Belden Wire and Cable Company v Pacific Dunlop Limited

[1997] APO 30

official notice

decision of a delegate of the commissioner of patents

Application  :          No. 658282 in the name of BELDEN WIRE AND CABLE COMPANY

Title:          Flexible Shielded Cable

Action:          Opposition under section 59 (Patents Act 1990) by PACIFIC DUNLOP LIMITED

Decision:          Issued            .

Abstract

The opposition succeeds on some grounds.  On the evidence the claims are novel, and as the evidence does not clearly establish what is the common general knowledge, the ground of obviousness is not made out.  However the invention claimed is a “mere new use” and is not patentable, and there are some section 40 defects.  Opportunity to amend.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 658282 by BELDEN WIRE AND CABLE COMPANY and opposition thereto by PACIFIC DUNLOP LIMITED.

background

Patent application 658282 (the application) was filed as 36723/93 on 5 April 1993 by COOPER INDUSTRIES INC, claiming a Convention priority of 14 April 1992.  Following a section 113 request dated 14 September 1993, the Commissioner directed that the application proceed in the name of BELDEN WIRE AND CABLE COMPANY (the applicant).  Acceptance was advertised on 6 April 1995.

On 6 July 1995 a notice of opposition was lodged by PACIFIC DUNLOP LIMITED (the opponent), followed on 6 October 1995 by a statement of grounds and particulars. The grounds relied on are non-compliance with sections 18(1)(a) and (b), and sections 40(2) and (3), Patents Act 1990.

An application for an extension of time to 6 April 1996 in which to serve evidence in support was granted, and service of evidence in answer and in reply was completed on 9 July 1996 and 8 October 1996 respectively.

A hearing was held in Canberra on 20 March 1997.  The applicant was represented at the hearing by Mr G Turner, patent attorney, of Spruson and Ferguson, and the opponent by Mr A Ward, patent attorney, of Griffith Hack.

THE SPECIFICATION

The invention relates to a flexible coaxial cable; generically such cables have an electrically conductive core surrounded by a layer of a dielectric material, which in turn is surrounded by some layered arrangement of electrical shielding and mechanical protection.  The cables are most commonly used for the transmission of low-level information-bearing electrical signals.

The specification refers to two known coaxial cables, disclosed in US patents 4486252 and 4694122; these both form part of the evidence in support, and I will return to them later.

It is stated in the specification that the known cables permit movement of the core relative to the other parts of the cable, and though not explained, it appears that this movement relative to the dielectric or the shield generates electrical noise in the cable, which can be of comparable magnitude to the signal.

Accordingly, it is stated at page 1 line 23 to page 2 line 2:

“it is an object of this invention to provide a flexible cable assembly that improves upon the prior art”, and,

“it is a further object to provide a cable assembly that provides a stronger adhesive between the metal shield and the conductor.”

Before proceeding with the accepted specification, I will refer to the specification as filed.  Page 2 lines 5-20 reads as follows:

“In accordance with these and other objects, a flexible cable assembly is provided that includes a flexible metal conductor, a layer of dielectric positioned about the conductor, and a flexible metallic shield disposed about the dielectric.  The shield preferably employs a very thin metallic foil having a thickness less than .0030 inches, and a metallic braid, serve, flat/ribbon tape or other type of braid disposed about the foil.  Because of the thinness of the foil, a better fit between the braid and the dielectric occurs, which limits relative movement of the dielectric relative to the shield.

In accordance with the invention, the metallic foil or the braid may comprise a metal that is non-copper.  For example, a copper foil may be used with a braid that is bronze, plated bronze, nickel, plated nickel, silver, or gold, or instead, a copper braid may be used with a foil that is bronze, silver, nickel or gold” (emphasis added).

Page 5 at lines 22-23 reads:

“Both the metallic foil 24 and the metallic braid 26 may be copper.”

The broadest claim as originally filed is as follows:

“1.A flexible shielded cable comprising:
at least one elongated flexible metal conductor;
a layer of flexible dielectric material disposed about said conductor;
a thin metallic foil disposed about said layer of flexible dielectric material having a thickness of less than .0030 inches; and
a layer of bonding agent bonding said braid and said foil.”

It is clear there is a lack of consistency between the page 2 statement on the one hand and the page 5 statement and the claim on the other.  After amendment in response to an examiner’s objection the page 2 statement reads:

“In accordance with these and other objects, a flexible cable assembly is provided that includes a flexible metal conductor, a layer of dielectric positioned about the conductor, and a flexible metallic shield disposed about the dielectric.  The shield employs a very thin metallic foil having a thickness less than .0030 inches (.0762mm), and a metallic braid, serve, flat/ribbon tape or other type of braid disposed about the foil.  Because of the thinness of the foil, a better fit between the braid and the dielectric occurs, which limits relative movement of the dielectric relative to the shield.

In accordance with the invention, the metallic foil or the metallic braid may comprise a metal that is non-copper.  For example, a copper foil may be used with a braid that is bronze, plated bronze, nickel, plated nickel, silver, or gold, or instead, a copper braid may be used with a foil that is bronze, silver, nickel or gold.”

The statement on page 5 is unaltered.  The accepted claims are as follows:

“1. A flexible shielded cable having at least one elongated flexible metal conductor, a layer of flexible dielectric material disposed about the conductor, a thin foil disposed about the layer of flexible dielectric  material, the foil having a thickness of less than 0.0030 inches (.0762mm), a metallic braid or serve disposed about the foil and a layer of bonding agent bonding the foil and braid or serve, comprising
(a) when the foil is a copper foil tape or a copper composite tape, the metal braid or serve is bronze, plated bronze, nickel, plated nickel, silver or gold; and
(b) when the foil is conductive epoxy, non-copper composite tape or non-copper foil tape, the metal braid or serve is copper,bronze, plated bronze, nickel, plated nickel, silver or gold.

2. A cable  as claimed in claim 1 wherein said metallic foil is copper and the metallic braid or serve is bronze, plated bronze, nickel, plated nickel, silver or gold.

3. A cable as claimed in claim 1 wherein said metallic foil is bronze, silver, nickel or gold and the metallic braid or serve is copper.

4. A cable as claimed in any one of the preceding claims wherein said bonding agent is solder, tin or a conductive polymer.

5. A cable as claimed in any one of the preceding claims wherein said dielectric material is polyethylene, polypropylene, fluorinated ethylene polymer, polytetrafluoroethylene or perfluoroalkoxy or cellular forms thereof or mixtures thereof.

6. A cable as claimed in any one of the preceding claims wherein the thin metallic foil is a foil tape with a dielectric substrate and a metallic surface, with the metallic surface having a thickness of less than .0030inches (.0762mm), and the substrate is bonded to the dielectric material disposed about the conductor.

7. A cable as claimed in claim 6 wherein the metallic foil is a conductive epoxy polymer.

8. A cable as claimed in claim 6 or 7 wherein the bonding agent is a conductive epoxy polymer.

9. A cable as claimed  in any one of the preceding claims wherein the braid is a flat/ribbon tape.

10. A cable as claimed in any one of the preceding claims wherein the braid is a single serve.

11. A cable as claimed in any one of claims 1 to 9 wherein the braid is double served.

12. A cable as claimed in any one of the preceding claims wherein said cable includes an outer polymer jacket.

13. A cable as claimed in any of the preceding claims wherein said cable has a plurality of flexible conductors encompassed by the layer of flexible dielectric material, each conductor being insulated from the other conductors.

14. A cable as claimed in any one of the preceding claims wherein the metallic braid or serve applies sufficient pressure to the layer of dielectric material to form a mechanical fit with the layer of flexible dielectric.

15. A cable as claimed in any one of the preceding claims wherein said cable has grooves formed in the layer of dielectric material by the metallic braid or serve.

16. A flexible shielded cable substantially as hereinbefore described with reference to Figures 1 and 2.

17. A flexible shielded cable substantially as hereinbefore described with reference to Figure 3.”

I note here that the specification, as filed and as accepted, is entirely silent as to any significance that attaches to the choice of materials for the foil and the braid - in contrast with the significance of the thinness of the foil.

EVIDENCE

The evidence in support consists of a statutory declaration by Glenn Ronald Dangerfield (Dr Dangerfield), employed for about 22 years in a number of technical positions with MM Cables Communications Products, most recently as Quality Manager.  This declaration is supported by exhibits GRD-A and B and GRD-1 to 8, which includes five US patent specifications, extracts from the 1990 cable catalogue  of the applicant (or an associated company), a copy of a paper presented at the International Wire and Cable Symposium 1989, and some data sheets dated 7/87, which provide some details of composite foils of a kind (Dr Dangerfield says) supplied to the cable industry.

The most important of the exhibits is US patent 4694122 (US ‘122).  This document discloses a
a cable which is identical to the cable claimed at filing, and differs from the accepted main claim only in the materials used for the foil and the braid, being limited (including in its claims) to copper on copper.  This patent is owned by the present applicant, and curiously, is cited in the present specification as prior art.

The evidence in answer consists of a statutory declaration by Ananda Mohan Sanagavarapu (Dr Ananda), with his CV as sole exhibit AMS-1, and who is presently employed as a senior lecturer in the School of Electrical Engineering UTS, and who was previously employed for a substantial number of years in teaching and research positions in a variety of academic institutions.

The evidence in reply consists solely of a further declaration by Dr Dangerfield.

Both declarants possess PhD’s, Dr Dangerfield in Physics and Dr Ananda (I think) in Electrical Engineering.

SUBMISSIONS

In the following I summarise the main issues raised.

From the Opponent

Mr Ward compared the specification as filed and as accepted.  As filed the specification generally describes and most broadly claims the cable foil and braid as being made from a variety of materials, without any suggestion that the invention resides in a selection of them.  As accepted the broadest claim includes the foil and braid as being chosen from a number of materials, but excludes both of them being copper.  It is apparent, he said, that the claims were amended simply to avoid the disclosure of US ’122, which is for an identical cable but with copper foil and braid.

He noted that the specification still contains a statement that the foil and braid may both be copper; this is inconsistent with the accepted claims, and more importantly, is indicative that at the time of filing, the invention was believed to be other than a choice of materials.

The opponent’s declarant, it was said, has spent most of his working life in the cable manufacturing  industry, and he should be accepted as an expert in the field.  It would be wrong to dismiss him as the “hypothetical skilled craftsman” just because he has a doctorate and has held some management and research positions.

Consequently his opinion should be accepted that, on the priority date, the materials claimed were known and were known for use in cable manufacture.  Depending on the application, materials were chosen according to their properties of conductivity, strength, corrosion resistance, cost, weight, flexibility, and so forth.

It was submitted that, in contrast to Dr Dangerfield, the applicant’s declarant Dr Ananda has spent his whole working life as an academic, involved in teaching and research.  He is not an expert in cable manufacture and cable materials, and his statement that the choice of materials is not a straightforward  matter is not supported by any reasoning and should not be accepted.

Dr Ananda makes no reference to any specific problem solved or advantage gained in moving from copper on copper as in US ‘122 to what is now claimed.  It was argued that where the invention lies in the choice of materials, known per se and known to be suitable for cable construction, then the onus is on the applicant to disclose problems or advantages when considering obviousness and manner of manufacture.  I was referred to Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232, Asahi Kasei Kogyo KK v WR Grace & Co 22 IPR 491, NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd 26 IPR 513, and Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd 34 IPR 256.

It was put that what is claimed is a mere new use of known materials, there is no demonstrated threshold of invention, and the invention is not for a manner of manufacture.

On the question of novelty, it was argued that the different materials made no contribution to the working of the cable (Griffin v Isaacs 12 ALJ 169), or alternatively, the difference was a mere workshop variation (RC Werner & Co Inc v Bailey Aluminium Products Pty Ltd 85 ALR 679. On my suggestion that the appropriate test was the “reverse infringement test” (Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 and Nicaro Holdings Pty Ltd v Martin Engineering Co 16 IPR 545), it was recognised that the argument would then need to be along the lines of “mere mechanical equivalent” (eg Werner v Bailey (supra)).

As regards obviousness it was submitted that as the same person is the owner of US ‘122 and the present application, and the present specification refers to US ‘122 as prior art, it is permissible (section 7) to combine this document with the common general knowledge (cgk) in the art at the priority date.  It was also said that the number of different combinations encompassed by claim 1 points away from the application being for a real invention.

Several section 40 issues were raised, as follows.  Claim 7 characterises the “thin metallic foil” as a “conductive epoxy polymer”, which must be incorrect, compared with (eg) a “metallised epoxy polymer”.

There is an inference from the specification that where the foil is copper the braid is non-copper.  However claim 1 includes the combination of copper foil and bronze braid, and (it was submitted) bronze is a copper alloy.

It was also said that the accepted claims lacked fair basis, as they include the case where the foil is a conductive epoxy, whereas at filing the broadest claim was limited to a metal foil.  Some other section 40 matters were also particularised.

Finally, Mr Ward put the view that most if not all the evidence filed was not needed to support the opponent’s case; all that was really needed was the admitted US ‘122 and the AU-A and AU-B specifications.

From the Applicant

Initially Mr Turner pointed out that the issue of bronze being in fact a copper alloy had not been previously raised in either the particulars or evidence, and he was unable to respond to it at this time.  Mr Ward replied that he thought it was in the ordinary knowledge of most people; the matter was not pursued further, and I will refer to it in my decision.

Mr Turner referred me to a number of cases where the qualities of the hypothetical skilled but non-inventive craftsman are considered, with the view of determining common general knowledge and obviousness.  These included Valensi v British Radio Corp (1973) RPC 337, Catnic Components Ltd v Hill & Smith Ltd (1982) RPC 183, HPM Industries v Gerard Industries (1957) 98 CLR 424, Minnesota Mining and Manufacturing Co v Beiersdorf (Aust) Ltd (1980) 144 CLR 253, and Clafton Pty Ltd v Forbes Engineering Holdings Pty Ltd 19 IPR 29.

It was then strongly argued that the opponent’s declarant, Dr Dangerfield, was far from being the kind of person identified by these authorities.  His academic qualifications clearly show, it was said, that he is a person of superior intelligence, and his work experience in the development of new products including as Research Manager of his employer’s development laboratory, together with other management roles, show that he is innovative.  Consequently, the authorities show that he cannot provide evidence as to what is common general knowledge, and what would be obvious.

Detailed submissions were made on the question of novelty.  It was first said that the correct test to apply was the “reverse infringement test” as set out in Meyers Taylor v Vicarr (supra), and the following points were made.

A consideration of each of the exhibits alone showed that one or another of the features of claim 1 were missing, and further, there was no relationship between any two or more of the documents such that they could be considered as a single source of information as required by section 7 of the Act.  Also, there was no evidence that the differences between the claim and the exhibits could be considered as mere mechanical equivalents (Werner v Bailey and Nicaro v Martin (supra)).  In addition, it was said that there was no evidence of publication in Australia of any of the non-patent documents.  Therefore by any permissible test the opponent’s case of lack of novelty must fail.

In respect of the opponent’s case of obviousness, Mr Turner made the following submissions.

Primarily, that by virtue of section 7 of the Act obviousness is determined having regard to the common general knowledge before the priority date, and the evidence fails to establish what is in fact the common general knowledge.  This follows as Dr Dangerfield is not the ordinary skilled addressee and his views on what constitutes common general knowledge should not be accepted, and also, the evidence fails to establish that the patent documents were common general knowledge (3M v Beiersdorf (supra)), or that the non-patent documents were published in Australia at all.  In fact, it was said, all the evidence points away from the invention, there being no signpost or thread that would lead to it.

Submissions were also made in respect of  the section 40 particulars.  I think these are mostly fairly minor and correctable if necessary by amendment, and I will deal with them in my decision.

The one I would mention is the applicant’s response to the fact that the description as filed and as accepted states that both the foil and the braid “may be copper”, and I note continues on to describe what is substantially accepted claim 1 as being the “preferred embodiment of the invention”.  Of course this is inconsistent but could easily be amended.  The significance of it in the opponent’s view is that at filing the invention was not thought to be concerned with a selection of materials at all, but something else, which turned out to be disclosed  in US ‘122.  Mr Turner’s response to this was that the specification contains an obvious error, and should be read as both the foil and the braid “may not be copper”.  This was disputed by Dr Dangerfield.

Finally, in response to Mr Ward’s contention that, at least for this kind of invention, there was a requirement for the specification to set out the problem overcome or the advantage gained, Mr Turner replied that the only requirement was that the specification supply sufficient information to the skilled addressee to enable the invention to be put into practice.

Apart from section 40 issues, all significant submissions went to claim 1.

DECISION

Section 40

Not all the section 40 items particularised were raised at the hearing.  My conclusion on those that were, and the more significant of those particularised that were not are as follows, identified as in the particulars.

(i) The specification as filed and as accepted reveals that the foil could be made from a conductive epoxy (page 3 lines 19 and 17 respectively).  Claim 1 does not lack fair basis on this ground.

(ii) The statement on page 5 lines 22-23 that both the foil and the braid may be copper is not consistent with the accepted claims and should be corrected, as should the immediately following statement regarding a preferred embodiment.

(v) I agree that claim 6 is not clear in its appendency to claim 1.  The latter defines the foil, which may be a composite tape, to have a total thickness of less than 0.0762mm.  Claim 6 defines that the composite tape has a metallic surface alone of less than 0.0762mm.  I note that this has been avoided in corresponding US patent 5293001 by using different wording.

(vi) Strictly speaking there is no antecedent for “said (or the) metallic foil” in a number of claims, but this only causes confusion where in fact the foil is apparently not metallic.  This occurs in claim 7 where the foil is a conductive epoxy polymer.  Also claim 7 should not be appended to claim 6, which is limited to a metallic composite tape.

In my opinion the other section 40 particulars are incorrect or too minor to be of any concern.

Regarding the non-particularised submission that bronze is a copper alloy, the claim then including the combination of copper on copper, I consider that in context “copper” means substantially pure copper, not a copper alloy, and there is consequently no issue here.

Novelty

The test for want of novelty is the “reverse infringement test” as set out in Meyers Taylor v Vicarr (supra) at 235 where Aickin J said:

“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...”

The general rule as to what constitutes an infringement has been expressed by Lord Upjohn in Rodi & Weinenberger AG v Henry Showell Ltd (1969) RPC 367 at 391 as follows:

“The essential integers having been ascertained, the infringing article must be considered.  To constitute infringement the article must take each and every one of the essential integers of the claim.”

Also, per Lockhart J in Nicaro v Martin (supra) at 549:

“The invention must appear in a single disclosure, so it is not permissible to make a pattern or mosaic of or to read together various pieces of the prior art...”

Excepting that by virtue of section 7 two or more prior disclosures can be combined, provided that the relationship between the disclosures is such that they may be considered a single source of information.

In my opinion the evidence does not show that any of the exhibits can be combined in this way, nor was it particularly argued that they could.  US ‘122 does include a reference to US 4456282, but the latter does not disclose the conductive materials claimed, and it is doubtful anyway that such a reference would establish a single source of information - see Nicaro v Martin (supra).

The question then is, does US ‘122 disclose all the essential features of claim 1?  Clearly it does not disclose the particular selection of foil and braid materials claimed.  There was some argument along the lines of mechanical equivalents, but I think that this is only relevant when a substitution is made for a non-essential feature; the question still remains, is the selection of materials an essential feature of the invention claimed?

It could be argued that as there is no disclosure of any problems or benefits in this selection, then it cannot be essential.  Certainly if there is supported evidence of some advantage or problem then the feature is essential, but I am not sure that the opposite is necessarily the case.  Whereas in Ryan v Lum 14 IPR 513 there was uncontested expert evidence that the distinguishing feature of the invention in suit was of no technical effect, that is not the case here.

Also, as shown in Catnic v Hill & Smith (supra), even if in fact a particular feature is not essential to the working of the claimed invention, the applicant may nevertheless make it an essential feature of the claim by clearly limiting the claim to subject matter having that feature.  I think that is the present case.

Consequently, as no single document or single source of information discloses all the essential features of claim 1, I conclude that this claim and all its dependant claims are novel.

Inventive Step

The question of inventive step or obviousness has to be decided against the background of the common general knowledge (cgk), in the art, in the patent area, at the priority date.  Also, cgk can be taken with a prior disclosure, so long as a person skilled in the art could be reasonably expected to have ascertained, understood, and regarded it as relevant (section 7(2) and (3)).

In 3M v Beiersdorf (supra) at 292 Aikin J said:

“The notion of common general knowledge involves the use of that which is known or used by those in the relevant trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge”.

It is for the evidence to establish what is cgk, given that it is not agreed by the parties, and in my opinion the evidence in this case is fairly weak.  The evidence consists of Dr Dangerfield’s declaration, patent specifications, and several non-patent documents.  Dr Dangerfield, whom I accept as having exceptionally wide and relevant experience in the cable industry, does not seem to plainly say that, in his opinion, the chosen materials, in the way claimed, were part of cgk.

What he most relevantly says in his declaration is:

“While (US ‘122) does not specifically disclose the use of bronze, plated bronze, nickel, plated nickel, silver or gold, or conductive epoxy, it was well known (at the priority date) to myself and I believe to others that the aforementioned metals...were suitable for use as a metal braid...”

While the evidence shows that all the claimed materials (with the possible exception of nickel) were known in the cable art, individually and in some combinations, I consider that it falls short of establishing what is cgk. There was no evidence that the patent specifications were part of cgk, and no actual evidence of publication in Australia of the Belden catalogue, Lamiglas data sheets, or the IWCS paper (GRD-4,5,7).  It seems to me then, that so far as establishing what is cgk is concerned, these documents, which are the whole of the exhibits in support, must be essentially disregarded.

As in my view the evidence fails to establish what is common general knowledge, then the opponent’s case on the ground of obviousness must necessarily fail.

Manner of Manufacture

Apart from some contradiction in the consistory statement, the description and claims generally at filing support the view that the applicant at that time believed that the invention lay in the use of a thin foil, in a cable of the present structure.  It has not become clear how the applicant came to overlook the fact, if indeed they did, that such a cable was disclosed in their own US ‘122.  However it may be relevant that Australian patent 590389, which derives priority from the same document as US ‘122, does not disclose such a thin foil.

In any event, when faced with US ‘122 during examination, it appears that the applicant returned to the filed specification to see what could be salvaged.  What was chosen were materials for the foil and braid other than copper and copper, that being the sole prior disclosure.  These alternative materials were originally described in the context of preferred embodiments, and for that matter they still are.  Thus at page 5 line 23 onward:

“In accordance with the preferred embodiment of the invention, however, either the metallic foil 24 or metallic braid 26 may be constructed of a metal other than copper.  For example, the metallic foil may be copper and the metallic braid may be bronze, plated bronze, nickel, plated nickel, silver or gold.  Instead, the metallic braid may be copper and the metallic foil may be bronze, silver, nickel or gold.”

Of course it is not uncommon during the course of examination to make an essential feature out of what was initially thought to be an optional feature, and it is in order to do so, as long as what is then claimed is a patentable invention.

In this application a notable aspect was the failure to identify any consequences at all involved in replacing the copper on copper combination with the other combinations.  It was argued by the applicant that it was not required to do so.  On the other hand it was argued by the opponent that the applicant has merely taken materials known per se, known in the cable art, known to have properties making them suitable for use in cable shielding, and so used them, overcoming no difficulties in the manufacture and no improvement over the prior art.  The opponent pointed out that the applicant’s declarant Dr Ananda made only a generalised and non-specific reference to the applicant’s supposed difficulties.

This, they said, was the mere new use in a known article of a known material, the known properties of which made it suitable for this new use.  In Commissioner of Patents v Microcell (supra) at 249 the Court said:

“ But it is not an inventive idea for which a monopoly can be claimed to take a substance which is known and used for the making of various articles, and make out of it an article for which its known properties make it suitable, although it has not in fact been used to make that article before.”

And at 251:

“We have in truth nothing but a claim for the use of a known material in the manufacture of known articles for the purpose of which its known properties make that material suitable.  A claim for nothing more than that cannot be subject matter for a patent, and the position cannot be affected either by the fact that nobody thought of doing the thing before, or by the fact that, when somebody did think of doing it, it was found to be a good thing to do.”

Other cases relevant to this issue are Asahi v Grace and Philips v Mirabella (supra); both of these cases clearly distinguish between invention in the sense of obviousness and invention in the sense of manner of manufacture.  The latter also found the invention not to be patentable, while noting that the case on obviousness was not pursued because of a presumed difficulty in establishing what was cgk.

I note that in many of the “mere new use” cases where the invention was found to be unpatentable, this finding was despite the fact that some improvement in the prior art was made.  For a simple example see L & G’s Application (1941) 58 RPC 21. But even that is not the case here; I consider that in the circumstances of this case the onus is on the applicant to show that they have at least made some advance in the art, and this they have not done.

Consequently I conclude that the opponent’s case on the ground invoking section 18(1)(a) is made out; claim 1 is not for an invention which is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies.  The other claims 2-17 are all dependent on claim 1, and in the absence of any submissions in their support, I make the same finding in regard to them.

CONCLUSION

I have found that the claims are novel, and that the ground of obviousness has not been made out.  However there are some section 40 matters outstanding, and I have found that none of the claims are for a manner of manufacture.  While I have doubts that the specification discloses patentable subject matter, I nevertheless allow the applicant 60 days from the date of this decision in which to propose amendments directed toward overcoming my findings, else I will refuse the application.  Subject of course to any appeal.

COSTS

The opposition having been successful, and there being no special circumstances, I award costs against the applicant.

RG Tolhurst
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Spruson and Ferguson, Sydney

Patent attorneys for the opponent   : Griffith Hack, Melbourne