Ball Corporation v American National Can Company
[2002] APO 2
•10 January 2002
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 653171 in the name of BALL CORPORATION.
Title: Apparatus and method for strengthening bottom of container.
Action: Opposition under Section 59 of the Patents Act, and request to amend the statement of grounds and particulars under Regulation 5.9, and application to serve further evidence under Regulation 5.10(4), all by AMERICAN NATIONAL CAN COMPANY.
Decision: Issued .
Abstract:
The opponent sought to adduce further evidence. One of the items of further evidence sought to clarify the priority date of a patent citation by the opponent. This item of evidence was admitted as further evidence. Another item of evidence from the opponent was also admitted primarily because it appears to address the applicant's specification as proposed to be amended. A third item was refused primarily because it appeared to be of little consequence to the present case.
The applicant filed evidence in response to the admitted further evidence from the opponent. The evidence in response was admitted. Subsequently, still further evidence from both parties was also admitted.
Regulation 5.11 was invoked to refer to a US document available in the Patent Office to assist in correctly determining the priority date of the opponent's citation.
It was found that the present application was not entitled to its claimed priority date. On the other hand the opponent's citation was entitled to its claimed priority date. This meant the opponent's citation had an earlier priority date than the present application and could legitimately challenge the present application.
It was found the present application contained several claims that were not novel over the opponent's citation.
On the other hand the claims were found to be clear and fairly based on the matter described in the specification.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent application 653171 by BALL CORPORATION, and opposition under section 59, and request to amend the statement of grounds and particulars under regulation 5.9, and application to serve further evidence under regulation 5.10(4), all by AMERICAN NATIONAL CAN COMPANY.
BACKGROUND
Ball Corporation ("Ball") filed patent application 653171 on 21 October 1991. The application was advertised accepted on 22 September 1994. The application claims earlier priority from two US applications. The first is US application 600943 filed on 22 October 1990. The second is US application 799241 filed on 20 September 1991.
American National Can Company ("ANCC") opposed the grant of a patent on the application on 22 December 1994. The company subsequently filed a statement of grounds and particulars in support of the opposition on 22 March 1995. The normal stages for the parties to serve evidence were completed on 19 March 1997.
On 22 March 1996 Ball filed a request under section 104 to amend the specification of application 653171. Following adverse comments from ANCC and adverse patent examination reports, Ball filed a further request to amend the specification on 20 May 1997. The Patent Office granted and advertised leave to amend the specification on 16 October 1997.
ANCC filed a notice of opposition to the allowance of the amendments on 16 January 1998. In a decision dated 12 January 2000, [2000] APO 6, I allowed those amendments.
Concurrently ANCC also filed a request to amend the statement of grounds and particulars and an application to serve further evidence on 16 February 1998. ANCC's primary reason for these requests was to present further issues in respect to the clarity and fair basis of the claims of the application in the light of findings by a hearing officer in a similar application by Ball, namely application 655205. Further reasons were ANCC's desire to provide evidence in respect to the priority date of the prior art that ANCC relies on, and to provide evidence in respect to the claims of the application as proposed to be amended at the time of filing the requests.
A hearing took place in Sydney on 17 and 18 October 2000. The hearing dealt with the substantive opposition and the requests to amend the statement of grounds and particulars and serve further evidence. Mr David Hughes, patent attorney of Phillips Ormonde and Fitzpatrick, represented Ball. Mr Gary Nock, patent attorney of Freehills Carter Smith Beadle, represented ANCC. Mr Gavin Recchia also from the latter firm was present as an observer.
SPECIFICATION
The specification describes the invention as relating to metal container bodies having a seamless sidewall and a bottom formed integrally therewith. By example the containers are beverage containers formed of either steel or aluminium alloys. The specification states it is important that the body wall and bottom wall of the container be as thin as possible so the container can be sold at a competitive price.
The invention seeks to provide bottom contours that give maximum dome reversal pressure for a given metal thickness and that increase the resistance to damage when a filled container is dropped onto a hard surface.
The specification describes the bottom of the container as having an annular supporting surface, a dome shaped central panel and an inner wall between the supporting surface and the central panel. The inner wall disposes the central panel above the supporting surface. The specification states the invention achieves the above objects by reforming the bottom of the container so that the inner wall comprises at least a segment that extends upwardly above the supporting surface and outwardly relative to the axis of the container. On the face of the specification this juxtaposition and orientation of this segment of the inner wall due to the reforming process is an essential feature of the invention.
The specification further describes a tooling device for reforming the bottom of the container to achieve the above outline of the inner wall.
The specification contains 54 claims. The three claims recited below appear to define the broadest spread of the many aspects of the invention described in the specification. The three claims are claims 28, 33 and 51.
28. Apparatus for reforming a thin-walled, drawn and ironed container body having a sidewall that is disposed around a container axis, an annular supporting surface, an outer connecting portion that interconnects said sidewall and said supporting surface, and a bottom recess portion comprising a center panel and an inner wall that disposes said center panel above said supporting surface, said apparatus including:
a tooling device comprising a body and a tooling element that is operatively attached to said body, said tooling element comprising first and second reforming rollers which are positioned 180 degrees apart;
means for positioning said tooling element within an exterior space defined by said inner wall and said center panel of said bottom recess portion of said container body;
first means for providing relative transverse movement between said tooling element and all of said container body; and
means, comprising said tooling element, and comprising said first means for providing relative transverse movement between said tooling element and said container body, for reworking at least a part of said inner wall into an upwardly and outwardly orientation relative to said supporting surface and said axis, respectively, said means for reworking comprising second means for providing relative movement between said tooling element and said container body to relatively advance said first and second reforming rollers about said inner wall.
33. A method for increasing at least one strength characteristic of a thin-walled, drawn and ironed container body having a sidewall that is disposed around a container axis, an annular supporting surface, an outer connecting portion that interconnects said sidewall and said supporting surface, and a bottom recess portion comprising a center panel and an inner wall that disposes said center panel above said supporting surface, said inner wall and said center panel being interconnected by an arcuate portion having a radius, said inner wall being in a first orientation, said method including the steps of:
engaging at least part of said inner wall with at least one tooling element;
reforming at least part of said inner wall using said engaging step;
changing said inner wall from said first orientation to a second orientation using said reforming step, said second orientation comprising at least part of said inner wall extending upwardly relative to said supporting surface and outwardly relative to said container axis; and
increasing said radius of said arcuate portion using said reforming step.
51. A method for increasing at least one strength characteristic of a thin-walled, drawn and ironed container body having a sidewall that is disposed around a container axis, a bottom that is attached to said sidewall and that provides an annular supporting surface, an outer connecting portion that interconnects said side wall and said supporting surface, and a bottom recess portion comprising a center panel and an inner wall that disposes said center panel above said supporting surface, said inner wall being substantially linear, said method comprising the step of:
engaging at least part of said inner wall with at least one tooling element;
reforming said inner wall into at least first and second segments using said engaging step, said first segment extending upwardly relative to said supporting surface and outwardly relative to said axis, said second segment being above said first segment and extending upwardly relative to said first segment and inwardly relative to said axis.
GROUNDS OF OPPOSITION
ANCC mentions two grounds for opposing the application. The first is that the invention claimed in the patent application is not novel and does not involve an inventive step. The second is that the claims of the specification are not clear and succinct and not fairly based on the matter described in the specification.
ANCC cites its own international application PCT/US92/06198 against the first ground. The equivalent Australian application is 667208 (33200/93).
EVIDENCE
ANCC's evidence in support consists of statutory declarations by Mr Andy Halasz and Mr Neil Arthur Murray. Mr Halasz is manager of machine design at ANCC in the USA. Mr Murray is a consultant in quality management specialising in can manufacture. Prior to this Mr Murray worked as a technical and quality manager for twenty years for J Gadsden Pty Ltd, an Australian can manufacturer for the food, beverage and general chemical industries.
Mr Halasz's declaration includes exhibits of the present application 653171 and the two earlier US applications associated with this application. He also includes exhibits of the published version of ANCC's international application PCT/US92/06198 (AU 667208), dated 27 July 1992, and its associated earlier priority document, US application 735994, dated 25 July 1991.
Mr Halasz analyses the contents of the exhibited applications to state Ball's application 653171 is not fairly based on its associated US application 600943 because the latter application does not disclose the method and apparatus claimed in the former application. This suggests application 653171 is not entitled to the earlier priority associated with US application 600943. Instead application 653171 may only take its own filing date or the filing date of US application 799241 as the priority date. Conversely Mr Halasz asserts ANCC's US application 735994 does disclose the subject matter of its international application PCT/US92/06198. This suggests the latter application is entitled to the earlier priority date of the former application.
ANCC's US application 735994 was filed on 25 July 1991. If Mr Halasz's analysis is correct then PCT/US92/06198 has an earlier priority date than the present application 653171. On the other hand PCT/US92/06198 was published on 4 February 1993 as WO 93/01903, that is after the date of application 653171. This situation falls within Section 7(1)(c) and the definition of prior art base in Schedule 1 of the Patents Act. These references deal with material published after the priority date of an application but having an earlier priority than that of the application. Critically the relevant material can only be Australian patent specifications. Consequently I note application PCT/US92/06198 corresponds with Australian specification 667208. I will hereafter refer to this application as the ANCC application.
Mr Halasz finally concludes the ANCC application discloses all features claimed in claims 1 to 54 of Ball's application 653171.
Mr Murray discusses the effects that initial container shape, geometry of the reforming roller, the roll height and penetration of the roll have on the final container shape. He also supports Mr Halasz's conclusions in respect to the disclosures of the mentioned applications.
Ball's evidence in answer consists of a statutory declaration by Mr Tom Aart Boersma. He is a manufacturing engineer for Containers Packaging, a division of Amcor Ltd, an Australian company. Mr Boersma has worked for Containers Packaging since 1978.
Mr Boersma asserts the nature of reforming in the Ball application is entirely different to that of the ANCC application. In the latter case the inner wall is repositioned from a vertical or positive angle to a negative angle, that is an outward extension. In the former case the reforming additionally produces a hooked portion. Mr Boersma further noted the production of the hooked portion requires a tooling element with a small engaging surface to engage the various segments of the inner wall individually. He stated the ANCC application does not disclose a tooling element with the requisite small engaging surface.
ANCC's evidence in reply consists of further declarations by Mr Halasz and Mr Murray.
Mr Halasz suggests the distinction made by Mr Boersma between the present application and the ANCC application is hollow. The creation of the negative angle in the ANCC application necessarily means a number of parts of the inner wall are reformed. Mr Halasz referred to Figure 19 of the ANCC application to say that at least three parts of the inner wall are reformed in different ways as claimed in the present application. Mr Halasz consequently notes the ANCC application is not solely about providing a negative angle because the ANCC process does not reform the entire inner wall to a negative angle. He further states that Figure 19 shows a roller with small engaging surface for contacting only a portion of the inner wall at one time to produce the requisite reformed shape.
Mr Murray similarly states the production of a negative angle is not the only result of the reforming process outlined in the ANCC application. He notes the radius of the annular support area and the radius of the transition area between the inner wall and the dome panel also changes according to the profile of the tooling element and its positioning vertically along the inner wall. Mr Murray further refers to Figures 14, 17 and 19 of the ANCC application to state the reforming action in that application clearly produces reformed first, second and third segments as claimed in the present application and that the reforming rollers contact only a part of the inner wall.
The further evidence ANCC sought to adduce with its request of 16 February 1998 includes declarations by Mr Gary Nock and Mr Thomas Stine, and a further declaration by Mr Halasz.
Mr Nock's declaration exhibits a copy of Australian patent application 655205. This application is also by Ball and relates to a reformed container body. Mr Nock also exhibits a copy of a hearing officer's decision on this application. The hearing officer decided that certain claims of that application were not fairly based on the corresponding description and were not clear. Mr Nock contended the similarities between application 655205 and the present application means the same issues of lack of fair basis and lack of clarity apply to the present case.
Mr Stine is patent counsel for ANCC in the USA and states he assisted in the preparation of Mr Halasz's first declaration. Mr Stine draws attention to the priority document (US application 735994) for the ANCC application being a continuation-in-part of US application 730794. The latter application is in turn based on an earlier application PCT/US90/00451. ANCC filed this PCT application on 26 January 1990. This application was published as WO91/11275 on 8 August 1991. Mr Stine includes a copy of the PCT application as an exhibit.
Mr Halasz compares the ANCC application with the claimed features of application 653171, as amended by Ball on 22 March 1996. He states the Ball application as amended is still clearly disclosed by the ANCC application. Mr Halasz also exhibits segments of US patent 5222385 dated 29 June 1993. This patent derives from the priority document US application 735994 of the ANCC application.
DECISION
PRELIMINARY ISSUES
As noted earlier the relative dates of Ball's application 653171 and the ANCC application are such that Section 7(1)(c) and the definition of prior art base in Schedule 1 of the Patents Act may apply. That is I am potentially dealing with a citation published after the priority date of the present application but having an earlier priority than that application. Furthermore the ANCC application in such circumstances could only be used to challenge the novelty of the claimed invention. A challenge for lack of inventive step in the light of the ANCC application is not available to ANCC under Section 7.
Schedule 1 of the Patents Act in respect to the prior art base also requires the information relied upon in the ANCC application to have been in that application on its filing date and when it was published. The drawings of the ANCC application, as published on 4 February 1993 (WO 93/01903), are marked as substitute sheets. This may infer that the application at the date of filing may have been different from the published version. In similar circumstances in Laboratoires Prographarm v F.H. Faulding & Co Ltd, [1998] APO 63, the hearing officer noted the published version of a possible citation had some substitute pages suggesting the filed version may have been different. The hearing officer concluded in that case there was insufficient evidence to establish the citation was part of the prior art base.
In the present case only the drawing sheets are marked as substitutes. The textual pages appear to be unchanged. Furthermore the substitution of drawing sheets in this case would appear to be under rule 26 of the Patent Cooperation Treaty. This rule enables an applicant to correct certain defects in an international application and is generally available for meeting the physical requirements of an international application (Rule 11) and not for making amendments to the information on the sheets. In the absence of evidence to the contrary, I am prepared to accept this is the case with the present substitute sheets. I have no reason before me to doubt that the information in the ANCC application at its publication date was not also in the ANCC application at its filing date.
In letters to the parties dated 26 March 2001 I informed them of my decision to admit Mr Stines' and Mr Halasz's declarations as further evidence. I also informed the parties that I had decided not to allow Mr Nock's declaration. Additionally I explained that I would provide reasons for these decisions here in the substantive decision. I will do so in the appropriate sections below.
I also invited submissions from the parties and/or evidence in response from Ball in respect to the declarations admitted as further evidence.
Furthermore I advised the parties in the same letters of my intention to invoke regulation 5.11 to inform myself of the facts in respect to the priority date of the ANCC application. Specifically I had been advised the Patent Office file of the equivalent Australian application of the ANCC application, AU 667208, included a certified copy from the US Patent Office of US application 730794. The latter application is the second application in the continuation series discussed by Mr Stine. I advised the parties I intended to refer to this document to assist me in correctly determining the priority date of the ANCC application. Before I would proceed down this path I invited submissions from the parties as to why I should not invoke regulation 5.11 to refer to this document.
REQUEST TO AMEND THE STATEMENT OF GROUNDS AND PARTICULARS AND APPLICATION TO SERVE FURTHER EVIDENCE
ANCC's request to amend the statement of grounds and particulars was filed under regulation 5.9. Subsequently that regulation was amended by the Patents Amendment Regulations 2000 (No. 1) dated 22 November 2000. The amendment in respect to regulation 5.9 had the effect of removing the clause that the commissioner must not allow an amendment of the statement of grounds and particulars if he or she reasonably believes that a person would be unduly prejudiced by the amendment.
Mr Hughes noted sub-regulation 5.9(1)(b) states an amendment of the grounds of opposition must be allowed if the amendment results from an amendment of the patent request or complete specification of the application. He submitted that is not the case in the present circumstances.
The proposed amendment of the statement of grounds and particulars seeks to present further particulars in respect to the grounds of lack of clarity and fair basis of the claims of the present application. These particulars relate to the findings of a hearing officer in respect to another application, 655205, by Ball. It is clear this amendment does not result from amendment of the patent request or complete specification of the present application.
It may be argued that the proposed amendment of the statement of grounds and particulars falls under sub-regulation 5.9(1)(c). That is, amendment of particulars relating to a ground of opposition, as in this case, must be allowed on the request of the opponent. However both sub-regulations 5.9(1)(b) and (c) are subject to sub-regulation 5.9(2) which outlines when such an amendment must not be allowed.
A major reason for Ball's objection to the allowance of the request to amend the statement of grounds and particulars was for undue prejudice to Ball. The amendment of regulation 5.9, specifically sub-regulation 5.9(2), means Ball no longer has that avenue open to it as a ground for objection. Consequently, any residual rights that Ball has from the old sub-regulation 5.9(2) can only be considered in respect to whether the further evidence from ANCC, in respect to the proposed amendment, ought to be admitted.
ANCC sought to adduce declarations by Mr Stine, Mr Halasz and Mr Nock as further evidence. Sub-regulations 5.10(4) and (5) provide the statutory basis to allow further evidence to be served. Sub-regulation 5.10(4) reads as follows:
“(4) The Commissioner may:
(a) on the application of a party; and
(b) on such reasonable terms (if any) as the Commissioner specifies;
permit the party to serve further evidence on the other party.
In respect to the serving of further evidence, sub-regulation 5.10(5) states inter alia that the commissioner must not grant an application to serve further evidence unless he or she is reasonably satisfied that the serving of further evidence is appropriate in all the circumstances.
From the Imperial Chemical Industries PLC v Mitsubishi Gas Chemical Co decision, (1994) 29 IPR 285, considerations which inter alia may be relevant in determining whether the serving of further evidence is appropriate in all the circumstances include:
Has the party applying to serve further evidence shown that the evidence could not have been obtained with reasonable diligence at an earlier stage?
Is the evidence such that, if given, it would probably have an important influence on the result of the case?
Is the evidence such as is presumably to be believed; i.e. is it apparently credible, though not necessarily incontrovertible?
Would allowance of the application to serve further evidence cause unnecessary protraction of the opposition?
Would there be an injustice done to either party?
There may also be other relevant factors, such as the public interest in having a serious opposition determined on its merits but also that a matter in a state of uncertainty be resolved as expeditiously as possible. See the A Goninan & Co Ltd v Commissioner of Patents decision, (1997) 38 IPR 213 at 222, a decision on the operation of sub-regulation 5.10(5) in respect to extensions of time for filing of evidence for example.
Mr Hughes submitted that ANCC's further evidence should be disallowed on all five of the criteria outlined above. In respect to Mr Stine's declaration Mr Hughes suggested Ball had not been diligent in serving that evidence since it was available at the commencement of the opposition. Mr Hughes submitted the evidence could have been included either as evidence in support or evidence in reply. He also submitted Mr Stine's declaration is unlikely to have an important influence on the result of the case because it fails to incorporate in evidence all necessary prior documents. While his evidence includes an exhibit of one earlier document, PCT/US90/00451, Mr Stine has not included the other earlier document, US application 730794, in evidence.
Mr Nock submitted that Mr Stine's declaration resolves matters in respect to the priority date of the ANCC application, specifically the reference to the ANCC application being a continuation-in-part.
The resolution of the priority date of the ANCC application is a significant issue in the present case. Without resolving that date, I may not be able to conclusively determine whether application 653171 is novel over the ANCC application. Consequently the issues of ANCC's diligence in serving Mr Stine's declaration and the likely protraction of proceedings is less significant than the likely influence Mr Stine's declaration may have on the result of the case. For instance if the accompanying application PCT/US90/00451 discloses the invention of the ANCC application then, under sub-regulation 8.5(2), the ANCC application takes its 1992 date of filing as the priority date since the PCT application was filed more than twelve (12) months before the ANCC application. In that case the ANCC application would not challenge application 653171 at all. I regard Mr Stine's declaration as likely to have an important influence on the result of the case. The potential injustice to Ball by admitting Mr Stine's declaration could be overcome by allowing Ball the opportunity to serve evidence in response. It is also in the public interest that the correct priority date be determined to properly draw conclusions as to the novelty of the present application.
For these reasons I allowed Mr Stine's declaration as further evidence.
Mr Hughes submitted that Mr Halasz's further declaration in respect to the present specification as amended could have been served at an earlier stage. Mr Hughes noted that Ball's evidence in answer from Mr Boersma addressed the specification as amended. Consequently Mr Hughes suggested that Mr Halasz could have served the present declaration as evidence in reply. Mr Hughes submitted ANCC has not been diligent in serving this declaration. He also submitted the allowance of this evidence would cause further protraction of these proceedings and injustice to Ball.
Mr Nock submitted Mr Halasz's declaration relates to the novelty of the amended claims of the present application. He suggested allowance of this evidence would lead to a more just and correct determination of the opposition. Mr Nock also challenged Mr Hughes' view of the diligence of ANCC. Mr Nock stated that Mr Halasz's further declaration could not have been served as evidence in reply. Mr Nock noted that Ball's second amendment to the specification was first proposed in May 1997 after the completion of evidence in reply, and that leave to amend the specification was only granted in October 1997.
Mr Halasz's declaration appears to address the present specification in its first proposed amended form. ANCC served the declaration approximately four months after the Patent Office advertised leave to amend the specification. In any case the amendments were only finally allowed in my decision of 12 January 2000, [2000] APO 6, due to an opposition to the amendments. Consequently ANCC's diligence in serving Mr Halasz's declaration in this case is not an issue. In any case the diligence of ANCC and the likely protraction of proceedings are less significant than the likely influence Mr Halasz's declaration may have on the result of this case. The declaration may be significant because it is one of the few substantial pieces of ANCC's evidence that appears to address an amended form of the present specification. In this respect the declaration may lead to a more just and correct determination of the present opposition. The potential injustice to Ball by admitting Mr Halasz's declaration could be overcome by allowing Ball the opportunity to serve evidence in response.
For these reasons I allowed Mr Halasz's declaration as further evidence.
Mr Nock's declaration relates to Ball's application 655205. The declaration includes a copy of that application and the hearing officer's decision in respect to that application. At the present hearing Mr Nock noted the hearing officer's decision on application 655205 determined a third portion connecting the upwardly and outwardly facing part of an annular wall and the dome portion of the container to be an essential feature of the invention. Consequently the hearing officer determined that certain claims of that application were not fairly based on the description of the invention and were not clear. Mr Nock submitted I should conclude the same in the present case in respect to the method and apparatus for making that container. He suggested his declaration would lead to a more correct and just result.
Mr Hughes submitted the outcome of the opposition to application 655205 has little bearing on the present opposition. He consequently submitted that Mr Nock's declaration should not be admitted in evidence.
On the face of it, application 655205 appears to be directed to a container comprising a reworked part of the bottom recess portion for increasing the roll-out strength of the container. The specification appears to totally relate to the appearance of the base of the container prior to and after reworking of the bottom recess portion. The application claims priority from the same US application 600943 from which the present application 653171 claims priority. Additionally, application 655205 appears to be largely consistent in disclosure with that of US application 600943. On the other hand the present application 653171 describes and claims methods and an apparatus for carrying out the reforming of the container. All the claims of this application define a method or apparatus involving the engaging and moving of tooling means against the inner wall at the bottom of the container to reform the inner wall to a specific profile. Consequently the present application is significantly different from the apparent disclosure of application 655205. I regard the opposition outcome on application 655205 to be of little consequence to the present case.
In any case issues of clarity and fair basis of claims should primarily be considered in respect to each specification on its face and as presented to a skilled reader in the relevant field.
For the above reasons I refused to admit Mr Nock's declaration as further evidence.
In response to ANCC's allowed evidence Ball served evidence from Mr Boersma on 13 June 2001. In this declaration Mr Boersma analyses the contents of the ANCC application and PCT/US90/00451. He concludes the reforming process the subject of the latter application is the subject of numerous claims of the ANCC application. I have admitted this evidence.
APPLICATIONS TO SERVE STILL FURTHER EVIDENCE
On 1 August 2001 ANCC requested leave to serve further evidence and served a further declaration by Mr Halasz. ANCC submitted the request should be allowed because the matters raised in Mr Halasz's declaration are in reply to issues first raised in Mr Boersma's evidence in response. Mr Halasz's analysis leads him to conclude the text and drawings of the ANCC application are not disclosed in PCT/US90/00451.
Ball did not object to ANCC's request to serve this evidence. Instead Ball stated its expectation to be granted an opportunity to serve evidence in response.
The parties were advised on 10 September 2001 of the allowance of ANCC's request to serve its latest evidence. Ball was given until 10 October 2001 to serve evidence in response. On that date Ball requested an extension of time. Subsequently ANCC objected to the grant of an extension of time for Ball to serve evidence in response. On 6 November 2001 Ball was advised that if it desired to serve evidence it would need to make a request under regulation 5.10(4) to serve this material as further evidence with justification for the need to make such a request.
Ball served further evidence by Mr Boersma on 9 November 2001 together with statements supporting the need to serve the evidence. This evidence again largely states the ANCC application discloses the same reforming technique as in PCT/US90/00451 to cause the inner wall to move to a negative angle.
Both parties were advised on 14 November of a proposal to allow this further evidence. The parties were also advised that since Mr Boersma's evidence appeared to be responsive to Mr Halasz's previous evidence, it seemed inappropriate to grant ANCC a further opportunity to serve evidence in response to Mr Boersma's declaration. ANCC has not challenged these proposals.
Ball's evidence has been admitted. Submissions on all further evidence were then also called for from both parties with a view to concluding the opposition. All submissions were filed by 10 December 2001.
INVOCATION OF REGULATION 5.11
Regulation 5.11 enables the commissioner to inform himself or herself of a fact by reference to a document available in the Patent Office. In the letters to the parties dated 26 March 2001 I informed the parties of my intent to invoke regulation 5.11 to refer to US application 730794, the second application in the continuation series of the ANCC application. I had been advised a certified copy from the US Patent Office of this US application was present in the Patent Office file of the corresponding Australian application, AU 667208.
Mr Hughes submitted in writing that it was not appropriate for me to invoke regulation 5.11 for this purpose. He stated the onus rests with ANCC to submit all the necessary evidence to establish the ANCC application is entitled to an earlier priority date. Mr Hughes consequently stated US application 730794 ought to have been filed by ANCC as part of its evidence as this application is clearly necessary to establish ANCC's case. He further stated that in view of ANCC's onus to establish its case, it is not appropriate for me to make independent inquiries beyond the evidence presented in the opposition.
On the other hand there is a broader public interest in this case beyond the interests of the applicant or the opponent. The validity of the present application is in doubt if there is uncertainty over the priority date of ANCC's citation. To resolve this uncertainty I need to have access to US application 730794. Furthermore neither party formally objected to regulation 5.11 being invoked. Subsequent to filing its written submissions Ball also waived its right to be heard on the matter.
In the light of the above, letters were sent to the parties on 6 April 2001 stating that I would invoke regulation 5.11 and refer to US application 730794.
PRIORITY DATES OF APPLICATIONS
The thrust of ANCC's opposition is that Ball's claimed invention is not novel in the light of one of ANCC's own applications. The date of the ANCC application is such that ANCC's opposition can only be successful if Ball's application 653171 is not entitled to the earliest priority date claimed for that application. It is necessary to clearly establish the priority dates of the claims of application 653171.
Regulation 3.12 determines priority dates of patent applications. Sub-regulations 3.12(1)(b) and 3.12 (2)(b) are pertinent in the present case. If the claims of application 653171 are fairly based on matter disclosed in one or more of the earlier US applications 600943 or 799241 then the priority date of any such claim is the date of filing the earlier document in which the claimed matter was first disclosed. Sub-regulation 8.5(2) also requires the present application 653171 to have been filed no more than twelve (12) months after the earliest US application in respect of the invention. Application 653171 passes this criterion. In respect to regulation 3.12, if the claims of application 653171 are fairly based on US application 600943 filed on 22 October 1990 then the ANCC application is of no consequence against application 653171. The ANCC application's priority date can be no earlier than 25 July 1991.
Mr Nock submitted the law in respect to fair basis of claims is discussed in the Leonardis v Sartas No 1 Pty Ltd decision, (1996) 35 IPR 23. From this decision Mr Nock noted there needs to be a real and reasonably clear disclosure of the matter claimed in the complete specification. Mr Nock stated that Ball's first US application 600943 is silent on the method or apparatus demonstrating how the container is reformed. He said US application 600943 is solely directed to the reformed container itself. Mr Nock particularly noted that US application 600943 does not have any description or drawings corresponding to the apparatus shown in Figures 14 - 28 of the present application 653171.
Mr Hughes submitted the differences between application 653171 and US application 600943 are only matters of common general knowledge and consequently application 653171 is entitled to the priority date of US application 600943.
The Leonardis (supra) decision and the CCOM Pty Ltd v Jiejing Pty Ltd decision, 28 IPR 481, provide that for a claim to be fairly based on an earlier document there must be a real and reasonably clear disclosure of the claimed subject matter in the earlier document. Some generality of expression in the earlier document is acceptable without destroying the fair basis of a claim. What is required to be fair is the basis that the earlier document affords to a claim in a later document.
In the present case the earlier US application 600943 broadly relates to a container comprising a reworked part of the bottom recess portion for increasing the roll-out strength of the container. The description and drawings are totally related to the appearance of the base of a container prior to and after reworking of the bottom recess portion. There is no description or illustration of a method or apparatus enabling the reworking to be performed. In contrast all the claims of the present application 653171 define a method or apparatus involving the engaging and moving of tooling means against the inner wall at the bottom of the container to thereby reform the inner wall to a specific profile.
Mr Hughes said the claimed steps for carrying out the reforming were only matters of common general knowledge. However Ball has not presented any evidence to show this is the case. The claimed steps are not merely one or two additional routine elements that may be common general knowledge. The claimed steps for carrying out the reforming involve relatively complex tooling arrangements working with the inner wall of the container. In the absence of appropriate evidence from Ball, I conclude these arrangements were not common general knowledge at the priority date of the present application.
The Leonardis (supra) and CCOM (supra) decisions clearly require a real and reasonably clear disclosure in the earlier document of the claimed subject matter. Some generality of expression in the earlier document is acceptable. That is, in the present case, the earlier document need not describe specific tooling means or reforming steps. However the document should at least broadly describe some apparatus or method for carrying out the reforming as claimed in the present application 653171 if the document is to be relied upon for earlier priority. On the other hand the earlier US application 600943 is totally silent on any carrying out of the reforming of the container. Consequently the claims of application 653171 are not entitled to priority from US application 600943. The earliest possible priority date is 20 September 1991, the date of filing of the second US application 799241.
This date is after the claimed priority date of 25 July 1991 of the ANCC application. It is therefore necessary to determine whether the ANCC application is entitled to this priority date and is thereby part of the prior art base.
Mr Hughes submitted the ANCC application has a complex priority structure. He noted ANCC's priority application, US 735994, dated 25 July 1991, is a continuation-in-part from an earlier US application which in turn is based on an earlier PCT application. Mr Hughes further submitted ANCC has not clearly established what was disclosed in any of the earlier applications at their filing dates and consequently has not established any claim to earlier priority.
The ANCC application contains the following opening statement.
"This is a continuation-in-part of U.S. Application Serial No. 07/735,994, filed on July 25, 1991, which is in turn a continuation-in part of U.S. Application Serial No.07/730,794, filed on July 24, 1991, which is in turn based upon and claims priority from International Application No. PCT/US90/00451, having an International filing date of January 26, 1990."
Sub-regulation 8.5(2) requires an application in respect of an invention to have been filed no more than twelve (12) months after the earliest application in respect to the invention if there is a claim to earlier priority. The filing date of the ANCC application of 27 July 1992 was a Monday. The application could legitimately claim priority from US application 735994 dated 25 July 1991 since the ANCC application was filed on the first business day after the expiry of the 12 months period for filing the application. However the ANCC application is outside the 12 months period in respect to both US application 730794 and international application PCT/US90/00451. Consequently the ANCC application would only be entitled to claim the priority date of 25 July 1991 from US application 735994 if the invention the subject of the ANCC application was not first disclosed in either of US application 730794 or PCT/US90/00451.
ANCC did not serve either of these two earlier documents during the normal stages for the parties to serve evidence.
Mr Nock submitted that statements in evidence by ANCC, that US application 735994 is the priority document for the ANCC application, prima facie establish the ANCC application's claim to the priority date of 25 July 1991. Mr Nock suggested it then becomes Ball's onus to establish that US application 735994 was not the first application in respect of the invention.
I cannot subscribe to this position. The onus is on the opponent to establish its case in opposition proceedings. It is necessary for ANCC to establish the material it relies upon is entitled to appropriate priority dates to bring that material ahead of the priority date of Ball's application.
The further evidence ANCC has adduced by way of Mr Stine's declaration appears to be an attempt by ANCC to clarify this issue. The exhibit PCT/US90/00451 describes a method and apparatus for processing containers to increase the strength thereof. The bulk of the document specifically relates to a method and apparatus for deforming the external side wall of the container to produce a plurality of circumferentially spaced, axially extending segments. On the other hand pages 30, 31 and 32, and figures 9 and 10, relate to reforming the inner wall at the bottom of the container to a more vertical profile while the dome centre portion is stretched to a small degree.
The evidence and submissions served by both parties subsequent to Mr Stine's declaration largely concern the presence or otherwise of disclosures in PCT/US90/00451 and the ANCC application of the reforming of the inner wall to a negative angle.
Mr Nock submitted that Mr Halasz's analysis clearly demonstrates that PCT/US90/00451 discloses that the inner wall is reformed to a more vertical profile but that no disclosure is made of the inner wall being reformed to form a negative angle. Mr Nock also noted Mr Halasz's declaration refers to the independent claims of the ANCC application as accepted and notes all those claims state the requirement to achieve a negative angle. Consequently ANCC's conclusion is that PCT/US90/00451 does not disclose the invention of the ANCC application and the latter can take the date of 25 July 1991 as its priority date.
Mr Hughes referred to Mr Boersma's declarations to state the disclosure in PCT/US90/00451 of the engaging surface of the reforming roller being outwardly tapered is sufficient as this causes the inner wall to be disposed at a negative angle. Mr Hughes also referred to figure 10 of this PCT application to assert the negative angle of the inner wall is illustrated through engagement of the outwardly tapered roller therewith.
On the other hand Mr Nock noted that Mr Halasz suggests Mr Boersma's analysis of the reforming process is a little simplistic. The configuration of the inner wall during reforming depends not only on the shape of the reforming roller but also the thickness and elasticity of the metal and the distance the roller displaces the inner wall. Mr Nock submitted there is no disclosure in PCT/US90/00451 of reforming specifically the inner wall to achieve a negative angle.
Regulation 3.12 is specific in determining priority dates of claims of a specification. That is, priority dates are determined from an assessment of what matter the claims of a specification are fairly based on (sub-regulation 3.12(1)(b)). The determination of the priority date of the ANCC application is to establish whether that application is part of the prior art base as defined in Schedule 1 of the Patents Act. Pertinent in the present case, the prior art base is defined, amongst other things, as information contained in a published specification filed in respect of a complete application where, if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration (part (b)(ii)(A) of the definition). This suggests it is the information that exists in a specification, and could notionally be made the subject of a claim, that is determinative rather than just the actual claim or claims of a specification. A similar approach was adopted in Technological Resources Pty Ltd v RGC Mineral Sands Ltd, [1999] APO 49.
Some of the argument from the parties at the hearing and in later submissions, as above, concerned the ANCC application as first published (WO93/01903). Indeed ANCC has only served in evidence the ANCC application as first published. In this form several of the claims define features of reforming in the broad terms of affecting the configuration or angle of the inner wall. PCT/US90/00451's disclosure of reforming the inner wall to a more vertical profile appears to be a real and reasonably clear disclosure of those claims of the ANCC application. On the other hand the thrust of the ANCC application as first published is a reforming process for achieving a negative angle. The passage at page 6 lines 26-29 and the paragraph bridging pages 6 and 7 are some examples. Furthermore the ANCC application as accepted under AU 667208 is directed throughout to a reforming process for achieving a negative angle.
Mr Hughes' submissions above also addressed this point. That is, that the achievement of a negative angle in the reforming process is disclosed in PCT/US90/00451 and occurs because of the disclosed outwardly tapered roller that engages the inner wall.
I cannot find any disclosure in PCT/US90/00451 to state or even imply, even in figure 10 as suggested by Mr Hughes, that the inner wall is configured exactly to the profile of the outwardly tapered roller that engages the wall. Mr Halasz notes the thickness and elasticity of the metal and the roller displacement also influence the configuration of the inner wall. Consequently the fact that the roller is outwardly tapered is not enough to support the position that the inner wall is therefore reformed to a negative angle by the roller.
The ANCC application as accepted concerns the achievement of a negative angle of the inner wall. However the relevant pages 30, 31 and 32, and figures 9 and 10 of application PCT/US90/00451 relate to reforming the inner wall at the bottom of the container merely to a more vertical profile. There is inadequate disclosure in that application of reforming the wall to a negative angle. Consequently application PCT/US90/00451 does not contain a real and reasonably clear disclosure of the invention of the ANCC application.
The second US application 730794, referred to under regulation 5.11, is largely consistent with PCT/US90/00451. In particular the text of the above-mentioned pages and figures 9 and 10 of PCT/US90/00451 are repeated in US application 730794. Consequently the latter application also does not contain a real and reasonably clear disclosure of reforming to achieve a negative angle the subject of the ANCC application.
Since PCT/US90/00451 and US application 730794 do not disclose the information of the ANCC application, both of the earlier documents can be disregarded. The negative angle the subject of the ANCC application was first disclosed in US application 735994. The ANCC application was filed within the 12 months of this US application as required by sub-regulation 8.5(2). Consequently the information in the ANCC application is entitled to claim priority from US application 735994. I determine the priority date of the ANCC application is 25 July 1991, the date of filing of US application 735994.
I have earlier determined the earliest possible priority date of Ball's application 653171 is 20 September 1991, the date of filing of Ball's second US application 799241. This means the ANCC application can challenge the present application 653171.
NOVELTY
The Meyers Taylor Pty Ltd v Vicarr Industries Ltd decision, (1977) 137 CLR 228, provides an appropriate test for novelty. The test is also known as the "reverse infringement test". Aickin J., at page 235, states:
"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."
The Rodi and Wienenberger AG v Henry Showell Ltd decision, (1969) RPC 367, states that infringement occurs where each and every one of the essential features of a claim is taken.
A practical application of the above decisions suggests a claim lacks novelty if a prior citation discloses all of the essential features of a claim.
The ANCC Application (PCT/US92/06198 (AU 667208))
At the hearing Mr Nock relied on Mr Halasz's analysis to assert the ANCC application discloses the invention claimed in the present application. Mr Nock particularly suggested all the method steps of claim 1 of the present application were disclosed in the ANCC application. Mr Nock further noted the interpretation from my earlier decision, [2000] APO 6, of the dome positioning portion being a substantially linear inner wall as a whole and being reformed into first, second and third segments means claim 1 of the application reads squarely onto the ANCC application.
Mr Nock similarly suggested all the features of the other independent claims of application 653171 were also disclosed in the ANCC application. He further relied on Mr Halasz's analysis of the appendant claims of application 653171 to state the features of those claims were also disclosed in the ANCC application or were inessential features or mere workshop variations.
Mr Hughes cited the Bristol-Myers Squibb Co v F H Faulding & Co Ltd decision, (2000) 46 IPR 553 at 574, to state that in the case of a paper anticipation the reverse infringement test from the Meyers (supra) decision cannot be applied literally. The hypothetical infringement arises not because of its publication but because someone hypothetically does, or makes, what it describes or suggests. Mr Hughes relied on a number of earlier decisions, notably the General Tire (supra) decision, to submit that an alleged anticipation must contain clear and unmistakable directions to do what the claimed invention does.
The ANCC application discloses a method and apparatus for reforming the bottom of a container. Referring to Figures 8 and 9 the container has an outer annular wall (26), a convex U-shaped supporting portion (28) at the bottom of the container, a centre domed portion (32) at the bottom, and an annular inner wall (34) joining the domed portion and the convex U-shaped portion. Beginning on page 13 a method and apparatus for carrying out the reforming of the container is described. The method comprises supporting the bottom peripheral portion and bringing a reforming means into engagement with the annular inner wall. The reforming means is brought to bear against the annular inner wall to reform that wall. Figure 10 illustrates the resultant reformed container. The reformed inner wall specifically has a segment extending upwardly and outwardly relative to the container axis. The description in the ANCC application discusses the reforming means as consisting of one reforming roller or three reforming rollers or four radially expandable segments. The roller(s) or segments may engage most of the inner wall or only a smaller part of the inner wall at any one time during reforming. Figures 12, 17 and 19 show contrasting illustrations of such engagement.
Claim 1 of application 653171, as amended by the amendments allowed on 12 January 2000, may differ from the above disclosure in the following respect. The claim defines the reforming of the inner wall into first, second and third segments where the first extends upwardly, the second being above the first extends upwardly and outwardly, and the third being above the second extends upwardly and inwardly relative to the container axis.
On the other hand Mr Halasz and Mr Murray have stated that such segments are disclosed in the ANCC application. The areas at the end regions of the reformed inner wall may be regarded as the first and third segments and the bulk of the inner wall as the second segment. My earlier decision, [2000] APO 6, in respect to application 653171, suggests a construction where the dome positioning portion between the domed centre panel and the convex portion at the bottom of the container may be regarded as a substantially linear inner wall. Referring to figure 10 of the ANCC application it may be the first segment could be regarded as that part of the inner wall at the bottom of the container. This segment certainly extends upwards from the bottom of the container. Similarly the requisite second segment is clearly disclosed in figure 10 as the negative angled segment of the inner wall. It may be argued the next feature above this second segment is a third segment extending upwardly and inwardly into the domed centre portion. However this segment in the ANCC application is not clearly evident as being part of the linear inner wall. It appears the next feature above the second segment is the domed centre portion. There are no clear and unmistakable directions, in line with the General Tire (supra) decision, of a third segment of the substantially linear inner wall that after reforming extends upwardly and inwardly relative to the container axis.
I conclude claim 1 is novel over the ANCC application. Claims 2 to 10 and 15 to 22 are appended to claim 1 and would consequently also be novel.
Claim 11 of application 653171, as amended by the amendments allowed on 12 January 2000, defines the reforming of the inner wall only into an upward and outward orientation relative to the container axis. Mr Boersma and Mr Hughes outlined several advantages and distinguishing features of a hooked or arcuate portion between the second, outwardly extending, and third, inwardly extending, segments of the present invention. However claim 11 is wholly silent of any such portion. The reforming of the inner wall only into an upward and outward orientation, as claimed in claim 11, is clearly disclosed in the ANCC application. Claim 11 of application 653171 also emphasises the thickness of the reforming surface of the roller such that the reforming surface is able to be engaged only with a part of the inner wall at any one time. At least figures 17 and 19 of the ANCC application disclose such an arrangement. The remaining features of claim 11 are also generally described in the ANCC application.
I conclude claim 11 is not novel over the ANCC application.
The features of the following appended claims to claim 11 of application 653171, namely claims 12 to 14 and 23 to 27, are either also disclosed in the ANCC application or are inessential adaptations over that disclosure that do not materially affect the way the invention works. I conclude these claims are also not novel over the ANCC application.
Claim 28 defines the reworking of the inner wall only into an upward and outward orientation relative to the container axis. As discussed for claim 11 this is clearly disclosed in the ANCC application. Claim 28 essentially differs from the ANCC application only in claiming specifically two reforming rollers, set 180 degrees apart, rather than the one, three or four similar items disclosed in the ANCC application. Mr Halasz suggests the use of two rollers is contemplated in the ANCC application. However there is no specific disclosure of such an arrangement. In any case Mr Halasz further states it is only a mere workshop variation to alter the three roller configuration disclosed in the ANCC application to a two roller configuration and to set those rollers 180 degrees apart.
The ANCC application discloses configurations to accommodate one or three rollers or four radially expandable segments. Where multiple elements are used as tooling means, that is the three and four set configurations, the elements are equidistant from each other. In this context I accept Mr Halasz's position in respect to the variation from a three roller arrangement to a two roller arrangement. Furthermore the present application 653171 does not specifically suggest the use of two rollers materially affects the way the invention works. I consider a variation to alter, for example, a three roller equidistant arrangement and provide a two roller equidistant arrangement where the rollers are set 180 degrees apart is one that does not materially affect the way the invention works.
I conclude claim 28 is not novel over the ANCC application.
Claims 29 to 32 are appended to claim 28. These claims define features that are either disclosed in the ANCC application or are inessential adaptations over that disclosure that do not materially affect the way the invention works. I conclude claims 29 to 32 would also not be novel over the ANCC application.
Claim 33 defines the reforming of the inner wall into an upward and outward orientation. As discussed for claim 11 this is clearly disclosed in the ANCC application. However claim 33 also defines increasing the radius of an arcuate portion between the inner wall and the domed centre panel. Neither the description nor a comparison of figures 9 and 10 (before and after reworking) of the ANCC application conclusively reveals whether the radius of such a portion is increased. Mr Hughes noted that Mr Murray concedes that after reforming there is a decrease in the radius between the inner wall and the centre panel. I find there are no clear and unmistakable directions (General Tire (supra)) in the ANCC application describing an increase in the radius of an arcuate portion as claimed in claim 33 of the present application.
I conclude claim 33 is novel over the ANCC application. Claims 34 to 42 are appended to claim 33 and would consequently also be novel.
Claim 43 defines the reforming of the inner wall in two places by two reforming rollers into only an upward and outward orientation relative to the container axis. This claim is similar to claim 28. For the reasons given for claim 28 I conclude claim 43 is also not novel over the ANCC application.
Claims 44 to 50 are appended to claim 43. The features defined in claims 44, 45 and 50 are either disclosed in the ANCC application or are inessential adaptations over that disclosure that do not materially affect the way the invention works. I conclude these three claims would also not be novel over the ANCC application. Claims 46 to 49 add the feature of an arcuate portion of increased radius after reforming between the inner wall and the domed centre panel, or the feature of the inner wall being formed into the three segments as defined for example in claim 1. I have earlier found these features confer novelty on earlier claims defining these features. I conclude claims 46 to 49 are novel over the ANCC application.
Claim 51 defines the reforming of the inner wall into at least first and second segments. The first extends upwardly and outwardly. The second is above the first and extends upwardly and inwardly. In this respect these first and second segments equate to the second and third segments, respectively, defined in some of the preceding claims. Earlier I found the third segment as defined in claim 1 confers novelty on that claim. The analysis is the same for the second segment of claim 51.
I conclude claim 51 is novel over the ANCC application.
Mr Nock submitted claims 52 to 54 are also disclosed by the ANCC application for the same reasons he gave in respect to the earlier claims. On the other hand Mr Hughes submitted patent law requires omnibus claims, of which claims 52 to 54 are examples, to be given a narrow construction.
Claims 52 to 54 are omnibus claims. They define a method or apparatus for reforming a container body, or increasing at least one strength characteristic of the body, substantially as described in the specification with respect to any one of the embodiments shown in the drawings. I am satisfied the essential element of the reforming of the inner wall into at least a segment extending upwardly and outwardly as modified by what is shown in the drawings of the specification sufficiently distinguishes these claims from the ANCC application.
I conclude claims 52 to 54 are novel over the ANCC application.
CLARITY AND FAIR BASIS OF CLAIMS
ANCC has challenged the clarity and the fair basis of the claims of the present application in its statement of grounds and particulars. Apart from Mr Nock's comments in respect to his declaration, sought to be adduced as further evidence, in respect to another Ball application, he did not pursue the issues of clarity or fair basis at the present hearing in respect to the present specification itself.
ANCC's statement of grounds and particulars suggests claim 11 is not clear because it appears to omit some text between lines 10 and 11 of the claim. I am unable to find anything out of the ordinary near this particular passage of the claim.
The statement also challenges the claims for not clearly delimiting the positions of the first, second and third segments. In the context of the claims as a whole, the meaning of first, second and third segments and their relative positions are readily apparent. The segments clearly relate to the inner wall at the base of the container and define three parts of the inner wall in ascending order from the bottom of the container. It is also clear that a precise definition of the segments' positioning and extents is somewhat artificial. The absence of such definition from the claims does not detract from the clarity or the fair basis of the claims.
I am satisfied there is nothing of substance for Ball to address under the grounds of clarity or fair basis of the claims.
I conclude the claims of the present application are clear and fairly based on the matter described in the specification.
CONCLUSION
I have previously admitted Mr Stines' and Mr Halasz's declarations on behalf of ANCC as further evidence. On the other hand I did not allow Mr Nock's declaration on behalf of ANCC.
I have also admitted Ball's evidence in response to ANCC's allowed evidence.
Subsequently, still further evidence from ANCC and Ball has also been allowed.
Furthermore I have invoked regulation 5.11 to refer to US application 730794 to assist me in correctly determining the priority date of the ANCC application.
I conclude Ball's application 653171 is not entitled to the claimed priority date of 22 October 1990 from US application 600943. The earliest possible priority date is 20 September 1991, the date of filing of the second US application 799241.
I conclude the ANCC application is entitled to the claimed priority date of 25 July 1991.
Since this date is before the earliest possible priority date of Ball's application 653171, the ANCC application can challenge Ball's application 653171.
I have concluded application 653171 contains several claims that are not novel over the ANCC application. These claims are claims 11-14, 23-32, 43-45 and 50.
On the other hand I have concluded all the claims of application 653171 are clear and fairly based on the matter described in the specification.
I allow the applicant sixty (60) days from the date of this decision to propose amendments to overcome the above findings. If amendments addressing these findings are not forthcoming within that time I will refuse the application.
COSTS
Both parties submitted that costs should follow the event. Both parties also noted the complexity of the issues and submitted it would be appropriate to segment costs in the case where I allowed some further evidence but not other further evidence, and where some substantive issues were allowed in one party's favour while others were not.
In respect to ANCC's initial request to serve further evidence the subject of the hearing, two items of evidence were allowed while one item was disallowed.
The processes concerning the subsequent serving of evidence in response and still further evidence between the parties generally ran smoothly.
In respect to the substantive issues in this opposition ANCC has been successful. Several claims of Ball's application have been found to lack novelty.
On the other hand the presentation of ANCC's case has been less than adequate. ANCC should have foreseen the importance of clearly establishing the priority date of ANCC's application in view of the overlap of its claimed priority date and filing date with those of Ball's application. In such circumstances I would have expected ANCC to serve in evidence all applications related to the ANCC application. ANCC served some of this material later as further evidence. However I still needed to invoke regulation 5.11 in respect to still further relevant material. Additionally ANCC only served the ANCC application as first published whereas the ANCC application as accepted was also pertinent in this case.
ANCC's shortcomings necessitated an unusual amount of correspondence after the hearing between the Patent Office and the parties particularly to ensure Ball was not disadvantaged. It was necessary to keep Ball informed of material I considered important in this opposition but not adequately presented by ANCC and to invite submissions from Ball in respect thereof.
Nonetheless the parties allowed the processes taking place after the hearing to flow relatively smoothly.
The outcome in this opposition has been influenced as much by material that ANCC did not initially serve in evidence as by material ANCC did serve.
In considering all of the above circumstances I think it is appropriate that I make no award of costs.
M.G. Kraefft
Delegate of the Commissioner of Patents
Attorneys for the applicant : Phillips Ormonde & Fitzpatrick, Melbourne
Attorneys for the opponent : Freehills Carter Smith Beadle, Sydney
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