BCG (Australia) Pty & CSR Building Products Limited v James Hardie Technology Limited

[2016] APO 31

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

BCG (Australia) Pty & CSR Building Products Limited v James Hardie Technology Limited [2016] APO 31

Patent Applications:               2006241323 & 2010246457

Title:Fiber cement building materials with low density additives

Patent Applicant:                   James Hardie Technology Limited

Opponent:  BCG (Australia) Pty & CSR Building Products Limited

Delegate:  Rhys Munzel

Decision Date:  30 May 2016

Hearing Date:  15 December 2015

Catchwords:  PATENTS – novelty – invention found to be novel in view of prior art documents – lack of inventive step under s 7(2) established – evidence establishes that the PSA would have been led by the common general knowledge to try cenospheres in the reasonable expectation they would lower the density of FRC products while minimising moisture expansion effects – lack of inventive step under s 7(3) not established – insufficient evidence that the prior art documents would have been ascertained – fair basis – claims found to be fairly based – clarity – claims found to be clear – sufficiency – claims found to be sufficiently enabled – best method – insufficient evidence that the applicant kept to itself a best method of performance – manner of manufacture – invention disclosed on the face of the specification – amendment of Statements of Grounds and Particulars allowed – amendments relate to particulars of s 40(2) – costs – costs follow the event.  

Representation:  Patent Applicant:  Michael Zammit, Paul Harrison, Maree Anast of Shelston IP             

Opponents:Andrew Fox of counsel, Malcolm Jones of Griffith Hack

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                2006241323 & 2010246457

Title:Fiber cement building materials with low density additives

Patent Applicant:                   James Hardie Technology Limited

Date of Decision:                   30 May 2016

DECISION

BCG (Australia) Pty and CSR Building Products Limited have established that claims 1-8, 12-24, 26-29, 31-40 and 42 of 2006241323 and claims 1-18, 21-24 and 26-30 of 2010246457 lack an inventive step. I award costs according to Schedule 8 against James Hardie Technology Limited.

I give James Hardie Technology Limited Inc two months to propose amendments overcoming the successful grounds.

REASONS FOR DECISION

Background

1. This decision relates to an opposition to grant of patent under s 59 of the Patents Act.[1] BCG (Australia) Pty & CSR Building Products Limited (“the Opponents”) have opposed grant of two applications applied for by James Hardie Technology Limited (“the Applicant”): 2006241323 and 2010246457 (“the applications”). 2010246457 is a divisional application of 2006241323, which is itself a divisional application of 2001250832. 2001250832 is the national phase entry of PCT publication WO 2001/068547, which has a filing date of 9 March 2001 while claiming an earliest priority date of 14 March 2000.

   [1] 1990 (Cth) (“the Act”).

2. The Applicant filed requests for examination for both applications prior to 15 April 2013. This means that substantive amendments to the Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act[2] do not apply to this opposition.

   [2] 2012 (Cth) (“the Raising the Bar Act”).

   Evidence for 2006241323

3. A large amount of evidence, in the form of declarations and annexed exhibits, was filed for each application. For 2006241323 this included declarations as follows:

   Opponents’ evidence in support:

   • by Dr Stephen Akers sworn 27 February 2012 (“Akers 1”);
   • by Mr Tommy Book sworn 23 February 2012 (“Book 1”);
   • by Professor Charles Christopher Sorrell sworn 28 February 2012 (“Sorrell 1”);
   • by Anthony Paul Mizzi sworn 28 February 2012 (“Mizzi”);
   • by Ngaire Ann Pettit-Young sworn 20 February 2012 (“Pettit-Young 1”); and sworn 28 February 2012 (“Pettit-Young 2”);
   • by Aiji Yamamoto sworn 21 February 2012 (“Yamamoto”); and

   ·by Tracey Murray sworn 20 February 2012 (“Murray”).

   Applicant’s evidence in answer

   • by  Mr James Gleeson sworn 24 January 2013 (“Gleeson 1”);
   • by Robert Coutts sworn 23 March 2013 (“Coutts 1”);
   • by Professor Surendra P. Shah sworn 18 April 2013 (“Shah 1”);
   • by Mr John Cottier sworn 26 November 2012 (“Cottier 1”);
   • by Ms Maree Anast sworn 26 November 2012 (“Anast”); and
   • by Mr David Melmeth sworn 26 November 2012 (“Melmeth 1”).

4. On 26 April 2013 the Applicant filed a request to amend the 2006241323 specification. The Opponents opposed the allowability of the amendments which led to a decision dated 5 August 2014[3], in which the delegate allowed the amendments. This in turn led to a round of further evidence incorporating declarations as follows:

   [3] BGC(Australia) Pty Ltd and CSR Building Products Limited v James Hardie Technology Limited [2014] APO 55.

   Opponents’ further evidence

   • by Dr Stephen Akers sworn 7 November 2014 (“Akers 2”);
   • by Mr Tommy Book sworn 28 November 2014 (“Book 2”); and
   • by Professor Charles Christopher Sorrell sworn 1 December 2014 (“Sorrell 2”).

   Applicant’s evidence in response to the Opponents’ further evidence

   • by Mr James Gleeson sworn 1 April 2015 (“Gleeson 2”);
   • by Professor Surendra P. Shah sworn 27 February 2015 (“Shah 2”);
   • by Mr John Cottier sworn 26 February 2015 (“Cottier 2”); and
   • by Mr David Melmeth sworn 27 February 2012 (“Melmeth 2”).

5. On 10 April 2015 the Opponents made a second request to file further evidence. This led to a second round of further evidence incorporating declarations as follows:

   Opponents’ further evidence

   • by Dr Stephen Akers sworn 21 May 2015 (“Akers 3”);
   • by Professor Charles Christopher Sorrell sworn 4 June 2015 (“Sorrell 3”); and
   • By Dr Ling Men Wong sworn 22 May 2015 (“Wong 1”).

   Applicant’s evidence in response to the Opponents’ further evidence

   ·by Mr James Gleeson sworn 28 July 2015 (“Gleeson 3”).

   Evidence for 2010246457

6. Some of the above declarations were also filed in relation to 2010246457 separately or as annexed exhibits (see footnotes). Those declarations retain the designation I provided above. The declarations provided for 2010246457 are:

   Opponents’ evidence in support

   • by Dr Stephen Akers sworn 7 November 2014 (“Akers 4”) [4];

   [4] Akers 1was included as an annexed exhibit in Akers 4.

   • by Mr Tommy Book sworn 26 November 2014 (“Book 3”) [5]; and

   [5] Book 1 was included as an annexed exhibit in Book.

   • by Professor Charles Christopher Sorrell sworn 26 November 2014 (“Sorrell 4”) [6].

   Applicant’s evidence in answer

   • by Mr James Gleeson sworn 25 February 2015 (“Gleeson 4”) [7].

   Opponents evidence in reply

   ·by Dr Stephen Akers sworn 21 May 2015 (“Akers 5”);

   ·Ling Wong sworn 22 May 2015 (“Wong 2”)[8]; as well as Sorrell 3.

   [6] Sorrell 1was included as an annexed exhibit in Sorrell 4.

   [7] Gleeson 1, Coutts 1, Shah 1, Cottier 1, Anast, and Melmeth 1 were included as an annexed exhibit to Gleeson 4.

   [8] Wong 1 was included as an annexed exhibit in Wong 2.

7. The bulk of the substantive evidence for the Opponents was provided by Mr Book, Dr Akers, and Professor Sorrell. The bulk of the substantive evidence for the Applicant was provided by Mr Gleeson, Professor Shah, and Mr Cottier.

   Hearing

8. The oppositions to both applications were heard together. The hearing occurred on 15 December 2015. Andrew Fox of counsel, Malcolm Jones of Griffith Hack, Ken Diggs and Roger Brynjulfsen appeared on behalf of the Opponents. Michael Zammit, Paul Harrison, and Maree Anast of Shelston IP appeared on behalf of the Applicant. 

   Onus

9. In proceedings such as these before the Commissioner the onus rests with the Opponents to clearly establish their case. In establishing that any ground of opposition succeeds, the Commissioner should be “clearly satisfied that the patent, if granted, would not be valid”.[9]

   [9] F. Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283, [67]

   Grounds of opposition

10. For both applications the “grounds” of opposition are: clarity, fair basis, sufficiency, and failure to disclose the best method; manner of manufacture; novelty; and inventive step. The Applicant noted that the particular of “failure to disclose the best method” was not originally raised in the Statement of Grounds and Particulars for either opposition. The Applicant submitted that the later addition of this new particular should not be permitted. I will address this matter below, as well as what technically constitutes a “ground” or a “particular” under the Act.

    Nature of the invention described

11. The specifications for each application are largely identical with the exception of the consistory statements and claims. For brevity, when referring to disclosures of the specifications I will generally make pinpoint references to 2006241323 only. Where relevant differences are identified I will of course also refer to the 2010246457 specification.

12. Before construing the specifications, I note what Middleton J said in Eli Lilly and Company Limited v Apotex Pty Ltd:[10]

    “It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense.  The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent.  From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”

    [10] [2013] FCA 214, 100 IPR 451, [139].

    Field of the invention and the background art

13. The field of the invention is identified as relating to:

    “building materials and methods for making the same, and more particularly to the addition of low density additives (LDA) into cementitious cellulose fiber-reinforced building materials.”[11]

    [11] 2006241323, page 1a lines 8-11.

14. The description of the related art thereafter begins by noting that fibre-reinforced cement (“FRC”) products such as water-resistant building sheets have been used since 1895, and that suitable reinforcing fibres have recently included asbestos, cellulose, metal, glass and other natural and synthetic fibres.[12] The density of FRC building sheets is typically about 1.2-1.7g/cm³, in which variation in density may be achieved by varying: the amount of fibre used and the compression and dewatering of fibre cement slurries used in manufacture.[13] At these densities the cement-based matrix has few voids, which results in lower water absorption.[14]

    [12] Ibid, page 1a lines 13-16.

    [13] Ibid, page 1a lines 16-19.

    [14] Ibid, page 1a lines 19-21.

15. The specifications identify a number of issues with existing FRC building products:

    • such products are heavier than timber products, which typically have a density of 0.7-0.9 g/cm³ for hardwoods and 0.38-0.6 g/cm³ for softwoods; and

    ·such products are also more difficult to cut, machine and nail than timber products.[15]

    [15] Ibid, page 1a lines 22-27.

16. The specifications set out:

    “Thus, a density-modified fiber cement material with density similar to timber may be expected to improve workability and enable lighter, more nailable, easier to cut and easier to machine products to be manufactured. However, this would have to be achieved while retaining the durability, fire resistant, rot proof and water resistant properties of fiber cement if the density modified fiber cement is to be used in the same range of applications.”[16]

    [16] Ibid, page 1a lines 28-32.

17. The specifications refer to how the prior art describes use of low density additives (“LDAs”) in cement or FRC materials.[17] “Typical” LDAs include: calcium silicate hydrates; expanded polystyrene beads; expanded vermiculite; expanded perlite; expanded shale and expanded clay.[18] These materials are described as achieving light-weight by introducing porosity into the FRC product. Such introduced porosity is identified as affecting wet to dry dimensional stability and freeze thaw resistance because pore spaces may be filled with water when the material is wet.[19] The specification then identifies:

    “a need for a lightweight FRC building material and method for manufacturing the same with improved wet to dry dimensional stability over that of typical density modified products. Secondly, the lightweight building material should maintain similar wet to dry dimensional stability as that of FRC products without  density modifiers if the density modified material is to be used in the same range of applications. In addition, it is highly preferred in some applications that the material also have a low saturated mass, good freeze-thaw resistance, and high temperature dimensional stability. Finally, it is also desirable to have a FRC building product where lower ranges of densities closer to that of timber and timber based products can be achieved with improved durability.”[20]

    [17] Ibid, page 1a lines 22-27.

    [18] Ibid, page 1a lines 35-39.

    [19] Ibid, page 1b lines 1-3.

    [20] Ibid, page 1b line 4 to page 2 line 6.

    The consistory statements

18. The specifications each provide consistory statements consistent with the claims. For 2006241323 the three most relevant consistory statements are:

    “a building material, comprising:

    a cellulose fiber-reinforced cement formulation; and

    a low density additive incorporated into the formulation, wherein the low density additive includes ceramic microspheres, wherein the low density additive lowers the density of the building material to between 0.9 to 1.2 g/cm³ while at the same time the low density additive maintains moisture expansion of the building material at a level of between about 0.15% and 0.2%.”[21]

    “a building material formulation used to form a building product, comprising:
    a hydraulic binder; an aggregate;
    cellulose fibers; and
    a low density additive, wherein the low density additive includes ceramic microspheres, the building product when formed having a density between 0.9 to 1.2 g/cm³ while at the same time the low density additive maintains moisture expansion in the building product at a level between 0.15% and 0.2%.”[22]

    “a method of forming a low density building material, comprising:
    mixing hydraulic binder, reinforcing cellulose fibers, aggregate, a low density additive and water to create a slurry, wherein the low density additive includes ceramic microspheres;
    

    [21] Ibid, page 2 lines 13-20.

    [22] Ibid, page 2 lines 21-29.

    [23] Ibid, page 2 line 30 to page 2a line 5.

    processing the slurry into a green shaped article; and curing the green shaped article to form the low density building material, the building material when formed having a density of between 0.9 to 1.2 g/cm3 while at the same time the building material with the low density additive maintains moisture expansion at a level between 0.15% and 0.2%.”[23]

19. The above consistory statements form independent claims 1, 14 and 31 of 2006241323. 2010246457 includes two broader consistory statements that respectively correspond to independent claims 1 and 22:

    “a building material formulation used to form a building product, comprising:
    a hydraulic binder;
    ground silica;
    cellulose fibers, wherein the cellulose fibers comprise greater than about 4% of the formulation by weight; and hollow ceramic microspheres, wherein the hollow ceramic microspheres are incorporated into the formulation in a quantity sufficient to lower the density of the building material to about 1.2 g/cm³ or less, and wherein the hollow ceramic microspheres maintain the moisture expansion of the building material at a level of between about 0.13%-0.2%.”[24]

    [24] Ibid, page 2 lines 12-21.

    and:

    “a method of forming a low density building material, comprising:
    mixing a fiber cement formulation comprising hydraulic binder, ground silica, cellulose fibers, hollow ceramic microspheres with water to create a slurry;
    processing the slurry into a green shaped article; and curing the green shaped article to form the low density building material, the building
    material having a density of about 1.2 g/cm³ or less, wherein the hollow ceramic microspheres maintain the moisture expansion of the material at a level of between about 0.13%-0.2%, and

    wherein the cellulose fibers comprise greater than about 4% by weight of the total weight of the fiber cement formulation.”

20. Features that are most relevant to this opposition are:

    • the use of hollow ceramic microspheres in a cellulose-fibre reinforced cement building material. I note that the consistory statements refer to ceramic microspheres and hollow ceramic microspheres, I treat the two as synonymous;
    • the use of ground silica (in relation to 2010246457);
    • the density of the resulting building material; and
    • the moisture expansion of the resulting building material. 

    I will return to more specific construction issues when discussing the claims.

    Detailed description

21. Embodiments of the invention are disclosed which alternatively incorporate use of a volcanic ash as an LDA instead of or in addition to ceramic microspheres. In view of what is claimed (as I identified above) I will concentrate on the disclosed use of ceramic microspheres. When compared against volcanic ash, hollow ceramic microspheres are described as providing:

    “even better moisture resistance coupled with other durability advantages, including freeze-thaw resistance and thermal stability.”[25]

    [25] Ibid, page 9 lines 9-15.

22. A description of microspheres, which I discuss further when construing the claims, provides:

    “Microspheres can be natural, synthetic or a by-product. The material can be crystalline but is more typically amorphous or glass. One preferred type of microspheres are (sic) hollow ceramic microspheres commonly known as cenospheres. Cenospheres are a coal ash by-product that is typically separated from fly ash by a floatation process where the spheres float to the surface of water from clarifiers, ponds or lakes.”[26]

    [26] Ibid, page 9 lines 15-21.

23. The microspheres are described as useful in a variety of building products all having different proportions of hydraulic binder, aggregate, microspheres, and additives to obtain optimal properties for a particular application. One disclosed composition for use in FRC products includes: “about 5%-80% Portland cement, about 0%-80% silica, about 4.1%-15% cellulose, about 0%-10% additives and about 2%-90% microspheres.”[27]A composition having more specifically defined components includes: 28.7% Portland cement; 50.3% silica; 7% cellulose; 4% metal hydroxide; and 10% microspheres.[28]

    [27] Ibid, page 10 lines 1-3.

    [28] Ibid, page 10 lines 4-8.

24. Beginning at page 10 the specifications describe the results of testing performed by the applicant. Pages 10-12 set out test results for FRC formulations A and B set out in the table below. As can be seen, the two formulations differ in replacing some silica content with ceramic microspheres.

Formula	Portland cement	silica	cellulose	metal hydroxide	Microspheres
B	28.7	60.3	7.0	4.0	0
A	28.7	50.3	7.0	4.0	10.0

1. How the trial products were formed from the formulations is apparently described at page 7 lines 6-13 of the specifications:

   “Prototype boards are produced by mixing the desired formulation with a Hobart Mixer to form a homogenous slurry. The slurry is then compressed between two steel dewatering plates at 3500 psi for one minute with a Wabash Press (model. # PC-75-4TM) to form a monolithic sheet. The slurry is supported with steel wire mesh screens (30 to 10 40 US mesh) placed underneath and on top of the slurry mix within the steel frame mold. The monolithic sheet is then pre-cured for a minimum of about 12 hours and autoclaved at an elevated temperature and pressure in a steam saturated environment at 150°C for about 12 hours.” 

2. The density, nail penetration, and moisture expansion properties of FRCs generated from the two formulas were tested, with results as follows:

Test	Formula A	Formula B
Density (g/cm3)	1.16	1.39
Nail penetration (mm)	47.0	31.7
Moisture expansion (%)	0.15±0.02	0.16±0.02

1. In relation to these results, the specifications note:

   “Overall, testing of prototypes and products produced from trials has revealed about a 15% decrease in density for every 10% addition of microspheres and significant improvements in nailing. Thus, the addition of microspheres may advantageously be used to reduce the density of FRC building material by more than about 15%, even more preferably more than about 30%.”[29]

   and:

   “cured fiber cement formulations with conventional density modifiers have increased moisture expansion and increased moisture absorption on a percentage weight basis. One advantage of preferred embodiments over prior art is that the addition of microspheres to reduce density does not increase moisture expansion from wet to dry.”[30]

   [29] Ibid, page 11 lines 12-17.

   [30] Ibid, page 11 lines 19-22.

1. Testing of further compositions is demonstrated on pages 12-16 which compares compositions comprising microspheres with compositions comprising low density calcium silicate hydrate (“CSH”) or expanded perlite. The formulations are set out in Table 8 as reproduced below:

Formula	Portland cement	Silica	Cellulose	Metal Hydroxide	Microspheres	Calcium Silicate Hydrate	Expanded Perlite
B	28.7	60.3	7.0	4.0	0.0	0.0	0.0
C	35.2	52.8	8.0	4.0	0.0	0.0	0.0
D	26.8	40.2	8.0	0.0	25.0	0.0	0.0
E	26.8	40.2	8.0	0.0	0.0	0.0	25.0
F	55.3	55.3	7.0	4.0	0.0	5.0	0.0

1. Results provided in Tables 9 and 10 suggest that use of CSH or expanded perlite will have a negative effect on moisture expansion while “the addition of microspheres to the fiber cement formulation has the effect of maintaining or reducing moisture expansion of the final product.”[31]

   [31] Ibid, page 13 lines 12-15.

2. Tables 11 and 12 relate to a comparison of the thermal shrinkage properties of several formulations. Table 11 sets out the tested formulations:

Formula	Portland cement	Silica	Cellulose	Metal Hydroxide	Microspheres	Calcium Silicate Hydrate
A	28.7	50.3	7.0	4.0	10.0	0.0
B	28.7	60.3	7.0	4.0	0.0	0.0
F	28.7	55.3	7.0	4.0	0.0	5.0
G	28.7	50.3	7.0	4.0	0.0	10.0
H	28.7	40.3	7.0	4.0	20.0	0.0

1. Table 12 provides thermal shrinkage test results for the above formulations. As explained at page 14,[32]  “improved thermal stability allows building components in building fires to maintain a shield to fire without cracking, falling apart and allowing fire to spread quickly.”

   [32] Lines 10-12.

Formulation description	Density (g/cm3)	Thermal Shrinkage (%)
Control (no LDA) (B)	1.41	3.07
5.0% CSH (F)	1.21	7.27
10.0% CSH (G)	1.15	8.09
10.0% microspheres (A)	1.15	4.41
20.0% microspheres (H)	1.01	4.21

The specifications note that: “at lower levels (e.g., about 10-20%), microspheres minimise the high temperature thermal shrinkage that occurs when typical inorganic density modifiers are introduced in fiber-cement formulations.”[33]

[33] Ibid, page 15 lines 5 and 6.

1. Pages 16-19 discuss testing of FRC products incorporating both microspheres and other LDAs such as volcanic ash. Such a composition may comprise: 5-80% Portland cement; 0-80% silica; 4.1-15% cellulose; 0-10% additives; and about 2-60% microspheres and other LDAs.[34] The specifications note there are several advantages to such an approach[35]:

   • lower densities can be achieved with less total weight percent addition of LDAs and microspheres than microspheres on their own;
   • mixtures could more economically achieve lower densities (than microspheres on their own); and

   ·using mixtures can minimise adverse moisture adsorption effects found when using other LDAs on their own.

   [34] Ibid, page 16 lines 25-31.

   [35] Ibid, page 17 lines 10-20.

2. The body of each specification concludes by noting the identified advantages of the invention, namely that FRC materials incorporating microspheres will have a lower density with improved wet-dry dimensional stability, freeze-thaw resistance and fire resistance properties.[36] The FRC materials are preferably used for: building panels (interior and exterior), tile backer board (walls and floors), siding, soffit, trim, roofing, fencing and decking.[37]

   [36] Ibid, page 19 lines 17-30.

   [37] Ibid, page 19 lines 3-8.

   Construing the claims

3. The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd:[38]

   "Words in a claim should be read through the eyes of the skilled addressee in the context in which they appear. Words used in a specification are to be given the meaning which the person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification … while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole … it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification … terms in the claim which are unclear may be defined or clarified by reference to the body of the specification".

   [38] [2009] FCAFC,70, 81; (2009) IPR 228, [118]-[120].

4. I previously set out the consistory statements that form the independent claims of the applications. Instead of reproducing those claims I will discuss relevant construction matters.

   Cellulose fibre-reinforced cement building material

5. In submissions the Applicant contended:

   “The term cellulose fibre-reinforced cement material defines a cementitious matrix which is reinforced with cellulose fibres. The cellulose fibre is spread throughout the matrix to provide a reinforcing effect.”[39]

   I am satisfied this is an appropriate construction of the above term.

   [39] Ibid, Applicants written summary of submissions, [49].

6. James Gleeson relevantly declared that:

   A formulation with approximately 5% by weight of cellulose fibre is still relatively brittle and does not produce a product that satisfies relevant handling requirements… However when the amount of cellulose is increased to 7 to 8 % the fibres begin to form an interconnected network, which that the resulting product ceases to brittle (sic) and is much tougher.[40]

   Mr Book likewise declared that a cellulose content of less than 7% would likely be too brittle.[41] I am satisfied that, purposively speaking, the FRC product must be reinforced in a practical sense. That is, I expect that some form of interconnected network of fibres is required to reduce the brittleness of the cement product to some extent. In this way a cellulose reinforced FRC product may be distinguished from a product in which a low amount of cellulose is used as cement processing additive but in which the amount is too low to form an interconnected network and/or reduce the brittleness of the cement product.[42]

   [40] Gleeson 1, [17].

   [41] Book1, [121].

   [42] Shah 2, [16].

7. I do however note the teaching of the specification that: “In one embodiment, about 4.1%-15% cellulose fibers are provided in the formulation.”[43] Claim 1 of 2010246457 defines a minimum cellulose content of about 4%. That the specifications allow for cellulose values significantly below 7% suggests to me that the FRC product of the invention allows for levels of brittleness beyond that one might ordinarily expect for an FRC product.

   [43] Ibid, page 3 line 22.

8. The specifications do not require that cellulose be the only source of fibre reinforcement. Instead they note that materials such as ceramic, glass, mineral wool, steel and synthetic polymer fibres can also be used.[44] In view of this disclosure it is apparent that cellulose need not provide the only reinforcing effect but rather that it contribute to the reinforcing effect. I note Dr Akers’ teaching that: “if a second reinforcing fibre is used in the formulation, 3.5-4% cellulose fibre is sufficient.”[45] This is perhaps also consistent with the specification’s teaching to use at least 4.1% cellulose.

   [44] Ibid, page 5 lines 4-7.

   [45] Akers 2, [43].

9. The cellulose fibre is preferably described as either fibrillated wood fibre,[46] or cellulose wood pulp.[47]

   [46] Ibid, page 2a line 10.

   [47] Ibid, page 5 line 5.

   Hollow ceramic microspheres

10. The Applicant referred to the description of microspheres I quoted above. The Applicant relied on this passage to submit that ceramic microspheres as contemplated by the applications must exclusively be cenospheres. Repeating the most relevant sentence of this passage:

    “One preferred type of microspheres are (sic) hollow ceramic microspheres commonly known as cenospheres.” [48]

    [48] Ibid, page 9 lines 15-21

11. In Minerals Separation North America Corporation v Noranda Mines Ltd[49] Lord Reid considered the requirements of a dictionary definition:

    “this is an awkward method of drafting ... and it is in all cases incumbent on a patentee who chooses to adopt this method to make his intention plain to those who read the specification."

    [49] (1952) 69 RPC 81, 93.

12. I am not satisfied the passage relied on by the Applicant demonstrates a plain intention that the term “hollow ceramic microspheres” should be understood as relating exclusively to cenospheres, or that the two terms should be treated as synonymous. The passage can equally be interpreted such that cenospheres are a preferred type of microsphere, and that they are also ceramic.[50]

    [50] Sorrell 1, [91].

13. I adopt a more general construction of the term such that the particle is a hollow, micro-sized sphere formed of a ceramic material. I further note that the construction the Applicant proposed would for example render claim 8 of 2006241323 and claim 7 of 2010246457 (which each define that the hollow ceramic microsphere is a cenosphere) redundant. The “presumption against redundancy”[51] weighs against the Applicant’s submission.

    [51] Parkinson v Simon (1894) 11 RPC 493.

    Moisture expansion

14. The applications provide a definition of “moisture expansion” meaning “the change in product length from saturated to oven dry conditions”[52]. A percentage change in moisture expansion is calculated as follows:

    How this definition is applied and how it compares to the term “dimensional stability after water absorption” (as used in relevant prior art) was debated between the parties.

    [52] 2006241323, page 8 line 10.

15. John Cottier noted that “dimensional stability after water absorption” was measured using Japanese standard JIS A5430 (the “JIS standard”).[53]  He further explained that testing under this standard involves the following steps:

    • a flat building sheet is cut into lengths of 160mm by 40mm to form a specimen;
    • the specimen is placed in an air recirculating oven at 60°C for 24 hours and then placed in a desiccator containing silica gel to cool to 23°C. The distance between two points on the specimen is then measured;

    ·after the dry measurement the specimen is placed horizontally in water at 23°C for 24 hours in which the top of the specimen is kept 30mm below the surface. The specimen is then wiped to remove excess water and the distance between the two points is again measured.[54]

    [53] Cottier 1, [13].

    [54] Ibid, [13].

16. Mr Cottier also explained the James Hardie method (“the JH method”) of determining moisture expansion.[55] In the JH  method the following steps are employed:

    ·   a specimen is cut into lengths of 240mm by 40mm. It is then immersed in water at ambient temperature until constant mass is achieved. The initial saturated length is then measured.

    ·   The wet specimen is dried at 80 ± 5°C in a forced draft oven until constant mass is achieved. The dried specimen is cooled in a desiccator to room temperature and the oven dry length is measured. [56]

    [55] Ibid, [15].

    [56] Ibid, [15].

17. Mr Cottier applied both measurement techniques on specimens of a James Hardy “Artisan” FRC product.  He demonstrated that the James Hardy method yielded a higher dimensional change than the JIS standard.[57] Similar results were provided by David Melmeth.[58]

    [57] Ibid, [18].

    [58] Melmeth 1, [14].

18. James Gleeson elaborated on how the JH method might provide different results to the JIS standard. He explained:

    “the testing method in JIS A5403 involves drying samples at 60°C, while the method my colleagues and I used … involves drying samples to 80°C. This means that, unlike the James Hardie method, the method outlined in JIS A5403 does not measure moisture expansion in the range of 60 to 80°C.

    According to Mr Gleeson the primary difference between the two techniques is therefore the temperature to which the specimens are dried. The higher temperature used in the JH method will provide a larger expansion value.[59]

    [59] Gleeson 1, [57].

19. Stephen Akers noted that drying out the FRC material first (i.e. before wetting it) will affect the results of the test because an oven dried product when sold will shrink less when exposed to weather.[60] Therefore, according to Dr Akers, the JIS standard provides a better indication of changes.[61] It seems logical that a dried product would shrink less because, being dry, it has less drying and shrinking available to it. A more relevant question would be whether a dried product would absorb more or less water than an undried product. Mr Melmouth otherwise noted that drying the FRC prior to testing to assess moisture expansion tends to under-report the real expansion properties of the FRC material.[62]

    [60] Akers 2, [103].

    [61] Ibid, [103].

    [62] Melmouth 2, [6].

20. While the Applicant demonstrated that the JIS standard and the JH method provide different results, it did not demonstrate that the specifications require or otherwise suggest that the JH method be used to measure moisture expansion. I can personally glean no hint of the JH method in either specification. The evidence suggests to me that the JH method was an in-house test not widely known outside the James Hardie corporate group.

21. In Colin Leslie Young v Arthur Yates & Co Ltd and W. Neudorff GmbH[63] the delegate relevantly faced an issue where the specification left open the means of determining the pH of a snail bait product. The delegate stated:

    “Since the specification makes no special issue of the method of determining the pH, it follows that the reader may assume it may be done in any reasonable manner.”[64]

    [63] [2001] APO 68.

    [64] Colin Leslie Young v Arthur Yates & Co Ltd and W. Neudorff GmbH [2001] APO 68, page 11 of 35.

22. I likewise consider that the reader of the applications may assume that any reasonable measurement of moisture expansion may be applied. The question is therefore whether the JIS standard would be considered a reasonable manner of testing. I am not convinced that it would. I am concerned by Dr Akers’ and Mr Melmouth’s evidence that the order in which dry and saturated products are tested will affect the final result, and that testing a dried product first will ‘under-report” the result. While the two tests would provide similarly useful information, the one detail specified about the moisture expansion test is that the product is first tested saturated and thereafter tested oven dried. This approach is clearly not followed by the JIS standard such that I am not convinced it would be viewed as necessarily equivalent. 

    The low density additive maintains moisture expansion of the building material

23. There was some discussion in the written submissions about the role the LDA must play in lowering the density of the building material while maintain its expansion. There was for example discussion of whether the LDA must be the only means of lowering the density while maintaining the moisture expansion. Most simply, it is my view that if the product contains the relevant LDA, and the product has the relevant properties, then the LDA has played its role in providing the relevant properties. To suggest otherwise would for example mean that no further LDAs other than ceramic microspheres can contribute to lowering the density of the building material, which is inconsistent with the specifications’ teaching that the addition of LDAs is not the only means of reducing density in FRC formulations.[65]

    [65] 2006241323, page 17 lines 20-21.

    The person skilled in the art

24. The person skilled in the art (“the PSA”) is the hypothetical person to whom the patent specification is addressed.[66] The identity of the PSA will vary with the nature of the invention and the field with which it is concerned.[67] In KD Kanopy Australasia Pty Ltd v InstaImage Pty Ltd,[68] Kiefel J identified the PSA as:

    “a person acquainted with the surrounding circumstances of the state of the art and manufacture at the relevant time… They are likely to have a ‘practical interest in the subject matter of the invention’… and may often work in the art with which the invention is connected.”

    [66] General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Ltd (1971) 1A IPR 121, 134

    [67] Aktiebolaget Hassle v Alphapharm Pty Ltd (2002) 212 CLR 411, 465 [152]-[153]; Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC (No 2) (2006) 71 IPR 46, 63[67].

    [68] (2007) 71 IPR 615, 621.

25. The Opponents’ identify the PSA as a materials engineer with experience in designing and developing FRC building materials. I am satisfied this is an appropriate identification.

    The common general knowledge

26. As a matter of initial nomenclature I note that if I refer to knowledge as “known” (or similar), I am referring the knowledge of the PSA (i.e. the CGK).

27. FRC board is typically produced on a rotating sieve machine, now known as the “Hatshek machine”, using a highly dilated suspension of Portland cement and fibres.[69] The resulting sieved materials are air cured or autoclaved.[70] A typical composition for an autoclaved product would include: 35% cement; 53% silica or mica; 8% cellulose fibre; 4% other additives such as stabilisers.[71] A typical composition for an air cured product would include: 80% cement; 10% calcium carbonate; 4% cellulose fibre; 2% synthetic fibres; and 4% other additives.[72]

    [69] Akers 1, [41].

    [70] Ibid, [41].

    [71] Ibid, [44].

    [72] Ibid, [46].

28. The first FRC products were reinforced with asbestos fibres.[73] Between 1975 and 1990 alternative fibres to asbestos were developed that were formed of: cellulose, PVA; polypropylene; glass; steel; carbon; Kevlar®; and aramids.[74] By 2000 most FRC manufacturers had adopted use of cellulose, typically wood pulp cellulose, which had the advantages of being inexpensive and working well at high pressures and temperatures (as for example found in an autoclave).[75] 

    [73] Ibid, [49]-[51].

    [74] Ibid, [52].

    [75] Ibid, [53].

29. The density of FRC building materials is typically between about 1.3 and 1.9 g/cm³.[76] Higher density FRC building materials possess better durability to wet / dry cycling and freeze thaw degradation because it is less porous and less likely to absorb water.[77] Densities greater than 2 g/cm³ can however provide a brittle product with poor high temperature stability due to water found in the product being unable to escape the FRC matrix.[78] Higher density FRC products also have reducing ability to be machine cut or nailed.[79]

    [76] Ibid, [55].

    [77] Akers 1, [55].

    [78] Ibid, [56].

    [79] Ibid, [58].

30. It was well known that LDAs could be used to reduce the density of FRC products.[80] Suitable LDAs included CSH; gas entrainment agents such as aluminium powder; polystyrene beads; expanded perlite; and exfoliated vermiculite. I will describe these LDAs as “typical LDAs.” Whether hollow ceramic microspheres were a known LDA is disputed between the parties.[81] While typical LDAs lowered the density of the FRC product, they were understood to increase the porosity of the product such that the product had increased moisture expansion.[82] Cellulose FRC products were understood to be particularly susceptible to moisture expansion, as cellulose fibres are water adsorbent.[83]

    [80] Ibid, [60].

    [81] Ibid, [61].

    [82] Book 1, [91]; Sorrel 1, [55]; 2006241323, page 1a line 33 to page 1b line 3.

    [83] Ibid, [89]; Gleeson 1, [34].

    The Hatschek process, FRC products and concrete

31. The Hatschek process was best described by Surendra Shah:[84]

    The Hatschek process comprises the steps of depositing a thin layer of fibre cement of a felt surface. A number of thin layers are accumulated over multiple revolutions on an accumulation roller before the ‘green’ article (the wet-form article prior to curing) is cut off the roller once the desired accumulated thickness has been achieved. The term ‘green’ is used to describe a cementitious product that is not completely cured or hardened. The green article is either left to cure in air or the curing process is accelerated by steam curing the green article in an autoclave.

    [84] Shah 1, [15].

32. Mr Shah also discussed the difference between concrete and FRC products:

    “The products are formed in very different ways and are subject to different requirements in service. Concrete is a composite construction material made primarily with large stone aggregate, Portland cement, and water. The concrete mix may be formulated to include additional liner materials such as sand, accellerators, retarders, superplasticizers, and pigments. Concrete is typically poured in bulk to produce thick sections which are reinforced with ¼ to 1 inch steel reinforcing bar. The key requirements for concrete are compressive and structural strength, resistance to water penetration and chloride ion penetration, sulfate resistance, and in some regions where there are extremes of temperatures, freeze thaw resistance.

    Thin sheet fibre reinforced cementitious (FRC) building products:

    ·are formulated differently to concrete, in that they do not include large aggregate chunks of material such as coarse gravel or crushed rocks, or superplasticizers; and

    ·formed differently, as they are formed by a filtration process such as the Hatschek production process rather than being pumped and poured into place.”[85] 

    In relation to the above I note that FRC materials can, though perhaps rarely, be produced by pouring and casting.[86] This, as I discuss below, is how the examples disclosed in the specification were made.

    [85] Ibid, [16]-[19].

    [86] Couts 1, [37].

    Difficulties in providing new FRC products

1. James Gleeson referred to the Applicant’s experience in developing cellulose FRC products in the 1980s and 1990s.[87] He relevantly noted:

   As fibre-reinforced cement is created from a mixture of components, there are a range of both physical and chemical interactions that occur between components as they are added to the mixture. FRC is also produced by a process in which the mixture is subjected to various physical and mechanical manipulations, which affect the components and the interactions between them. The complex interaction of components throughout and after processing determines the properties (such as durability and workability) of the end product. From a practical perspective, it is the properties of the end product that are the most important, given that the product is used in construction buildings. Making relatively small changes to the individual components of FRC can… have a significant effect of the properties of the end product.[88]  

   [87] Gleeson 1, [18], [19].

   [88] Ibid, [16].

2. The evidence establishes that it can be quite difficult to precisely predict how an additive may interact with other components in a composition. Nevertheless I understand there to be a certain level of predictability to the art. As Professor Sorrell declares:

   In the field of cement-based materials and in most other fields of ceramics, there is no theoretical formula that determines the exact properties of a formulation if a component of the formulation is changed. The results in these fields are based on empirical studies. However, based on the Skilled Person’s experience in formulation, he or she would have an informed idea of how the addition or change of a component would generally affect the end product.[89]

   [89] Sorrell 2, [34].

   Were cenospheres known as an LDA in the CGK?

3. Whether cenospheres were known as an LDA is disputed between the parties. For the Opponents:

   • Tommy Book declared that he knew of cenospheres though their use as LDAs in the concrete industry,[90] He also notes he was aware of work involving former colleagues of his to replace diatomaceous earth with cenospheres in a specific lightweight FRC formulation,[91] in particular the “Luja A” product produced in the 1990s.[92]
   • Stephen Akers declared that he had trialled use of cenospheres along with other LDAs to make lightweight, fire-resistant FRC materials.[93]

   ·Christopher Sorrell noted that fly ash containing cenospheres had been used in cement for many years.[94]

   [90] Book 1, [52].

   [91] Ibid, [54].

   [92] Ibid, [83].

   [93] Akers 1, [75].

   [94] Sorrell 1, [49].

4. The collective evidence of Messrs Book, Leonard and Sorrell suggests that cenospheres were a known LDA in cement/concrete products and that some research groups had researched use of cenospheres in FRC products by the priority date. I have also considered the prior art annexed as evidence by the Opponents. I note that:

   • D4[95] and D6[96] disclose use of cenospheres to produce a light-weight FRC product with low water absorption;

   ·D1[97] (in the name of a corporate relative to the Applicant and published a month after the priority date – but filed before the priority date) discloses that:

   “The person skilled in the art will be aware of appropriate low bulk density modifiers for shaped cementitious articles. They include materials such as fly ash, hollow fly ash, hollow ceramic spheres, perlite, vermiculite, polystyrene, fly ash, hollow fly ash, hollow ceramic spheres and chemical or mechanical gas entrainment.”[98]

   I understand that hollow fly ash is another name for cenospheres.

   ·D13[99] discloses use of cenospheres in glass fibre FRC products.

   • D14[100]  discloses the production of lightweight glass reinforced cement by the incorporation of cenospheres with better durability in wet environments.

   ·D23[101] discloses a light-weight cement composite comprising “MICROCELLS” (i.e. cenospheres).

   [95] JP H08-217561 A (CHICHIBU ONODA CEMENT CO.) 27 August 1996.

   [96] JP 09-315843 A (Kubota Corporation) 9 December 1997.

   [97] WO 2000/021901 A1 (James Hardie Research Pty Limited) 20 April 2000.

   [98] D1, page 4 lines 26-29.

   [99] GB 1514239 (National Research Development Corporation) 14 June 1978.

   [100] West, et al., “Lightweight glass reinforced cement” (1980) 11(1) Composites, 19.

   [101] US 5935699 A (BARBER) 10 August 1999.

5. While it does not replace expert evidence,[102] production by the Opponent of the above prior art is consistent with their submission.

   [102] British Acoustic Films (1936) 53 RPC 221, 250.

6. For the Applicant Robert Couts noted he had experience producing a FRC product that was glass-fibre reinforced and included 20-30% cenospheres.[103] That product was poured into a mould rather than made according to the Hatschek process. His evidence demonstrates he was generally aware of cenospheres as a potential LDA for FRC products.[104] However, he would expect any LDA that floats to present problems for the Hatschek process, and that it “would certainly not be a simple or trivial task to attempt to incorporate a floating LDA into a FRC product produced by Hatschek.”[105] Mr Book partially corroborated Dr Coutts’ views on this point:

   “I would have expected that flotation of the microspheres in the slurry may pose a problem in the Hatschek machine. This is due to the form of the microspheres, i.e. closed hollow spheres filled with gas or air. However this was a known problem that was capable of being solved, as at 14 March 2000, by providing a homogeneous slurry (achieved through effective mixing).”[106]

   [103] Couts 1, [37].

   [104] Ibid, [38].

   [105] Ibid, [39].

   [106] Book 2, [19].

7. Mr Gleeson relevantly declared:

   “In relation to hollow ceramic microspheres (or cenospheres), in particular, I recall that my colleagues and I were sceptical as to whether they would be suitable, as we expected that they would float in the cement slurry, and interrupt laminate formation during the Hatschek process. It was also unclear whether the microspheres would survive the production process, or whether they would be destroyed.”[107]

   From Mr Gleeson’s evidence I deduce he and his colleagues were aware of cenospheres as a potential LDA for FRC products. While he and his colleagues were sceptical of their ability to be used, in particular with the Hatschek Process, this does not suggest that he was unfamiliar with them or their properties.

   [107] Gleeson 1, [32].

8. The sum of the evidence satisfies me that the bulk of those in the cement industry knew of cenospheres, their general properties, and their use as an LDA in shaped cement products generally. The evidence does not confirm that the PSA understood cenospheres to be a widely used LDA for FRC products. However he or she did understand that cenospheres were a potentially suitable LDA for that purpose, while further being concerned that cenospheres may float should they ever be applied to the Hatschek process.

   Clarity

9. A claim is lacking in clarity if a third party could not ascertain whether an act would fall within the scope of the claim.[108] A lack of precise definition in claims is not fatal to their validity so long as they provide a workable standard suitable to the intended use.[109]

   [108] Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59 at 60

   [109] Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Ltd [1980] HCA 9 at [46]; [1980] HCA 9; (1980) 144 CLR 253 at 274.

10. In their submissions the Opponents noted a number of terms or phrases, such as:  “ceramic microspheres”, “cellulose fibre-reinforced”, and “moisture expansion” which they consider ambiguous and liable to lack clarity. Having expressly considered those terms above, as well as other terms such as “cement formulation”, and “cellulose”, I am not suitably convinced that any claim of the applications lacks clarity.  

11. The Opponents have not satisfied me that any claim lacks clarity.

    Fair basis

12. In discussing the test for fair basis, the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd[110]  approved of the words of Gummow J in Rehm Pty Ltd v Websters Security System (International) Pty Ltd:[111]

    “the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification.”

    [110] [2004] HCA 58 at [69], 217 CLR 274 at 300 (“Lockwood v Doric”).

    [111] (1988) 81 ALR 79 at 95.

13. The Opponents have raised fair basis in relation to the phrase “while at the same time the low density additive maintains the moisture expansion of the building material…” The Opponents submit that, to the extent the claims may require the ceramic microspheres to alone maintain moisture expansion, the claims would lack fair basis. As I discuss above, I do not consider the claims to require that the low density additive alone maintain the moisture expansion.

14. The Opponents have not satisfied me that any claim lacks fair basis.

    Sufficiency

15. As set out in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd[112] the test for sufficiency is whether:

    “the disclosure enable[s] the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty.”

    [112] [2001] HCA 8 at [25]; (2001) 207 CLR 1 at 17 (“Kimberley-Clark”).

16. The Opponents directed me to Mr Gleeson’s declarations on behalf of the Applicant. Mr Gleeson is a named inventor for the present applications. In his second declaration he explained that extensive research went into developing the present invention, and that many process factors can affect the properties of the resulting material.[113] I will refer to Mr Gleeson’s evidence further below. The Opponents submit that, inconsistent with Mr Gleeson’s evidence, the directions provided in the specification are couched in broad generic terms and lack sufficient specificity on processing conditions and the like which would apparently affect the PSA’s ability to perform the invention.

    [113] Gleeson 2, [89].

17. Having reviewed the specifications I am unable to agree with the Opponents’ submission that the directions provided in the specifications are couched in broad terms. As set out in the tables I have reproduced above, the specifications disclose trial formulations in relatively specific manner. The specifications also set out processing conditions relatively clearly. I will again reproduce a passage from the specifications:

    “Prototype boards are produced by mixing the desired formulation with a Hobart Mixer to form a homogenous slurry. The slurry is then compressed between two steel dewatering plates at 3500 psi for one minute with a Wabash Press (model. # PC-75-4TM) to form a monolithic sheet. The slurry is supported with steel wire mesh screens (30 to 40 US mesh) placed underneath and on top of the slurry mix within the steel frame mold. The monolithic sheet is then pre-cured for a minimum of about 12 hours and autoclaved at an elevated temperature and pressure in a steam saturated environment at 150°C for about 12 hours.”[114] 

    [114] 2006241323, page 7 lines 6-13.

18. This passage provides quite specific instructions. In relation to claims not limited to the Hatschek process (i.e. any claims but claims 13 and 37 of 2006241323 and claim 29 of 2010246457) I am satisfied that these disclosures provide sufficient detail of suitable compositions and process conditions to provide a product as claimed. These disclosures do however raise specific questions in relation to claims limited to Hatschek processing, which I will now discuss.

19. In discussing the disclosed processing conditions Mr Book noted:

    “At several instances in the Patent (sic) the results are presented and conclusions drawn based on ‘prototype’ materials that were clearly not manufactured using the Hatschek process. The manufacture of these prototypes is described on page 5 lines 6-10 (sic) of the amended specification. As correctly stated in the Patent (sic), the material so formed is ‘monolithic’ and therefore could not have been made in accordance with the Hatschek process as the Hatschek process produces highly laminar materials.”[115]

    [115] Book 2, [20].

20. I have noted previously that Mr Gleeson is a listed inventor for the applications. Mr Gleeson provided some useful evidence of what he did as part of the research team developing the invention. In investigating how to provide a low density FRC product with low moisture expansion[116] his team tested a large number of LDAs, being: expanded perlite, expanded vermiculite, expanded shale, expanded clay, volcanic ash (pumice) and hollow ceramic microspheres.[117] Such testing also involved adding different amounts of those additives to a standard cellulose-FRC formulation.[118] This initial testing involved the production of prototypes by casting the product in a mould, rather than by the Hatchek process.[119] Mr Gleeson noted it is this initial testing that is discussed in the applications.[120]

    [116] Gleeson 1, [22].

    [117] Ibid, [30].

    [118] Ibid, [38].

    [119] Ibid, [32].

    [120] Ibid, [38].

21. It is apparent that the specifications only report initial trial testing performed by the inventors. Such is corroborated by Mr Book’s views[121] as I discussed above. This concerns me in view of Mr Gleeson’s statement that (my emphasis):

    “Having demonstrated the potential for cenospheres to produce a low density cellulose FRC product on a laboratory scale, my colleagues and I then needed to establish whether and how we could produce a product on a commercial scale, using the Hatshek process. It took us almost a year to establish and optimise the low density formulation and a commercial scale process for its production.”[122]

    [121] Book 2, [20].

    [122] Gleeson 1, [33].

22. No details of this further commercialisation and optimisation research are apparent in the specifications. Mr Coutts[123] and Mr Gleeson[124] have both declared that it would not be trivial to incorporate cenospheres into a Hatschek process due to their likelihood to float. During the hearing I asked how the Applicant had overcome this issue. The Applicant’s final response was that this concern was unfounded as cenospheres had not been found to float when trialled with the Hatshek process. This could perhaps be because the addition of cellulose fibres prevents the flotation of the cenospheres, as taught by Dr Akers[125] and by prior art document D4 (which I discuss further below). In light of the Applicant’s response I am satisfied that the cenospheres were not found to float in a cellulose FRC formulation. I otherwise note Mr Book’s[126] or Professor Sorrell’s[127] opinion that flotation was a problem that could be uninventively solved by effective mixing to provide a homogeneous slurry or by controlling the rheology of the slurry.

    [123] Couts 1, [39].

    [124] Gleeson 1, [32].

    [125] Akers 2, [74].

    [126] Books 2, [19].

    [127] Sorrell 2, [31].

23. In summary, I consider that the specifications provide quite clear and specific directions on how to provide a cast FRC product falling within the scope of all but claims 13 and 37 of 2006241323 and claim 29 of 2010246457. In relation to claims 13 and 37 of 2006241323 and claim 29 of 2010246457 the evidence does not establish there to be any actual rather than supposed difficulties in converting between the initial trials and Hatschek processing. Based on the Applicant’s submissions and Mr Book’s evidence[128] I consider that cenospheres either would not float during Hatschek processing, and/or that any flotation could be resolved by uninventive means.

    [128] Books 2, [19].

24. The Opponents have not satisfied me that any claim of the applications lacks sufficiency.

    Best method of performance

25. The purpose behind the best method requirement was explained in American Cyanamid Company v Ethicon Limited:[129]

    “The Act is intending to protect the public against a patentee who deliberately keeps to himself something novel and not previously published which he knows of or has found out gives the best results, with a view to getting the benefit of a monopoly without giving to the public the corresponding consideration of knowledge of the best method of performing the invention.”

    [129] [1979] RPC 215, 269.

26. The best method requirement is assessed on the basis of the applicant’s knowledge at the time of filing the complete specification.[130] If the applicant identifies a better method at a time subsequent to filing, there is no obligation to amend the specification to include that method. In addition, if the specification does not include the best method, it can be amended to include the best method (as known to the applicant at the time of filing), at least until the time of grant.[131]

    [130] Rescare Ltd. v Anaesthetic Supplies Pty. Ltd. (1992) 25 IPR 119. This approach was also followed in the more recent Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27, [111]-[116] and [241].

    [131] Pfizer Overseas Pharmaceuticals v Eli Lilly [2005] FCAFC 224.

27. As I discussed above, the Applicant noted that best method was not originally raised in the Statement of Grounds and Particulars for either application, and was not later raised until 10 days prior to the hearing.  The Applicant therefore submitted that the addition of this new “ground” should not be permitted. I will now consider whether the proposed amendment of the Statement of Grounds and Particulars should be allowed.

28. It is firstly important to consider what actually constitutes a ground of opposition under s 59. Section 59 states:

    “The Minister or any other person may, in accordance with the regulations, oppose the grant of a standard patent on one or more of the following grounds, but on no other ground:

    (a)that the nominated person is either:

    (i)not entitled to a grant of a patent for the invention; or

    (ii)entitled to a grant of a patent for the invention but only in conjunction with some other person;

    (b)that the invention is not a patentable invention;

    (c)that the specification filed in respect of the complete application does not comply with subsection 40(2) or (3).”

    It is apparent that the relevant ground technically in this circumstance is failure to comply with s 40(2), and that a failure to provide a best method would in fact be a particular of this ground.

29. For oppositions filed before 15 April 2013 (which is pertinent to the 2006241323 application) the rules regulating amendment of the Statement of Grounds and Particulars are found in reg 5.9 (as it existed prior to 15 April 2013). Sub-regulation 5.9(1) relevantly sets that the Commissioner must, on the written request of an opponent, amend particulars relating to a ground subject to specific circumstances set out in sub-reg 5.9(2). As none of the circumstances set out in sub-reg 5.9(2) apply, it follows that I must allow the amendment.

30. For oppositions filed after 15 April 2013 (which is pertinent to the 2010246457 application) the rules regulating amendment of the Statement of Grounds and Particulars are found in r 5.16. Sub-regulation 5.16(1) states (my emphasis):

    “An opponent may request the Commissioner in writing to amend the opponent’s statement of grounds and particulars:

    (a)to correct an error or omission in the grounds of opposition; or

    (b)to update the grounds of opposition to reflect an amendment to the patent request or complete specification to which the statement relates; or

    (c)to amend the facts and circumstances forming the basis for the grounds.”

31. The inter-relationship of sub-regs 5.16(3) and 5.16(4) means that the Commissioner must make the amendment if: the Commissioner is not considering an application for dismissal of the opposition; the specification is not undergoing re-examination; and the Commissioner is satisfied that the amendment should be made. The relevant question is therefore whether I am satisfied the amendment should be made.

32. In reviewing the Opponents’ submissions it is apparent they have relied on the Applicant’s evidence to submit that the Applicant has kept to itself a best method of performance. This suggests to me that the Opponents would not have been aware that best method would be a relevant particular when originally filing their SG&Ps. While there has been delay between when the relevant evidence was filed and when the Opponents filed requests to amend the SG&Ps, I nevertheless consider it in the public interest that the particular be considered. I am satisfied the amendment should be made. It follows that I must make the amendment.

1. I now refer to Mr Cottier’s first declaration (my emphasis):

   “For the purposes of undertaking testing, I obtained samples of James Hardie “Artisan” FRC product from our manufacturing plant in the USA. The precise composition of this FRC product is proprietary. However, it has approximately 25-40% Portland cement, 40-60% crushed silica, 4-25% cenospheres, and its density is less than 1.2 g/cm³.”

   It is apparent the Applicant has made proprietary a method of performing the invention in relation to this “Artisan” product (being an FRC product falling within the scope of the broadly claimed invention). Relevantly however, I must be satisfied that the Applicant knew of such methods on or before 9 March 2001 (being the filing date of application 2001250832). As clearly set out above, the Applicant is under no obligation disclose best methods of performing the invention discovered after the filing date.

2. I have discussed above that the specifications only refer to research concerning initial prototyping and do not detail the 12 months further research later performed by Mr Gleeson to optimise the cement formulation and commercialise the process. The applications share a priority date of 14 March 2000 and a filing date of 9 March 2001. I have briefly viewed the earliest priority document: US 60/189235 and it is apparent that this document discloses the initial trialling performed by Mr Gleeson. The 2001250832 application was filed nearly 12 months after the earliest priority document. If I presumed Mr Gleeson continued his research immediately after the initial prototyping I could perhaps infer that the Applicant would have known of better methods and compositions for performing the invention, in relation to the Hatschek process for example, on or before 9 March 2001. However I have no clear evidence establishing this as fact. Such being the case the Opponent has not established that the best method of performance – as known to the Applicant at the relevant date – was not disclosed. 

3. The Opponents have not satisfied me that the Applicant failed to disclose the best method of performing the invention as known to it on 9 March 2001.

   Novelty

4. The general test for lack of novelty is the reverse infringement test.  The classic formulation of this test was given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd:[132]

   "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".

   [132] [1977] HCA 19 at [20], 137 CLR 228 at 235.

5. This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed.[133] Australian courts have often cited, with approval, the words of the UK Court of Appeal in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited:[134]

   “If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee’s claim if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated.  The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but 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 in fact been anticipated.”

   [133] Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513, 517.

   [134] [1972] RPC 457, 485-486 (“General Tire”).

6. The Opponents rely on two prior art documents for lack of novelty:

   D4      JP H08-217561 A (CHICHIBU ONODA CEMENT CO.) 27 August 1996; and
   D7      JP H02-192447 A (ASAHI GLASS CO., LTD.) 30 July 1990.
   Verified translations of these two Japanese patent documents were provided by the Opponents. Where I refer to specific passages of these documents I refer to them as located in the verified translations.

   D4

7. The translated abstract of D4 describes the subject of the patent as:

   “a lightweight, calcium silicate formed body which has a lightweight, exhibits a high matrix strength, a small water absorption rate, high resistance to freezing damage, and has a high surface smoothness and incombustibility.”

8. D4 reviews the prior art as follows. D4 notes that calcium silicate formed bodies produced from cement and other raw materials have been widely used as building materials. Such materials must be light, processable, durable, fire resistant, resistant to freezing damage, and water resistant.[135] Like the present application, D4 notes that LDAs present problems in such bodies. D4 notes that pearlite and Shirasu balloons have low mechanical strength and may break while forming the body, thereby failing to achieve the desired low-weight.[136] D4 also notes that many LDAs are not in closed hollow form, and therefore have a high water absorption rate such that their use increases the water absorption of the resulting body.[137] D4 then notes that organic additives such as foamed polystyrene can flow on the material slurry (i.e. float) to hinder uniform mixing during formation. Also, such organic additives reduce the mechanical strength of the resultant body and provide poor heat resistance.[138]

   [135] D4, [0002].

   [136] D4, [0005].

   [137] Ibid, [0005].

   [138] Ibid, [0006].

9. To provide the required results, D4 teaches to mix by wet processes raw materials composed mainly of: 15-40% Portland cement, 10-20% slaked lime, 10-35% diatomaceous earth, and 15-55% high strength closed hollow balloons which contain large amounts of active silica and aluminium and possess a particle size of 200 μm or less.[139] The closed hollow balloons are taught to provide a pozzolanic effect such that they partially elute into the cement matrix while nevertheless providing closed cells in the formed product.[140] Because the balloons are closed, they are taught reduce the water absorbency of the resultant product. This in turn improves the products resistance to freezing damage.[141] The preferred closed hollow balloons are ceramic fly ash balloons (i.e. cenospheres).[142]

   [139] Ibid, [0016].

   [140] Ibid, [0018].

   [141] Ibid, [0019].

   [142] Ibid, [0020], [0021].

10. Reinforcing fibres added to the above discussed raw materials may be any fibres resistant against alkalis.[143] Such fibres may be inorganic fibres including glass fibres, carbon fibres, rock wool fibres, and organic fibres such as acrylic and polypropylene fibres.[144] A pulp is preferably added because it contributes to preventing the floating of balloons during wet mixing of the raw materials (i.e. as a processing additive).[145] The usage of pulp is disclosed to be preferably from 5-7%.[146] However Maree Anast provided evidence for the Applicant showing that the components of each formulation add up to more than 100%, such that the actual amount of pulp in the mixture actually has a maximum around between 6.1-6.4%.[147]

    [143] Ibid, [0031].

    [144] Ibid, [0031].

    [145] Ibid, [0031].

    [146] Ibid, [0031].

    [147] Anast 1, [10].

11. Examples are discussed beginning at paragraph [0035]. In the examples a slurry having a solid concentration of 3% is first prepared in a pulper. The slurry is mixed with Portland cement, slaked lime, diatomaceous earth, silicastone, closed hollow balloons and pearlite according to mixing ratios set out in later tables. The mixture is stirred, passed through a mill and mixed with glass fibres. Methyl cellulose is then added and the mixture is press formed. The press formed body is then cured in an autoclave.[148]

    [148] Ibid, [0036].

12. Specific example compositions and the properties of the resultant pressed bodies are provided in Tables 1 and 2. Relevantly the pressed bodies of examples 1-7 are taught to possess a density varying between 0.68-0.84 g/cm³ and a “dimensional stability after water absorption” of between 0.12-0.17%.

13. The Applicant provided several arguments why D4 does not disclose the invention claimed:

    • the bulk densities of products disclosed in D4 are below those for the invention claimed;
    • the reinforcing fibres used in D4 are not cellulosic, cellulose is only used to prevent floating of the closed hollow balloons; and

    ·the property of “dimensional stability after water absorption” is distinct from the moisture expansion property claimed.

    I will address the Applicant’s submissions in turn.

    Bulk density

14. D4 broadly discloses a density of 0.4-0.9 g/cm³. Therefore:

    • in relation to 2006241323 there is therefore a slight overlap between 0.4-0.9 and 0.9-1.2 g/cm³. I note however that none of D4’s examples provide a density above 0.84 g/cm³. This becomes relevant when considering broader disclosures in combination with more specific disclosures provided in D4; and
    • in relation to 2010246457 both the broader disclosure and examples provide a density below 1.2 g/cm³.

    Reinforcing cellulose fibres

15. I refer to my earlier construction of “fibre-reinforced”. I consider the relevant question to be whether “cellulose fibre is spread throughout the matrix to provide a reinforcing effect”. It is apparent that cellulosic pulp is spread throughout the matrix. The Applicant noted that the pulp is added to prevent flotation of the cenospheres. The reason the cellulose fibres are introduced to the composition does not affect the physical properties of the resultant product. The relevant question is therefore whether the pulp would provide a reinforcing effect.

16. Given the applications teach that cellulose wood pulp is a preferred reinforcing fibre product I accept that wood pulp, when used as taught in D4 in the range of around 6-6.4% as provided in the examples,[149] would inevitably contribute to the reinforcement of the FRC product. The present specifications teach that 4.1% and above can provide a reinforcing effect. Such being the case 6% would also inevitably provide a reinforcing effect. I again note Dr Akers’ teaching that: “if a second reinforcing fibre is used in the formulation, 3.5-4% cellulose fibre is sufficient.”[150] In this sense the cellulose would necessarily constitute a second reinforcing fibre contributing to the overall reinforcement.

    Moisture expansion

    [149] Anast 1, Tables 4 and 5.

    [150] Akers 2, [43].

17. Most generally D4 teaches that the disclosed formed products will have a low water absorption rate.[151] Reference to “dimensional stability” is made in D4 as I note above. However, these references are only made in relation to specifically exemplified products as provided in Tables 1 and 2. While Tables 1 and 2 disclose a “dimensional stability after water absorption” of between 0.12-0.17%, this disclosure is made in relation to specific formed products having a density of between 066-0.84 g/cm3. There is no clear and unmistakable direction toward formed product having both the density and moisture expansion required of 2006241323.

    [151] D4, [0007].

18. The Applicant also noted the difference between dimensional stability as measured in D4 (under the JIS standard) and moisture expansion applied in the application. I have previously addressed this point at length. I am not sufficiently satisfied that dimensional stability is a relevant and reasonable measure of moisture expansion. The disclosed examples may inherently provide moisture expansion results within the defined range according to a test reasonably applied by the PSA; however I have no evidence on this point.

    Summary

19. It follows that no claim of either application lacks novelty in view of D4.

    D7

20. D7 describes itself as relating to:

    “a process for producing a calcium silicate article, specifically to a process for producing an article using a hollow silicon oxide that has a lightweight and fine designability, and has improved flexural strength and shrinkage.” [152]

    [152] D7, page 1.

21. The disclosed product is formed from a raw material comprising: 0-50% slag, 0-50% gypsum, 5-80% cement and/or slaked lime, 2-30% fibres, 0-20% solid particles composed of an alkali-soluble silicon oxide, and 5-90% of hollow particles composed of an alkali-soluble silicon oxide.[153]  Relevantly, the hollow particles composed of an alkali-soluble silicon oxide are disclosed as acting to form air bubbles in a concrete, and simultaneously to elute and infiltrate the concrete to enhance the strength of the concrete.[154]  Such particles may be any that elute at least partially in a concrete during curing, and particles that elute entirely are more preferable.[155] Suitable hollow particles may be shirasu balloons, silica balloons, and glass balloons.[156]

    [153] Ibid, page 2.

    [154] Ibid, page 5.

    [155] Ibid, page 5.

    [156] Ibid, page 5.

22. The most relevant disclosure within D7 is provided by Table 1. Relevantly, the examples provide:

    • 5.5% of cellulosic pulp;
    • densities range between 0.849 and 0.61 g/cm³;
    • either shirasu or silica balloons are used as hollow balloons;
    • “dimensional change ratio(s)” range between 0.092 to 0.182 %.

    Bulk density

23. Similar to D4 the densities disclosed in the examples are below 0.9 g/cm³. This takes them outside the range defined in considered in 2006241323 but within the range defined in 2010246457.

    Shirasu and silica balloons

24. The Applicant submits that shirasu and/or silica balloons are not cenospheres and therefore are not “hollow ceramic microspheres”. That approach relies on a construction of hollow ceramic microspheres that I have not applied. The evidence establishes that shirasu balloons are hollow microspheres formed of a ceramic material.[157]

    [157] Akers 1, [230]; Sorrell 2, [61].

25. The Applicant also noted guidance in D7 that the balloons completely elute into the cement. Referring to the subject matter claimed this does not seem a relevant consideration. As defined, the balloons need only be “incorporated into the formulation”.

26. Most generally D7 teaches that the balloons are intended to provide bubbles within the cement product.[158] This is presumably why D7 teaches against allowing the balloons to be crushed or deformed during processing.[159]

    Reinforcing cellulose fibres

    [158] D7, page 5.

    [159] Ibid, page 5.

27. D7 teaches that:

    “The fibers have an effect of increasing the strength of the article. When the content of the fibres is less than 2 wt%, it is not preferable since the effect of the fibers is decreased… A more preferable content of the fibres is from 5-10 wt%.”[160]

    [160] Ibid, page 4.

28. Taking the above into account it is apparent to me that the 5.5% NBKP (wood) pulp used in each of the examples is used to reinforce the articles. Otherwise all the examples would have less than 2wt% reinforcing fibres, which is inconsistent with what is broadly taught. Regardless of the intended purpose of the pulp,[161] I consider that use of 5.5% wool pulp would contribute the reinforcement of the disclosed FRC product. I again note Dr Akers’ teaching that: “if a second reinforcing fibre is used in the formulation, 3.5-4% cellulose fibre is sufficient.”[162]

    Moisture expansion

    [161] See my related discussion of D4 above.

    [162] Akers 2, [43].

29. The examples refer to a “dimensional change ratio”. Dr Akers[163] and Professor Sorrell[164] each understood this to be a reference to moisture expansion. On the other hand, James Gleeson[165] was unsure whether dimensional change ratio was equivalent to moisture expansion. Professor Shah understood it to be some sort of measure of wet dry stability.[166] While I am not certain, it seems likely to me dimensional change ratio would be synonymous to dimensional stability (as measured according to the JIS standard). I previously stated I am not sufficiently convinced the JIS standard would be considered a reasonable manner of moisture expansion as defined. As with D4 I note the disclosed examples may inherently provide moisture expansion results within the defined range according to a test reasonably applied by the PSA. I again have no evidence on this point.

    Summary

    [163] Akers 1, [236].

    [164] CCS 7, page 1.

    [165] Gleeson 1, [101].

    [166] Shah 1, [60].

30. It follows that no claim of either application lacks novelty in view of D7.

    Inventive Step

31. Subsection 7(2) of the Act[167] states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art. A document is prior art for this purpose if “a skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded [the document] as relevant.”[168]

    [167] 1990 (Cth).

    [168] Ibid, s 7(3).

32. The test for whether an invention is obvious is to ask whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd[169] Aickin J stated:

    "The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."

    [169] [1981] HCA 12 at [45], 148 CLR 262 at 286

33. In Aktiebolaget Hassle v Alphapharm Pty Ltd[170] the High Court said (at paragraph [21]):

    “the warnings in the authorities against the misuse of hindsight are not to be repeated as but prefatory averments and statements of trite law. The danger of such misuse will be particularly acute where what is claimed is a new and inventive combination for the interaction of integers, some or all of which are known.”

    [170] [2002] HCA 59, [21]; (2002) 212 CLR 411; (2002) 194 ALR 485; (2002) 77 ALJR 398.

    The problem to be solved

34. In AstraZeneca AB v Apotex Pty Ltd[171] the Court noted:

    “If the problem addressed by a patent specification is itself common general knowledge, or if knowledge of the problem is s 7(3) information, then such knowledge or information will be attributed to the hypothetical person skilled in the art for the purpose of assessing obviousness. But if the problem cannot be attributed to the hypothetical person skilled in the art in either of these ways then it is not permissible to attribute a knowledge of the problem on the basis of the inventor’s “starting point” such as might be gleaned from a reading of the complete specification as a whole.”

    [171] [2014] FCAFC 99, [203].

35. In written submissions the Applicant identified the problem to be solved as:

    “the need for a lightweight FRC building material and method for manufacturing the same with improved wet to dry dimensional stability over that of typical density modified products, or the same stability compared to non-density modified FRC to ensure that they can be used in the same range of applications.”[172]

    I am satisfied this is an appropriate problem to consider.

    [172] Applicant’s written summary of submissions for 20106241323, [30].

    In view of the common general knowledge

36. I have summarised some of the relevant common general knowledge above. The question before me is therefore: what steps would be PSA have undertaken as a matter of routine when seeking to provide an FRC product of low density and improved wet to dry dimensional stability? The evidence is consistent on this point. The PSA would undertake preliminary trials involving testing of standard FRC formulations involving different LDAs and/or combinations of LDAs.[173] The PSA would then undertake a more specific experimental analysis honing in on and optimising those LDA/FRC formulations identified from the trials as having potential.[174] I am satisfied these are the steps that a PSA would generally follow as a matter of routine in attempting to solve the identified problem.

    [173] Book 1, [81], [121], [122]; Akers 1, [74], [75], [128]; Sorrell [70]; Gleeson 1, [30], [31]; Coutts 1, [40]; Shah 1, [86].

    [174] Sorrell 1 [70]; Gleeson 1, [33]; Sorrell 3, [11]-[14].

1. Would the PSA have identified cenospheres as an LDA to test? I am satisfied he or she would. The PSA knew of cenospheres and their properties. He or she understood that cenospheres comprised a hollow spherical body and therefore had the potential to provide closed pores within the FRC, thereby resolving the open porosity issues caused by typical LDAs.

2. While the evidence establishes that the PSA had reasons to suspect that cenopheres may not have worked, such as their likelihood to break or float during the Hatschek process, I do not consider such doubts to have been sufficient to exclude cenospheres from an initial trial. This is particularly so given logic dictated that other typical LDAs were unlikely to resolve the problems caused by open porosity.[175] Considering the “Cripps question”[176], the PSA did not need to be satisfied that cenospheres would clearly and unequivocally have provided the desired result, only that among considered LDAs cenospheres might well produce the desired result such that he or she would be led to trial it. 

   [175] Sorrell 2, [10].

   [176] Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411.

3. The evidence of Mr Gleeson and the discussion provided in the specification satisfy me that cenospheres would during trials have demonstrated sufficiently positive results to warrant any further necessary experimentation. From that point I am satisfied that routine experimentation and optimisation would have led to a cellulose FRC product comprising the defined density and moisture expansion. Mr Gleeson noted that it took his team a year to optimise and commercialise the invention after initial trials. I do not doubt that it would take time to optimise and commercialise a process after initial trialling. Nevertheless the experimental results discussed in the applications demonstrate that Mr Gleeson realised the invention broadly claimed during the initial trials. There is no evidence of any specific difficulties that did or would impede realisation of the invention as claimed during routine experimentation. In this sense, I am satisfied that the invention claimed could be uninventively realised before or aside from undertaking any more thorough commercialisation research. 

   Claims of 2006241323

4. Independent claims 1, 14 and 31 relate to standard[177] cellulose FRC compositions incorporating hollow ceramic microspheres to achieve defined density and moisture expansion values. In view of the above I am satisfied the invention claimed would be achieved by routine steps in view of the CGK.

   [177] Gleeson 1, [12]; Akers 1, [44], [53].

5. Claims 2-4, 15-17 and 32-34 specify details relating to the cellulose. Claims 2, 15, and 32 define that the formulation contains 7-15 wt% cellulose fibres. The evidence establishes this is typical of autoclaved cellulose FRC products.[178] Claims 3, 16 and 33 define that the cellulose fibre is wood fibre while claims 4, 17 and 34 define that the wood fibre is fibrillated. The evidence establishes that fibrillated wood fibre is a typical and preferred product used in cellulose FRC products.[179]

   [178] Akers 1, [44], [53].

   [179] Shah 2, [23]; Gleeson 2, [80], [109].

6. Claims 5-8, 23-24 and 39-40 specify details relating to the hollow ceramic microspheres. Claim 5 defines that the hollow ceramic microspheres substantially maintain or decrease the moisture expansion of the building material. As taught in the applications this is an inherent property of cenospheres in typical FRC formulations. Claim 6 defines that the LDA median particle size is between 20-120μm. This is the typical size range for commercial cenopheres.[180] Claims 7 and 23 define that the formulation incorporates 5-30wt% hollow ceramic microspheres. This is the typical weight range for incorporation of LDAs and otherwise a matter of routine optimisation during the experimentation I identified above.[181] Claims 8, 24 and 40 define that the hollow ceramic microspheres are cenospheres. I have addressed this feature above.

   [180] Sorrell 1, [48].

   [181] Akers 1, [171]

7. Claims 9, 25 and 41 define that the cenospheres comprise 62-65% SiO₂, 23-26% Al₂O₃ and 3-4% Fe₂O₃. In relation to the composition of cenospheres Dr Akers stated:

   “I note that the chemical composition of cenospheres and structure can vary considerably, depending on the composition of the coal that they are generated from. The type of cenospheres used by a particular manufacturer is primarily determined by ready availability and cost.”[182]

   This evidence does not satisfy me that the selection of cenospheres of the defined composition would necessarily have been an obvious and routine choice. The Opponents have not satisfied me that claims 9, 25, and 41 lack an inventive step.    

   [182] Akers 2, [17].

8. Claims 10, 11 and 30 defines use of calcium silicate hydrate as a further LDA in the formulation. I have previously noted that I am satisfied it would be a matter of routine to undertake preliminary trials involving testing of FRC formulations involving different LDAs and perhaps combinations of LDAs.[183] I am not however convinced that it would be a matter of routine, or that one would be directly led, to specifically combine cenospheres and calcium silicate hydrate as LDAs when seeking to solve the identified problem. Without the benefit of hindsight it seems a stretch to me to suggest that this would a formulation the PSA would be directly led to try without the benefit of some hindsight. 

   [183] Book 1, [121].

9. Claims 12 and 35 relate to addition of a number of additives: silica fume, geothermal silica, fire retardant, thickeners, pigments, colorants, plasticisers, dispersants, foaming agents, flocculating agents, waterproofing agents, organic density modifiers, aluminium powder, kaolin, alumina trihydrate, mica, meta-koalin, calcium carbonate, wollastonite, polymeric resin emulsions, or mixtures thereof. Dr Akers declared that typical FRC formulations included 4% other additives, for example stabilisers such as “aluminium trihydrate”. I take this to be a reference alumina trihydrate. I am satisfied that it would be a matter of routine to incorporate a stabiliser such as alumina trihydrate in an FRC composition as claimed to perform the role for which it is typically used. I have also noted previously that silica is typically used in FRC product such that its use is a matter of routine. In relation to the other materials defined I have not been directed to any specific evidence establishing that it would be a matter of routine to use these additives. While I suspect it would be a matter of routine to use at least a number of these products depending on the selected application, I have found no evidence establishing this as fact.

10. Claims 13 and 37 define that the product is produced by the Hatschek production process. For reasons I have set out above I am satisfied selection and application of this method of production would be a matter of routine. The Hatschek process is the standard method for producing FRC products. Claim 36 defines that the article is autoclaved. This is a preferred curing technique and a matter of routine to select.[184]

    [184] Akers 1, [41].

11. Claims 18-22, 35, 38 relate to the cement formulation. Claim 18 defines that the cement formulation contains 1-45% Portland cement. This is typical of FRC product formulations.[185] Claims 20 and 21 collectively define that the aggregate comprises up to 60% silica. Claim 38 defines that the aggregate contains crystalline silica. These features are again typical of standard FRC product formulations.[186]

    [185] Gleeson 1, [12]; Akers 1, [44], [53].

    [186] Ibid.

12. Claims 26-29 relate to the freeze-thaw and thermal shrinkage properties of the FRC product. Claims 26 defines that the LDA increases the number of cycles at which the building material begins to visually degrade after freeze thaw cycling as compared to a building material made from an equivalent formulation without microspheres, while claim 27 similarly defines that the LDA decreases change in pore size distribution in the building material after undergoing a number of freeze-thaw cycles as compared to a building product made from an equivalent formulation without microspheres. Claim 28 relates to the LDA reducing the thermal shrinkage of the building material by 50% as compared to a building material made from an equivalent formulation without microspheres, while claim 29 relates to the thermal shrinkage of the building material being between about 1-5%. The specifications teach that these results stem from the use of cenospheres in typical FRC formulations such that I am satisfied this result would be achieved during routine trialling.

13. Claim 42 is a product by process claim depending from claim 31. As the process lacks an inventive step I am satisfied the product lacks an inventive step.

14. Claims 43-45 are omnibus claims and relate to embodiments of the invention illustrated in the accompanying drawings and/or examples. I have noted previously that I consider the example trials disclosed in the specifications to be quite specific in relation to both the formulation and method of forming the product. The Opponents have not satisfied me that the PSA would be directly led as a matter of course to provide anything as specific as the examples disclosed.

15. In setting out the claims in the concise manner I have above, I recognise it may appear that I have taken certain claims to lack an inventive step because the individual features defined are a considered matter of routine. To be clear, I recognise that it must be the entirety of what is claimed that is established to be a matter of routine and not merely individual features. I have noted above the clear danger of hindsight in relation to “combination patents”. Reviewing the sum of the appended claims however I consider what is generally defined to be a routine process of producing an FRC product, with the distinction that cenospheres (or hollow ceramic microspheres more generally) are added to produce a lighter FRC product with stable or reduced moisture expansion. This is considered to be a matter of routine.

16. To summarise, I am satisfied the Opponents have established that claims 1-8, 12-24, 26-29, 31-40 and 42 lack an inventive step in view of the common general knowledge.

    Claims of 2010246457

17. Independent claims 1 and 22 are similar to the independent claims of 2006241323, but more specifically require use of at least 4 wt% cellulose and ground silica as part of the formulation. These components are typical of a cellulose reinforced FRC product.[187] It would have been a matter of routine to trial different LDAs in typical FRC formulations. I am satisfied it would have been a matter of routine to arrive at the invention claimed.

    [187] Akers 1, [44].

18. Claims 2-5, 23 specify details of the cement formulation. Claims 2 and 3 collectively define that the formulation comprises 5-80% Portland cement. Claim 4 defines that the formulation contains 0-80% ground silica. Claim 23 defines that the formulation contains additives while claim 5 defines that the formulation contains 0-10% additives. I have previously found in relation to 2006241323 that these features would be arrived at by routine steps.

19. Claim 6 defines that the cellulose content is between about 4.1-15%. As I have discussed above this would have been a typical amount to add to cellulose reinforced FRC.

20. Claims 7-17 specify details of the hollow ceramic microspheres. Claims 8 and 9 specify that the formulation contain 5-90% or 5-30% microspheres. Claim 7 defines that the hollow ceramic microspheres are cenospheres. I have previously found in relation to 2006241323 that these features would be arrived at by routine steps. Claims 10-17 specify properties of the hollow ceramic microspheres. Claim 10 for example defines that the hollow ceramic microspheres lower the density of the final building product by more than 15% as compared to a building product made from an equivalent formulation without microspheres. I understand this result would be inherent to use of cenospheres in standard FRC formulations. The same logic applies to claims 11-17. The same logic also applies to claim 18.

21. Claims 19, 20, 24, and 25 incorporate further LDAs into the formulation. Claims 20 and 25 define low density CSH. I have discussed above that I am not convinced that it would be a matter of routine, or that one would be directly led, to specifically combine cenospheres and calcium silicate hydrate as LDAs when seeking to solve the identified problem. Claim 19 defines that the formulation contains volcanic ash. Perlite is an expanded form of volcanic ash.[188] I am similarly not convinced that it would be a matter of routine, or that one would be directly led, to specifically combine cenospheres and volcanic as LDAs when seeking to solve the identified problem. While both CSH and volcanic ash are known LDAs, the Opponents have not convinced me that the PSA would be led to the invention without the benefit of hindsight. In relation to use of a further LDA generally, the Opponent has satisfied me that it would be a matter of routine to combine one or more LDAs in a general sense. Therefore claim 24 lacks an inventive step.

    [188] Ibid, [65].

22. Claim 21 defines that the building product is a backerboard. Backerboards for tile underlays are a typical and routine application for FRC materials. I am satisfied that backerboards would a routine application for FRC products and precisely the sort of FRC product where one would be concerned by moisture expansion.[189]

    [189] Book 1, [68].

23. Claims 26 and 27 define more specific densities for the resulting FRC product. Claim 26 defines 0.5-1.2 g/cm³ while claim 27 defines 0.9-1.1 g/cm³. I have previously found in relation to 2006241323 that these features would be arrived at by routine steps

24. Claim 29 defines that the product is produced by the Hatschek production process. Claim 28 defines that the article is autoclaved. For reasons I have set out above I am satisfied selection and application of these methods of production would be a matter of routine.

25. Claim 30 is a product by process claim depending from claim 22. As the process lacks an inventive step I am satisfied the product lacks an inventive step.

26. Claim 31 is an omnibus claim and relates to embodiments of the invention illustrated in the accompanying drawings and/or examples. The claim has essentially the same scope as omnibus claims 41-46 of 2006241323 collectively. I have previously noted that the Opponents have not established that these claims lack an inventive step.  

27. In summary, I am satisfied that the Opponents have established claims 1-18, 21-24 and 26-30 lack an inventive step in view of the common general knowledge.

    In view of D4 or D7

28. The Opponents submit that the claimed invention lacks an inventive step in view of either of D4 or D7.

29. The Opponents’ evidence on ascertainability is provided by Book, Akers and Sorrell. Mr Book declared that in developing new FRC products he would begin by conducting a literature search,[190] either himself or by engaging a professional searcher.[191] Mr Book declared that he would have searched patent documents.[192] Professor Sorrell provided similar evidence in which he noted that he would conduct patent searches either himself or with the assistance of school staff.[193] Dr Akers noted that he engaged a patent searcher and did not typically conduct patent searches personally.[194] He noted that:

    “If the results of a patent search indicated that a particular patent was of interest but was in a foreign language, then I would request that the document be translated. This had not occurred very often because I speak 3 languages, but I still recall at least one instance of having a Russian patent translated.”[195]

    [190] Book 1, [107].

    [191] Ibid, [113].

    [192] Ibid, [113].

    [193] Sorrell 1, [18], [19].

    [194] Akers 1, [32].

    [195] Ibid, [33].

30. Mr Book noted:

    “Prior to 14 March 2000, I read Japanese patents and abstracts of patents from time to time in the course of my duties. My colleagues with whom I worked also read Japanese patents during the normal course of their duties… The English abstracts of the Japanese patents were in most cases good enough, but I could and in fact did occasionally when needed order full translations of a Japanese document.”[196]

    [196] Ibid, [147].

31. For the Opponent Mr Gleeson noted:

    “Dr Akers refers to conducting patent searches and obtaining translations of foreign patents. In 2000, it was my experience that while it was generally possible to obtain English abstract of certain Japanese patent documents, it was necessary to obtain a translation from a professional translator to obtain the full text of the document, as machine translations were not commonly available. As this was a costly exercise, my colleagues and I did not get foreign patent documents translated as at the priority date.”[197]

    [197] Gleeson 1, [119].

32. The evidence establishes that the PSA would, either directly or indirectly, have conducted patent searches in solving technical problems. During such searches documents in foreign language may have surfaced and been identified as potentially relevant. Presumably such documents could be identified because of a relevant English abstract. The evidence also however establishes that it would have been uncommon to have such documents translated due to the related cost. Such being the case it seems that a foreign language document’s English abstract would have to have been identified as very clearly relevant to the problem at hand before one went to the effort of translating it.

33. While the Opponents’ have provided verified translations of D4 and D7 in evidence, they have not provided nor discussed any English abstracts of D4 and D7 that were presumably available prior to the priority date. They have also not led evidence as to whether the PSA would have seen such English abstracts as relevant. As such the Opponents have not clearly established that the PSA could have been in a position to order a full translation of either of D4 and D7. The Opponents have therefore not established that the PSA could be reasonably expected to have ascertained and/or regarded as relevant either of D4 or D7.  

34. The Opponents have not established that the PSA could be reasonably expected to have ascertained either of D4 or D7. They have not therefore established that any claim lacks an inventive step in view of either document.

    Manner of Manufacture

35. The Opponents submitted that all claims of the specification lack the requisite quality of inventiveness on the face of the specification.[198] In particular, the Opponents submitted that the specification demonstrates that the invention lies in substituting known LDAs for another known LDA (i.e. hollow ceramic microspheres).

    [198] NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15; (1995) 183 CLR 655

36. While I have found that the inventions broadly claimed lack an inventive step in light of the common general knowledge, I can find no admission in the specification that hollow ceramic microspheres were a known and obvious alternative LDA for use in FRC. For at least this reason the Opponents have not established that any claim was obvious based on the face of the specification.

    Conclusion

37. The opposition succeeds on the grounds that claims 1-8, 12-24, 26-29, 31-40 and 42 of 2006241323 and claims 1-18, 21-24 and 26-30 of 2010246457 lack an inventive step. My findings may clearly be overcome by amendments to both applications. Subject to an appeal of this decision, I allow the Applicant a period of two months to propose amendments. 

    Costs

38. The Opponents have been successful in their opposition. Generally costs should follow the event and I see no reason to depart from this approach. I will award costs according to Schedule 8 against the Applicant.

    Rhys Munzel
    Delegate of the Commissioner of Patents