BGC(Australia) Pty Ltd and CSR Building Products Limited v James Hardie Technology Limited

Case •

[2014] APO 55

•

5 August 2014

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

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

Patent Application:                   2006241323

Title:Fiber cement building materials with low density additives

Patent Applicant:  James Hardie Technology Limited

Opponens:  BGC (Australia) Pty Ltd and CSR Building Products Limited

Delegate:  Dr S.D. Barker

Decision Date:  5 August 2014

Hearing Date:  Written submissions completed on 3 June 2014

Catchwords:  PATENTS – Opposition under section 104 – allowability under section 102(1), 102(2)(a) and 102(2)(b) considered – amendment allowed

Representation:  Patent applicant:  Shelston IP

Opponent:Griffith Hack

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                   2006241323

Title:Fiber cement building materials with low density additives

Patent Applicant:  James Hardie Technology Limited

Date of Decision:  5 August 2014

DECISION

The oppositions fail on all grounds. 

I allow the amendments.

I award costs according to Schedule 8 against BGC (Australia) Pty Ltd and against CSR Building Products Limited.

REASONS FOR DECISION

  1. Patent application 2006241323 was filed by James Hardy Technology Limited (the applicant).  The grant of a patent was opposed by BGC (Australia) Pty Ltd and CSR Building Products Limited (the opponents). That opposition is still proceeding. The applicant has sought amendments under section 104, and the opponents have filed an opposition to the allowance of the amendments. The present decision relates to the latter opposition only.

    The opposition

  2. The statement of grounds and particulars was filed after the granting of an extension of time under section 223.  The statement identified four grounds of opposition.  These grounds were that the amendments are not allowable under section 102(1); 102(2)(a); 102(2)(b)–in that it fails to comply with section 40(2); and 102(2)(b) – in that the amendments fail to comply with section 40(3).  The opponents filed their written submissions on 04 April 2014 and the applicant filed their written submissions on 08 May 2014.  Further submissions were filed by the opponents on 26 May 2014 and the applicant responded on 3 June 2014. 

    The specification

  3. The specification relates to formulations of fibre reinforced cement containing density modifying additives such as volcanic ash and hollow ceramic microspheres.  The specification as filed ended with 68 claims and 4 Figures.  There were 34 claims at acceptance.  At acceptance claims 1, 11, 19 were the independent claims and claims 31-34 were omnibus style claims. 

    The legislation

  4. Section 104 of the Patents Act 1990 (the Act) sets out the provision that states that the applicant is entitled to request amendments:

(1)   An applicant for a patent or a patentee, may, subject to this Act, and subject to and in accordance with the regulations, ask the Commissioner for leave to amend the relevant patent request or complete specification, or any other filed document, for any purpose including either or both of the following:

(a)removing a lawful ground of objection to the request or specification, whether that objection is raised in the course of an examination or re-examination or otherwise;

(b)correcting a clerical error or an obvious mistake.

  1. Section 104(4) provides for opposition.

    (4)  The Minister or any other person may, subject to and in accordance with the regulations, oppose allowing an amendment.

  2. Section 104(5) then places the requirement that the amendments conform to section 102.

    (5)  The Commissioner must not allow an amendment that is not allowable under section 102.

  1. Section 102(1) was amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2011.  However, the transitional arrangements mean that these amendments to the Act do not apply in the present case (because the request for examination was filed before 15 April 2013).  The applicable parts of section 102 as it applies to the present case are:

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

(2)   An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:

(c)a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or

(d)the specification would not comply with subsection 40(2) or (3).

  1. The relevant time in section 102(2) is defined in 102(2A) as after the specification has been accepted.  The current application was accepted on 6 August 2010 and the amendments were filed on 26 April 2013.  As a result section 102(2) applies. 

  2. The questions that need to be decided in this opposition are whether as a result of the amendments:

    • the claims claim matter not in substance disclosed in the specification as filed (section 102(1))
    • the claims fall within the scope of the claims before amendment (section 102(2)(a))
    • the specification fully describes the invention as required by section 40(2) (section 102(2)(b))
    • the claims are fairly based as required by section 40(3) (section 102(2)(b))

    Are the amendments allowable under section 102(1)?

  3. The amendments to claims 1, 2, 12, 14, 15, 19, 20, 22, 23, 26, 31, 32 and 35 were opposed under section 102(1).  I will now look at the changes to these claims and compare them to the specification as filed and ask the question raised by section 102(1).  For this purpose I need to compare the current amendments not with what was in the claims as accepted but with the disclosure of the originally filed specification.

  4. A marked up copy of the proposed amendments to claim 1 is shown below:

1. 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 about or less than between 0.9 to 1.2 g/cm3 while at the same time the the low density additive maintains moisture expansion of the building material at a level of between about 1.15% and 0.2%.

What is the result of the amendment?

  1. Here the result of the amendment is a change from "about or less than 1.2 g/cm3" to "between 0.9 to 1.2 g/cm3" and the removal of a superfluous "the".  The question posed by section 102(1) is whether this range of 0.9 to 1.2 was in substance disclosed in the specification as filed.

Are densities between 0.9 and 1.2 g/cm3 in substance disclosed in the specification as filed?

  1. The opponents have argued that the amendment results in a claim to density ranges outside of that in the description when the moisture expansion is taken into consideration.  However, this seems to be shifting away to more of a utility or an enablement type of argument.  The proper question is whether these densities are "in substance disclosed in the specification as filed"?

  1. The meaning of "in substance disclosed" has been clarified by the courts.  In the UK decision Ethyl Corporations Patent [1972] RPC 169, Lord Denning MR said at 195:

"this requirement of 'fairly based' is virtually the same as the requirement that the amendment be 'in substance disclosed'."

  1. This interpretation of "in substance disclosed" was accepted by Carr and Goldberg JJ in RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd (1998) 42 IPR 353 at 363.

  1. The inquiry under section 102(1) therefore turns to:  is a claim to the density range 0.9 g/cm3 to 1.2 g/cm3 fairly based on the specification as filed?  It is well settled that fair basis is assessed by asking whether there a real and reasonably clear disclosure of the claimed invention in the specification, and do the claims travel beyond the subject matter of the invention described in the specification (Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58, 217 CLR 274).

  1. Claim 1 of the specification as filed recites:

"the density of the building material is about 1.2 g/cm3 or less" (my emphasis)

  1. The description as filed recites on page 3:

"The density of the building material is preferably about 1.2 g/cm3 or less"

  1. The density given in table 10 on page 13 for formulation D with the addition of microspheres is 0.9 g/cm3 and formulation A1 in table 6 has a density of 1.16 g/cm3 using the addition of microspheres.  Formulation K, which uses volcanic ash falls in the middle with a density of 1.11 g/cm3.  Therefore the examples clearly have densities falling within the range of 0.9 g/cm3 and 1.2 g/cm3.

  1. I cannot see how a clear statement of a density of 1.2 g/cm3 or less and specific examples with densities of 0.9 g/cm3, 1.16 g/cm3 and 1.1 g/cm3 are not a real and reasonably clear disclosure of densities between 0.9 g/cm3 and 1.2 g/cm3. 

  1. There is nothing in the specification as filed that identifies the lower end of the range as being 0.9 g/cm3.  However, what must be in substance disclosed is densities across the range, not the values forming the limits of the range.  As Lord Denning MR said in Ethyl Corporations Patent at page 194-195:

    "The amendment is 'in substance disclosed in the specification before the amendment' because the original specification contains examples of compositions within the new range of 20 to 80.  It is I think unnecessary for the original specification to use words or figures describing the limits of the range (e.g. words saying that a useful application is in the range from 20 to 80).  It is sufficient if the original specification discloses instances of application within that range  …  The range is sufficiently disclosed by the marker posts.  It is not necessary to draw a line around them."

  1. The amendments to claim 1 are therefore allowable under section 102(1). 

  1. The next claim objected to under 102(1) is claim 2.  This new claim is dependent on claim 1, but adds the feature of the formulation "comprising between 7 to 15 % cellulose fibers".  The new claim 2 reads:

    The building material according to claim 1 wherein said formulation comprises between 7 to 15 wt% cellulose fibers.

  1. The question to be answered is whether there a real and reasonably clear disclosure of a formulation with cellulose fibres between 7 and 15 wt% in the specification as filed?  Page 3 of the specification as filed makes the following statement:

"In one embodiment, about 4.1%-15% cellulose fibers are provided in the formulation."

  1. Each of the examples uses cellulose fibres in an amount that is between 7% and 8%.  It seems that there is in substance a disclosure of 7 to 15% cellulose fibres.  I note that the specification as filed refers to "%", not "wt%".  However, the specification further discloses that below 4 wt% and above 15 wt% are undesirable (see page 17 lines 25-29).  The percentage is therefore clarified as based on weight, i.e. wt%.  I conclude that there is a real and reasonably clear disclosure of this, and the amendment is allowable under section 102(1).

  1. The next amendment opposed is the new claim 12.  The claim as proposed to be amended is as follows:

    The building material according to any one of the preceding claims further comprising one or more additives selected from silica fume, geothermal silica, fire retardant, thickeners, pigments, colorants, plasticisers, dispersants, foaming agents, flocculating agents, water-proofing agents, organic density modifiers, aluminium powder, kaolin, alumina trihydrate, mica, metakaolin, calcium carbonate, wollastonite, polymeric resin emulsions, or mixture thereof.

  1. Here additives in the formulation are selected from a specific list.  The specification as filed discloses the use of additives at page 16:  0%-10% additives are used and a list is provided on page 5 lines 7-11 which matches what is listed in this claim.  These additives are in the specification as filed.  I consider that this is a real and reasonably clear disclosure of the additives. 

  1. The amendments to claims 14 and 15 make identical changes to the changes made in claims 1 and 2.  It follows that these amendments are allowable under section 102(1).

  1. The next amendment that has been opposed under section 102(1) is claim 19.  The change involves the lowering of the range of Portland cement added to the formulation to be between 10 ‑ 45%, down from 5 - 80%.  The specification as filed mentions "one preferred composition may include about 5% - 80% Portland cement" on page 5 at line 15, and the tests in the specification fall within this range.  Similarly to claim 1, I consider that this is a real and reasonably clear disclosure of this feature.  Thus this amendment is allowable. 

  2. The opponents in their submissions have opposed claim 20, stating that it specifies the formulation comprises "up to 60% silica" (see page 10 paragraphs 46-48).  A marked up copy of claim 20 is shown below.

    14. 20. The formulation according to any one of Claims 11 14 to 13 19, wherein the aggregate comprises silica.

  3. Claim 21 incorporates the words "up to 60 % silica" so I will assume that they meant to oppose claim 21 as the amendments to claim 20 merely correct claim appendices.  The change is made from up to 80% silica to up to 60% silica.  The specification as filed states that the preferred composition may include "about 0% - 80% silica" on page 5 line 16 and the silica (aggregate) on the same page has 54% silica.  This is considered to be a real and reasonably clear disclosure and the change is allowable under section 102(1).

  1. Claim 22 and 23 were also opposed under section 102(1).  Claim 22 adds the list of additives that was added to claim 12.  It follows from the discussion about claim 12 that claim 22 is also allowable under section 102(1).  Claim 23 is a new claim and is dependent on claims 14-22 but adds the features of having 5-30% microspheres.  The tables in the specification as filed include formulations with 6%, 10%, 12%, 20% and 25% microspheres. The specification as filed also discloses microspheres in "one preferred embodiment" being between 2 and 60% (see page 16 lines 28-29).  This is considered to be a real and reasonably clear disclosure.  Therefore the new claim 23 is allowable. 

  2. On page 12 of the opponents' submissions there is a title "New Claim 26", however, they appear to be discussing claim 29 in the following paragraphs and indeed refer to claim 29.  I am therefore interpreting the opposition as directed to the amendments to claim 29 only.  The applicant also responded to claim 29. 

  3. The amendments to claim 29 introduce a range that is the "thermal shrinkage of the building material is between 1% and 5%".  This range is present in the specification as filed in claim 57, and also the examples in the tables fall within this range.  There is thus a real and reasonably clear disclosure of this feature in the specification as filed and the claim is not objectionable under section 102(1). 

  1. Claim 31 was opposed because it introduces the range of densities identical to the change added in claim 1.  As with claim 1 this range is allowable under section 102(1). 

  2. Claim 32 adds the same range for the cellulose fibres as claim 2 and it follows that, as with claim 2, this amendment is also allowable. 

  3. Claim 35 adds the specific additives that were listed in claim 12 and, as with claim 12, this amendment is allowable under section 102(1). 

  1. I therefore find the opposed amendments allowable under section 102(1).

    Are the amendments allowable under section 102(2)(a)?

  2. The amendments to claims 1, 14 and 31 were opposed under section 102(2)(a).  The nature of these amendments is identical in that they change the density from about or less than 1.2 g/cm3 to be between 0.9 and 1.2 g/cm3.  The previous claims had a density of about 1.2 g/cm3 or less than this amount.  The claims before amendment therefore allowed for all densities from 1.2 g/cm3 or lower, even theoretically 0 g/cm3.  Whilst a density of 0 g/cm3 might be an absurd construction any figure between 0 and 1.2 g/cm3 was encompassed.  The amendments have clearly narrowed this range, and they do in fact remove the possibility of a density of 0 g/cm3.  I therefore find that a density of between 0.9 g/cm3 to 1.2 g/cm3 is within the scope of about or less than 1.2 g/cm3 and this ground of opposition fails. 

    Are the amendments allowable under section 102(2)(b) with regard to section 40(2)?

  3. The amendment to claim 23 was objected to under this ground.  The ground of opposition is made out if the failure to comply with section 40(2) arises "as a result of the amendment".  Section 40(2) states:  

    (2) A complete specification must:

    (a) describe the invention fully, including the best method known to the applicant

    of performing the invention; and …

  1. The question raised by section 40(2) was asked in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8, 207 CLR 1:

"will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?"

  1. The specification gives formulations in the tables which include formulations with the microspheres present in the concentrations claimed.   The opponents argued that the microspheres are not clear and therefore it would not enable the invention to be performed.  The opponents cited a declaration from Sorrell (from the concurrent section 59 opposition) stating that the microspheres are not clear because of characteristics of cenospheres.  This is not "as a result of the amendment", since the microspheres were disclosed in the specification as filed, including the ranges (see above).

  1. There are examples in the tables of formulations which the person skilled in the art could make which would fall within the scope of the claims.  Therefore the claimed invention could be carried out by the skilled artisan.  This ground of opposition fails. 

    Are the amendments allowable under section 102(2)(b) with regard to section 40(3)?

  2. The amendments to claims 1, 2, 14, 15, 19, 20, 22, 23, 26, 31, and 32 were opposed under section 102(2)(b).  The ground of opposition is made out if the failure to comply with section 40(3) arises "as a result of the amendment".  Section 40(3) states the following:

(3)   The claim or claims must be clear and succinct and fairly based on the matter described in the specification.

  1. The opponents have argued that the amendments result in the claims not being fairly based on the description.  As noted above the test for fair basis is that there is a real and reasonably clear disclosure of the claimed invention in the specification. 

  2. The disclosures I have outlined above for section 102(1) provide a real and reasonably clear disclosure of the matter in the amended claims.  The description as it now stands contains these same disclosures.  The amendments have also introduced consistory clauses for these claims and the examples remain the same.  Together with these consistory clauses, the preferred embodiments, and the tables and tests I cannot find an inconsistency in the invention described and the invention defined in the claims. 

  3. Therefore this ground of opposition fails. 

    Conclusion

  4. The oppositions fail on all grounds.  I find the amendments allowable under section 102. 

    Costs

  5. The parties submitted that costs should follow the event.  I see no reason to depart from that result.  Costs should be awarded against the opponents.

    Dr S.D. Barker
    Delegate of the Commissioner of Patents

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