claims 3-5 lack novelty in the light of AU 28340/97.
AU 28340/97 discloses the ramp below the lip of the container. The ramp is located between the step 26 and the lip 24, and extends around the entire perimeter of the container. Therefore, I find that claims 7-10 lack novelty in the light of AU 28340/97.
AU 28340/97 discloses the ramp in the form of an angled skirt depending at an angle from the container rim. Therefore, I find that claims 11, 12 and 35 lack novelty in the light of AU 28340/97.
AU 28340/97 discloses upwardly directed strip 23 extending around the entire circumference of the container. Therefore, I find that claims 13, 38 and 39 lack novelty in the light of AU 28340/97.
100. AU 28340/97 discloses a rib 20 on the closure to aid sealing. Therefore, I find that claim 26 lacks novelty in the light of AU 28340/97.
101. AU 28340/97 discloses a circumferential rib 25 on the on the container to aid sealing. Therefore, I find that claims 27 and 28 lack novelty in the light of AU 28340/97.
102. Contrary to the submission made by Arrow, AU 28340/97 does not show the rib to seal against a circumferential flange depending from the underside of the lid. Therefore, I find that claim 29 is novel in the light of AU 28340/97.
103. Contrary to the submission made by Arrow, AU 28340/97 does not disclose an upstanding internal wall formed in the lid. Therefore, I find that claims 30-34 are novel in the light of AU 28340/97.
AU 28340/97 does not disclose the ramp as substantially parallel to the wall of the container. Therefore, I find that claims 36, 37 and the depending claim 41 are novel in the light of AU 28340/97.
AU 28340/97 discloses the strip 23 joined to the ramp means by a region of weakening as seen in Figure 9. The region of weakening is adapted for detachment of the strip from the ramp means. Therefore, I find that claims 40 and 42 lack novelty in the light of AU 28340/97.
AU 28340/97 discloses the tamper indicating means including the detachable part as seen in Figure 6. Therefore, I find that claim 43 lacks novelty in the light of AU 28340/97.
AU 28340/97 discloses a tab 27 to assist tearing away of the strip as seen in Figure 10. Therefore, I find that claim 44 lacks novelty in the light of AU 28340/97.
AU 28340/97 discloses the strip joined to itself by way of a line of weakening as seen in Figures 5. Therefore, I find that claim 45 lacks novelty in the light of AU 28340/97.
AU 28340/97 discloses the tab near the line of weakening as seen in Figure 2. Therefore, I find that claim 46 lacks novelty in the light of AU 28340/97.
AU 28340/97 discloses a container having corners and the tamper indicating means located at a corner of the container as seen in Figure 7. Therefore, I find that claim 47 lacks novelty in the light of AU 28340/97.
AU 28340/97 discloses the region of weakening in the joint between the strip 23 and ramp means in form of a region of lesser thickness 31 as seen in Figure 9. Therefore, I find that claim 49 lacks novelty in the light of AU 28340/97.
AU 28340/97 discloses the weakened portion of the strip taking the form of a bridge as seen in Figure 2. Therefore, I find that claims 50 and 51 lack novelty in the light of AU 28340/97.
AU 28340/97 does not disclose a container having a tear tab as described with reference to Figures 3 and 4 of the opposed specification. Therefore, I find that claim 56 is novel in the light of AU 28340/97.
AU 28340/97 does not disclose the features additionally defined in claims 2, 6, 14-25, 48, 52 and 53. Also, Arrow did not make any submission in regards to these claims. Therefore, I find that claims 2, 6, 14-25, 48, 52 and 53 are novel in the light of AU 28340/97.
The opponent did not adduce any evidence bearing on inventive step, nor was the inventive step issue pursued at the hearing. Therefore, there is no evidence before me which suggests that the skilled addressee would have ascertained, understood and regarded each of the prior art as relevant. Also the opponent did not provide any evidence on the state of common general knowledge in the relevant art. Consequently there is no basis on which to conclude that the present invention is lacking an inventive step.
I find that the claimed invention does not lack an inventive step.
Manner of Manufacture
Manner of manufacture was made a ground of opposition on the basis that the invention is a mere collocation of known integers and merely combining these integers in the manner claimed does not result in a new working inter-relationship, nor does it result in any unexpected result. However, the issue was not pursued at the hearing by the opponent. The applicant argued that the present invention is a combination as opposed to the collocation as the parts of the invention interact with each other.
The difference between a collocation and combination was set out in British Celanese Ltd. v Courtaulds Ltd 52 RPC 171 at pages 193-194, where it was said:
"It is accepted as sound law that a mere placing side by side of old integers so that each performs its own proper function independently of any of the others is not a patentable combination, but that where the old integers when placed together have some working inter-relation producing a new or improved result then there is patentable subject-matter in the idea of the working inter-relation brought about by the collocation of the integers."
In my view the allegation that the invention is directed to a mere collocation is without foundation. The claimed invention plainly answers the description "patentable combination" since the features that make up the invention are functionally dependent on one another. Furthermore, no evidence was presented by the opponent to support the proposition that there was no new working interrelationship between the integers. I am also aware that many patents have previously been granted for similar containers, and consider that the present invention has no less synergism than the prior art systems. I am therefore of the view that the claimed invention is directed to more than a mere collocation of integers.
I find that the invention is clearly a manner of manufacture as required by paragraph 18(1)(a) of the Patents Act 1990.
CONCLUSION
I have found that claims 1-24, 26-28, 30, 31 and 35-56 lack novelty in the light of prior art for the reasons detailed above.
As the specification clearly contains patentable subject matter, I allow the applicant 60 days from the date of this decision in which to propose suitable amendments to overcome the above findings. If suitable amendments are not proposed within that time, I will refuse the application.
COSTS
In its submissions the opponent stated that they seek actual costs in this matter having regard to the very obvious case for rejection of the claims on the ground of prior publication and the failure of the applicant to address the deficiencies outlined in respect of sub-section 40(3).
The applicant submitted that instead of narrowing the issues in dispute to a reasonable compass, the opponent has introduced significant irrelevant and clearly unmeritorious evidence which has in turn added to the cost and complexity of the opposition, and therefore the opponent should compensate the applicant by an order of costs.
The award of costs is a discretionary matter. It is a general principle in matters such as these that costs follow the event, and I see no reason to depart from this practice. I have found that the opponent has been mostly successful in respect of lack of novelty of the claims, and much of its evidentiary material was highly relevant.
The schedule of costs can be varied if an appropriate case is made out. However, I see no merit in the opponent’s request for actual costs. I do not consider that there was a “very obvious case for rejection” in the present matter. Indeed, the opponent’s assertion in this regard is belied by the fact that it has mounted a section 59 opposition to the present application, rather than opting for other less costly avenues for recourse, such as filing a section 27(1) notification or requesting re-examination after sealing. I therefore award costs in accordance with Schedule 8 against the applicant NCI Packaging Pty Ltd.
Ed Knock
Delegate of the Commissioner of Patents
15 May 2008
Patent attorneys for the applicant : Allens Arthur Robinson, Melbourne
Patent attorneys for the opponent : Spruson & Ferguson, Sydney
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