Bristol-Myers SQUIBB Company v L'OREAL

[1992] APO 43

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application        :    No.552316 in the name of BRISTOL-MYERS SQUIBB

Title:    Hair Dyeing Process and Compositions package

Action: Opposition under S59 Patents Act 1952 by L'OREAL

Decision:    Issued            .  Application for special leave under R59(1)(b) refused; claims not anticipated; no evidence claims obvious; specification did not comply with S40; time to amend specification allowed.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 552316 by BRISTOL-MYERS SQUIBB COMPANY and an opposition under section 59 of the Patents Act 1952 by L'OREAL.

BACKGROUND

Application No 552316 by BRISTOL-MYERS SQUIBB COMPANY (BRISTOL) was advertised accepted in the Official Journal dated 29 May 1986. L'OREAL lodged a notice of opposition under section 59 of the Patents Act 1952 on 8 August 1986. The service of evidence was completed on 1 March 1990. BRISTOL adduced further evidence under sub-regulation 59(1)(a) on 24 August 1990. The matter was heard in Canberra on 19 November 1990. BRISTOL was represented by Mr P. Jones, patent attorney of Phillips Ormonde & Fitzpatrick and L'OREAL was represented by Mr P. Pearson, patent attorney of Watermark.

SPECIFICATION

The specification of application No 552316 was amended by a request under section 77 of the Patents Act 1952 after L'OREAL had served evidence-in-support of its opposition. The request was not opposed. Therefore I will consider the specification as amended by this request under section 77.

The specification commences by stating the invention relates to a process for dyeing hair, particularly human hair, and composition packages for carrying out that process. It seems to me this statement describes the invention prior to the amendment of the specification under section 77 because the amended specification does not claim a composition package.

The color of human hair is due to the presence of discrete natural pigment particles called melanins.  The biosynthesis of melanin involves conversion of tyrosine through a number of intermediate steps, including 5,6-dihydroxyindole, to melanin.  The specification summarises the prior art which involves hair coloring with melanin precursors such as tyrosine and 5,6-dihydroxyindole.

The specification states the present invention is, in part, based on the discovery that superior results can be obtained by using a metal salt to promote melanogenesis.  The advantages of the present process are a better variety of shades and more reliable shade development.  And, if desired, improved temporary hair coloring.  The process is then described in similar terms to those used in claim 1.  Claim 1 reads as follows:

"1.  A hair dyeing process which comprises of steps of contacting the hair to be dyed with a solution of a metal salt that promotes melanin formation from 5,6-dihydroxyindole, before or after the aforementioned step contacting the hair with a solution of 5,6-dihydroxyindole, rinsing the hair between the two contacting steps, maintaining the contact with the second-used solution until a desired darker color is obtained, rinsing or shampooing the hair, then contacting the hair with a solution of hydrogen peroxide for a maximum period of 15 minutes until the desired lighter color shade is obtained, with the provisio that the solution of hydrogen peroxide does not contain added bleach boosters and with the further proviso that the hair is not lightened further than the natural colour of the hair or the colour that it had before the process was employed and then again rinsing the hair."

The specification then describes a preferable embodiment of the process in similar terms to those used in claim 2.  Claim 2 reads as follows:

"2.  A hair dyeing process which comprises the steps of contacting the hair to be dyed with an alkaline solution containing cupric ion, then contacting the hair with a solution of 5,6-dihydroxyindole, rinsing the hair between the two contacting steps, maintaining contact with the second-used solution until a desired darker color is obtained, and rinsing or shampooing the hair."

The invention further provides a melanin hair dye as a composition of matter which is described in similar terms to those used in claim 14.  Claim 14 reads as follows:

"14. A melanin hair dye as a composition of matter, said dye being prepared by contacting hair with a solution of 5,6-dihydroxyindole, and before the aforesaid step contacting the hair with a solution of cupric salt."

On pages 5 and 6 of the specification various hair dyeing kits are described as "a further preferable feature of the present invention". In my view this description, which was present in specification prior to its amendment under section 77, is inaccurate because kits are no longer a feature of the invention. The specification describes the lightening or colour shade-establishing step as different from the oxidizing treatment employed in conventional bleaching of hair. Also according to the specification it is believed the dyes produced in accordance with the present invention are unqiue in that the melanogenesis-promoting metal forms a complex with the melanin formed during dyeing. Accordingly a feature of the present invention is a complex melanin hair dye as a composition of matter. I note the earlier description of this dye and claim 14 do not use the phrase "complex melanin hair dye".

If the present process is intended to colour hair to a shade which is lighter than its present shade then the hair has to be bleached lighter or even completely before employing the process.  Of the melanogenesis promoters that were tested only cupric ion was found to promote melanin formation all the way to an intense black colour.  Whether or not a metal can perform as a melanogenesis promoter can be determined by routine experimentation.  Solutions of cupric ion and ferrous ion are the melanogenesis promoters used in the specific examples.

I have quoted the independent claims above.  Claims 3 to 6 and 15 are appended to claim 1 and claim 7 is appended to claim 2. These claims define further features of the processes.  Claim 8 reads as follows:

"8.The hair dyeing process of claim 2, further comprising contacting the hair with a solution of hydrogen peroxide until the desired color is obtained."

Claims 9 to 11 and 13 define further features of the process defined in claim 8.

EVIDENCE

L'OREAL's evidence-in-support of its opposition consists of statutory declarations made by Peter Chapman Cook, James Murray and Marion Elizabeth Dormer. The evidence-in-answer consists of statutory declarations made by Leszek January Wolfram and Brian Milligan. The evidence-in-reply consists of statutory declarations made by Gerard Lang and Peter Leslie Pearson. BRISTOL adduced further evidence by leave of the Commissioner under sub-regulation 59(1)(a) of the Patents Act 1952. This evidence consists of another statutory declaration made by Leszek January Wolfram. I will discuss the relevant parts of the evidence at appropriate points in my decision.

BACKGROUND TO FURTHER EVIDENCE

For convenience I will summarise the background which I consider relevant to L'OREAL's application for special leave to adduce further evidence under sub-regulation 59(1)(a) of the Patents Act 1952.

The specification, in the form considered by Mr Cook and in its present form, compares the damage caused to hair by the present lightening using hydrogen peroxide with that caused by conventional bleaching.  Mr Cook in his evidence-in-support comments on this comparison.  But in his declaration he does not describe the results of any tests which compare the present lightening step with conventional bleaching.  Dr Wolfram in his declaration in the evidence-in-answer,also does not describe the results of any tests.  Dr Lang in paragraph 26 of his declaration, which is part of the evidence-in-reply, describes the results of a series of tests.  In his opinion these tests show hair dyed according to the present process is damaged by the lightening step.  He also concludes there is no substantial technical difference between normal bleaching and the present lightening step.

BRISTOL asked L'OREAL to consent to it adducing further evidence under sub-regulation 59(1)(a) because paragraph 26 in Dr Lang's declaration is "virtually a new opposition".  L'OREAL consented to BRISTOL adducing further evidence provided the evidence was in response to the tests reported in paragraph 26 in Dr Lang's declaration.  The further evidence consists of a second declaration made by Dr Wolfram.  In this declaration Dr Wolfram describes the results of tests, which, in his opinion, demonstrate the present lightening step does not tend to damage or weaken the hair.

Mr Pearson sent Mr Jones a letter which included a second declaration made by Dr Lang.  The letter stated this declaration was L'OREAL's evidence-in-reply to BRISTOL's further evidence.  In a letter to Mr Pearson, Mr Jones declined to accept service of Dr Lang's second declaration.  The letter stated there was no basis for the service of evidence-in-reply to further evidence adduced under sub-regulation 59(1)(a).  Mr Pearson in a letter to Mr Jones dated 24 October 1990 asked BRISTOL to consent to L'OREAL adducing further evidence under sub-regulation 59(1)(a).  The letter also suggested L'OREAL may seek to adduce Dr Lang's second declaration under sub-regulation 59(1)(b) if BRISTOL refused its consent.  At the hearing I asked Mr Jones if BRISTOL consented to L'OREAL adducing further evidence under sub-regulation 59(1)(a).  Mr Jones said L'OREAL did not consent to this evidence being adduced.

FURTHER EVIDENCE

At the hearing Mr Pearson made an oral application for special leave to adduce further evidence under sub-regulation 59(1)(b).  This evidence consists of a second declaration made by Gerard Lang.  Mr Pearson supported L'OREAL's application for special leave with a statutory declaration made by himself dated 19 November 1990.  The relevant parts of this declaration read as follows:

"2.  Both parties to the Opposition agreed in writing to the Applicant adducing further evidence in response to paragraph 26 of the statutory declaration of Gerard Lang dated 22 February 1990 forming part of the Opponent's Evidence in Reply.  Leave to adduce such evidence was granted by the Commissioner, and the Applicant thus lodged a declaration by LESZEK JANUARY WOLFRAM dated 12 July 1990.

3.   The declaration by L.J. WOLFRAM referred to in the preceding paragraph disagrees with the statements in the Lang declaration that the Applicant's "lightening step", referred to in Application No. 552316 damages or weakens the hair, contrary to the suggestion or disclosure in the specification of 552316.  A number of tests are carried out by L.J. WOLFRAM  and conclusions are made thereon as to the extent of damage to the hair.

4.   In reply, Mr Lang has made a declaration in which he strongly disagrees with the tests as carried out and the conclusions based thereon.  The Opponent now seeks special leave of the Commissioner to have the declaration of GERARD LANG, dated 25 September 1990, to be formally submitted for consideration in the present opposition proceedings.

5.   The Opponent claims that the declaration of GERARD LANG dated 25 September 1990 is of special importance in any consideration as to whether the specification of 552316 is misleading in respect of statements contained therein as to the extent of damage to the melanin dyed hair following the hydrogen peroxide lightening step.

6.   The declaration of GERARD LANG dated 25 September 1990 comprises the entire further evidence, and no further evidence is contemplated."

SUBMISSIONS ON FURTHER EVIDENCE

Both Mr Pearson and Mr Jones made submissions at the hearing on the application for special leave to adduce further evidence.  I will summarise the relevant parts of these submissions at appropriate points in my decision.

DECISION ON FURTHER EVIDENCE

I note the Office's "Hearings Manual" states the factors which are relevant to an application for special leave are as follows:

(i)Is the evidence which it is proposed to adduce, based on the nature thereof and grounds as set out in the declaration, relevant to the action, in the sense that it would contribute to a more correct, just, or expeditious result?

(ii)If the application for special leave were to be allowed, would this cause unnecessary protraction of the opposition?

(iii)Would there be any injustice done to the other party, if the application were to be allowed?

(iv)Has the party seeking to adduce the further evidence been diligent in procesuting the opposition action?

Mr Jones submitted the evidence which L'OREAL was seeking to adduce would have no significant bearing on the outcome of the opposition.  He said the evidence was merely a repetition of earlier evidence with some adjustments to give it a slightly different emphasis.  Mr Jones argued the Commissioner's practice was only to give special leave to adduce further evidence if the evidence had a special content.  Mr Pearson submitted the further evidence disputed whether Dr Wolfram had conducted his tests on the correct basis.

Mr Pearson's declaration does not state, nor did he say at the hearing, that Dr Lang's declaration contains new evidence that the present specification is misleading.  In my view this further evidence may merely cast doubt on the results described in Dr Wolfram's declaration in BRISTOL's further evidence.  In other words this further evidence may not directly support L'OREAL's view that the present specification is misleading.  Thus it seems to me the purpose of L'OREAL's further evidence may be to demonstrate BRISTOL has not shown the specification is not misleading.  I think this places the onus the wrong way.  I consider the onus is on L'OREAL to show the specification is misleading and not on BRISTOL to show it is not misleading (McGlashan v Rabett 9 CLR 223 at page 230). Therefore I consider Dr Lang's second declaration will not necessarily contribute to a more correct, just or expeditious finding about the lightening step which is described in the present specification.

Mr Jones asserted L'OREAL had consented to BRISTOL adducing further evidence under sub-regulation 59(1)(a) because it agreed new matter had been introduced in its evidence-in-reply.  He argued L'OREAL was merely attempting to prolong the opposition proceedings by using sub-regulation 59(1)(b) to reply to evidence adduced by BRISTOL under sub-regulation 59(1)(a).  Mr Pearson submitted L'OREAL had no intention of prolonging the opposition proceedings.

L'OREAL filed its notice of opposition in August 1986.  Dr Cook in his declaration in the evidence-in-support refers to the lightening step which is described in the present specification.  Therefore I am a little surprised L'OREAL did not include the evidence described in paragraph 26 of Dr Lang's declaration in its evidence-in-support.  In my view the tests conducted by Dr Lang appear simple and quick to perform.  A view which is supported by the period of less than 2 months in which Dr Lang responded with a similar set of tests in reply to Dr Wolfram's second declaration.  L'OREAL has not explained why it was unable to include the evidence described in paragraph 26 of Dr Lang's declaration in its evidence-in-support.  If L'OREAL had done this then BRISTOL's application under sub-regulation 59(1)(b) may not have been necessary.  Thus the present opposition proceedings may have been heard at an earlier date.  L'OREAL's failure to explain why it did not file this evidence in its evidence-in-support means I am unable to conclude whether or not it has been diligent.

If I grant L'OREAL's application for special leave BRISTOL may serve evidence-in-reply to the further evidence under sub-regulation 60(2).  Clearly this will delay the present opposition proceedings.  And I think the question of whether this is an unnecessary delay depends upon L'OREAL's explanation of why it did not include the evidence described in paragraph 26 of Dr Lang's first declaration in its evidence-in-support.

Mr Pearson sent Mr Jones a copy of Dr Lang's second declaration approximately 2 months before the date of the hearing.  Thus I do not think BRISTOL will be caught by surprise by this declaration if I allow L'OREAL's application under sub-regulation 59(1)(b).  Therefore I consider I will not do BRISTOL any injustice if I grant L'OREAL special leave to adduce Dr Lang's second declaration.

The present parties were involved in an earlier application for special leave to adduce further evidence (L'Oreal v Bristol-Myers Co 1991 AIPC 90-736). In the earlier situation the applicant for the patent applied for special leave. And the further evidence included a response to a novelty attack which was first described in the evidence-in-reply. In the present situation the opponent wishes to respond to further evidence filed by the applicant for the patent. And the opponent's further evidence may only go to the question of whether the applicant for the patent has shown the specification is not misleading. I think the present situation can be distinguished from this earlier situation. In my opinion the present situation most closely resembles that found in another decision where the hearing officer refused to grant the application for special leave to adduce further evidence involving tests (Montecatini Societa Generale Per l'industria Mineraria E Chemica v Eastman Kodak Co 1967 AOJP at 156).  After taking account of all of the above considerations I am satisfied I should refuse to allow L'OREAL's application for special leave to adduce further evidence.

Mr Pearson sent me a letter dated 7 December 1990 which in part reads as follows:

"We would like to offer the following observations on two points considered at the Hearing, in the event that the Hearing Officer may wish to take same into consideration, at his discretion."

I sent a copy of this letter to Mr Jones whose reply reads as follows:

"We submit that the contents of the letter of 7th December, 1990 should be disregarded utterly.

There is no statutory basis for submissions after a Hearing.  The letter is not evidence.  It is merely a statement.  There is a formal process if opponent wishes to attempt to introduce new evidence at this late stage."

In my view I may take into account submissions made in Mr Pearson's letter which relate to evidence already served in the present opposition.  But I will not take account of any new evidence which Mr Pearson discusses in his letter.  I do not think BRISTOL will be denied natural justice by this procedure as I have given its attorney an opportunity to comment on any submissions made on behalf of L'OREAL

SECTION 40

I think it is convenient to consider whether the specification complies with section 40 before considering whether the claimed invention has been anticipated.

Mr Jones argued the present invention is a controlled process for dyeing hair to any desired shade in the range intense black to blonde  He said for all shades, except black, control is achieved by dyeing the hair to a darker shade than desired and then lightening the hair to the desired shade using hydrogen peroxide.  But I note the description on page 7 of the specification states as follows:

"Preferably, in accordance with the present invention, unless a black or grey shade is desired, the hair dyed with the melanin from 5,6-dihydroxy-indole is lightened with a hydrogen peroxide-containing solution."

The specification states the examples are "further illustrations of the present invention" and I note examples 1,4 and 5 do not include a lightening step.  In these examples the hair is dyed to a darker shade or black.  I think the skilled person would not interpret these parts of the description to mean control in the present process is achieved for all shades, except black, by lightening the hair to the desired shade using hydrogen peroxide.  In my opinion this description suggests the lightening step may be an optional feature of the process to dye hair to shades other than black.But page 14 of the specification reads as follows:

"If the shade that is desired is other than black, then the hair, subsequent to dyeing and possible shampooing, is subjected to a lightening step by contacting it with a dilute hydrogen peroxide solution until the desired shade is obtained."

I think the this statement means the lightening step is an essential feature of the process to dye hair to a color other than black.  In my view the overall description does not make it clear to the skilled reader if the lightening step is used to dye hair to all shades other than black.

Mr Pearson argued claim 1 should specify a minimum period for the lightening step.  I note claim 1 claims hair is contacted with a solution of hydrogen peroxide "until the desired lighter color shade is obtained".  In my view this aspect of claim 1 is a claim by result where the result is hair with a lighter color shade (NoFumevFrankPitchfordandCoLtd 1935 RPC 231). Thus I disagree with Mr Pearson's argument as I consider the minimum period is defined by the lighter color shade desired. Mr Pearson also suggested the minimum period in claim 1 could be zero time. I do not agree with this suggestion. The process defined in claim 1 requires the hair to be contacted with hydrogen peroxide "until the desired lighter shade is obtained". I think this means the hair has a lighter shade than the "darker color" obtained from the preceeding step. I consider this can only occur if the hair is contacted with hydrogen peroxide for some time even if it is only for a short time. It seems to me claim 1 only includes a process to dye hair black if the contact time is shorter than could be obtained in practice .

Mr Pearson pointed out the lightening step is not a feature of the process which is claimed in claim 2.  Mr Jones submitted claim 2 merely claims the process used if the desired shade is black when the lightening step is unnecessary.  Page 4a of the specification describes the invention in similar terms to those used in claim 2.  It seems to me this description will only be restricted to a process for dyeing hair black if the "desired darker color" is black.  According to page 7 of the specification only cupric ion was found to promote melanin formation all the way to an intense black color.  But I note the first sentence on page 12 of the specification states that with cupric ion "the resulting color can go all the way to solid black".  And the sentence which bridges pages 12 and 13 reads as follows:

"It requires about 2-20 minutes to dye the hair to the maximum achievable depth of color when using a metal salt promoter for melanogenesis; but when using the cupric ion the time required is at the faster end of even this fast time range."

I think the skilled reader would conclude the process which uses cupric ion will dye hair black if the solution of 5,6-dihydroxy indole is left in contact with the hair for sufficient time to obtain the maximum achievable depth of color.  For example the process described in example 1 dyes hair black after 5 minutes contact with the 5,6-dihydroxyindole solution.  I think the skilled person would presume a contact time of less than 5 minutes may not dye the hair black.

I consider the skilled reader would interpret all of this to mean   cupric ion may be used to merely dye hair to a darker color  Therefore I disagree with Mr Jones`s submission that claim 2 only defines a process for dyeing hair black.

I conclude from all the above that the specification does not fully describe the invention because it is not clear to the skilled reader exactly what features are essential to the present invention.  Also I consider there is no claim which defines the invention in the way Mr Jones described it.  If Mr Jones has correctly described the invention,then in my opinion, BRISTOL should include the process for dyeing hair black in the broadest claim.  Or claim 2 should be limited to a process for dyeing hair black.

The last paragraph on page 4a starts with the phrase "the invention further provides".  This paragraph describes a melanin hair dye in similar terms to those used in claim 14.  Mr Jones argued claim 14 is an adjunct to the earlier process claims.  I note the solution of cupric ion used to produce the melanin hair dye in claim 14 is not an alkaline solution.  I also note the dye is produced without rinsing the hair between the two contacting sreps.  I think both of these features are essential to the other processes described and claimed in the specification.  Thus I consider claim 14 and the corresponding description on page 4a is not an adjunct to any of the processes described or claimed in the specification.  Mr Pearson submitted claim 14 was not clear because it claimed a melanin hair dye as a separate entity but in fact the dye was formed on the hair.  Mr Jones agreed the dye was formed on the hair.  I think the words after "prepared by" in the claim define the preparation of hair dyed with a melanin hair dye.  And not a melanin hair dye as a composition of matter as claimed in the claim.  Therefore I agree with Mr Pearson's submission.

I note claim 8 includes subject matter which is excluded from claim 1.  In my opinion this means claim 8 includes a process in which hair is dyed to a lighter color than it originally was.   This conflicts with the statement in the last paragraph on page 7 of the specification.  I note the description in the first full paragraph on 10 describes the process which is used if hair is dyed to a lighter color than it originally was.  It also seems to me the solution of hydrogen peroxide which is used in the process claimed in claim 8 may contain bleach boosters.  This clearly conflicts with the statement on page 7 of the specification that the present hydrogen peroxide solution does not contain added bleach boosters.

I think it is apparent from my comments in this part of the decision and my comments earlier in this decision I am satisfied the present specification does not comply with section 40 .

TEST RESULTS

Mr Pearson in his declaration in support of L'OREAL's application for special leave suggested the results of tests described in Dr Lang's second declaration were of special importance in considering whether the present specification is misleading.  I refused L'OREAL special leave to adduce this declaration.  But I consider I should consider whether the results described in Dr Lang's first declaration and Dr Wolfram's second declaration show the specification is misleading.  Mr Pearson argued the results described by Dr Lang show the present lightening step does substantial damage to the hair.  Mr Jones submitted the present specification does not state the process did not damage the hair.  He said the specification compares the damage caused by the present lightening step with the damage caused by conventional bleaching.  Mr Jones pointed out the statements in the specification about less damage to the hair are not a promise of the present invention.
I consider the tests described by Dr Lang do not compare the damage caused by the present lightening step and conventional bleaching.  For example page 7 of the present specification states the lightening step is considerable faster than conventional bleaching.  But in the tests described by Dr Lang all the hair samples were in contact with hydrogen peroxide solution for the same time.  In my opinion the tests described by Dr Wolfram also do not make the correct comparison.  For example page 7 of the specification states the present hydrogen peroxide solution does not contain added bleach boosters.  But in the tests described by Dr Wolfram the solution of hydrogen peroxide used in conventioal bleaching did not contain bleach boosters.  Therefore I am satisfied there is no evidence before me which shows the present specification is misleading in its description of the damage caused by the lightening step.

ANTICIPATION

I consider claims 1, 3 to 6, 8 to 11, 13 and 15 in the specification of application No 552316 claim a process which consists of a combination of a number of steps.  These steps include:

.a step where the hair is contacted with a solution of a metal salt,

.a step where the hair is contacted with a solution of 5,6-dihydroxyindole,and

.a step where the hair is contacted with a solution of hydrogen peroxide.

I consider no single document filed by L'OREAL discloses a process which includes a combination of all these steps.  Therefore I am satisfied that none of the documents filed by L'OREAL anticipates claims 1, 3 to 6, 8 to 11, 13 and 15 in the present specification.

I think an important feature of claims 2,7,12 and 14 in the present specification is the use of a solution containing cupric ion.  I note only GB patent No.797174 mentions the use of a solution of cupric ion.  Therefore this is the only document filed by L'OREAL which I will consider in detail.

GB PATENT NO.797174

GB patent No.797174 describes a process for dyeing human hair which comprises applying an aqueous alkaline composition containing 5,6 dihydroxyindole to the hair.  The formation of the pigment may be accelerated by adding oxidation catalysts to the dyeing solution.  The oxidation catalysts include cupric chloride and ammonical silver nitrate.  The latter proved to be the most active catalyst.  A further embodiment produces dark tints comparable to natural hair.  According to this embodiment the hair is first treated with an alkaline aqueous solution of 5,6-dihydroxyindole containing ammonia, an ammonium salt or an amine.  After rinsing with water , a solution of the oxidation catalyst is applied to the hair.  Particularly satisfactory results were obtained using a solution of ammonical silver nitrate as the catalyst.  None of the specific examples use a solution of cupric chloride as the catalyst.

The process described in GB patent No.797174 yields dark tints.  And earlier in this decision I found the process claimed in claim 2 may be used to dye hair to a darker color.  Thus I think both of these processes may be used to dye hair to the same dark color.  I think the citation teaches the skilled person a variety of processes to dye hair to a darker color. For example the oxidation catalyst is described as an optional feature of the cited process.  And the citation specifically describes a process in which ammonical silver nitrate is used as the oxidation catalyst.  I note the citation includes cupric chloride in the list of oxidation catalysts.   But I do not think the citation teaches the skilled person a process in which the hair is contacted first with a solution of cupric chloride.  For example the citation does not specifically describe any process in which a cupric salt is used.  But I consider a solution of cupric salt is an essential feature of the process claimed in claim 2.  Therefore I am satisfied GB Patent No.797174 does not describe a process which anticipates the process claimed in claim 2.  I think a similar argument applies to the processes defined in claims 7 and 12.  Claim 14 claims a melanin hair dye prepared by contacting the hair with solutions of 5,6-dihydroxyindole and a cupric salt.  I think a similar argument also applies to the melanin hair dye defined in claim 14.  Therefore I am satisfied the melanin hair dye defined in claim 14 is not anticipated by the disclosures in GB patent No.797174.

OBVIOUSNESS

Mr Pearson made submissions on obviousness. But I think L'OREAL did not show any of the documents it filed formed part of the common general knowledge in Australia.  Therefore none of these documents is relevant to my consideration ofobviousness (MinnesotaMiningandManufacturingCovBeiersdorf(Australia)Ltd144 CLR 253 at page 295).  Dr Cook considers the lightening step is well known in the art.  But I do not think this means the combination of steps in the processes claimed in claims 1,3 to 6 and claim 15 of application No 552316 is obvious.  According to Mr Pearson's letter dated 7 December 1991 I should consider the statements made by Dr Lang about what was known in the art in Australia because there is no requirement for an expert to be a resident of Australia.  In my view Dr Lang does not necessarily have to establish he has been resident in Australia.  But I think Dr Lang does have to establish that his knowledge is the same as that of the relevant skilled person in Australia at the relevant time.  In my opinion Dr Lang does not do this in his declaration.  Consequently I think there is no reason for me to consider any of the statements made by Dr Lang about what was known in the art.  Therefore I am satisfied there is no evidence before me which shows the subject matter claimed in the present claims is obvious.

SUMMARY

I refused to allow L'OREAL's application for special leave to adduce further evidence.  I found the specification of application No 552316 does not comply with section 40.  I also found the claimed subject matter was not anticipated by any of the documents filed by L'OREAL.  And there was no evidence the claimed invention was obvious.  BRISTOL requested amendment of the specification after L'OREAL had filed evidence-in-support of its opposition  Despite the changes made to the specification L'OREAL has been successful with one of its grounds of opposition.  Therefore I award costs against BRISTOL.  I allow BRISTOL 60 days from the date of this decision to propose amendments to the specification.

M.Kendall
Delegate of the Commissioner of Patents

Patent attorneys for the applicant:Phillips Ormonde &Fitzpatrick,Melbourne

Patent attorneys for the opponent:Watermark,Melbourne