Ball Corporation v American National Can Company

[2000] APO 6

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 by AMERICAN NATIONAL CAN COMPANY to allowance of an amendment of the patent specification under Section 104 of the Patents Act.

Decision:          Issued  .

Abstract:The specification, as a result of the amendments, was found to claim matter in substance disclosed in the specification as filed. 

The claims of the specification, as a result of the amendments, were found to be clear and to be fairly based on the matter described in the specification.

The proposed amendments comply with Section 102 of the Patents Act. The proposed amendments are allowable.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent application 653171 by BALL CORPORATION, and opposition by AMERICAN NATIONAL CAN COMPANY to allowance of an amendment of the patent specification under Section 104.

BACKGROUND

Ball Corporation filed patent application 653171 on 21 October 1991.  The application was advertised accepted on 22 September 1994.

American National Can Company ("ANCC") opposed the grant of a patent on the application on 22 December 1994.

On 22 March 1996 Ball Corporation filed a request under section 104 to amend the specification of application 653171. Following adverse comments from ANCC and adverse patent examination reports, Ball Corporation 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.  Subsequently ANCC filed a statement of grounds and particulars on 16 April 1998.

The parties completed the serving of evidence in respect to this opposition on 9 April 1999.

A hearing took place in Sydney on 19 October 1999.  Mr David Hughes, patent attorney of Phillips Ormonde and Fitzpatrick, represented Ball Corporation.  Mr Gary Nock, patent attorney of Carter Smith and Beadle, represented ANCC.

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. 

The specification further describes a tooling device for reforming the bottom of the container to achieve the above outline of the inner wall.

The proposed amendments to the specification seek to amend claims 1 and 11 and also the corresponding consistory statements in the description that reflect these claims.  Claims 1 and 11 are recited below.  The claims are largely recited in their form as accepted on 22 September 1994.  The proposed amendments of 22 March 1996 and 20 May 1997 are shown with additional text underlined and deleted text appearing in square parentheses.

1. A method for reforming 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 a] comprises an exteriorly convexly shaped annular support including an annular supporting surface, said bottom further comprising 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, [and] said inner wall being substantially linear and disposed above said annular support, said container body further comprising an open end distal from said bottom, which said method includes:
   (a) positioning a tooling element within an exterior space defined by said center panel and said inner wall of said bottom recess portion of said container body;
   (b) providing relative transverse movement between said tooling element and said container body to engage at least part of said inner wall with said tooling element;
   (c) moving said tooling element relative to said container body about said inner wall; and
   (d) reforming said inner wall into first, second, and third segments using said providing relative transverse movement to engage and moving steps, said first segment extending upwardly [and inwardly] relative to said supporting surface [and said container axis, respectively], said second segment being above said first segment and extending upwardly and outwardly relative to at least a portion of said first segment and said axis container, respectively, and said third segment being above said second segment and extending upwardly and inwardly relative to at least a portion of said second segment and said container axis, respectively."

1. Apparatus for reforming 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 a] comprises an exteriorly convexly shaped annular support including an annular supporting surface, said bottom further comprising an outer connecting portion that interconnects said sidewall and said supporting surface, a bottom recess portion including a center panel and an inner wall that disposes said center panel above said supporting surface, [and] said inner wall being substantially linear and disposed above said annular support, said container body further comprising an open end that is disposed distal from said bottom recess portion, [wherein] including:
   a tooling device having a body and having a tooling element that is operatively attached to said body, said tooling element comprising at least one reforming roller, each said reforming roller being substantially disk-shaped, having a reforming surface which is engageable with said inner wall, said reforming surface having a thickness which is substantially less than [a height of an upper end of said inner wall] the distance in the direction of the container axis between an upper end and a lower end of the inner wall such that at any one time, said reforming surface is engageable with only a part of said inner wall between its upper and lower ends;
   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 reworking at least part of said inner wall into a predetermined position of having an upwardly and outwardly orientation relative to said supporting surface and said container 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 tooling element about said inner wall."

APPLICABLE LAW

Section 102 of the Patents Act governs the allowability of an amendment.

“102. (1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.

(2) An amendment of a complete specification is not allowable after the specification has been accepted if, as a result of the amendment,

(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2) or (3).

(3) This section does not apply to an amendment for the purpose of correcting a clerical error or obvious mistake made in, or in relation to, a complete specification.”

Subsection 40(2) requires that a complete specification describes the invention fully, including the best method known to the applicant of performing the invention, and end with a claim or claims defining the invention.  Subsection 40(3) requires the claim or claims to be clear and succinct and fairly based on the matter described in the specification.

STATEMENT OF GROUNDS AND PARTICULARS

This statement indicates that ANCC oppose the allowance of the amendments on two grounds.  The first is that, as a result of the amendments, the specification would claim matter not in substance disclosed in the specification as filed.  The second is that, as a result of the amendments, the specification would not comply with subsections 40(2) or (3).  The statement also sets out several particulars in respect to each ground.

EVIDENCE

ANCC's evidence in support consists of a statutory declaration by Mr Andy Halasz.  The body of this evidence is substantially equivalent to the particulars set out in the statement of grounds and particulars.

Ball Corporation's evidence in answer consists of a statutory declaration by Mr Tom Aart Boersma.

ANCC's evidence in reply consists of a second declaration by Mr Halasz and a declaration by Mr Neil Arthur Murray.

The evidence demonstrates there are essentially four items in dispute between the parties in respect to the allowability of the amendments to claims 1 and 11. 

The first item is that amended claim 1 now defines the inner wall as being substantially linear and that this wall is reformed into the first, second and third segments.  ANCC suggest the specification states it is the bottom recess portion or at least the dome positioning portion as a whole that is reformed into the three segments and not just some linear component.  The issue between the parties is one of scope of the term, "substantially linear inner wall" and whether there is support in the specification as filed for reforming that wall into the three segments.

The second item relates to the amendment of claim 1 to omit the reference to the first segment extending inwardly relative to the container axis.  The issue is whether there is support and fair basis for this omission in the specification.

The third item is the clarity and fair basis, in claims 1 and 11, of the statement of the inner wall, which is now defined as substantially linear, disposing the center panel above the supporting surface.  ANCC assert it is not clear how the inner wall on its own can do this.  ANCC note the specification states that the dome positioning portion, as a whole, disposes the center panel above the supporting surface.

The fourth item is whether there is support and fair basis in the specification for amended claim 11 to define the reforming surface of the reforming roller as being engageable with only a part of the inner wall between its upper and lower ends.  ANCC further suggest this definition is contradictory with the later definition in claim 11 of first means for reworking at least part of the inner wall.

I will discuss the statements made in evidence in more detail, together with the submissions of the parties, where appropriate in my decision.

DECISION

Both parties sought to apply the Federal Court decision in RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd, 42 IPR 353.

Mr Nock said the RGC (supra) decision quoted the Ethyl Corporation's Patent decision, (1972) 89 RPC 169, with apparent approval to say the requirement of matter being fairly based is virtually the same as the requirement that the amendment must be in substance disclosed in the specification as filed. Mr Nock further relied on the RGC case to say what is consequently required is a real and reasonably clear disclosure in the original specification of the matter sought to be introduced by the amendment.  He submitted the proposed amendments to the present specification introduce inconsistencies and obscurities compared with the specification as filed.  Mr Nock said the amended specification would consequently lack fair basis over the specification as filed.

Mr Hughes cited the RGC (supra) case to contend that the test for the amendment to be in substance disclosed involves a two-part enquiry.  The first part is an identification of what matter results from the amendment.  The second part is a comparison of the amended claims with the specification as filed having regard only to the matter resulting from the amendment.

Mr Hughes submitted the test is not as restrictive as that for fair basis.  In this respect he further cited the AMP Incorporated v Hellerman Ltd case, (1962) 79 RPC 55 at 68, 69, to say it did not matter if a feature in question is an optional feature. It is sufficient that the feature is in substance disclosed in the original specification. Mr Hughes asserted each feature resulting from the proposed amendments is clearly disclosed in the specification as filed and is consequently allowable.

While the Federal Court in the RGC (supra) case applied the fair basis test of "real and reasonably clear disclosure" (Leonardis v Sartas No 1 Pty Ltd, 35 IPR 23 at 40, and CCOM Pty Ltd v Jiejing Pty Ltd, 28 IPR 481 at 501), the court left open the question of whether the test for "in substance disclosed" is the same as the test for fair basis. The RGC (supra) decision essentially states one needs to firstly identify the difference between the specification immediately prior to amendment and the specification as it would read if amended in the manner sought.  Then one reads the specification as a whole as amended to see whether, as a result of the amendment sought, the specification would claim matter not in substance disclosed in the specification as originally filed.  I will adopt this approach in considering the proposed amendments to the present specification.

In respect to the first item in dispute between the parties, Mr Nock suggested the altered definition of the inner wall, in amended claim 1, to being substantially linear, now restricts that wall to only the wall segment 42 as shown for example in Figure 4 of the specification.  Mr Nock then noted this change makes part (d) of the claim define this wall segment as being reformed into first, second and third segments.  On the other hand Mr Nock said the specification as filed makes it clear it is not just the substantially linear wall segment 42 that is reformed into these three segments.  The whole dome positioning portion 70, encompassing a lower inner convex annular portion 22, a middle inner wall segment 42, and upper inner concave annular portion 44, is reformed into these segments (Figures 4, 9 and 10).  Consequently Mr Nock submitted claim 1 and similarly claim 11 define matter not in substance disclosed in the specification as filed. 

Mr Hughes submitted the proposed amendment seeks to include the exterior convex shaped annular support in the container prior to reforming, and to define the inner wall as substantially linear as well as disposed above the annular support.  He said the proposed amendment clarifies the interpretation of the inner wall and is in substance disclosed in the specification as filed. 

On the one hand, the specification contains some inconsistencies of description of the invention.  For instance page 20, lines 15 and 16, refers to reforming of the dome positioning portion 70.  Page 29, lines 16-19, refers to reforming of the inner wall 42.  It may be argued such inconsistency of description could have a detrimental effect in determining whether claimed matter is in substance disclosed in the original specification. 

On the other hand, the specification needs to be construed as a whole.  The description of equivalent items or processes may not be identical.  However as long as the reader can broadly apply consistent meaning to what is described, there is usually no issue in determining what matter is in substance disclosed in the specification as filed.  Furthermore the present invention relates to reforming of a container body.  In such circumstances it is not surprising that equivalent processes of reforming the container body may be described differently for similar elements of the container body. 

Parts of the description refer to segment 42 (Figure 4) as the inner wall.  In cross-section this segment is linear.  On the other hand, prior to reforming of the container body, the dome positioning portion 70, of which the wall segment 42 is the middle part, is also substantially linear as a whole (Figure 9).  The end portions 22 and 44 of the dome positioning portion are curved along some of their extent.  However this does not detract from the dome positioning portion being a substantially linear inner wall as a whole.  Consequently the reforming of a substantially linear inner wall into the first, second and third segments, as proposed to be claimed, is in substance disclosed in the specification as filed.  Claims 1 and 11 are also clear on this point.

In respect to the second item, Mr Nock submitted the amendment to claim 1 to omit the definition of the first segment extending inwardly meant this segment is now so poorly defined that it is impossible to deduce the location of the first segment.  He particularly noted the definition left open the orientation of the first segment so the segment could be inward or outward as well as upward.  If the segment was outward Mr Nock said the distinction between the first and second segments would be unclear.  He further noted Ball Corporation's Mr Boersma had difficulty with the description in determining where the division is drawn between the first and second segments.  Mr Nock submitted the omission of the inward extension is neither in substance disclosed in the specification as filed nor does the omission retain the clarity of the claim. 

Mr Hughes submitted that ANCC are seeking to introduce obscurities into the specification that do not exist.  He suggested ANCC are saying that the first segment is indistinguishable from the second segment, and so the first segment does not exist.  Mr Hughes said this approach is against the general rules of construction recited in Decor Corporation Pty Ltd v Dart Industries Inc, 13 IPR 385 at 400. He particularly noted that if a claim be clear, it is not to be made obscure because obscurities can be found in particular sentences in other parts of the document. Mr Hughes said the claim is clearly stated. The inner wall is reformed to include a first segment that extends upwardly and a second segment that extends upwardly and outwardly.

I accept Mr Hughes' approach and the principles mentioned in the Decor (supra) decision.  If an expression has a clear plain meaning then one should not make it unclear by introducing obscurities from the description.  In the presently proposed amendment the first segment is clearly defined as extending upwardly.  While the description may suggest additional inward or outward extension in this region, such an extension of the first segment is not defined in the presently proposed claim.  Furthermore the claim defines extension of the second segment in two directions compared with just one direction for the first segment.  In this context the plain interpretation to be given to the claim is the first segment extends only upwards. 

The support in the description, for the earlier definition of the first segment extending upwards and inwardly, occurs in reference to the base region of the container near the inner convex annular portion 22 (Figure 11).  With the presently proposed amendment the first segment appears to be more closely aligned with vertically extending region 84 (Figure 11) above the inner convex annular portion 22.  While this amendment involves a slight redefinition of the location of the first segment, the amendment does not offend against the requirement for substantial disclosure in the specification as filed.  Furthermore this segment is quite distinct from the higher second segment which extends upwardly and outwardly from the first segment.  Consequently this proposed amendment also retains clarity and fair basis in the claim. 

The third item concerns the issue of whether there is adequate definition, in proposed claims 1 and 11, of what disposes the center panel above the supporting surface.  Mr Nock referred to Mr Boersma's declaration to say the applicant states that other structures, additional to the inner wall, are not excluded from disposing the center panel above the supporting surface.  Mr Nock submitted that, if that is the case, the claims, as proposed to be amended, are not clear and do not fully define the invention because the other structures have not been defined.  Essentially Mr Nock argued that definitions in claims are exclusive.  If a claim only states the substantially linear inner wall disposes the center panel above the supporting surface then only that wall should provide that support.  Mr Nock asserted the center panel is not disposed above the supporting surface solely by the substantially linear inner wall.  Consequently he submitted the proposed claims 1 and 11 are not clear and not fairly based.

Mr Hughes argued the definition is not exclusive.  He asserted the application of the plain meaning to the claims would not suggest exclusiveness.  Mr Hughes also said the claims should be read as a whole.  He noted that if the inner wall exclusively disposes the center panel, then this interpretation would be inconsistent with the dependent claims.  He cited claim 19 which defines an arcuate portion between the inner wall and the center panel.  Consequently Mr Hughes submitted claims 1 and 11 should not be read as defining disposition of the center panel exclusively by the inner wall.

This issue is similar to the first item.  I will again refer to Figure 9.  This figure illustrates the base of the container body prior to reforming.  While the ends of the dome positioning portion 70 are curved, the portion nonetheless as a whole is a substantially linear wall.  Consequently there is adequate fair basis in the description for the proposed definition of a substantially linear inner wall disposing the center panel above the supporting surface. 

Even if the linear wall is interpreted as being only the wall segment 42 (Figure 4) of the dome positioning portion, the claims would be fairly based.  The claims need not define every feature that disposes the center panel above the supporting surface.  As long as the essential features are broadly defined, the claims are fairly based.  The linear wall segment is the major dominant feature that disposes the center panel.  The proposed claims include at least this feature in their scope.  I am satisfied the definition of a substantially linear inner wall disposing the center panel above the supporting surface is fairly based and clear.

In respect to the fourth item, and amendment to claim 11, Mr Nock said there is no disclosure in the specification as filed of the reforming surface of the reforming roller being engageable with only a part of the inner wall at any time.  Mr Nock also referred to Mr Murray's declaration to say the specification lacks the necessary tooling details and drawing precision to verify any estimates of the relative thickness of the reforming surface with respect to the inner wall.  He also challenged the clarity of the definition in respect to how much a part of the inner wall is engaged. 

On the latter point Mr Hughes said it is well established that the use of a relative term, such as a part, is allowable especially where a functional statement qualifies the term.  He said such a statement is provided in the present case.

The points raised by Mr Nock under the fourth item have little merit.  The lack of detail concerning the relative thickness of the reforming surface is irrelevant.  There is adequate support in the specification for the reforming roller being engageable with only a part of the inner wall at any one time.  While the description does not specifically mention this point, Figures 14 to 16, and especially Figure 16, clearly show engagement with only part of the inner wall at any one time.  The alleged contradiction by ANCC of this definition with the later definition in claim 11 of reforming at least part of the inner wall is also not at all apparent. 

Furthermore it is well established that proportions of a part need not be defined with exact limits in a field where one can readily ascertain the meaning of the term when read with reference to what was in use in that field (British Thomson-Houston Company Ltd v Corona Lamp Works Ltd, (1922) 39 RPC 49). Similarly the proportions need not be exactly laid down in a field where these may vary and yet success may be ensured (No Fume Ltd v Frank Pitchford & Co Ltd, (1935) 52 RPC 231).

There is adequate support and clarity in respect to the fourth item.

CONCLUSION

On all points raised by ANCC, I have found the proposed amendments satisfy the requirements of Section 102 of the Patents Act. I am also satisfied there are no other points that may render the proposed amendments non-compliant with Section 102. Consequently the proposed amendments are allowable.

COSTS

Both parties submitted that costs should follow the event.  I see no reason to depart from this practice.  ANCC have been unsuccessful on all grounds in their opposition to the allowance of the amendments.  I award costs against ANCC.

M.G. Kraefft

Delegate of the Commissioner of Patents

Attorneys for the applicant  :  Phillips Ormonde & Fitzpatrick, Melbourne

Attorneys for the opponent   :  Carter Smith & Beadle, Sydney