Bluescope Steel Limited
[2017] APO 59
•24 November 2017
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Bluescope Steel Limited [2017] APO 59
Patent Application: 2016208431
Title:Branded Products
Patent Applicant: Bluescope Steel Limited
Delegate: Dr N.R. Madsen
Decision Date: 24 November 2017
Hearing Date: Written submissions completed 3 November 2017
Catchwords: PATENTS – a pre-painted steel strip with partially removed layer constituting branding – examiner’s objection – grounds of manner of manufacture and inventive step – claims are not for a manner of manufacture – no patentable subject matter present – inventive step not considered – application refused
Representation: Patent attorney for the applicant: Griffith Hack
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2016208431
Title:Branded Products
Patent Applicant: Bluescope Steel Limited
Date of Decision: 24 November 2017
DECISION
I uphold the findings of the examiner that the claims are not for a manner of manufacture. I find no patentable subject matter in the application. Application refused.
REASONS FOR DECISION
Background
This matter relates to patent application 2016208431 in the name of Bluescope Steel Limited (the applicant), and examiner’s objections thereto under grounds of manner of manufacture and inventive step.
The present application has been the subject of one examination report, the contents of this report being largely reflected in the reports already generated in respect to three previous generations of this application. In this respect, an original application (2005222532) was filed on 12 October 2005 claiming priority from Australian provisional application 2004905899 providing for a priority date of 12 October 2004. The present application is the third successive divisional application whereby all but the present application have lapsed. In total, 9 adverse examination reports have issued in respect to the subject matter of the claims, with manner of manufacture and inventive step remaining prevalent issues.
As a result of the extended progress of the present subject matter through four generations of applications, the first report in relation to the present application indicated that the application would be referred to a hearing officer to consider whether to refuse the application. The applicant expressed a desire to be heard and was invited to file any submissions by 26 October 2017. The applicant filed submissions and claim narrowing amendments. In light of the submissions and amendments made I provided a further seven days for the applicant to file any final submissions.
The request for examination of the patent application was filed on 2 September 2016. As a consequence, substantive amendments to the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into effect on 15 April 2013 apply to the present patent application. Relevantly this includes: amendment to the law regarding inventive step constituting abandonment of the requirement that relevant prior art could reasonably be expected to have been ascertained, understood and regarded as relevant; and that all grounds of invalidity during examination, including manner of manufacture, are to be raised and maintained on the balance of probabilities.
The Specification
The specification is entitled “Branded Products” with the invention described in the specification specifically said to address problems in the effective branding of steel sheets that may be used in applications such as roofing and fencing. At page 2 of the specification it is noted that considerable marketing effort is exerted in developing and maintaining brand recognition. COLORBOND™ is identified as a key trademark of the applicant with it being noted that it is important for purchasers of roofing and fencing materials who have decided to purchase products at least in part due to their notable reputation, that they be able to verify that products are of the desired origin. The specification continues to suggest that there have been proposals to brand products made from pre-painted steel strips so purchasers can verify identity, but that these proposals are not entirely satisfactory.
At page 3 the specification adds:
…in the case of fence systems made from COLORBOND™ strip, the proposals either result in the brands being applied to surfaces of roll-formed steel strip that can not be readily inspected in an assembled fence or result in brands being applied to visible surfaces with the result that the brands are a dominant part of an assembled fence and are unsightly. Similar considerations apply in relation to roofing sheets and other products made from pre-painted steel strip.
The invention is thus said to be based on the realisation that an improved brand can be formed on a pre-painted steel strip by partially removing a section of a layer on the substrate such that branding does not form a “dominant” part of the product. Partial removal is said to be achieved by any means but preferably by a laser. The specification comprises one figure as follows showing a fence comprising branding:
The claims
The specification as proposed to be amended ends in 9 claims, 3 of which being independent. These independent claims are as follows:
1. A pre-painted steel strip includes a steel strip and a layer of paint covering at least one surface of the strip, the paint layer including a plurality of brands at spaced intervals along the length of the steel strip, with each brand being defined by a section or sections of the paint layer from which the paint has been partially removed and therefore has a thinner paint layer than the remainder of the paint layer which is un-branded and is visually identifiable, and wherein the size of each brand is relatively small compared to the surrounding area of the un-branded paint layer.
3. A roof sheet or a fence system made from a pre-painted steel strip, with the pre-painted steel strip including a steel strip and a layer of paint covering at least one surface of the strip, the paint layer including a plurality of brands that are defined by sections of the paint layer at spaced intervals along the length of the steel strip from which the paint has been partially removed and therefore has a thinner paint layer than the remainder of the paint layer which is un-branded and is visually identifiable in locations that are visible to a purchaser of the roof sheet or the fence system, and wherein the size of each brand is relatively small compared to the surrounding area of the un-branded paint layer.
5. A method of manufacturing a pre-painted steel strip includes the steps of (a) partially removing sections of a paint layer on the strip and therefore has a thinner paint layer than the remainder of the paint layer and is visually identifiable and forms a plurality of brands at spaced intervals along the length of the strip, wherein the size of each brand is relatively small compared to the surrounding area of the un-branded paint layer, and (b) thereafter coiling the strip.
Examiner’s objections
The examiner’s report in relation to the present application made reference to objections provided in previous reports. The examiner’s objection regarding inventive step is summarised with reference to an objection in the second report for application 2014206189 as follows:
“Claims 1 to 12 lack an inventive step in light of each of D1 and D2 individually in combination with common general knowledge in the art.
…
The arguments supplied with the amendments dated 22 July 2016 have been considered and found unconvincing. Methods of marking an article by removing a portion of the outer layer of the article are disclosed in the prior art documents (see the previous report for details).
In the argument, the assertion is made that the application differs from the prior art in three respects: first, that the article being branded is a steel strip; second that a plurality of brands are employed on a single article; and third, that the brand is relatively small compared to the branded article.
Regarding the first, it is considered that it would be obvious to the person skilled in the art that the methods of D1 and D2 could be applied to other articles, including painted steel strips.
Regarding the second, using multiple brands is regarded as a mere design choice. Once a method of marking an article has been chosen, no inventive step is seen in marking the object a second, third, or any number of additional times. Furthermore, it is considered that it would be obvious to the person skilled in the art that an article that is likely to be divided into smaller pieces when used will need a plurality of branding marks at spaced intervals along the length of the article to maximise the chance that any individual piece will carry at least one readable mark after division.
Regarding the third, the size of the mark is considered to be a design choice. Once a method of marking an article has been chosen, no inventive step is seen in making the mark smaller, unless a novel and inventive refinement has been employed to enable the production of a smaller mark than would otherwise be possible – which does not appear to be the case with the present application. (Additionally, note that without the presence of a technical refinement to enable to production of a smaller mark as discussed above, making the mark smaller is regarded as a solution to an aesthetic problem, not a technical one, as described in objection 3.)
Furthermore, it is considered that the features defined in the new claim 4 would be obvious to the person skilled in the art. Construction of fence systems from a plurality of fence panels, posts, and rails is well known in the art.”
For reference the citations identified above are:
D1: US 6433302 B1 (Miller et al) 13 August 2002
D2: US 6780012 B1 (Peterson) 24 August 2004The examiner’s objection regarding manner of manufacture is summarised with reference to an objection in the third report for application 2014206189 as follows:
“Claims 1-12 do not define a manner of manufacture within the meaning of Section 18(1)(a) of the Patents Act 1990 because what is claimed does not result in a material effect or advantage such that it can be considered patentable subject matter within the principles expressed by the High Court in NRDC [1959] HCA 67.
…
The applicants arguments filed on 27 July 2016 have been considered. The examiner recognises that the goal of the invention is to provide product identification in a way that does not detract from the aesthetic value of a product, as detracting from the aesthetic value of a product would damage the marketability of the product. However, it is considered that aesthetically pleasing products will naturally be more marketable than products that are not aesthetically pleasing, and therefore the simple fact that an invention that improves the aesthetic value of a product will improve the marketability of the product is not regarded as sufficient to make the invention a manner of manufacture.
The applicant references section 2.9.2.4 of the Examiner's Manual, which cites that if an article also has a technical feature it may be patentable, and that a process or means for creating an aesthetic affect may comprise a technical innovation and thus be patentable. For the first case, the Examiner's Manual gives the example of a tyre tread, which has a primarily technical purpose (improving the grip of the tyre on the road in wet conditions) as well as having the potential of having an aesthetic benefit (by having an aesthetically pleasing pattern in the tread). However, the choice of using a relatively small branding mark is not seen as providing a technical benefit over a larger mark, merely an aesthetic one. The second case requires that the method of generating the effect to represent a technical innovation, which does not appear to be the case here as the brand is produced by known methods (as disclosed in the cited prior art).”
Manner of Manufacture
The High Court in National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252 (NRDC), laid out the proper question for determination when one is considering patentable subject matter in the context of section 18(1)(a) of the Patents Act which refers to a “manner of manufacture”. They stated at [269] that the correct question is:
“Is this a proper subject according to the principles which have developed for the application of s. 6 of the Statute of Monopolies?”
With this at the fore of their considerations in respect of a claim to a process for eradicating weed from a stretch of land, the High Court in NRDC described subject matter that would be considered patentable (at [275]):
“The point is that a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art ... that its value to the country is in the field of economic endeavour.”
With reference to Virginia-Carolina Chemical Corp's Application [1958] RPC 35, I note that any presentation of information characterised solely by the content of that information has traditionally been non-patentable. It was considered that the intellectual or visual content of a paper, film or other medium related to the fine and not the useful arts.
More recently, it has been made clear that the assessment as to whether a claimed invention is properly the subject of a patent (i.e. is a manner of manufacture) is one of substance over form. As per D'Arcy v Myriad Genetics Inc [2015] HCA 35 (Myriad) at [144]:
“Whatever words have been used, the matter must be looked at as one of substance and effect must be given to the true nature of the claim.”
An approach to assessing the substance of a claim for patentability rather than its literal form is well founded in the established case law. Again referring to Virginia-Carolina Chemical Corp's Application, Lloyd-Jacob J said at [37]:
“In considering whether or not an application discloses a patentable invention, it is proper that attention should be directed to the alleged contribution to the art rather than the form of words tentatively put forward as defining the invention.”
The principles set out in Myriad and Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (RPL) and other cases suggest that one can approach the examination of manner of manufacture in a way similar to that formulated by UK authority in Aerotel Ltd v Telco Holdings Ltd & Ors Rev 1 [2007] RPC 7 (Aerotel) following some important steps as follows:
1. Construe the claim.
2. Identify the substance of the claim (what is the alleged or actual contribution?)
3. Ask whether the substance of the claim lies within established principles of what does not constitute a patentable invention (e.g. is it merely a scheme, plan, rules of gameplay, intellectual or genetic information?)
There being no particular difficulty or dispute in construction of the claims it is appropriate to turn to considering the substance of the claimed invention.
What is the substance of the invention?
Independent claims
In relation to the substance of the invention, the applicant submitted that:
“The invention is concerned with making a physical change to a current product that provides an opportunity to improve product identification without detracting from the marketability of the current product. The physical change is to provide a painted layer with thinner sections that define brands that allow product differentiation at spaced intervals along the length of the claimed product. It is the thinner paint layer sections at spaced intervals that are they key. Forming the thinner paint sections to be visually identifiable and define brands is important because it facilitates product identification and differentiation. But we do not rely on this brand information for patentability. We rely on providing the painted layer with thinner sections at spaced intervals that are visually identifiable.
The invention is not about improving the aesthetic appeal of the current product. The invention falls into the category of the tyre tread mentioned by the Examiner in item 6 of Examination report dated 29 July 2016 and discussed in the Examiner’s Manual.”
Furthermore, the applicant noted:
“The contribution to the art is that the physical change makes it possible for customers to distinguish the strip of the invention from other strip products. The customers can readily identify the origin of strip. This is a significant contribution that has direct commercial benefits for the applicant. The invention is an ingenious and simple solution to a significant problem. It is a physically different product to existing products.”
“…the substance of the invention is not laser ablation technology per se to form thinner coating sections. We also submit that the [prior art] neither disclose[s] nor suggest[s] the substance of the invention, namely a pre-painted steel strip with a series of thinner paint sections at spaced intervals along the length of strip.”
Thus it is clear that the applicant’s suggests that the substance of the claimed invention is a pre-painted steel strip with a series of thinner paint sections at spaced intervals along the length of strip.
A problem that the claimed invention can be said to address is that in the art, brands applied to visible surfaces can be a dominant part of an assembled fence and are unsightly. There are two particular common groups features in each of the independent claims that can be said to address this problem being:
·Partial removal of paint from a painted steep strip such that a brand is formed by a thinner paint layer than the remainder of the paint layer and is visually identifiable
·There being a plurality of brands wherein the size of each brand is relatively small compared to the surrounding area of un-branded paint layer
To identify the substance of the claims, it is appropriate to ask whether features provide a contribution to the art. On this question I turn to the key features relating to partial layer removal.
According to the specification, the present invention is based on a realisation that an improved brand can be formed by partially removing a paint layer. In this regard, the term “layer” is said to include a single layer and a layer that has multiple layers such as a primer and a top coat (page 3 of the specification). The specification at page 3 continues to suggest that partially removing a paint layer produces a brand that is visible but not sharply contrasting and visually dominant as is the case with painting of brands on an existing layer. At page 4 the specification also adds that the present invention is also based on the realisation that improved brands can be formed by simply partially removing a section of the substrate. As an embodiment, the specification suggests that a laser may be used to perform the partial removal of material. More specifically, on page 8 of the specification as proposed to be amended it is noted that:
The brand is marked on the panels 15 by means of a laser that selectively removes a controllable amount of the paint coating on the panels and thereby producing sufficient visual differentiation to read a branded message. The result is a brand that is visible but not sharply contrasting in colour and visually dominant, as is the case with brands that are painted onto an existing paint layer.
By means of the use of a laser, the specification is making reference to the art of laser ablation. Laser ablation is a long known technique for removing material from a solid surface by irradiating the surface with a focussed laser beam of sufficient energy to turn the solid material into vapour. At the priority date, laser ablation was a commonly used technique for engraving surfaces for the purpose of marking. The very nature of laser ablation makes it a very useful technique for precisely and controllably removing layers of material in a progressive manner[1]. In other words, careful selection of laser parameters for certain material properties enables layer by layer removal of material both wholly and partially.
[1] See for example US 4588885 A (Lovoi et al.) 1986 which notes in the Description of the Prior Art that a laser beam may be “precisely controlled in terms of both power and position. The power of the laser may be selected to remove a top surface only of the paint by vaporization, thus requiring repeated pulses to remove the full depth of the paint layer”.
The specification contains no discussion of any laser or material parameters that are optimised for the purpose of partial removal of layers with the purpose of addressing the identified problems. On the face of the specification, techniques for partial material removal that are claimed are entirely at the disposal of the skilled addressee. Such techniques, and in particular laser ablation, commonly involve processes that engrave all types of substrates and layers with writing for various purposes. With this in mind, it must be that there is no contribution to the art in partially or wholly removing paint layer from a substrate such as a steel to form a thinner paint layer. Informatively, I note that a range of patent documents support this understanding.
A first example is document D1 identified by the examiner, which describes the use of laser ablation to mark aluminium strips that are formed into ring pull tabs for aluminium drink cans. The document also discusses the application of laser ablation technology to providing markings or indicia on other areas of metal containers, and importantly, it discusses the selective removal of portions of a layer at column 8:
Although the present invention has been described in connection with ablating or vaporizing portions of the metal of a metal container, it is also possible to use the present invention in connection with ablating or vaporizing some or all portions of coatings placed on a metal container, so as to provide markings that are visible by way of a contrasting color or texture. For example, it is possible to provide a metal container or container component which has been coated with a colored coating (such as by printing or painting) and to use the present invention to selectively remove or vaporize portions of such coatings to reveal at least some of the metal portion (or another coating) underneath.
Patent document US 6169266[2] also demonstrates the known technique of partially removing paint layers to produce markings/graphics/text on substrates. Figure 5B reproduced below shows a cross section of laser ablative selective etching of paint layers.
[2] US 6169266 B1 (Hughes) 2 January 2001
Similarly, patent document US 4994639[3] discusses the use of a particular laser system to ablate a portion of a layer of paint to produce a surface pattern in the paint layer.
[3] US 4994639 A (Dickinson et al.) 19 February 1991
It is therefore clear to me that partial removal of a layer of paint in the manner claimed and described in the specification cannot constitute a contribution to the art.
Independent claim 3 adds the feature of the brands being formed in a product that may be a roof sheet or fence system, wherein brands are presented in locations that are visible to the purchaser of the product. I have no doubt that such position cannot be considered to form part of the substance of the invention as it is inevitable in the art of branding that one would consider presenting brands to customers on such products at visible locations.
Furthermore, independent claim 5 adds matter beyond the other independent claims in that it is directed to a method of manufacturing a pre-painted steel strip including steps of a) partially removing material [to form brands as per claims 1 and 3]… and b) thereafter coiling the strip. There is nothing in the specification to suggest that there is any invention in coiling after branding. In fact, this appears to be a normal aspect of manufacturing such a product. Hence feature b) of claim 5 cannot contribute to the substance of the invention.
Contrary to the submissions of the applicant, given my considerations above the substance of the invention defined in the independent claims must lie in the form of the branding provided on the steel strip wherein said steel strip may be formed into a roof sheet or fence system. The form of the branding in the independent claims can be generally characterised in that a plurality of brands are provided at spaced intervals along the length of a product in the form of a pre-painted steel strip, wherein the size of each brand is relatively small compared to the surrounding un-branded area. I consider these features to be the substance of the invention for these claims.
Dependent claims
Claim 2 adds the feature wherein the paint layer is up to 25 microns thick. Such a claim represents nothing more than standard thicknesses for a layer of paint that may be removed partially or wholly using techniques such as laser ablation. This claim does not contribute to the substance of the invention.
Claim 4 adds features to claim 3 of a fence system including a plurality of fence panels, posts, and rails wherein brands are on a plurality of any one or more of the fence panels, posts and rails in locations that are visible to a purchaser inspecting an assembled fence. I cannot see how branding different components can provide substance to the invention. Also, similarly to claim 3, I do not consider that presenting brands at locations that are visible to a purchaser inspecting an assembled system can provide a contribution to the art as it is inevitable in the art of branding that one would consider presenting brands to customers on products at visible locations, in particular in locations visible when components are assembled to produce finished products.
Claim 6 adds the feature of forming the brands using a laser. As identified above, forming markings in general using lasers does not provide a contribution to the art and thus does not add to the substance of the invention.
Claim 7 adds the feature to claims 1 or 2 of roll forming the steel strip and forming the product with brands visible to a purchaser but not a dominant part of the product. Roll forming of steel strips is a routine means for forming such products, and hence only the feature of the brands visible to a purchaser but not a dominant part of the product can contribute to the substance of the invention. Claims 8 and 9 also include these features.
Claim 8 adds features to claims 1 or 2 whereby the branded strip is formed by: a) uncoiling un-branded pre-painted steel strip from a coil; b) roll forming the strip and forming a product; and c) shearing the roll-formed strip into a plurality of sheets; wherein the brands are a visible but not a dominant part of the product formed after uncoiling the strip a) but before finishing roll forming step b). The idea of branding after uncoiling but before roll forming does not appear in any way directed towards solving any of the identified problems in the art. The feature would appear to be a normal step in manufacturing processes involving branding of roll formed sheet material.
Claim 9 is similar to claim 8 but is not limited to the time in the manufacturing process at which branding is applied.
In summary, the substance of the invention defined in the specification can be no more than a plurality of brands provided at spaced intervals along the length of a product in the form of a pre-painted steel strip, wherein the size of each brand is relatively small compared to the surrounding un-branded area whereby brands are visible to a purchaser but not a dominant part of the product.
Is the substance of the invention patentable?
The applicant argues that claims are patentable because “the invention is a physical change to an existing product”, adding that there is a benefit in customers being able to readily identify the origin of the strip, there being direct commercial benefits.
I definitely agree that there is a physical change to an existing product. This physical change constitutes a marking that is made by partially removing paint layer to produce a thinner paint layer. However it is clear to me that such a physical change to a product does not constitute a contribution to the art. The applicant’s submission in this regard relies on an analysis of form as opposed to substance.
The question that remains for me to answer is whether the substance I have identified above, in the words of the Patent Manual of Practice and Procedure at 2.9.2.2, is directed to the “type” or “nature” of subject matter that should attract patent protection. I consider this question with case law in mind such as NRDC and Virginia-Carolina Chemical Corp's Application.
I consider it clear that the substance of the present invention is merely the presentation of information characterised solely by a visual arrangement. The invention’s contribution to the art relies upon the size of each brand compared to the surrounding area and the feature of the brands being visible but not a dominant part of the product. There is no material or technical advantage founded in this arrangement of brands or markings. The advantage is entirely within a realm of customer perspective and preference to thereby enhance marketability and visual distinctiveness of the product. While commercially functional, this is non-technical. This is the very goal of designing visually pleasing and distinctive branding arrangements, which one could say aligns with approaches taken in other branding arrangements such the use of small and distinctive logos on polo shirts. Such subject matter is not suitable for patent protection and instead may find appropriate protection as a registered design.
The mere fact that that the particular product branded is a steel strip does not detract from the lack of technical or material advantage in the invention’s substance. A technique that removes a paint layer to form a branding or marking is equally applicable to myriad array of other solid substances, including steel. The fact that the claimed branding is applied to a pre-painted steel substrate represents nothing more than a scheme for marketing pre-painted steel substrates.
I agree with the examiner that the choice of using a relatively small branding mark is not seen as providing a technical benefit over a larger mark. I also agree with the examiner where it is noted that the method of generating the result does not represent a technical innovation. The invention is simply applying unobtrusive branding to a product to enable effective recognition of the product’s origin without detracting from its usefulness as a product.
I therefore find the claims are not directed towards a manner of manufacture. I have considered the entire content of the specification and find no patentable subject matter. In view of this I need not make any consideration of inventive step.
Conclusion
I have found that the claims are not for a manner of manufacture. I find no patentable subject matter in the application. I need not consider inventive step. The application is refused.
I note that the applicant has recently filed a further divisional application (2017251846) for the present subject matter. While the applicant is permitted to do so under the Act, as it currently stands this case will soon be examined and referred to another delegate for determination. Given my findings above, in a similar vein to the then Deputy Commissioner’s comments in Swiss Reinsurance Company Limited [2017] APO 12 at [4] it appears that further prosecution of this new divisional application will likely be “the cause of considerable wastage of Patent Office resources and presumably significant inconvenience for any interested third parties”.
Dr N.R. Madsen
Delegate of the Commissioner of Patents
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