Brickwood Holdings Proprietary Limited v. Aci Operations Pty. Ltd.

[1983] APO 15

In the Matter of the Patents Act 1952

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In the Matter of Application No. 501007 for Letters Patent by BRICKWOOD HOLDINGS PROPRIETARY LIMITED

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In the Matter of Opposition thereto by ACI OPERATIONS PTY. LTD.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
         Application No. 501007 by Brickwood Holdings Proprietary Limited is for a patent for an invention entitled TAMPER PROOF CONTAINER.   The applic‑
ation, accompanied by a Provisional specification, was lodged on 2 December, 1976 and advertised as accepted in the Official Journal of 7 June, 1979.   A Notice of Opposition to the grant of a patent was lodged on 5 September, 1979 by ACI Operations Pty. Ltd.
         The opposition was heard in Melbourne on 2 August, 1982 with Mr. D.B. Mischlewski, Patent Attorney of Edwd. Waters & Sons representing the applicant and Mr. M.J. Royal, Patent Attorney of Phillips Ormonde & Fitzpatrick representing the opponent.
         All of the grounds of opposition available under section 59(1) of the Act are invoked in the Notice of Opposition, however the opponent, in its evidence and in argument has only relied upon the grounds or prior publication (s.59(1)(e)), obviousness (s.59(1)(g)), want of novelty (s.59(1)(h)), and non‑
compliance with section 40 of the Act (s.59(1)(i)).
         Locus standi of the opponent was not challenged.

The complete after provisional specification was lodged on 30 November, 1977 and statements proposing its amendment were lodged on 10 January, 1979 and 1 March, 1979 during the examination process.   A major submission of the opponent, upon which a serious prior publication issue depends, is that the claims are not entitled to the date of lodgement of either the provisional or the complete specification for their priority date.   Before determining the priority date issue I will set out the contents of the specification and consider the non‑compliance with section 40 objections raised by the opponent.
         According to the complete specification as accepted, the invention relates to a tamper proof container and closure of the sort useful for perishable products sold in self‑service supermarkets wherein customers can be assured that the container has not been opened.   The container thus needs to be difficult to open in the first place and once opened it is desirable that it be easily observable that the container has been opened.   To this end the invention provides a closure of the type which virtually cannot be removed from the container except by removal of a tear‑off strip.
         The features of the invention are set out in a consistory clause which is in the same terms as claim 1.  Claim 1 reads:

"1.A container and closure therefore, comprising:

a synthetic plastic container member having an upper neck portion, said neck portion having an outer periphery containing a recess defining thereabove an annular lip, said neck portion further having an annular groove at a lower elevation than said recess, said annular groove cooperating with said recess to define an annular rib, said container including an annular shoulder at a lower elevation than said groove, said annular shoulder having an external diameter greater than said lip; and

a synthetic plastic closure member adapted to close said neck portion, said closure member including a cap portion having an upper horizontal portion, a dependent annular flange portion attached to the outer peripheral edge of said upper portion, said flange portion having an inner circum‑

ferential surface and being adapted for concentric arrange‑

ment about said neck portion, the inner circumferential surface of the flange portion including a first annular bead arranged for engagement with said recess, an annular tear strip portion removably connected with the lower edge of said flange portion, said tear strip portion including a generally tubular discontinuous sleeve portion having an inner circum‑

ference and an upper shoulder portion adjacent the lower edge of said flange portion, the lower end surface of said sleeve portion being in seated engagement with the upper surface of said annular shoulder of said container when said cap portion closes said neck portion and a continuous annular second bead arranged on the inner circumference of said sleeve portion for engagement with said groove whereby removal of the closure member is effected by tearing the tear strip portion from the flange portion."

Following the consistory clause the specification continues:

"Once the tear strip has been partially torn there is visible evidence that the container has been tampered with and the difficulty of removing the lid while the tear strip is intact will provide the necessary reassurance to consumers that the container is untampered.

This construction renders it difficult to remove the lid without first removing the tear strip.   Not only is access to the bottom of the tear strip difficult but flexing of the lid to raise the beading over the lip is very difficult while the tear strip is in place.   However, once the tear strip is removed the lid can easily be removed or replaced over the container opening."

A single embodiment of the invention, being an injection moulded plastic cream bottle and cap therefore is then described.  The description concludes as follows:

"In use the cap cannot be removed except by removal of the tear strip.   The provision of two beadings seating within vertically separated complementary recesses ensures that the cap cannot be removed accidentally unless the tear strip is also broken.   The tear strip is conveniently placed so that it can easily be removed but in such a way that it can be readily seen that the cap has been removed.   Most of all however more effective sealing is provided to prevent leakage of the contents should distortion of the plastic bottle occur.

Another feature of the cap design is that presence of beading 23 [which is the annular bead on the tear strip] ensures that the caps do not nest within one another during automatic feeding of the caps prior to their being placed onto the filled bottles.   If nesting occurs difficulty is encountered in separating the caps and this can lead to loss of production time during the filling of the bottles.

It can thus be seen that the present invention provides a container cap which overcomes a number of problems encountered with conventional lids."

There are three claims defining the invention, claim 1 of which is set out above.   Claims 2 and 3 read:

"2.A container and closure as claimed in claim 1, wherein said tear strip portion is connected with the lower edge of said flange portion by a synthetic plastic membrane, whereby said tear strip portion is separable from said flange portion by tearing through said membrane.

3. The container closure as defined in claim 1 or 2."

The opponent submitted that the claims do not clearly define the invention as being a "snap‑cap" type of closure, as is asserted by the applicant.   In my opinion the constructional features defined in claim 1 for both the container and the closure, when considered in the context of both the specification (particularly the reference to "flexing" at page 3 line 2) and the art, inherently require that it be a "snap‑cap" type of closure.
         It was furthermore submitted that the feature of:

"the sleeve portion [i.e. the tear strip] having ... an upper shoulder portion adjacent the lower edge of the flange portion"

was not restricted to being, as is also asserted by the applicant, an external shoulder resulting from the tear strip being connected by its inner upper edge to the lower outer edge of the flange portion thereby establishing a severable membrane as is described in the specification.   I agree with the submission, the possibility of a protuberance or projection extending inwardly of the cap from the inner surface of the tear strip is not excluded and would properly in my opinion, form and be termed a shoulder portion of the tear strip.   Mr. Mischlewski's argument, that this would be an absurd interpretation because one could not then apply the closure to the container, does not apply in the absence of any dimensional restrictions in the claim and also does not allow for the possibility of both the container and closure being made of relatively highly flexible and resilient plastics material.
         The non‑compliance with section 40 objections raised by the opponent mainly depend upon a comparison between what the applicant, in its evidence, declares the invention to be and what is actually described and claimed.   From the evidence the applicant's view of the invention amounts to the preferred embodiment which of course falls within the scope of claim 1.  The opponent is correct in its contention that that embodiment confers advantages which are not necessarily a consequence of all constructions within the scope of claim 1, but this does not cause the specification to not comply with section 40 as the evidence does not show insufficiency or any other defect of the invention which is described and claimed in the specification.   Some matters raised by the opponent however are relevant and illustrate that the specification does not comply with section 40.
         Firstly claim 1 does not define a construction which, as is described at page 5 of the specification:

"... ensures that the caps do not nest within one another during automatic feeding ...".

Certainly the bead on the tear strip could prevent the nesting problem, but to do so, the internal diameter of the closure at its bottom would have to be smaller than the outside diameter of the top of the cap.   Secondly the language of claim 1 causes a general lack of clarity because some terms are superfluous and the definition of some features is confused.   Thus for example, the wording:

"... an annular tear strip portion ... including a generally tubular discontinuous sleeve portion ...",

is not entirely clear because the tear strip is itself the tubular discontin‑
uous sleeve portion and unless one so construes the wording, the subsequent definition is nonsensical.   That is, the "upper shoulder portion" and the "lower end surface" of the "sleeve portion" must be the upper and lower surfaces of the tear strip in order to arrive at a meaningful construction.  Also the qualifications "continuous" and "annular" in relation to the second bead on the sleeve are not clear insofar as the sleeve is defined as being "discontinuous", and the term "annular" seemingly, is redundant.   In my opinion claim 1 could be amended to improve both its clarity and succinctness. Claim 3 is also not clear as prima facie, it is a claim to a closure per se, but because of its appendancy to claims 1 or 2, which define a closure and a container, it could be taken as a claim to a closure when with a container.
         Mr. Royal argued that the claims of the complete specification are not entitled to the date of lodgement of the provisional specification for their priority date because of their inclusion of the feature of:

"a continuous annular second bead arranged on the inner circumference of said sleeve portion for engagement with said groove."

The provisional specification does not describe nor illustrate the tear strip as incorporating an internal annular bead as is claimed and this, it is submitted, causes the claims to be not fairly based on the matter disclosed in the provisional specification; that is, section 45(2) of the Act is not applicable.
         In support of the submission, the opponent relied upon the approach which was adopted to determine "fair basis" in Mond Nickel Company Ld.'s Application [1956] RPC 189, in particular the statement by the Superintending Examiner at page 191 as follows:

"... where a claim connotes a limitation of the invention described in a provisional specification in the sense that specific mention is made in the claim of one or more integers which are not specifically mentioned in the provisional specification, it would not in my opinion be right to regard the claim as "fairly based" on, and to accord the claim the priority of, the provisional specification",

and the three fold investigation (specifically the third leg thereof) which Lloyd Jacob J., on appeal, stated at page 194.  Viz:

"It seems to me that there is a three‑fold investigation which is called for.   Firstly, one has to enquire whether the alleged invention as claimed can be said to have been broadly described in the provisional specification, and only if an affirmative answer is given to that question does one proceed to the second question, which is: Is there anything in the provisional specification which is inconsistent with the alleged invention as claimed?   If it is found, upon examination, that the invention as characterised in the claim includes something which is inconsistent with that which is described in the provisional specification, as at present advised I should think that it would be right to conclude that that claim could not have been fairly based upon the disclosure; but, assuming that those two burdens are satisfactorily surmounted, there is, I think, a third matter for enquiry:  Does the claim include as a characteristic of the invention a feature as to which the provisional specification is wholly silent?"

According to Mr. Royal, the evidence of the inventor shows that the feature in question is a "characteristic of the invention".
         Mr. Mischlewski in answer referred to the decision in Stauffer Chemical Company's Application [1977] RPC 33 wherein the use of "paraphrases synonyms and the like" from various decisions concerning "fair basis" is questioned, it being emphasised that the paraphrases etc. are not a substitute for the statutory test. He pointed out that according to the Stauffer Chemical Company decision, what matters is whether the claim in question is fairly based on the particular priority document and that this is a question of fact in each case, being dependent on a proper construction of the documents.
         Whilst the decision in the Stauffer Chemical Company's case emphasises that there is no substitute for the statutory test, Roskill L.J. does indicate his agreement with a comment by Gibbs J. in the High Court of Australia in the decision of Hoffmann La Roche v. The Commissioner of Patents [1973] RPC 34. At page 42 Gibbs J. states:

"It is needless to say that these questions [that is, those formulated by Lloyd‑Jacob J. in the Mond Nickel case (supra)] are intended to assist the court in applying the test laid down by the Act itself, viz. whether the claim in the complete specification is fairly based on matter disclosed in the basic application, but is not a substitute for that test."

Gibbs J. went on to apply the questions to assist him in applying the statutory test and in the present case I consider it appropriate that I follow his lead.
         Clearly, and there was no argument on this, the two burdens posed by the first two questions are satisfactorily surmounted.   Thus the invention as claimed is broadly described in the provisional specification and there is nothing in the provisional specification which is inconsistent with the invention as claimed.   In applying the third question it must firstly be determined whether the feature of the bead on the tear strip is a character‑
istic of the invention.
         According to the description in the complete specification the feature of a second bead on the tear strip assists in overcoming a number of problems encountered with conventional lids.   As is set out in the initial part of this decision, the provision of two beadings seating within vertically separated complementary recesses ensures that the cap cannot be removed accidentally unless the tear strip is also broken.   It is also stated that the two beads provide a more effective sealing to prevent leakage of the contents should distortion of the plastic bottle occur and finally the specification states that the presence of the second bead ensures that the caps do not nest within one another during their automatic feeding before application to the filled bottles, thereby eliminating a cause of lost production time.   Although, as is mentioned above, this result is not necessarily ensured by the claimed structure, it is certainly an advantage which is realisable because of the presence of the second bead.
         Additionally, the inventor, Mr. R.J.H. Bean, a Development Engineer with the applicant Company, considers the feature in question to be an essential feature of the invention.   At paragraph 5 of his first declaration he states:

"5.That the invention of application 501,007 essentially comprises a closure and a container for use with the closure and the following components are essential to the invention:

(a)The closure is a snap cap as distinct from a screw threaded closure and is therefore characterised in having an internal annular bead on the cap portion of the closure which is adapted to seat below a complementary external lip on the container neck to resiliently hold the cap in position.

(b)The closure is tamper resistant in that it is difficult to remove from a container without visibly severing the tear strip which is removably connected to the lower edge of the cap portion.

(c)The tear strip exhibits an external shoulder at its junction with the lower edge of the cap portion.

(d)The tear strip incorporates an internal bead which is adapted to seat below a complementary external bead on the container neck.

(e)The container neck exhibits two external recesses to accommodate the internal beads on the cap and tear strip portions of the closure.

(f)The container neck incorporates an external shoulder which abuts the lower edge of the tear strip and renders it inaccessible."

Mr. Bean continues in his paragraphs 9, 10 and 11 to describe the advantages resulting from the presence of feature (d) as follows:

"9.That the features (c) and (d) mentioned in paragraph five above mean that the closure of the invention of applic‑

ation 501,007 can be applied to containers using a conventional Ford capping machine.   Because the force required to push the internal beads of the cap and tear strip past the complementary lip and rib on the container neck is not great, no unique capping machine is required to apply the closures.   With closures that do require high application forces distortion of the closure is likely and consequently fracture of the connection between the tear strip and cap portion is also likely.

Another advantage deriving from the feature (d) is that the closures can be automatically fed to the capping station without a high incidence of "nesting".   "Nesting" occurs when the upper section of one closure seats within the open end of the tear strip portion.   The provision of an internal bead on the tear strip enables the internal diameter of the lower edge of the tear strip to be smaller than the external diameter of the top of the cap portion.   Thus, "nesting" is inhibited in the closure of application 501,007.   By avoid‑

ing nesting loss of closures and more importantly loss of production time is reduced as it is not necessary to containually (sic) monitor and correct the closure feeding trough of the capping machine.

10.That the features (d) and (e) mentioned in paragraph four above enables a tear strip of short depth to be used.  Severance of the connection between the tear strip and cap portion is able to occur if the cap portion alone is lifted off the container neck, because the tear strip will remain attached to the neck.   Tear strips of greater depth below the cap portion would be required if the tear strip did not include a "snap on" fastening.   Because the tear strip is held onto the container neck by its internal bead both the tear strip and cap portion must be removed together if the tamper proofing is to be ineffectual.

11.That the feature mentioned in (f) of paragraph 5 above enables the tear strip to seat on the container neck shoulder so that the lower edge of the tear strip is inaccessible. This means it is impossible without mechanical aid to ease the tear strip's internal bead over the external rib on the container neck, so that the tear strip and cap portion could be simultaneously removed.

This means that the clearance of the internal beads of the cap and tear strip over the ribs and lip of the container neck can be small so that very little lift off force is required to remove the cap as long as it is greater than the force needed to remove the tear strip.   In addition this low clearance means that the force needed to apply the closure is low in contrast to those closures which require a large hold down force for the cap or tear strip to prevent its removal.

The provision of a shoulder on the container neck provides a simple means of obstructing access to the tear strip so that it can not be removed without breaking it away from the cap portion.   This makes it unnecessary to provide a large hold down force for the tear strip or to provide a long tear strip portion."

And in paragraph 27, Mr. Bean concludes as follows:

"27.That the combination of features (a) to (f) set out in paragraph 5 above provides a closure that is unique when compared to the closures referred to by ... [the opponent] ... in that it is the only closure that provides (as explained in paragraphs 6 to 11 above) a flexible snap cap tamper resistant closure that is (1) simple to remove from a moulding die (2) applicable with little applied force to lightweight plastic containers (3) is not susceptible to "nesting" (4) avoids the use of excess plastic in the manufacture of the cap particularly by avoiding the necessity to have (a) a rigid closure (c) a long dependent skirt or tear strip.

None of the closures mentioned by ... [the opponent] ... have all of the above advantages."

Mr. Bean's evidence is manifestly directed to the preferred embodiment of the invention of much narrower scope than claim 1, nevertheless it clearly demonstrates, in support of the description in the specification, that the feature in question is an important part of the invention which is claimed because its presence, both singly and in combination with others of the defined features enables the realistation of a number of significant advantages over prior art caps.   This is supported by the evidence of Mr. H.G. Kohry, a Company Director and Secretary of Westgage Leasing Pty. Ltd.   Consequently in my opinion, the internal bead on the tear strip is a "characteristic of the invention" to which Justice Lloyd Jacob's third question is applicable.
         Although the provisional specification does not describe nor illustrate the tear strip as incorporating an internal annular bead, Mr. Mischlewski argued that the provisional disclosure would convey to a skilled addressee, in the light of the common general knowledge in the art, a strong implication that a bead on the tear strip is, or could be, provided.   The implication arises he submitted because the drawings in the provisional specification show the container neck as including both a recess and a groove as is now claimed, his contention being, "Why provide a groove above the shoulder unless one wanted the possibility of providing a bead?".   Further‑
more, he submitted, the prior art and common general knowledge show that where there is a groove, one should or could provide a corresponding bead and beads as such in all snap caps are a common element.   Another factor raised by Mr. Mischlewski is that Figure 3 in the provisional specification, which is a cross‑sectional view of the cap and tear strip, is taken "at the point where there is a break in the tear strip to enable an end of it to be grasped".  According to Mr. Mischlewski this was an inconvenient location to show the beading on the tear strip.   On this last point however I note that the bead on the tear strip is shown in Fig. 4 of the complete specification, which is a cross‑sectional view taken at the same position.
         The evidence does not support Mr. Mischlewski's submission.   Firstly there is no evidence from any expert witness to substantiate that the presence of the groove indicates in all probability, the presence of a corresponding bead on the tear strip.   Secondly, what constitutes the common general knowledge in the art relevant to the issue is not established and although Mr. Mischlewski pointed to the exhibited prior art patent specifications as illustrating that where a recess or groove is provided, a bead to seat in that recess is also provided, at least one instance to the contrary occurs as shown in exhibit H20, that is, in Figs. 21 and 24 of Australian specification No. 69079/74.   This one instance is sufficient to negate Mr. Mischlewski's contention.   Consequently the applicant's submission is not proven and in my opinion the provisional specification is wholly silent about the presence of a bead on the tear strip, which in the complete specification, is included as a characteristic of the invention.   Accordingly, application of the Mond Nickel guidelines points towards the claims being not fairly based on the matter disclosed in the provisional specification.
         A further consideration however, which was not raised by Mr. Mischlewski, is whether the provision of a bead on the tear strip is a "legitimate development" of the invention originally disclosed and thereby entitled to the earlier priority date.   The investigation required is stated for example, by Buckley L.J. in the Stauffer Chemical Company case (supra) at page 54:

"If a new feature were a development along the same line of thought which constitutes or underlies the invention described in the earlier document, it might be that that development could properly be regarded as fairly based on the matter disclosed in the earlier document, and that the new process described in the later document which incorporates that development could as a whole be regarded as fairly based upon the matter disclosed in the earlier document.   If, on the other hand, the additional feature involves a new inventive step or brings something new into the combination which represents a departure from the idea of the invention described in the earlier document, it could not, I think, be properly described as fairly based upon the earlier document."

After careful consideration of the disclosures in the provisional specification and the complete specification, and the evidence of the inventor, my conclusion is that the addition of the feature in question is a development of the invention which cannot properly be regarded as fairly based on the matter disclosed in the provisional specification.   The provisional specific‑
ation does not disclose nor forshadow anything in the nature of optional or additional features nor resultant or forseen advantages other than the "tamper proofing".   Its disclosure is as follows (page 2 lines 15‑21):

"Ideally the lid includes a tear strip which can be removed to enable easy opening of the container to take place.   Once the tear strip has been partially torn there is visible evidence that the container has been tampered with and the difficulty of removing the lid while the tear strip is intact will provide the necessary reassurance to consumers that the container is untampered."

The "difficulty" referred to in the quoted passage is explained at page 3 lines 4 to 10:

"This construction renders it difficult to remove the lid without first removing the tear strip.   Not only is access to the bottom of the tear strip difficult but flexing of the lid to raise the beading over the first shoulder is very difficult while the tear strip is in place.   However, once the tear strip is removed the lid can easily be removed or replaced over the container opening."

The "construction" referred to and which renders the difficulties described, is the provision of a shoulder on the container neck which the bottom edge of the tear strip seats upon; it is described at page 2 line 22 to page 3 line 3 as follows:

"... a plastic bottle comprising an opening a first shoulder on the periphery of said opening a recessed portion in said container body immediately below said first shoulder and a second shoulder located below said recess said second shoulder extending beyond the periphery of said first shoulder and a lid including a peripheral lip adapted to surround said first shoulder of said container said peripheral lip including a beading adapted to seat in said recess of said container and a tear strip attached to said lip and extending around substantially all of said periphery said tear strip being adapted to seat on said second shoulder of said container."

The provisional specification concludes as follows:

"The container closure shown ... achieves the object of this invention in that it provides easy visible evidence of tampering and is unopenable unless the tear strip is removed."

Thus although the broad object of the invention is the same, the provision of a bead on the tear strip or any other feature which would enable realisation of the additional advantages disclosed in the complete specific‑
ation is not forshadowed and given the substantial nature of those advantages, I am unable to conclude that the addition of the bead on the tear strip does not involve an inventive step.   The exhibited prior art patent specifications reinforce my view for they illustrate that in the art, patent grants are often based upon "small differences" between closure constructions.
         Mr. Royal furthermore argued that the claims are not entitled to the date of lodgement of the complete specification for their priority date.   He submitted that as a result of amendments introduced during the examination process, the feature of the annular tear strip portion being "removably connected" with the lower edge of the flange portion is broader than the disclosure as lodged, of a "membrane", and also that there is no basis in the specification as lodged for the claimed "upper shoulder portion" feature associated with the tear strip.
         I consider that there is ample basis in the complete specification as lodged for the matter now claimed.   Firstly the membrane is given as one example only of a structure within the scope of the disclosure as lodged of "a tear strip which can be removed" and secondly, although not specifically described or referenced, the upper shoulder portion feature is illustrated and is inherent in the original description, viz:

"Tear strip 21 is connected by membrane 22 along its inner upper edge to the lower outer edge of flange 18."

And

"Tear strip 21 is spaced out from the outer edge of flange 18."

Consequently, I am of the opinion that the priority date of the claims is the date of lodgement of the complete specification, which is 30 November, 1977.
         The serious prior publication issue previously referred to arises from the applicant's own evidence.   The inventor, Mr. Bean, in a second declaration (dated 28 April, 1982) states (paragraphs 2 and 5 to 9):

"2.The closure caps and containers made and manufactured according to Patent Application 501,007 were first offered for sale on the 20th December, 1976, and the first sales of the closures and containers were made in March 1977.

5.Woolworth's Limited had requested its suppliers (one of which was Norco Co‑operative Limited) to use tamper proof closures on cream bottles.   In order to meet this demand I designed and invented the closure and container subject of Patent Application 501,007.

6.A sample closure and container according to the invention of patent application 501007 was made just before the 20th December, 1976, and these were sent on the 20‑12‑76 to three Companies (one of which was Norco Co‑operative) which were suppliers of cream to Woolworth's.   The purpose of this disclosure was to enable Norco and the other suppliers to examine the closure and container as a prelim‑

inary offer for sale.   Now produced and shown to me marked Exhibit JRHB 5 is a copy from Norco Co‑operative's files of the letter of 20‑12‑76 to Norco Co‑operative enclosing the sample container and closure.

7.I visited Norco Co‑operative Limited in January 1977 to ensure that the tamper proof caps and bottles would be suitable for the equipment which had been installed in December 1976 by ACI Engineering.

8.Norco first placed an order for the tamper proof bottles and closures according to Patent Application 501,007 in March 1977.   Now produced and shown to me marked Exhibit JRHB 6 are invoices made out by Brickwood Holdings to Norco Co‑

operative Limited for the period from the 18th February to the 25th March.   These invoices of Exhibit JRHB 6 are for bottles and bottle closures.   The designation "T/p" was used to identify the tamper proof closures and I note that the first invoice for tamper proof closures is dated 3‑3‑'77 and was followed on 4‑3‑'77 by an invoice for cream bottles which were to be used with the tamper proof caps because they are designated "Woolworths cream bottles".

9.The closures and bottles according to Patent Application 501,007 were not sold to any other supplier before March 1977 and such bottles and closures were first sold through Woolworths retail outlets in March 1977."

Mr. Bean establishes what he regards as being "the invention according to patent application 501,007" in paragraphs 3 and 5 of his first declaration, paragraph 5 of which has been set out above.   Paragraph 3 reads:

"That I am the inventor of the invention the subject of patent application 501,007.   Now produced and shown to me marked exhibits RB1, RB2 and RB3 are a sample closure, a sample container and a combined container and closure respectively, according to the invention of application 501,007."

Inspection of the exhibits RB1 to 3 and consideration of paragraph 5 of Mr. Bean's first declaration shows clearly that the samples sent to the three companies on 20‑12‑76 according to paragraphs 2 and 6 of Mr. Bean's second declaration, that the supplies to Norco Co‑operative Limited in March 1977 according to paragraph 8 of Mr. Bean's second declaration, and that the retail sales in March 1977 according to paragraphs 2 and 9 of Mr. Bean's second declaration, were a complete disclosure of all that is disclosed and claimed in the complete specification.   Consequently because the claims are not entitled to the early priority date, the invention stands as prior published in Australia by the applicant's own actions between the dates of lodgement of the provisional and complete specifications.
         There is further evidence which is supportive of the publication of the invention prior to 30 November, 1977.   Thus on behalf of the opponent, Mr. H.M. Corderoy, the Managing Director of Halcord Machinery Pty. Ltd., declares that several bottles and a carton of caps were delivered to him by the inventor, Mr. Bean, well prior to 2 December, 1976 (the date of lodgement of the provisional specification) in order to facilitate the design of machinery for applying the caps to the bottles, the machinery having been ordered by Norco Co‑operative Limited.   Mr. Corderoy declares it to be his belief that the bottles and caps supplied to him were identical to those shown to Norco Co‑operative Limited which that company was planning to put into commercial use.   He declares (paragraph 4D):

"... In particular I recall that the container included a shoulder on which the lower portion of a depending skirt of the cap rested to make access to the cap difficult unless the tear strip had been removed.   The tear strip was joined to the body of the cap at a stepped portion which was weakened so that the skirt could be torn away at that point."

In contrast, Mr. Bean declares (paragraph 4 of his second declaration):

"I remember the sale of closures and containers to Norco Co‑operative Limited referred to by Corderoy in his declar‑

ation.Prior to the installation of the bottle capping device and cap unscrambler, Norco Co‑operative were using aluminium caps for their cream bottles.   In late 1976 they decided to adopt a plastic snap‑cap closure for their plastic cream bottles and initially Brickwood Holdings supplied closures manufactured by Vinyl Clad Pty. Ltd.'s plant in Brisbane.   Now produced and shown to me marked Exhibit JRHB 4 is a sample of the closure which was supplied to Norco in December 1976.   It was this type of closure that I delivered to Corderoy in late November/early December 1976."

The exhibit JRHB 4 is not in accordance with the invention and does not have the features as declared by Mr. Corderoy, indeed the exhibit does not include a tear away skirt at all.   I am unable to resolve the conflict between Mr. Corderoy's and Mr. Bean's evidence, but in view of my previous findings and Mr. Bean's other evidence, resolution of the conflict is not necessary.   I note however that what Mr. Corderoy declares he received before 2 December, 1976 is in accordance with the disclosure in the provisional specification in that he does not note the presence of a bead on the tear strip.   Mr. Corderoy's remaining evidence is confirmatory of the commercial dealings in the invention admitted by Mr. Bean.
         A further matter is raised in a second declaration by Mr. A. Pernat,who is Patents Officer for the Australian Consolidated Industries Limited Group of Companies which includes the opponent company.   He declares (paragraphs 2 and 3):

"2.THAT on 4 August, 1977 Mr. K.C. Murphy, Operations Manager, of the ACI Plastics Division of ACI OPERATIONS PTY. LTD. a subsidiary of Australian Consolidated Industries Limited wrote a letter to Mr. W.S. Thompson, Manager of the Patents and Licensing Department of Australian Consolidated Industries Limited.   Now shown to me and annexed hereto as Exhibit AP3 is the letter to which I refer.   Attached to the letter was a part of a container and a cap.   Now shown to me and annexed hereto as Exhibit AP4 is the sample attached to the letter.

3.Mr. Murphy referred to the matter as a "cream bottle tamper proof closure".   He wrote and I verily believe that the package was becoming very popular in country areas and he asked for an opinion as to patentability.   Mr. Thompson referred that letter to me for opinion and I retained on my file the sample which is now Exhibit AP4 to this my declaration."

The exhibit AP4 is in accordance with the invention which is claimed and Mr. Pernat's evidence itself establishes publication and also confirms that sales of the invention occurred prior to 30 November, 1977 as declared by Mr. Bean.
         Although Mr. Royal stated that there was no need for me to canvas the exhibited prior art should I find the invention to have been published by the sales prior to 30 November, 1977, I nevertheless consider that for completeness I should indicate my views on its relevancy.   Of the 40 odd items of prior art exhibited by the opponent, only 3 require detailed consideration; the remainder in my opinion do not publish nor deprive the claims of novelty.
         The first relevant item (exhibit H10) is an article on page 42 of the February 1975 issue (Vol. 48/No. 2) of the magazine "Modern Packaging", which is proven to have been published in Australia before the priority date.   The article is entitled "Lock‑on cap for plastic jars" and is accompanied by four diagrams, the first three of which show stages in the removal of the cap from the jar and the fourth of which is a cross‑section showing the cap/jar connection.   The article reads:

"Cap‑Snap, an injection‑molded closure for wide‑mouthed gallon jars, snaps on securely and cannot be removed until

a lower sealed band is stripped off along a score line to eliminate the major locking ridge.   A tab remains for opening; the cap can be pressed back on for reclosure.   It will not back off and can be snapped onto the jar during case packing."

The article and diagrams effectively disclose every feature of the invention as claimed except for the tear strip having:

"... an upper shoulder portion adjacent the lower edge of said flange portion ..."

The second relevant item is U.S. Patent specification No. 3,940,004 (exhibit H42) which was available in the Patent Office library from 10 December, 1976.   It appears to be a patent for the product described in the Modern Packaging article and Mr. Royal in his submissions treated it as such.   It clearly discloses all that is claimed except for two matters, the first being that the first annular bead (38) does not seat wholly within the recess, but in my opinion this difference is immaterial given that the functioning of the disclosed features is exactly the same as that of the equivalent features in the claimed construction.   Also in my opinion the disclosure satisfies the terms of claim 1, which is that the bead be "arranged for engagement" with the recess.
         The second matter also concerns the feature of the tear strip having an "upper shoulder portion".
         Mr. Bean (first declaration, paragraph 8) states that the feature of the tear strip exhibiting an external shoulder at its junction with the lower edge of the cap portion:

"... enables the tear strip to have a wider internal diameter than that of the cap portion.   This means that when applying the cap to a container the tear strip portion will be able to easily pass over the external lip of the container neck without undue application of force.

The shoulder on the tear strip means that the junction between the cap and tear strip is a membrance (sic) joining the outer lower edge portion of the cap to the upper inner edge of the tear strip.   This provides a natural severable link between the cap and tear strip which can easily be provided in a sample (sic) moulding die.

A closure having [... the shoulder ...] is also easier to remove from the moulding die because the retaining force of the internal beads is low."

As is previously indicated, claim 1 as it is presently worded does not restrict the feature in question to being structured the same as Mr. Bean declares, however were the claim to be amended to so restrict the feature, then the claim would in my opinion be novel with respect to both of the above described prior art items because of the advantages referred to by Mr. Bean which are supported by the evidence of Mr. N. McLoughlin, a plastic tooling and design consultant.   As the claim stands however, I consider it to be prior published by and not novel with respect to US 3,940,004 because the figures in the citation illustrate an internal shoulder where the tear strip joins the cap.
         The third item is Australian specification No. 16945/67 (exhibit H16) which was published on 1 August, 1968.   It discloses all of the features of the invention except the shoulder on the tear strip.
          Some items of the prior art disclose a container having all of the features of the claimed container (for example exhibits H7, H18) and others disclose a closure as is claimed (for example exhibit H39) but there is no association between the respective disclosures.
         The opponent in support of the final ground of opposition, that the invention is obvious and does not involve an inventive step, relied upon various items of the prior art which are proven to be part of the relevant common general knowledge.   However there is no evidence to establish that a non‑inventive worker would, as a matter of mere routine and without the benefit of hindsight, firstly select the features of the invention from all of the existing common general knowledge and secondly amalgamate them to arrive at the structure which is disclosed.   Consequently I do not uphold the obviousness objection.
         I find that the opposition succeeds on the grounds that the claims do not comply with section 40 and that the invention which is disclosed and claimed is prior published and not novel, I therefore refuse to grant a patent on the application.   I award costs against the applicant.

(G.D. CARMICHAEL)