Ball Corporation v American National Can Company

[2000] APO 43

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No.655205 in the name of Ball Corporation

Title  :          Beverage container with improved bottom strength

Action: Opposition under section 59 of the Patents Act 1990 by American National Can Company.

Decision:          Issued            .

AbstractFinal determination.  

The applicant has proposed suitable amendments to overcome the lack of clarity and fair basis found in the original decision.

Application to proceed to grant.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No.655205 by BALL CORPORATION and opposition by AMERICAN NATIONAL CAN COMPANY under section 59 of the Patents Act 1990.

BACKGROUND

I issued a decision on the opposition to Patent Application No. 655205 on 16 January 1998 [ Ball Corporation v. ANCC [1998] APO 2]. I found that the claims and description were not clear. I also found that certain claims lacked fair basis, because they did not specify that the panel positioning portion [which is between the annular supporting surface and the domed bottom of the can] had shock absorbing properties.

The applicant subsequently proposed amendments to attempt to overcome the above deficiencies. These amendments essentially clarify that between the annular supporting surface of the can and the domed bottom of the can there is a panel positioning portion which has an outwardly extending recess. These amendments were allowed unopposed on 10 March 2000.

Both parties sought to be heard on the  matter of final determination and to this end a hearing was held in Canberra 1 June 2000. The opponent was represented by Mr Gary Nock, (Patent Attorney, of Freehills Carter Smith and Beadle). The applicant was represented by Mr David Hughes (Patent Attorney of Phillips Ormonde  & Fitzpatrick, Melbourne).

The remaining issue to be determined was whether the invention as now described and claimed overcomes the deficiencies I raised in my earlier decision.

SPECIFICATION

The specification now has amended claims. The two independent claims are now 1 and 21. There is language in the description which corresponds to the new claims. The differences between these claims, and the corresponding claims at acceptance, is that the panel positioning portion between the annular base and the domed can bottom has now been defined in more detail. It either has an outwardly extending recess [claim 1], or a recess defined by way of distances and radii [claim 21].

DECISION

Both parties made oral submissions at the hearing. These highlighted the key issues which must be addressed by the hearing officer.

• Does the addition of the outwardly extending recess in the panel positioning portion in claim 1 now render that claim clear and fairly based?

• Does the description of this self same recess by way of distances and radii in claim 21 now render that claim clear and fairly based?.

These words are intended to define  the feature of the configuration of the panel positioning portion that I held was missing from the claims in the application as accepted. I indicated in my earlier decision that the purpose of the panel positioning portion appeared to me, to be to act as a shock absorber. It can only do that if it is either claimed as such or else its geometry is defined sufficiently clearly.

The difficulty faced by the applicant is really one of the old adage that a picture is worth a thousand words. There is clear disclosure of a novel can construction in the relevant drawing figures.

There is yet a further difficulty in that the panel positioning portion is further subdivided into 3 parts. At least one of these parts has to have the geometry to achieve the shock absorbing characteristics. In practice it is the geometry of the shape of the second and/or the third parts which does this. The amended claims appear to me to reflect this.

The opponent argued at the hearing that the language now used still did not impart sufficient clarity to determine the territory forbidden by the patent. In particular he argued that it was not possible to determine where the third part of the positioning panel ends and the center panel begins. He pointed out that the drawing figure 12 shows the third part quite clearly as item 88 and that the claims should reflect this.

The applicant's attorney argued that the claims did not have to be restricted to what was illustrated in the drawing. Indeed he submitted that to require the applicant to do this was to require them to unfairly restrict their monopoly. He submitted that the applicant had now amended the specification to overcome the objections of the delegate, and that the description was now clear and the claims were both clear and fairly based.

In my view the applicant has tried to overcome my earlier findings of lack of fair basis and lack of clarity by adding the features indicated above to the relevant independent claims. The wording is still long and complex, but I fail to see how it could be otherwise when trying to define a can construction which is difficult enough to draw let alone define with mere words.

The opponent's attorney argued that despite the best efforts of the applicant, the wording is still unclear. Whilst I agree that discerning the extent of the monopoly claimed is difficult, I do not however think that it is impossible.

In particular it seems to me that the annular base portion, the panel positioning portion and the domed center panel all run in to each other. Therefore any argument that you can't tell where one ends and the other begins, is not important. To me it is now clear that the panel positioning portion has, somewhere in it, an outwardly extending recess. This recess is clearly intended to act as a shock absorber. I do not think that it is necessary to put this quality explicitly in the claim, as I believe it is implicitly already there. Claim 21 defines this self same recess by way of geometry. This recess is quite clearly positioned somewhere between the annular rim and the domed center panel . Exactly in which part of the panel positioning portion it resides is not relevant.

Consequently I am of the view that all the claims are now sufficiently clear and fairly based to allow the application to proceed to sealing. For the same reason, I am also of the view that the description is now clear.

CONCLUSION

The amendments overcome the deficiencies raised in my earlier decision. I direct that the application proceed to sealing.

COSTS

I invited both parties to address me on the matter of costs. Both parties agreed that the costs should follow the event in the usual fashion. I therefore award costs against American National Can Company.

R.A. Melvin
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Phillips Ormonde a & Fitzpatrick

Patent attorneys for the opponent   :  Freehills Carter Smith and Beadle