Borden, Inc. v Elkem A/S

[1992] APO 19

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 615288 in the name of BORDEN, INC

Title:    Manufacture of a Soderberg Electrode Incorporating a High Carbon-Contributing Phenolic Sacrificial Binder

Action:    Dismissal of Opposition

Decision:    Issued            .  Request for dismissal refused. Examination history irrelevant; dismissal not a forum to argue substantive issues; sufficient particularization of common general knowledge found.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:  Patent Application No. 615288 by BORDEN, INC., Opposition
     by ELKEM A/S and a Request by the Applicant for
     Dismissal of the Opposition.

BACKGROUND

Patent application 615288 was advertised accepted on 26 September 1991. A notice of opposition by Elkem A/S under Section 59 of the Patents Act 1952 was served on the applicant, Borden, Inc., on 23 December 1991. On 13 January 1992 the opponent, in accordance with Regulation 5.4 of the Patents Regulations, served on the applicant a statement purporting to set out the grounds of opposition and the particulars relating to each ground. On 7 February 1992 the applicant invoked the provisions of Regulation 5.5 and requested the Commissioner to dismiss the opposition. The matter of the request for dismissal was set down for hearing in Canberra on 23 March 1992. In the event, both parties waived their right to be heard. The opponent relied upon written submissions, while the applicant was content to rely on the reasons given in its formal request for dismissal.

ISSUE

The applicant's case for dismissal is based upon deficiencies it alleges in the opponent's statement of particulars, which reads as follows:

"Grounds of Opposition

The invention as claimed in any and all claims is not a patentable invention because it does not comply with paragraphs 18(1), (b), (i) and (ii).

Statement of Particulars

The invention as claimed in any and all claims is not a patentable invention because of the following:

1)The invention is not novel when compared with Australian Patent Specification No. 592170 published in Australia on 8th October 1987

2)The invention lacks an inventive step when compared with Australian Patent Specification No. 592170 and the prior art base in particular in relation to the binder system which is used."

In requesting dismissal of the opposition, the applicant has provided the following reasons in support of that outcome:

"The Opponent's grounds are not particularised.  Patent specification 592170 is irrelevant to a consideration of the novelty and inventive step of the claims of the opposed application.  The alleged "prior art base" of paragraph 2 of the Opponent's document headed Statement of Grounds and Particulars is not identified.

It is noted that Patent Specification 592170 is identified as being in International Patent Classification C25C 003/12, the International Patent Classification of the opposed specification.  It follows that Patent Specification 592170 would have been considered and rejected as relevant by the Examiner of the opposed specification as it does not appear on the Patent Abridgement of the opposed specification.

The invention of the opposed application relates to a feedstock for a Soderberg continuous carbon electrode.  The Soderberg process is continuous.  The feedstock of the invention of the opposed application is a paste with sufficient mobility at temperatures of at least about 500°C so that it keeps moving till it reaches the use zone where it hardens and attains electrode integrity through densification and binder graphitization upon exposure to the operating temperatures of around 800°C (see page 18 last paragraph and page 8 last paragraph of the opposed specification).

Patent specification 592170 does not relate to Soderberg continuous carbon electrodes and does not relate to feedstock that remains mobile at temperatures of at least about 500°C.  Patent specification 592170 teaches away from the feedstock of the opposed specification because 592170 teaches feedstocks that cure (i.e. form a self-sustaining shape) at room temperature, or alternately feedstocks that cure at temperatures of 150°C - 200°C (see page 6, second full paragraph and the examples of 592170).  Rather, Patent specification 592170 relates to shaped self-sustaining articles suitable as articles of commerce such as prebaked electrodes, prebaked cathodes and prebaked anodes.

Patent specification 592170 does not teach or make obvious the invention of the opposed specification.

The invention of the opposed specification came about because "it has surprisingly been found that when certain novalac resins are used alone and have properly selected molecular weight, one can provide suitable compositions for use in Soderberg-based applications" (see page 8 third full paragraph of the opposed specification)."

SUBMISSIONS

The applicant made no submissions in lieu of its attendance at a hearing, being content to rely solely on its reasons for making the request, which I have set out above (in full).

The opponent did make written submissions, in these terms:

"We request that the Application for Dismissal of Opposition be refused on the grounds that the Grounds and Particulars of Opposition lodged on the 10th January 1992 are sufficient for the purposes of the Patents Act 1990.

We note that Regulations made under the Patents Act 1990 requires that an opponent within one month of filing a Notice of Opposition lodge a statement that sets out the grounds of opposition and the particulars relating to each ground.

We submit that the grounds as set out in our statement dated the 10th January 1992 are sufficient, in that these Grounds are grounds upon which a Patent may be opposed and further, that the particulars are sufficient for the purposes of the Act.

Particular No. 1 relates to the matter of novelty and draws attention particularly to Australian Patent Specification No. 592170 published on the 8th October 1987.

We submit that to go further in this matter and to discuss the relevance of this Patent Specification in relation to the claims of the opposed Patent would be to go beyond the specification of particulars for this case and into the matter of evidence.

It is quite clear from the decision of the delegate of the Commissioner of Patents in the matter of a Patent Application No. 610369 for L'Air Liquide, Societe Anonyme pour l'Etude et l'Exploitation des Procedes Georges Claude and opposition thereto by Commonwealth Industrial Gases Limited that a decision on the matter of dismissal of an opposition does not go to matters of evidence but merely whether there is a cogent case put up.  We submit that the Patent Specification we have referred to is of substantially similar subject matter to that of the Patent Application in suit and as such presents a cogent opposition.

The applicant for dismissal has suggested in his Notice dated the 7th February 1992 that:

"It is noted that Patent Specification No. 592170 is identified as being in International Patent Classification C25C-003/12, the International Patent Classification of the opposed specification.  It follows the Patent specification No. 592170 would have been considered and rejected as relevant by the Examiner of the opposed specification as it does not appear on the Patent Abridgment of the opposed specification".

We reject this assertion outright on several grounds.  First, it may well be that this particular specification was not in the Examiner's search list and hence was not considered at the time of examination of the opposed specification.  Second, as particularly referred to in the decision mentioned above, the fact that a particular specification was considered and rejected during examination, does not mean that the same specification cannot be considered during an opposition procedure.  The Hearing Officer pointed out that there are several significant differences between examination and opposition procedures.

"First in contrast with the opposition procedure the input of expert witnesses to assist in placing construction on documents and to attest to the state of the common general knowledge in the art is not available to the Examiner.  Second the onus of proof considerations are different in opposition proceedings to examination procedures and finally acceptance of the proposition would exclude an opponent from exercising a rightful remedy if the Examiner misinterpreted the citation during the examination process".

For this reason we submit that the first point raised by the applicant for dismissal is invalid and should not be allowed.

The second point raised by the applicant for dismissal relates to details of evidence and we submit that it is not the function of an application for dismissal to consider such evidence because this function is taken at a later stage of opposition. For this reason we believe that the second point raised by the applicant should be ignored.

Similarly the third point by the applicant for dismissal relates to matters of particular evidence and should be ignored.

The second particular in the Statement of Grounds and Particulars relates to lack of inventive step and refers to Australian Patent Specification No. 592170 and the prior art base in particular in relation to the binder system which is used in that Patent specification and the opposed Patent.  We submit that this is a valid ground of opposition and for the purposes of the Statement of Grounds and Particulars, is sufficiently particularised.  To go into detail at this stage would, as we discussed earlier amount to submission of evidence which is more clearly submitted by means of a Statutory Declaration during the evidence stage of opposition proceedings.

The applicant for dismissal has merely made the statement that Patent Specification No. 592170 does not teach or make obvious the invention of the opposed specification.  We submit that this is not a decision which can be made at this stage in an opposition procedure and as such the applicant's assertion should be ignored.

We submit overall the applicant for dismissal has not made any cogent case as to why the opposition should be dismissed and hence the application for dismissal should be refused and this present application allowed to proceed to the evidence stage in the proceedings.

It is quite clear that the applicant has raised a frivolous and vexatious case and costs should be awarded against them and accordingly we claim our costs."

DECISION

The provisions contained in Regulation 5.5 of the Patent Regulations of the Patents Act 1990 providing for dismissal of an opposition are entirely new - they have no counterpart in the 1952 Act:

"Dismissal of opposition

5.5.(1)  An applicant may:

(a)within 1 month of being served with a copy of a statement by an opponent under subregulation 5.4(1) ("filing of statement"); or

(b)if the complete specification in relation to an opposed application is re-examined under subsection 97(1) of the Act ("re-examination of complete specifications") - within 1 month from the day when the re-examination is completed under regulation 9.5 ("completion of re-examination");

request the Commissioner in the approved form to dismiss the opposition.

(2)As soon as practicable after a request is made the Commissioner must inform the opponent of the request having been made.

(3)The Commissioner may dismiss the opposition whether or not the applicant has requested dismissal of the opposition."

This regulation has so far been the subject of only one decision, being that upon which the opponent has placed heavy reliance in its submissions [L'Air Liquide, Societe pour l'Etude et l'Exploration des Procedes Georges Claude v The Commonwealth Industrial Gases Limited 1992 AIPC 90-872]. It is noteworthy that this decision was issued only about one week prior to the present request being made. Given the nature of the reasons put forward by the applicant in the present case as warranting dismissal, there would seem to be a distinct possibility that the present applicant was not aware of that earlier decision when it made this request.

The general principle to be applied in deciding whether to allow a request for dismissal is that outlined in the Hearings Practice Note 1991 No. 5: an opposition will be dismissed only if the opposition is so obviously untenable that it cannot possibly succeed.  Moreover, dismissal proceedings are not a forum to argue the substantive issues of an opposition.

The applicant's case for dismissal relies upon an assertion that the Grounds of Opposition "are not particularized".  The Statement of Particulars is said to be deficient in two aspects:

.patent specification 592170 is irrelevant to a consideration of the novelty and inventive step of the claims of the opposed application

.the alleged "prior art base" of paragraph 2 of the "Statement of Particulars" is not identified.

The applicant provided two arguments in respect of the first of these aspects:

.patent specification 592170 has been considered during the examination process and rejected as irrelevant

.patent specification 592170 does not teach or make obvious the invention of the opposed specification.

As regards the first of these arguments, this situation was commented upon briefly in the decision on the earlier dismissal action, and rejected absolutely as a justification for the dismissal of an opposition.  The reasons for doing so are quoted in full in the opponent's submissions (supra).  I concur entirely with the approach taken in that earlier case.  The fact that an item of prior art was canvassed during the examination of a patent application in no way precludes its reconsideration in the forum of an opposition proceeding, or even its forming the basis of that opposition (as in this case).  This holds whatever the weight that an examiner may have placed upon that prior art as a citation.

The second of the arguments advanced by the applicant concerning patent specification 592170 is clearly concerned with questions of fact which raise substantive issues of the opposition.  As such they are inappropriate and irrelevant to this proceeding.  Nothing in the applicant's submissions in this regard would justify a finding that this opposition is so obviously untenable that it cannot possibly succeed.

Therefore, I am of the view that the applicant's reasons for dismissal which are predicated upon a perceived irrelevancy of patent specification 592170 to this opposition are completely unsound.

I turn now to the second of the aspects in which the Statement of Particulars is said to be deficient - that of there being no identification of the alleged prior art base. Determination of this issue is made somewhat more difficult than it ought to have been if sufficient care had been taken in drafting the Statement of Grounds and Particulars. The opposition is stated as being in respect of grounds which, strictly speaking, are not open to it. Those stated grounds are ones provided for under Section 59 of the Patents Act 1990. However, the present application is an application to which the transitional provisions of sub-section 234(3) of the Patents Act 1990 apply, and as such the opposition in suit should have been in respect of the grounds available under Section 59 of the Patents Act 1952. This flaw in the stated grounds of opposition has been carried over into the Statement of Particulars. This adopts the wording of Section 18 of the 1990 Act (relevant to Section 59 of the 1990 Act) rather than wording which would be appropriate to the grounds set out in Section 59 of the 1952 Act. I observe in passing (in passing only, since as shall become apparent presently, nothing turns on it) that even in the context of Section 18 of the 1990 Act the phrase "prior art base" seems to have been used somewhat inappropriately.

The correct approach to this is, in my opinion, to apply a purposive construction the Statement of Grounds and Particulars. This would be consistent with a substantial body of case-law dealing with this type of circumstance. I also note that it is not a matter with which the applicant has expressed concern: at least not directly and, as best as I can judge, it has not done so indirectly. I do not think there is any doubt the opponent has given an unambiguous signal that it intends to oppose the grant of a patent on this application on the basis that it is anticipated by patent specification 592170 and common general knowledge. In terms of the Patents Act 1952 I believe that there is a clear inference that the grounds of opposition upon which the opponent intends to rely are those of Section 59(1)(e),(g) and (h), that is, prior-publication, obviousness and not novel, respectively. While it is certainly regrettable that the Statement of Grounds and Particulars should be flawed in such a fundamental manner as that to which I have adverted, I do not believe it is flawed to an extent which prevents it from achieving the underlying purpose of Regulation 5.4 of the Patents Regulations.

As I comprehend it, the applicant's real concern about the reference to the so-called "prior-art base" resides not in the meaning of this expression but rather in the lack of specifics as to what this prior art base comprises. If this be so, I do not share that concern. The term " prior art base" has a specific meaning in the Patents Act 1990 - but that term is not appropriate to applications being opposed under section 59 of the 1952 Act; I believe, applying a purposive construction, that the term "prior art base" in the present statement of Grounds and Particulars should be taken as a reference only to "common general knowledge".  I note that the gathering of evidence to establish common general knowledge may be a time consuming endeavour.  Hence to have the expectation that a Statement of Particulars should contain anything more than rudimentary details of the common general knowledge to be produced in the opposition would seem both unrealistic and unreasonable.

Therefore, it follows that I regard the opponent's Statement of Particulars as adequately foreshadowing the basis of its opposition and fulfilling the requirements imposed by Regulation 5.4 of the Patents Regulations.

conclusion

I find that the fact that a document upon which an opposition relies had been considered by the examiner during the examination procedure carries no weight whatsoever in an action for dismissal of the opposition; the comparisons made in the reasons for dismissal between the present specification and prior art specification 592170 relate to questions of fact going to substantive issues of the opposition and as such are inappropriate to a dismissal action; and the Statement of Particulars is adequate for its purpose.

Accordingly, my finding in this matter is that I refuse to dismiss this opposition, which should proceed in the manner prescribed in the Patents Act 1990 and the Patents Regulations. Pursuant to Regulation 5.8(1)(a)(iii), the time for filing evidence in support of this opposition is three months from the date of this decision.

COSTS

The opponent has submitted that it should be awarded costs in this matter.  In this action, the opponent has been successful; without expressing a view on the applicability of any item in the scale of costs where no party attends a hearing, I award costs against the applicant.

(E. KNOCK)
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Spruson & Ferguson, Sydney
Patent Attorneys for the opponent   :  Collison & Co., Adelaide