Ball Corporation v American National Can Company

[1998] APO 2

official notice

decision of a delegate of the commissioner of patents

Application  :          No.655205 in the name of

Title  :          Beverage container with improved bottom strength

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

Decision:          Issued            .

Abstract

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

Patent Application No. 655205 was filed in Australia on 21 October 1991 and advertised accepted on 8 December 1994.

American National Can Company filed a notice of opposition on 8 March 1995 and served the Statement of Grounds and Particulars on 8 June 1995. The normal evidentiary cycle was completed on 12 March 1997.

The hearing was heard in Melbourne on 3 and 4 December 1997. The opponent was represented by Mr Glenn Mc Gowan of counsel and Mr Gary Nock (Patent Attorney of Carter Smith and Beadle). The applicant was represented by Mr Malcolm Royal (Patent Attorney of Phillips Ormonde and Fitzpatrick, Melbourne) and Mr David Hughes (Patent Attorney of Phillips Ormonde and Fitzpatrick, Sydney)

SPECIFICATION

The specification as accepted, relates to a beverage container having improved bottom strength.

The specification states that in the beverage packaging art the problem is how to make the container as thin as possible without sacrificing strength. This problem has been addressed in the past by making the bottom wall into a spherical dome formation forming a recess in the container bottom. The specification points out that even very small savings in the amount of metal used result in large financial savings due to the large volume of beverage containers manufactured.

All this has to be achieved whilst maintaining standard outer dimensions to fit existing filling and packaging machines.

The issue of internal pressure from the beverage causing the dome portion to reverse, if the container walls are too thin, is discussed. The specification then describes the prior art containers.

The specification describes in some detail how the present invention relates to a bottom contour for a container that provides increased resistance to dome reversal pressure; greater resistance to damage when dropped; and minimises or prevents growth in the height of the container when the beverage contained in it is subjected to pasteurising temperatures. Typically the containers are two piece, with a cylindrical seamless sidewall and a bottom formed integrally, and a top portion.

The specification then goes on to state the advantages and features of the present invention. It describes the exact configuration of the bottom dome portion that allows less metal to be used without sacrificing all the required properties of a standard beverage container. In particular it refers to the bottom of the can being reworked after initial forming to produce this configuration. This reworking can result in the geometry being altered all round the periphery of the container or just over certain parts to produce a ribbed effect.

As the specification uses words to describe the configuration of the container it is important to have a clear interpretation of the terms used. In this decision I shall interpret the term “upward” to mean in a direction up from the base of the container towards the top of the container. I shall interpret the term “outward” to mean in a direction out from the center of the container to the external wall of the container. I shall interpret the term ‘inward” to mean in a direction in from the outer wall to the center of the container.

The specification then ends with 48 claims of which claims 1, 6, 10, 38 and 48 are independent.

The independent claims are:

Claim 1: A container with improved strength, said container having an internal containment space and being capable of receiving a beverage therein, which includes:
           an outer wall disposed around a vertical axis
           a bottom attached to said outer wall and including an exteriorly convexly-shaped annular support including an annular supporting surface, wherein a radially innermost part of said annular support defines a first diameter, said bottom further including a panel positioning portion and a generally concave centre panel that is disposed above said supporting surface by said panel positioning portion, wherein said center panel has an upwardly extending outer portion;
           said panel positioning portion including:
           a first part disposed inwardly and upwardly relative to said supporting surface; and
 a second part, positioned above said first part, including an upper portion disposed outwardly and upwardly relative to an upper portion of said first part, and connected to said outer portion of said centre panel, wherein said outer wall, said annular support, said first part  and said second part substantially define a portion of said internal containment space.

Claim 6: A container with an internal containment space, with increased resistance strength, and being capable of receiving beverage therein, which includes an outer wall that is disposed around a vertical axis, a bottom that is attached to said outer wall and including an exteriorly convexly-shaped annular support including an annular supporting surface and annular inner and outer convex portions, said inner convex portion being defined by a first radius and said inner convex portion defining a first diameter, said bottom further including a generally concave center panel and a panel positioning portion between said supporting surface and said center panel, said center panel having an upwardly extending outer portion, the improvement which includes:
           said panel positioning portion includes a first part which is disposed above said annular support and which extends upwardly relative to said annular support in an orientation which is different than an orientation of said inner convex portion defined by said first radius;
and
           said panel positioning portion further including a second part that is disposed between said first part and said center panel, said second part including a first portion which extends upwardly and outwardly relative to an upper portion of said first part and said axis, respectively, said first part and said first portion of said second part having different orientations relative to said axis;
           wherein said outer wall, said annular support, said first part and said second part substantially define a portion of said containment space.

Claim 10: A container with improved strength, said container having an internal containment space and being capable of receiving a beverage therein, which includes:
           an outer wall disposed around a vertical axis
           a bottom attached to said outer wall and including an exteriorly convexly-shaped annular support including an annular supporting surface, wherein a radially innermost part of said annular support defines a first diameter, said bottom further including a panel positioning portion and a generally concave centre panel that is disposed above said supporting surface by said panel positioning portion, wherein said center panel has an upwardly extending outer portion;
           said panel positioning portion including:
           a first part, contiguous with said supporting surface, that slopes upwardly relative to supporting surface;
           a second part, interconnected with and above said first part, that slopes outwardly and upwardly relative to an upper portion of said first part and of said axis respectively; and
           a third part, interconnected with and above said second part and interconnected with said outer portion of said center panel, that slopes inwardly and upwardly relative to an upper portion of said second part and axis respectively;
           wherein said outer wall, said annular support, said first part , said second part and said third part define a portion of said internal containment space.

Claim 38: A drawn and ironed container capable of receiving a beverage therein, including:
           a substantially cylindrical sidewall disposed about a vertical axis: and
           a bottom  attached to said sidewall and including:
           an exteriorly convexly-shaped annular support including an annular supporting surface, wherein a reference plane substantially contains said annular supporting surface and wherein a radially innermost annular  part of said annular support defines a first diameter;
           a generally center panel; and
           a panel positioning portion positioned between said annular supporting surface and said center panel and including first and second parts, said first part extending upwardly relative to said supporting surface, said second part being positioned above said first part and extending upwardly and outwardly relative to an upper portion of said first part and said vertical axis, respectively, wherein a radially outermost part of said panel positioning portion is an upper portion of said second part and wherein a vertical distance of a radially outermost part of said centre panel relative to said reference plane is significantly greater than a vertical distance of said upper portion of said second part relative to said reference plane.

Claim 48: A container with improved strength, substantially as herein described with respect to any one of the embodiments illustrated in the accompanying drawings.

EVIDENCE

The evidence in support consists of statutory declarations by:

• Andy Halasz, who states that he is Manager of machine design with American National Can Company [The opponent]. He points out that he has worked in the field of designing and manufacturing thin walled containers for over 30 years. He is a resident of the USA. I shall refer to this as the first Halasz declaration. There are 8 exhibits to this declaration including a number of important patent documents in particular:

Exhibit B.  Australian Patent Application 655205 [the Ball complete]

Exhibit D. US Patent Application 600493 [the Ball basic]

Exhibit E. WO 83/02577 [the Claydon Patent]

Exhibit G. WO 93/01903 [the ANC Application]

Exhibit H. US Patent Application 735994 [the ANC basic]

• Neil Arthur Murray, who states that he was employed by Gasden Pty Ltd [an Australian can maker] from 1973 to 1993. He is now an independent consultant specialising in can manufacture. There are no exhibits to this declaration, Mr Murray merely refers to the exhibits in the Halasz declaration. I shall refer to this as the first Murray declaration.

The evidence in answer consists of a statutory declaration by:

• Tom Art Bosema, who states that he has been employed by Containers Packaging [an Australian can maker] for 18 years. During all that time he has been involved in the making of two piece cans. Having worked his way up from the production line he is now a Manufacturing Engineer. He states that he is well able to attest to the state of the common general knowledge in Australia. There are 6 exhibits to this declaration including two of the particularised documents filed as exhibits with the Halasz declaration.

The evidence in reply consists of further statutory declarations by:

• Andy Halasz, which I shall call the second Halasz declaration. There are 2 exhibits to this declaration.

• Neil Arthur Murray which I shall call the second Murray declaration. There is one exhibit to this declaration which is the second Halasz declaration plus exhibits in its entirety.

SUBMISSIONS

Both parties made oral submissions at the hearing. These highlighted the key issues which must be addressed by the hearing officer. I shall refer to them here, in the order in which I intend to deal with them rather than the order in which they were argued. The key issues are:

• does the Ball complete comply with section 40;

• is the  Ball complete fairly based on the Ball basic and therefore entitled to the earlier priority date of 22 October 1990 (thus excluding the ANC application and the ANC basic from being prior art for any purpose);

• if the Ball complete is not entitled to its earlier priority are any of its claims anticipated by the ANC Application or the ANC basic by way of the “whole of contents approach”;

• does the Claydon patent anticipate the Ball complete;

• is the Ball complete obvious in the light of the Claydon Patent and/or any common general knowledge;

• if the Ball complete is not fully anticipated by the Claydon Patent or the ANC Application, what novel features remain for a valid patent;

SECTION 40

The Ball complete specification as a whole is long and contains 5 independent claims. In order to define what the applicant describes as a sufficiently broad monopoly it is couched in very indistinct language. The claims are also in similarly indistinct language. I shall endeavour to determine whether this language is so indistinct as to contravene section 40.

The specification at page 1A relates the field of the invention, namely beverage containers having a bottom contour of a particular shape. This shape can be broadly described as being domed upwardly with an annular wall at its periphery. This dome has to resist the internal pressure of the beverage in the container. The industry recognises a pressure at which the internal beverage pressure reverses the curvature of the domed bottom. It is called the dome reversal pressure.

By various reworking operations to the container bottom, after initial forming, this dome and the annular wall can be modified in their geometry to enable the container to be made of less metal whilst still maintaining strength and container dimensions. Thus optimising the dome geometry to optimise the dome reversal pressure is an object of the invention and is clearly stated at page 4 lines 15 to 18 of the specification.

There is a consistory clause at page 7 lines 1 to 26 which has the same wording as claim 1.

The submissions at the hearing from both parties were agreed that the invention resided in a container with a bottom having a base portion which has three distinct parts

• an annular wall portion having an outer surface, a base or supporting surface, and an inner  surface tapered initially upwardly and inwardly and then turning upwardly and outwardly [sometimes referred to as the inner surface having a reverse angle with the vertical];

• a generally concave centre panel, the so called dome portion;

• a third portion connecting the upwardly and outwardly facing part of the annular wall and the dome portion.

The opponent argued at the hearing that the three broad areas outlined above were not accurately specified as to where one began and the other ended. Their barrister agreed that although the inventive idea was not, in his view, disclosed in the specification, this was allowable so long as the embodiments were clearly defined. He believed that they were not so defined and the specification failed on the grounds of sufficiency and clarity. In particular he submitted that some of the claims omitted the third portion [namely claims 1 and 6] and were thus not fairly based. He also alleged that the Ball Basic was silent on the third portion. Therefore even those claims of the Ball application that did claim the third portion were not fairly based. I was referred to the Mond Nickel rules in Mond Nickel Company Ltd.’s Application(1956)RPC189 at 194. He submitted that the drawings of Ball Basic do not provide “the real and reasonably clear disclosure” required and referred me to Societe des Usines Chemiques Rhone-Poulenc v. Commissioner of Patents (1958) 100 CLR at 11.

The applicant's attorney on the other hand was of the view that the exact delineation of the portions was of little consequence, only their relative placement to each other. He argued that they were in effect claimed by result. So long as they performed their stated functions their exact physical placement was not an issue. I was referred to No-Fume Ltd  v Frank Pitchford and Co Ltd (1935) 52 RPC 231 where features were claimed by result and Mr Royal argued that was indeed the case here. As to the fair basis of the claims having the third portion, Mr Royal argued that the omnibus claim, coupled with the drawings, in particular figure 12, present in both Ball and Ball basic clearly disclose the third portion. He relied on Leonardis v. Sartas No.1 Pty Ltd (1996) 35 IPR 23.

The connecting portion, or so called third portion is said to have a shock absorbing effect if the container is either subjected to high internal pressure or dropped. This third portion appears to me to be the key to the invention. It is particularly easy to see in Figure 12 of both of the Ball specifications where it is shown as item 88 of the drawing.

I agree with the applicant’s submissions on this point and I am of the view that claims which include the third portion namely 10, 38 and 48 are fairly based on both Ball and Ball basic. I consider the drawing figures do constitute a clear disclosure. However the description and claims use vague and indefinite language. In my view they do not accurately describe or claim the features said to be essential at the hearing. I am of the clear opinion that the third, shock absorbing, portion is an essential feature of the invention..

Claims 1 and 6 claim a panel positioning portion. However it is clear that this is not the third portion connecting the top of the annular wall portion with the dome portion. The panel positioning portion appears to include part of the annular wall portion. It appears to indicate that this is connected directly to the dome portion. In this case, in so far as the feature of the third portion connecting the annular wall portion with the dome portion is not claimed in claims 1 and 6, I find that these claims are not fairly based.

The opponent also drew my attention to claims 13, 17, 19, 43 and 45 all of which refer to some vague and undefined orientation of said “first part”. Whilst I concur to some degree with Mr Royal with respect to claiming by result as in No Fume (supra), I do not believe the language of the claims is sufficiently clear for a potential infringer to be able to determine how the scope of these claims differs from the ones to which they are appended, or indeed from each other. To claim by result there must be some result or advantage specified in the claim or claims. If for example, the third portion was described as being between the annular wall portion and the dome portion and being sufficiently resilient as to afford shock absorbing properties when the container was dropped, then I might agree that the applicant was claiming by result. No such restriction appears in any of these claims. I therefore find that these claims are not clear.

Due to the indeterminate language of the description and claims as a whole I do not believe a skilled addressee would be able to determine the territory forbidden by the Ball application. I thus find that the specification as a whole does not comply with section 40 in that it does not clearly state which features of the invention are essential.

PRIORITY DATE OF BALL

The opponent argued at the hearing that the present application (Ball) was not entitled to its earliest priority date of 22 October 1990. It was argued that the present application was only entitled to the priority date of 14 October 1994 (the date of lodgement of the second statement of proposed amendments) and was thus able to be anticipated by  the opponent’s own Australian Patent Application 33200/93 (the ANC application). This is the National phase of PCT/US92/06198. It was published on 4 February 1993, and has an earliest priority date of 25 July 1991.

The key issue is whether the Ball basic discloses all the features of Ball. As discussed above I am of the view that the drawings in Ball basic show the third portion plainly. The other features of the invention are all disclosed in Ball basic. Thus Ball is fairly based on Ball basic and is consequently entitled to the priority date of 22 October 1990.

NOVELTY

The opponent argued that the Ball application was not novel in the light of each of two earlier documents:

(a) The ANC application.

In view of my findings in relation to the priority date of the Ball application, the ANC application need concern me no further. Whatever it does or does not disclose, it has a priority date after that of Ball and cannot therefore be prior art in any sense.

(a) The Claydon Patent

In respect of the Claydon Patent I was invited to look particularly carefully at figure 10 and the text of the document at page 19 line 10. There a negative angle is shown in the inner wall of the annular wall portion. Mr Mc Gowan pointed to this as proof positive that the Claydon Patent clearly anticipates Ball in all its aspects. It was of no consequence that the reverse angle was present for another purpose, it was nonetheless a disclosure. In fact he argued that the Claydon specification at page 19 line 23 indicates that the negative angle is present in a finished container. He also pointed out that claim 10 of Claydon was to a finished can, having a reverse angle (which admittedly can be either positive or negative) on its inner wall, rather than an intermediate stage in making a container with a vertical inner wall.

Mr Mc Gowan also submitted that the Claydon patent not only disclosed the reverse angle, and the domed bottom but it also disclosed, albeit indirectly, the so called transition or third portion. Thus he argued that although perhaps the Ball invention had not been intended by the Claydon Patent it was nonetheless disclosed. I was reminded that just as a patent can be infringed accidentally it can also be anticipated accidentally and referred to Ingliss v Mayson (1985)3 IPR 588 at 599.

Mr Royal on the other hand pointed out that the only disclosure in Claydon of the negative angle showed the can bottom being reworked on a mandrel. The whole Claydon Patent teaches that the can is made of a material that experiences so called springback. This means that in order to get the inner wall in figure 10 to be vertical in the finished container, it is necessary to rework it with a negative angle so that when the mandrel is withdrawn, with the assistance of a knock pad specially added for the purpose, the wall  springs back to the vertical. My attention was drawn to a number of places in the Claydon Patent  (eg page 3 lines 14 to 16, page 5 lines 1 to 2) where the teaching is of the best method to produce a vertical wall [emphasis added]. At lines 18 to 25 on page 5 the teaching is for there to be a tolerance from the vertical of plus or minus 5 degrees (the same figure exemplified in Ball) to allow enough springback so that the mandrel can be removed.

Mr Royal also argued that the opponent had not provided any evidence of the publication date of the Claydon Patent so it could not be considered as any kind of anticipation.

I will deal with this last point first. I agree that the opponent provided nothing by way of statutory declaration regarding the publication date of Claydon. However I think it is well known within the patenting community that the publication date shown on the front page of a PCT pamphlet, which is how the Claydon Patent was published, may be taken as the publication date. In the case of the Claydon Patent this date was 4 August 1983. This is well before the priority date of the Ball Application and I am therefore of the view that the Claydon Patent is able to be considered for anticipation.

Although Mr Mc Gowan had argued that the Claydon Patent discloses the invention I cannot wholly agree with him. I would concede the Claydon document discloses the domed bottom. I cannot see where the so called third or transition portion is disclosed, that is not in the same sense as in the Ball Patent. The Claydon Patent uses the term “transitional portion” to describe the entire bottom wall of the can between the outer wall and the start of the domed bottom. This is not, in my view, the same as the transition portion in the Ball Patent which is a shock absorbing section between the inner bottom wall having the negative angle and the domed container bottom.. Thus Clayden does not disclose one of the integers said to be essential in Ball.

In my view Claydon  does not teach the retaining of the reverse angle. This is merely a part finished container prior to removal from the mandrel. Although claim 11 of Claydon envisages the possibility of the reverse angle being retained, in the words “the annular wall extends at an angle  to the longitudinal axis within the range plus 5 degrees to minus 5 degrees” the whole thrust of the document is to keeping this wall vertical after removal from the reforming mandrel.

In assessing the teaching of the prior art, the examiner has to consider what the skilled addressee is being taught. In other words the examiner has to ask what the skilled addressee would have done on reading the Clayden citation:

“if carrying out the directions contained in the prior inventor’s publication will inevitably result in something being made or done which, if the patentee’s patent were valid, would constitute an infringement of the patentee’s claim.” This circumstance demonstrates that the patentee's claim has been anticipated.

See General Tire & Rubber Co v Firestone Tyres & Rubber Co Ltd, (1972) RPC 457 at 485

I am however of the view that  the correct interpretation of this case is found in the passage at page 486 that puts the contrary opinion.

“to anticipate the patentees claim, the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented...A signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee.”

I am therefore convinced that although Claydon provides some clear signposts along the way it does not contain the clear and unmistakable directions required  to carry out the invention claimed by the Ball Patent. If the teaching of Claydon was followed the result would be a container with a domed bottom, no transitional or third portion and the vague possibility of a reverse angle on the inner wall. This is not what Ball claims. Thus I find that the claims of the Ball Patent are novel in the light of the earlier Claydon Patent.

INVENTIVE STEP

The opponent’s argument on lack of inventive step was very brief. I was referred to their written submission at paragraph 5. This document refers me initially to the first Murray Declaration where he asserts without any evidence that a skilled person [he does not say whether in Australia or not] would have recognised the improvements made by Ball over the prior art contained in Claydon to have been a mere workshop variation.

The next reference is to the first Halasz declaration at pages 12 and 13 which tells of these workshop variations in some detail and how they would have been known to a skilled addressee. As a resident of the USA he is not able to state what would have been known in Australia. I therefore am not able to have much regard to his assertions which are in any case unsupported.

The test for lack of inventive step via the route of  a “workshop improvement” in Winner & Anor v Ammar Holdings Pty Ltd, (1993) AIPC 90-971 at page 39, 236 was stated by Davies J as follows

“Another approach..., and one which is  referred to in Blanco White on Patents 4th ed at para 4-212, is to ask whether the improvement represents a mere workshop adjustment or a workshop alteration.”

Lockhart J  discussed workshop improvements in  Werner RD & Co v Bailey Aluminium Products Pty Ltd, (1989) 85 ALR 679 at page 698:

“‘Workshop Improvement’ is a convenient expression to encompass a mechanical improvement to an invention disclosed in a prior specification which involves no inventive quality or ingenuity.”

I have no clear indication of the state of the common general knowledge in Australia at the priority date of the claims. Since the Claydon Patent does not have a transitional or third portion at all and teaches away from a reverse angle on the inner wall in the finished container I am at a loss to see how  a skilled addressee would try a so called non inventive workshop variation that resulted in a different type of container bottom.

I cannot accept that a container with a domed bottom, a transitional portion to absorb shock and a reverse angle in an inner annular wall  can be considered a non inventive mechanical improvement on  a container having a domed bottom and a vertical annular wall. In reality I am just asked to believe unsupported assertions that each difference between Ball and Claydon is a workshop variation.

In the circumstances I do not believe that the test for the claim being a mere workshop improvement has been satisfied and so I find that Ball does not lack an inventive step over the earlier Claydon Patent.

CONCLUSION

The opposition to the grant of a patent for application No. 655205 is successful because I have found that the specification does not comply with the requirements of section 40: Claims 1 and 6 are not fairly based. Claims 13,17,19,43 and 45 are not clear. The specification as a whole is not clear.

However, in my view, there is patentable subject matter in the specification. I therefore allow Ball Corporation 60 days from the date of this decision to propose amendments to overcome the objections to the specification.

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. However Mr Mc Gowan argued that although the opponent was entitled to their costs for both a barrister and a patent attorney if they were successful in the opposition, the applicant was only entitled to the cost of one patent attorney should they be successful. Mr Royal on the other hand argued that if the case required two advocates then if the opponent was entitled to the cost of a barrister and a patent attorney, then the applicant must be entitled to the cost of two patent attorneys if it was successful.

I do not need to address this submission since the opponent was successful in their opposition. The opposition was successful on the ground of non compliance with section 40. I therefore award costs against the applicant

Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Phillips Ormonde and Fitzpatrick

Patent attorneys for the opponent   :  Carter Smith and Beadle