Ball Corporation v American National Can Company Now Rexam Beverage Can Company

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 by AMERICAN NATIONAL CAN COMPANY, now REXAM BEVERAGE CAN COMPANY.

Decision: Issued .
Abstract

Final determination.
The opponent made submissions prior to final determination that attempted to re-open matters previously decided. The opponent also presented enhanced and enlarged drawings to give further detail and clarity to the drawings of the present and the cited applications. These submissions were not entertained.
In the substantive decision certain claims of the application were found to lack novelty.
The applicant has removed all but one of the offending claims. That one claim has been amended to additionally define a novelty-conferring feature related to the arcuate portion near the inner wall of the bottom of a container.
A direction was given that the application be sealed after 30 days from the date of this decision subject to any appeal.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent application 653171 by BALL CORPORATION, and opposition under section 59 by AMERICAN NATIONAL CAN COMPANY, now REXAM BEVERAGE CAN COMPANY.

BACKGROUND

On 10 January 2002 I issued a decision, [2002] APO 2, on the opposition to patent application 653171. I found that certain claims of the application lacked novelty in the light of application 667208 by American National Can Company ("the ANCC application"). The ANCC application was found to have an earlier priority date than the Ball application.
The applicant subsequently proposed amendments to overcome the finding of lack of novelty. Those amendments were found to comply with Section 102 and were allowed unopposed on 17 October 2002.
NATURE OF AMENDMENTS
The amendments essentially delete all but one of those claims I found to lack novelty, and appropriately re-number the remaining claims and their appendancies. Claim 29 generally corresponds with previous claim 43 found to be not novel. However claim 29 now has the additional definition that the arcuate portion, connecting the inner wall to the centre panel of a container, is of increased radius following reforming of the bottom of the container. In the previous decision I found there was nothing in the ANCC application clearly describing an increase in the radius of that portion.
SUBMISSIONS
The opponent maintains the remaining claims of the Ball application are not novel in the light of the ANCC application. Essentially the opponent suggests Figure 21 of the ANCC application was not considered in the previous decision yet discloses the claimed invention.
The opponent's submissions also include several drawings as appendices to its submissions. These drawings supposedly are enhanced and enlarged images of some of the drawings of both of the Ball and ANCC applications. The drawings appended with the submissions are aimed at supporting the opponent's position that the ANCC application, particularly at least Figure 21, anticipates the claimed invention.
The applicant suggests it is nonsensical for the opponent to assert that matters placed in evidence were not considered. The applicant further notes that the opponent's submissions are an attempt to re-argue matters determined in the previous decision and that the appropriate avenue for the opponent to dispute that decision was through an appeal against the decision.
DISCUSSION
Figure 21 is a photographic profile of a lower portion of a can reformed by the process of the ANCC invention. Several impressions about the number and orientation of segments of the inner wall at the lower portion of the container may be gleaned from Figure 21. The boundary between the inner wall and the dome centre panel appears far more fluid in Figure 21 compared with Figure 10 which, together with the associated description, predominantly formed the basis of the finding of lack of novelty against the Ball application. Because of the fluid nature of the boundary in Figure 21, it is debatable whether all the segments of the inner wall the opponent would like me to interpret from Figure 21 are even illustrated or described. Additionally the orientation of the segments in Figure 21 is dependent on the alignment of the container and the photo frame with the horizontal and vertical axes. This photo, as well as others in the ANCC application, does not appear to show any significant extent of the outer side wall of the can. Consequently an accurate vertical alignment of the photo appears impossible.
Whatever may be gleaned from Figure 21 and associated description however is insufficient. Clear and unmistakable directions are required to support a finding of lack of novelty (General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited, [1972] RPC 457).
In any case the above discussion, if entertained, would amount to re-opening matters that had already been determined in the previous decision. The commissioner has no power to do this. See the High Court decision R v Smith (Commissioner of Patents); Ex Parte Mole Engineering Pty Ltd (1981) 147 CLR 340. The applicant is correct in stating that the proper course for the opponent to have raised the above matters was by an appeal against the previous decision. See also the Federal Court decision Iluka Midwest Ltd v Technological Resources Pty Ltd [2002] FCA 1233.
The opponent's submissions include several drawings as appendices to its submissions. These drawings supposedly are enhanced and enlarged images of some of the drawings of both of the Ball and ANCC applications. Some of the enhancements include extra markings to highlight particular profiles of the containers.
Firstly, despite the opponent's assertions to the contrary, it may be argued that this is new evidence. Prima facie then, the opponent's presentation of this material after the issuing of the substantive decision amounts to a request to review the substantive decision. As mentioned above, I cannot review that decision.
Secondly the opponent states in its submissions, for example, that Appendix 1 "shows Figure 21 of the ANCC application in clearer detail". The opponent is effectively asking me to use the appendices to read more detail and clarity into the ANCC application than what is there. In making findings about novelty I can only work from what is disclosed as understood by a relevant person skilled in the art. There is nothing before me to state or even suggest that a person skilled in the art would have read the amount of detail and clarity into the ANCC application at its relevant date that the opponent has asked me to read into it. The presentation of these enhancements and enlargements at this stage necessarily means they post-date the priority date of the Ball application.
Thirdly the accuracy of the enhancements and enlargements compared with the original drawings of the Ball and ANCC applications is open to challenge. There is no evidence of any independent analysis to verify the accuracy. One example where the accuracy is clearly questionable is Appendix 2. The opponent's submissions state this drawing shows overlaid tracings of the profiles shown in the ANCC application's Figures 22 and 21, prior to and after reforming respectively, and shows the radius of the arcuate portion has increased following reforming. On the contrary, at page 18 of the previous decision, I observed that one of the opponent's own declarants conceded that after reforming there was a decrease in the radius of that portion.
In this case I find the opponent's presentation of these appendices to be irrelevant.
DECISION
I previously found that certain claims of the Ball application lacked novelty in the light of the ANCC application. The applicant has removed all but one of the offending claims. That one claim has been amended to additionally define a feature of the arcuate portion that I determined in the previous decision to be novel.
I direct the application be sealed after 30 days from the date of this decision. If the Commissioner has been served with a notice of appeal against this decision before that time, I direct that sealing not occur until the appeal has been decided or discontinued.
M. G. Kraefft
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Phillips Ormonde & Fitzpatrick, Melbourne
Patent attorneys for the opponent : Freehills Carter Smith Beadle, Sydney

[2003] APO 2

29 January 2003