British American Tobacco (Germany) GmbH v Philip Morris Products S.A - [2016] APO 59

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

British American Tobacco (Germany) GmbH v Philip Morris Products S.A. [2016] APO 59

Patent Application: 2007232212

Title:Slit banded paper

Patent Applicant: Philip Morris Products S.A.

Opponent: British American Tobacco (Germany) GmbH

Delegate: Dr W.E. Guinea

Decision Date: 5 September 2016

Hearing Date: Written submissions filed 10 June 2016 and 20 June 2016

Catchwords: PATENTS – section 59 – opposition to the grant of a patent – novelty – inventive step – manner of manufacture – opposition unsuccessful on all grounds

Representation: Patent Attorney for the Applicant: Fisher Adams Kelly Callinans
Patent Attorney for the Opponent: Shelston IP

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2007232212

Title:Slit banded paper

Patent Applicant: Philip Morris Products S.A.

Date of Decision: 5 September 2016

DECISION

None of the grounds of opposition were made out. The opposition is unsuccessful.

I award costs against the Applicant according to Schedule 8 of the Regulations up to the date the amendments were allowed, and from the date the amendments were allowed I award costs against the Opponent according to Schedule 8 of the Regulations.

REASONS FOR DECISION

Background

Patent application 2007232212 (“the opposed application”) entered national phase in Australia on 28 August 2008 from PCT application PCT/IB2007/002118.

Philip Morris Products S.A. (“the Applicant”) requested examination on 17 January 2011, and the opposed application was advertised as accepted on 15 August 2013.

A notice of opposition was filed by British American Tobacco (Germany) GmbH (“the Opponent”) on 15 November 2013. The Opponent filed a statement of grounds and particulars (the “SGP”) on 17 February 2014.

Evidence in support (“EIS”) was filed on 19 May 2014. This comprised a first statutory declaration dated 15 May 2014 by Mr David John Dittrich (“Dittrich1”) with supporting exhibits DJD-1 to DJD-8.

The Applicant filed proposed amendments on 19 August 2014 (the “proposed amendments”). The amendments were advertised as accepted on 2 October 2014.

On 20 August 2014, the Applicant filed a request for a three month extension of time (“EOT”) to file evidence in answer (“EIA”). In view of the Delegate declining to grant the EOT, the Applicant asked to be heard in relation to the same. A hearing notice on this matter issued on 17 September 2014.
On 24 September 2014, the Applicant requested a stay of the Opposition, in view of the pending proposed amendments. On 25 September 2014, the Delegate indicated that the question of the stay would be considered by the Commissioner in conjunction with the hearing on the EOT.

A decision issued in relation to the EOT and the stay on 18 December 2014, being British American Tobacco (Germany) GmbH v Philip Morris Products S.A. [2014] APO 87 (the “first decision”). In this decision the Delegate declined the request for an EOT, but granted a stay on the opposition. Consequently the Delegate (at [36]) indicated that EIA was not due until:
“…one month after the stay is lifted, i.e. one month after the Commissioner informs the parties that the amendments have been allowed, refused or withdrawn or one month from the date of this decision, whichever is later.”
Prior to the first decision, a notice of opposition to the proposed amendments was filed by the Opponent on 2 December 2014. A decision in relation to this opposition issued on 14 September 2015, being British American Tobacco (Germany) GmbH v Philip Morris Products S.A. [2015] APO 61 (the “second decision”), with the proposed amendments being allowed.

10. On 22 September 2015, the Commissioner wrote to the parties confirming that the EIA was due to be filed by 14 October 2015.

11. The EIA was filed on 14 October 2015. This comprised a statutory declaration dated 12 October 2015 by Dr Ping Li (“Li”), with supporting exhibit PL-1.

12. Evidence in reply (“EIR”) was filed on 15 December 2015. This comprised a second statutory declaration dated 10 December 2015 by Mr David John Dittrich (“Dittrich2”), with supporting exhibit DJD-9.

13. Although a hearing for this matter was set for 22 June 2016, both the Opponent and the Applicant subsequently indicated that they would appear by written submissions only. These were filed by the Opponent (the “Opponent’s submissions”) on 10 June 2016. The Applicant filed their written submissions (the “Applicant’s submissions”) on 20 June 2016.

The Invention as Described

The opposed application concerns wrappers or papers used in smoking articles, such as cigarettes. In particular the opposed application discusses issues with respect to low ignition propensity (“LIP”) and self-extinguishment under free burn conditions. LIP refers to the tendency for a smoking article to self-extinguish when placed on a substrate, thus reducing fire risk. The state of “free burn conditions” refers to when the smoking article is being held in the hand without puffing, or when it is freely suspended in an ash tray. Low rates of self-extinguishment under free burn conditions obviate the need to continually re-light the smoking article.

In particular the application deals with certain types of so called banded (or slit banded) paper cigarettes. The wrappers of banded paper cigarettes comprise a number of bands of add-on material that extend around the circumference of the cigarette. The bands can be used to modify the combustion characteristics of cigarettes.

It is clear from the opposed application that banded paper cigarettes (see page 2A, lines 17 to 27) are known in the art and that these are used to help achieve LIP. Indeed there is an American Society of Testing and Materials (“ASTM”) standard for measuring the propensity of a lit banded paper cigarette, when placed on a combustible surface, to continue burning without puffing; this being standard E2187-04 “Standard Test Method for Measuring the Ignition Strength of Cigarettes”.

Clearly it is desirable for a smoking article to exhibit both LIP and low rates of self-extinguishment under free burn conditions. However these are conflicting characteristics and it is noted that many cigarettes with LIP have high rates of self-extinguishment under free burn conditions.

The opposed application addresses this problem with smoking articles comprising wrappers having banded regions, such that the smoking articles described exhibit both LIP and reduced rates of self-extinguishment under free burn conditions. These smoking articles are best understood by reference to figures 1 to 5, which are reproduced below.

Figures 1 to 3 illustrate smoking articles comprising a base web 100 and various configurations of banded regions 10, 20, 30. In figure 1 the banded regions 10 comprise first 11, second 12 and third 13 zones on the base web. Each of the first and third zones comprises add-on material, while the second zone comprises no or a reduced amount of add-on material. The first and third zones are said to be about 2mm to 5mm wide (preferably 2mm to 3mm), while the second zone is about 1mm to 2mm wide. A specific example is given where the first and third zones are about 3mm wide, while the second zone is about 1.5mm or 2mm wide.

In figure 2 there are two banded regions 20. Each banded region comprises a first zone 21, a second zone 22, a third zone 23, a fourth zone 24 and a fifth zone 25. Similar to figure 1, the odd zones 21, 23, 25 comprise add-on material, while the even zones 22, 24 comprise no or a reduced amount of add-on material. The odd zones are said to be about 2mm to 3mm wide (preferably about 2mm), while the even zones are about 1mm to 2mm wide ( though most preferably 1mm or less).

In figure 3 there are two banded regions 30. Each banded region comprises a first zone 31, a second zone 32, and a third zone 33. All the zones comprise add-on material, however the second zone comprises a reduced amount thereof. The first and third zones are said to be about 2mm to 3mm wide (preferably about 3mm) and the second zone is about 1mm to 2mm wide (preferably about 2mm or less).

For each of figures 1 to 3, it is indicated that the add-on material is preferably uniform across each of the zones and preferably comprises multiple layers of add-on material. Although not stated explicitly with respect to figures 1 to 3, it would appear based on the consistory statements on page 1 that the uniformity is with respect to thickness, density or composition of the add-on material.

Figures 4 and 5 represent smoking articles having bands analogous to those of figures 2 and 3, respectively, but with the banded regions extending longitudinally, rather than circumferentially, on the smoking article.

The use of the add-on material has the effect of reducing the permeability of the base web in those zones where it is applied. This reduces airflow in those regions, thus restricting combustion. The banded regions as discussed are said to “…exhibit both low ignition propensity and reduced rates of self-extinguishment under free burn conditions” (the opposed application, page 3, lines 1 to 2). In addition these banded regions are said to facilitate the use of wrappers with reduced air permeability than would otherwise be the case with known designs of banded paper, due to impacts on CO levels.

The Opposed Claims

25. The opposed application ends with 20 claims. Claim 1 is the only independent claim and is reproduced below. As observed earlier the claims have been amended after acceptance. For convenience I have italicised the changes to claim 1 introduced by the amendments.

“1. A wrapper of a smoking article comprising:
a base web; and
at least one transverse banded region comprising first, second and third zones,
said first and third zones comprising a single layer of add-on material, which reduces permeability of said wrapper, said first and third zones being separated by said second zone, wherein said second zone comprises no add-on material;
said wrapper having greater permeability along said second zone than along said first and third zones, said second zone having a width less than the width of either of the said first and third zones,
in which the add-on material is substantially uniform with respect to parameters of thickness, density or composition, across each of the first and third zones;
said first and third zones each have a width of 2mm to 5mm such that if either of said first or third zone were applied separately to wrappers of smoking articles the smoking articles would exhibit total burn through and substantially no occurrences of self-extinguishment under free burn conditions;
the sum of said widths of said first and third zones is such that if the first and third zones were applied to wrappers of smoking articles as a single continuous band, the smoking articles would exhibit substantially no occurrences of total burn through and self-extinguishment under free burn conditions,
so that lit smoking articles comprising said first, second and third zones exhibit reduced occurrences of self-extinguishment under free burn conditions, as compared to smoking articles comprising wrappers wherein the first and third zones are applied as a single continuous band, while maintaining substantially no occurrences of total burn through.

It is noted that the phrase “total burn through” refers to the situation in which the coal burns through the entirety of a banded region such that the cigarette does not self-extinguish.

The Opposition

26. In the SGP the Opponent pursued the following grounds under the Patents Act 1990 (Cth) (the “Act”):

· s18(1)(a) – the invention is not a manner of manufacture;
·    s18(1)(b)(i) – the invention as claimed is not novel;
·    s18(1)(b)(ii) – the invention as claimed does not comprise an inventive step; and
·    s40(3) – the claims are not clear and succinct.

27. In contrast to the SGP, only grounds under s18(1)(a), s18(1)(b)(i) and s18(1)(b)(ii) have been specifically pursued in the Opponent’s submissions. Consequently I have confined this decision to the grounds of novelty, inventive step and manner of manufacture.

Onus of Proof

28. As examination was requested prior to 15 April 2013, the changes brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the opposed application. As such the previous burden of proof applies to this opposition, namely that the Opponent will only succeed if they can convince the Commissioner that it is clear or practically certain that the patent if granted will be invalid; see F Hoffman La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; [2000] FCA 283; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; [2008] FCAFC 182; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17].

The Skilled Addressee

29. The skilled addressee is taken to be a non-inventive worker in the art with respect to the invention concerned, is taken to have the CGK in the art, and could be a team of people; see Root Quality Control Pty. Ltd. v Root Control Technologies Pty. Ltd. [2000] FCA 980 at [70] to [71] (“Root Quality Control”); Catnic Components Limited and Another v Hill & Smith Limited (1982) RPC 183 at 242 to 243 and Minnesota Mining & Manufacturing Co. vBeiersdorf (Australia) Ltd. [1980] HCA 9 at [115]; (1980) 144 CLR 253 at 292. In particular in Root Quality Control at [71] Finkelstein J. stated that “... the patent is directed to a person interested in making, constructing, compounding or using the invention...”

30. I consider that the skilled addressee is a person or team of persons involved in design and/or manufacture of smoking articles, with particular emphasis on wrappers. It is apparent that both Mr Dittrich (see Dittrich1 at [5] to [12]) and Dr Li (see PL-1) are in a position to give evidence as to what the skilled addressee would know or do as at the priority date.

I note that both the Opponent and the Applicant dispute the evidence of their adversary’s expert at various locations throughout their respective submissions. In particular the Applicant has disputed the ability of Mr Dittrich to provide evidence as to what a skilled addressee would know or do at [7.4] to [7.6] of their submissions. It will be up to me, as the decision maker, to determine if any particular part of any of the expert evidence that I intend to rely upon is tainted by hindsight, ex post facto analysis, or inventive contribution and to weigh such evidence accordingly.

Novelty

32. The test for determining novelty is often expressed in the form of the reverse infringement test as given in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; (1977) CLR 228 at page 235; 13 ALR 605 at page 611 (“Meyers Taylor”):

“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”

33. In determining whether a disclosure comprises an infringement, it is convenient to consider the principles laid down in General Tire & Rubber Company v The FirestoneTyre and Rubber Company Limited [1972] RPC 457 at pages 485-486) (“General Tire & Rubber”) as to what a skilled addressee would do based on the disclosure in question:

“…if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated.
If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee’s claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice.”

Consideration of Novelty in view of the Prior Art

In their submissions at [19] to [24] the Opponent alleges that certain claims lack novelty in view of US 6596125 (“D1”), US 2004/0099280 (“D2”), WO 2005/002370 (“D3”) and US 5878754 (“D4”). The arguments presented by the Opponent are simply a cut and paste of Mr Dittrich’s views on each of D1, D2 and D4 as discussed in Dittrich1 and Dittrich2. Despite relying on D3 for the purposes of novelty, the Opponent has not in fact provided any discussion of D3 in their submissions, though I will consider D3 in view of the evidence provided. For convenience, I will now consider whether any of D1 to D4 deprives claim 1 of novelty. I will only consider the dependent claims if this proves necessary.

D1 discloses a method of making banded cigarette paper for use in the manufacture of cigarettes. The banded cigarette paper comprises add-on material comprising stripes on a base web. D1 notes it is desirable to have uniformity in the applied add-on material, and that there have been problems with existing methods of applying add-on material to base webs. These include difficulties in achieving a desired band width and add-on weight at high production speeds. The stated object of D1 is to achieve uniformity in the application of slurry onto a base web travelling at high speed and to apply bands of add-on material of both weight and width within predetermined tolerances.

As to be expected much of D1 is taken up with the manufacturing processes used to achieve the desired objects. Nevertheless an example of a cigarette produced with the banded cigarette paper of D1 is given in figure 1C, which is reproduced below.

37. In figure 1C a cigarette 7 comprises banded regions 5. The permeability of the banded regions is lower than for the non-banded regions 3 of the base web, thus leading to a slower rate of combustion in the banded regions. D1 discusses the creation of banded regions of 3mm to 10mm in width, and provides particular examples in table 1 where the average band width varies between 4.44mm to 6.70mm.

38. On considering D1 it is apparent that it does not disclose said second zone having a width less than the width of either of the said first and said third zones.

39. In figure 1C of D1 the banded regions 5 are commensurate with the first and third zones of the claims, while the non-banded region indicated at 3 is commensurate with the second zone. The Opponent at [22] of their submissions points to [52] to [53] of Dittrich1 and [25] to [28] of Dittrich2 as supporting their contention that D1 discloses the features of the independent claims. However none of these passages address the fact that D1 is entirely silent on the width of the non-banded regions (i.e. the second zone of claim 1), and indeed Mr Dittrich appears to entirely ignore this feature in his consideration of D1.

40. Notably Dr Li suggests at [19] of his declaration that the skilled addressee would determine that the width of the non-banded regions is somewhat greater than the banded regions based on figure 1C, despite figure 1C not necessarily being to scale. Mr Dittrich disputes this point at [25] of Dittrich2. In view of the fact that figure 1C is not necessarily to scale I consider that very little, one way or another, can be inferred about the width of the bands 5 in comparison to the non-banded regions 3.

41. It is thus apparent that D1 does not disclose said second zone having a width less than the width of either of the said first and said third zones. I am therefore satisfied that D1 does not deprive claim 1 of novelty.

42. D2 deals with the manufacture of smoking articles comprising banded paper. In the background to the invention, D2 discusses some issues with sidestream smoke and the use of various means, including banded paper to control the way a cigarette burns. At [0008] it is noted that it “…would be desirable to provide a cigarette manufacturer with a manner or method to produce a cigarette that possesses controlled burn characteristics resulting from alterations to the wrapping material of the tobacco rod of that cigarette.”

43. In view of [0008], D2 discloses the manufacture of smoking articles having banded paper, and provides a number of examples of the same. The most relevant of these for present purposes are examples 36 and 44. These examples are best understood by reference to figures 3, 12 and 17, which are reproduced below. Figure 3 illustrates a generic smoking article according to D2, while figures 12 and 17 respectively illustrate the specific wrapping material (or paper) of examples 36 and 44 used to create a smoking article according to figure 3.

44. In figure 3 the smoking article 194 comprises a cigarette having a roll of smokable material 198 contained within a wrapping material 180. The smoking article also comprises a filter 200. The wrapping material comprises a printed band 188 that extends circumferentially around the cigarette in a manner transverse to the longitudinal axis of the cigarette.

45. Figures 12 and 17 illustrate a wrapping material 180 having a base sheet 184. Each base sheet has a printed pattern in the form of recurring bands 188, 190. In figure 12 each of the bands comprise respective band portions 300, 305, with each band portion being separated by a gap of about 1mm. The spacing between bands is about 20mm. The first band portion 300 comprises three layers 310, 315, 320, while the second band portion 305 comprises three layers 325, 330, 335. The bottom (or first) layers 310, 325 are about 3mm in width, the second layers 315, 330 are about 2mm in width, while the third layers 320, 335 are about 1mm in width. The first and second layers are formed from an ethylcellouse/calcium carbonate formulation, while the third layers are formed from a nitrocellulose/calcium carbonate formulation.

46. In figure 17 each of the bands comprise respective band portions 450, 452, 454, with each band portion being separated by a gap of about 0.5mm. The spacing between bands is not given. The first band portion 452 and the third band portion 454 both comprise two layers, while the second (or middle) band portion 450 comprises three layers. The first 456, 460 and second 462, 464 layers of the first and third band portions are about 2mm in width. Conversely the first 253 and second 256 layers of the middle band portion are about 5mm in width. Although not explicitly stated, the third layer 259 of the middle band is about 4mm in width, based on the stated similarity to the embodiment of figure 11; see [0308]. The layers of the first and third band portions are formed from an ethylcelluose/calcium carbonate formulation. Based on the stated similarity to the embodiment of figure 11, the first and second layers of the middle band portion are formed from a different ethylcelluose/calcium carbonate formulation to the one used for the first and third band portions, while the third layer 259 is formed from a nitrocellulose/calcium carbonate formulation.

47. It is apparent that the band portions 300, 305 of figure 12 are commensurate to the first and third zones of the claims, while the gap between these is commensurate with the second zone. Similarly in figure 17, the band portions 452, 450 (or band portions 450, 454) are commensurate with the first and third zones of the claims, while the gap between these band portions is commensurate with the second zone of the claims. However it is apparent that D2 does not disclose the add-on material is substantially uniform with respect to parameters of thickness, density or composition, across each of the first and third zones.

48. The Opponent at [23] of their submissions points to [54] to [73] of Dittrich1 and [29] to [31] of Dittrich2 as supporting their contention that D2 discloses the features of the independent claims. However Dittrich1 does not consider whether D2 discloses the uniformity of thickness, density or composition as required by claim 1. Mr Dittrich only considers the requirement of “uniformity” in Dittrich2, at [31], after Dr Li disputed whether this feature was present in D2:

“In paragraph 27 and 28, Mr Li seems to argue that because there is a difference in the amount of add-on material applied to each layer shown in Figure 12, the Figure does not depict the smoking article claimed in the Opposed Application. This is not a logical construction of what is required by the claims of the Opposed Application. The reference in those claims to the add-on material being substantially uniform with respect to parameters of thickness, density or composition, across each of the first and third zones clearly requires a side-by-side comparison. As reproduced in paragraph 60 of my previous declaration, it is clear that the add-on material has been applied uniformly to the bands. There is no basis on the terms of the claims (in fact it is nonsensical) to suggest that what is required is uniformity as between the add-on material applied to each layer. Furthermore, it is clear from the terms of for example claims 4 and 5 of the Opposed Application that the important consideration is the total effect produced by the add-on material applied to each band or "zone".” (emphasis in original)

49. Paragraphs [27] to [29] of Li are repeated below:

“Further disclosure regarding Example 36 can be found in paragraph [0265] of the D2:
"multi-layered discontinuous bands, whereby the widths of the layers of each individual section of each band are different from one another. In particular, the width of each successive layer of each band portion is less than that of the layer beneath that layer, and whereby one end of each successive layer is off-set from the ends of the layer beneath that layer; and the layers of each band portion are registered so as to have their respective ends virtually overlie one another at one end of the band."
Thus, it is absolutely clear that in the embodiment of Example 36 of D2 the bands of add-on are not uniform across each of said first and third zones in terms of either thickness or composition. Different areas of the base sheet are effectively covered by one, two or three layers of add-on material, at least two of which are formed from different formulations.
Accordingly, D2 cannot be regarded as disclosing a wrapper wherein the add-on material is uniform across each of said first and third zones, as is required by the originally allowed claim 1, and currently amended claim 1, of the Opposed Application.”

50. It is apparent that what Dr Li is pointing out is that the thickness of the band portions in figure 12 varies as one moves from each side of these band portions. This is clear on viewing figure 12. In addition the composition varies across each of the band portions as the third layers 320, 335 are formed from a nitrocellulose/calcium carbonate formulation, while the first 310, 325 and second 315, 330 layers are formed from an ethylcellouse/calcium carbonate formulation. It is thus clear that the band portions of figure 12 are not uniform with respect to either thickness or composition across these band portions.

51. Similarly the first zone defined by the middle band portion 450 (or alternatively the third zone if one calls the band portion 452 the first zone) in figure 17 is not uniform in the sense of the claims. The middle band portion has a variable thickness from side to side, due to the shorter width of the third layer 259. In addition the first 253 and second 256 layers of the middle band portion are formed from an ethylcelluose/calcium carbonate formulation, while the third layer 259 is formed from a nitrocellulose/calcium carbonate formulation. It is thus clear that the first zone (or alternatively the third zone) of figure 17 is not uniform with respect to either thickness or composition across this band portion.

52. It is thus apparent that D2 does not disclose the add-on material is substantially uniform with respect to parameters of thickness, density or composition, across each of the first and third zones. I am therefore satisfied that D2 does not deprive claim 1 of novelty.

53. D3 deals with a smoking article comprising a wrapper having a patterned deposit comprising catalyst particles. In the background to the invention, D3 discusses the composition of smoke during a puff (mainstream smoke) and sidestream smoke while not actively smoking, and notes that it is desirable to reduce carbon monoxide, amongst other undesirable constituents, in both sidestream and mainstream smoke. D3 then lists a number of documents disclosing known catalysts, sorbents and oxidants for reducing undesirable smoke constituents, and observes at [0006] that there is still “…an interest in improved and more efficient methods and compositions for reducing the amount of gas constituents in the mainstream and/or sidestream smoke of a smoking article.”

54. D3 then goes on to disclose a number of embodiments of a wrapper for a smoking article having a patterned deposit of catalyst particles thereon, this being said to achieve a reduction in a constituent gas in the mainstream or sidestream smoke. A number of smoking articles comprising these patterned deposits are disclosed in D3, the most relevant for present purposes being illustrated in figure 3, which is reproduced below.

55. A variety of smoking articles 300 are illustrated on figure 3. In each case the wrapper 302 of the smoking article comprises a pattern of catalyst particles 304. In figures 3(a) and 3(b) the pattern 304 comprises an alphanumeric sequence 306 and lines 308. In figure 3(c) the pattern comprises a circumferential line 310, while in figures 3(d) and 3(e) the pattern comprises overlapping helices 312. As can be seen on figure 3, each of the patterns is in some way repetitive, either along the length or the circumference of the smoking article 300.

56. It is clear that certain of the patterns 304 in figure 3 can be considered to be zones forming banded regions, particularly the lines 308, 310. However on inspection of D3 it is apparent that it does not disclose said first and third zones each have a width of 2mm to 5mm.

57. Mr Dittrich considered that D3 was novelty destroying at [74] to [75] of Dittrich1, with particular emphasis on figure 3. However no-where does D3 disclose the width of the patterns 304, and this point is simply not addressed in Mr Dittrich’s evidence.

58. It is thus apparent that D3 does not disclose said first and third zones each having a width of 2mm to 5mm. I am therefore satisfied that D3 does not deprive claim 1 of novelty.

59. D4 deals with a smoking article that has reduced ignition tendencies. In particular D4 discusses the fact that it has been long known that cigarette wrappers have a significant influence on the ignition tendencies of cigarettes. D4 also indicates that it is known to treat surfaces of the wrapper with bands so as to reduce the permeability of the wrapper in those areas and so reducing the ignition tendencies of the cigarette. However D4 notes that there are some difficulties with the known banded paper, including with respect to the taste and quality of the cigarette and the costs involved. Consequently the objects of D4 relate to providing a cigarette with reduced ignition tendencies while not adversely affecting the smoking characteristics of the cigarette.

60. The objects of D4 are achieved by creating a wrapper for a smoking article wherein discrete areas are treated with a certain type of cellulosic polymer solution. Examples of wrappers comprising such treated areas are given, as are examples of smoking articles comprising the same. The most relevant examples for present purposes are given in figures 2 and 5A to 5F. These figures are reproduced below.

61. Figure 2 illustrates a smoking article comprising a tobacco column 12 and filter 26 housed within a wrapper 14. Discrete areas 18 of the wrapper are treated with the cellulosic polymer solution, which in figure 2 form circumferential bands 24. As can be seen each of the bands are spaced apart by untreated areas 28. While the band width and spacing (i.e. the distance between the bands) is variable, D4 discloses that of the cigarettes tested a minimum band width of 4mm is desired, while a spacing of 5mm to 10mm is appropriate.

62. Figures 5A to 5F present a number of examples of patterns that can be used in applying the treated areas 18. These include: a checkerboard pattern of squares 42 (figure 5A); a series of interlocked circles 40 (figure 5B); a pattern of isolated squares 42 (figure 5C); a pattern of isolated circles 18 (figure 5D); a pattern of irregular interlocking shapes 36 (figure 5E) or a pattern of isolated irregular shapes 44 (figure 5F).

63. On inspection of D4 it is apparent that it does not disclose said second zone having a width less than the width of either of the said first and third zones.

64. The Opponent at [24] of their submissions points to [76] to [79] of Dittrich1 and [32] of Dittrich2 as supporting their contention that D4 discloses all the features of the independent claims. Mr Dittrich points to figure 2, and also to the disclosure (at column 6, lines 40 to 67) of D4 which discusses the widths of the treated zones 18 and the untreated areas 28. This passage indicates that the width and spacing of the bands is variable, to the extent that these are determined by a number of factors, including the initial permeability of the wrapper 14 and the density of the tobacco. D4 indicates that for the cigarettes tested, a minimum band width of 4mm is desirable (with no stated upper limit), while a width of 5mm to 10mm for the untreated areas is “appropriate”.

65. However I do not consider that the cited passage from D4 comprises “clear and unmistakeable directions” to the skilled addressee with respect to the width of the zones in the independent claims. Firstly it is apparent that the dimensions specified in D4 are not generally applicable to any smoking article. In fact D4 makes it clear that these dimensions only apply to the cigarettes tested in D4, while in general the width of the treated zones 18 and gaps between these are determined by any number of variables, including the permeability of the wrapper 14 and the density of the tobacco column 12; see column 8, lines 41 to 67. I do note the statements in Dittrich1 at [78e)] with regard to balancing the spacing and width of the bands. However the vague possibilities outlined in D4 when applied to any smoking article, and which depend on other factors yet to be determined by the skilled addressee, will not inevitably lead to the claimed invention in the sense of General Tire & Rubber.

66. Secondly, even on starting with the cigarettes as tested in D4, and for which the stated dimensions of the band areas applies, it is simply not possible for the skilled addressee to arrive at the dimensional limitations of claim 1. In this regard claim 1 also requires that the first and third zones (commensurate with any two of the treated zones 18 in D4) have a width of 2mm to 5mm. The range for the treated zones in D4 is 4mm or greater. Thus the largest possible width of the treated zones commensurate with claim 1 is 5mm. This is the same width as the smallest possible width of the untreated area 28 (commensurate with the second zone of claim 1) specified in D4. It is thus apparent that a skilled addressee would never create a smoking article that fulfils the teaching of D4 (on starting with the cigarettes tested in D4) that also meets the dimensional requirements of claim 1. This is the antithesis of the “clear and unmistakeable directions” of General Tire & Rubber.

67. Mr Dittrich also points to figures 5B to 5F for disclosure of the bands and zones in the sense of the independent claims; see Dittrich1 at [78f)] and [78g)]. With regard to this it is perhaps useful to consider the Macquarie Dictionary Online, 2016, Macquarie Dictionary Publishers, an imprint of Pan Macmillian Australia Pty Ltd, (“Macquarie Dictionary Online”) definition of “band”. Of those given , the following are most pertinent to the present circumstances:

“noun 1. any strip that contrasts with its surroundings in colour, texture or material.
2. a thin, flat strip of some material for binding, confining, reinforcing, trimming, or some other purpose: hatband; rubber band.”

68. It is apparent that none of the patterns in figures 5A to 5F comprise a “banded region” in the sense of the independent claims. It follows that none of these figures provide clear and unmistakeable directions with respect to claim 1.

69. From all the above it is apparent that D4 does not disclose said second zone having a width less than the width of either of the said first and third zones. I am therefore satisfied that D4 does not deprive claim 1 of novelty.

Novelty – Conclusion

70. None of D1 to D4 disclose all the features of claim 1. It follows that none of the dependent claims were deprived of novelty by any one of D1 to D4. This ground of opposition is unsuccessful.

Inventive Step

71. The statutory basis for inventive step is set out at s7(2) and s7(3) of the Act, and is reproduced below:

“(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information;

being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.”

72. Although not expressly referred to in the Act, it has been accepted by the authorities that lack of inventive step in the Act is commensurate with the previous concept of obviousness under the Patents Act 1952 (Cth) (albeit relying on a different prior art base); see Re James EarlWinner and Donna C Winner v Ammar Holdings Pty. Limited [1992] FCA 377 at [12]; (1992) 24 IPR 137 at 140. The question of obviousness has been extensively considered by the courts. In particular Aickin J. stated in Wellcome Foundation Ltd. v VR Laboratories (Aust) Pty. Ltd. [1981] HCA 12 at [45]; (1981) 148 CLR 262 at 286 (“Wellcome Foundation”):

“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”

73. In situations where the invention may lie in a combination of features, it is appropriate to consider whether the combination is obvious, not whether each of the separate integers of the combination is obvious: Minnesota Mining & Manufacturing Co. v Beiersdorf (Australia) Ltd. [1980] HCA 9 at [116]; (1980) 144 CLR 253 at 293 and Aktiebolaget Hassle v Alphapharm Pty. Ltd [2002] HCA 59 at [119]; (2002) 212 CLR 411 at 455 (“Aktiebolaget Hassle”):

“In reaching these conclusions, the primary judge made it clear that he was not considering the irrelevant question of whether the individual integers of the combination were obvious. Instead, he was addressing the relevant question, namely whether the combination was obvious [157]. In this Court, the primary judge was criticised for applying the test of obviousness to the separate integers of the formulation. Had he done this it would indeed have been a mistake [158]. With inventions it will often be the case that particular steps in the right general direction, viewed in isolation and separately (and especially with the benefit of hindsight [159]), will be obvious although the combination of such steps (from all the others that would theoretically be possible) will constitute the "inventive step" and negate the claim of obviousness.”

74. The test outlined in Wellcome Foundation is demonstrative of the approach frequently taken to assess lack of inventive step or obviousness, being the so called problem-solution approach, which I will use in determining the inventiveness of the claims below.

The Problem

75. There is very little discussion of the difficulties with the prior art in the opposed application. Such discussion is largely confined to page 2A, where issues with the propensity of existing LIP cigarettes to self-extinguish under free burn conditions are discussed. It is apparent that the opposed application is concerned with providing a LIP cigarette that has low rates of self-extinguishment under free burn conditions.

76. In view of the above I consider that the problem to be solved is:

how to create a LIP smoking article that also has low rates of self-extinguishment under free burn conditions.

77. I note that neither party has directly addressed the nature of the problem to be solved in their submissions. However the Applicant appears to accept that there were issues with existing LIP cigarettes at [3.5] of their submissions: “…there is a long-standing need in the industry to develop suitable low ignition propensity cigarettes that meet consumer requirements.”. Also, at [7.8] of their submissions, the Applicant cites Li at [8], where Dr Li also discusses known issues in a similar vein:

“Thus, at the time of filing the Opposed Application, there clearly was an interest in designing smoking articles that would clearly meet the requirements set by regulations directed at improving the safety of unattended smoking articles, and that would also meet the consumers' need with regards to attended smoking articles.”

78. Similarly the Opponent acknowledges the known issues with existing LIP cigarettes at [41] of their submissions, where they cite Dittrich1 at [28]:

“Based on the work conducted not only by BAT and Brown and Williamson, but also other companies within the tobacco industry in relation to LIP papers, I believe that by 2006 it was well understood within the tobacco industry world-wide that the papers should have the following features:
a) the bands or zones of reduced permeability should not be too wide, since this would result in the cigarette self-extinguishing prematurely. This would mean that the cigarette could burn out when not being drawn upon (for example, resting in an ashtray). For instance, I am aware that the bands or zones of reduced permeability on the papers produced by BAT and Brown and Williamson were approximately 4mm to 6mm;
b) similarly, the spacing between the bands or zones of reduced permeability should not be too narrow since this would also lead to self-extinguishment under free burn conditions and therefore a reduced rate of total burn through; and
c) the bands or zones of reduced permeability should themselves not be too narrow, since the burning coal would be able to burn through these bands whether under free burn conditions or when a cigarette is dropped or placed on a flammable substrate.”

79. I do note that [41] of Dittrich1 disputes that many prior art LIP cigarettes had high rates of self-extinguishment under free burn conditions. Indeed Mr Dittrich states that:

“(A)as discussed above, I was aware that a number of different LIP papers had already been produced by March 2006. These papers (including the paper produced by Brown and Williamson in the late 1990s) were used on commercial products quite successfully and in my view adequately achieved a balance between exhibiting low ignition propensity while also demonstrating a relatively low rate of self-extinguishment under free burn conditions. I note that the Opposed Application does not disclose the basis for the assertion that these prior cigarette papers exhibited "high rates" of self-extinguishment.”

80. It would appear that Mr Dittrich believed that the existing LIP cigarettes were adequate with respect to self-extinguishment under free burn conditions. However, I consider that a fair reading of the opposed application leads to the problem as I have formulated it, and it is not necessary for an inventor to account for the path they took in reaching an invention; see AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 (“AstraZeneca”) at [205]. I am therefore satisfied with the problem as I have determined it, despite Mr Dittrich’s comments at [41] of Dittrich1.

81. It is apparent from above that the issues with regard to LIP smoking articles and self-extinguishment under free burn conditions was known in the art before the priority date. As such I am satisfied that the above formulation of the problem does not breach the principles laid down in AstraZeneca at [202] to [203], to the extent that the problem does not comprise information that is not available to the skilled addressee from common general knowledge (“CGK”) or under s7(3).

Lack of Inventive Step in View of the Opponent’s Submissions

The Opponent’s lack of inventive step arguments are presented at [25] to [52] of their written submissions. These arguments clearly include allegations of lack of inventive step in view of s7(3). It is not entirely clear whether the Opponent is formally pursuing allegations of lack of inventive step in view of s7(2); nevertheless I shall also consider this in the following. For convenience I shall initially only consider claim 1 with regard to inventive step. I will only consider the dependent claims if this proves necessary.

Lack of Inventive Step in View of Common General Knowledge (s 7(2))

83. This argument appears to be put at [33] to [46] of the Opponent’s written submissions. In particular the Opponent provides a list of alleged CGK at [34]:

“It is clear from both the Opponent’s and the Applicant’s evidence that, as at the priority date, each of the matters below would have been regarded as forming part of the common general knowledge in Australia:
·That certain smoking article wrappers could, and did, control the manner a smoking article (e.g. cigarette) burns when that cigarette is not being drawn upon.
·That certain smoking article wrappers could be, and were, configured to exhibit both low ignition propensity and reduced rates of self-extinguishment under free burn conditions.
·That smoking article wrappers treated in discrete bands to reduce the wrapper permeability in the treated areas could, and did, provide smoking articles which exhibit both low ignition propensity and reduced rates of self-extinguishment under free burn conditions.
·That smoking article wrappers having two banded regions or zones of reduced permeability, separated by a further zone having increased permeability could and did provide smoking articles which exhibit both low ignition propensity and reduced rates of self-extinguishment under free burn conditions.
·That the spacing between banded regions of reduced permeability on a smoking article wrapper should not be too small so as to reduce the occurrences of total burn through and self-extinguishment under free-burn conditions.
·That the use of a smoking article wrapper having a wide single continuous band of reduced permeability will result in self-extinguishment of smoking articles under free burn.
·That the use of a smoking article wrapper having a wide single continuous band of reduced permeability will result in smoking articles which do not exhibit total burn.”

84. Even assuming that the above items are CGK, a principal difficulty still remains for the Opponent. This is that the list of CGK is still missing features of the independent claims, including an untreated or reduced treated second zone being of lesser width than treated zones on either side of the untreated or reduced treated second zone. Indeed this feature appears to go against the alleged CGK in that it is prescribing certain limitations on the width of the untreated zone which would otherwise need to be determined by the skilled addressee so as to meet the requirements of LIP and the avoidance of self-extinguishment under free burn conditions.

85. In this regard I note Mr Dittrich’s statements at [12] to [21] of Dittrich2. These statements indicate, at least, that some of the features of the independent claims were CGK, while others, are said to be obvious (Dittrich2 at [17]):

“The second zone must obviously be narrower relative to the adjacent first and third zones. If the second zone is too wide, then the coal would flare up, returning back to its 'normal' temperature and size, hence burning through the next zone and leading to total burn through of the cigarette article.”

86. Similar statements and conclusions as at [12] to [21] of Dittrich2 also appear in Dittrich1 at [49] and [50], where Mr Dittrich characterises the features of the independent claims as doing “…no more than describe the general configuration of many of the LIP banded papers that were already in widespread use in cigarette products sold across the world prior to March 2006” (at [49]) or “…simply describe design features of LIP papers which were known to produce certain desirable performance attributes (at [50]).

87. Collectively these portions of Mr Dittrich’s evidence are quite summary in nature and simply amount to statements that each of the features of the independent claims are CGK and/or comprise an obvious design feature with respect to the known attributes of LIP cigarettes. There is no attempt to explain what a skilled addressee would do in view of the CGK when faced with the problem at hand. Although it is not certain as to what point in his evidence he was supplied with the opposed application, it is clear that these statements were given after Mr Dittrich had read the opposed application, noting that Mr Dittrich first discusses the opposed application at [36] of Ditrrich1. In this regard the contrast between Dittrich2 at [17] (quoted above) and Dittrich1 at [28], where Mr Dittrich discusses desirable features of LIP cigarette papers, is instructive:

“Based on the work conducted not only by BAT and Brown and Williamson, but also other companies within the tobacco industry in relation to LIP papers, I believe that by 2006 it was well understood within the tobacco industry world-wide that the papers should have the following features:
a) the bands or zones of reduced permeability should not be too wide, since this would result in the cigarette self-extinguishing prematurely. This would mean that the cigarette could burn out when not being drawn upon (for example, resting in an ashtray). For instance, I am aware that the bands or zones of reduced permeability on the papers produced by BAT and Brown and Williamson were approximately 4mm to 6mm;
b) similarly, the spacing between the bands or zones of reduced permeability should not be too narrow since this would also lead to self-extinguishment under free burn conditions and therefore a reduced rate of total burn through; and
c) the bands or zones of reduced permeability should themselves not be too narrow, since the burning coal would be able to burn through these bands whether under free burn conditions or when a cigarette is dropped or placed on a flammable substrate.” (emphasis added)

88. Notably Dittrich1 at [28] suggests that the second zones should not be too narrow, while Ditrrich2 at [17] suggests that they should be comparatively narrow compared to the adjacent zones of add-on material. While not quite contradictory, the immediate recourse to the features of the opposed claims after seeing the opposed application is indicative of ex post facto analysis. In view of this and my other observations at [86], I conclude that Mr Dittrich’s statements at [17] of Dittrich2 to be tainted by ex post facto analysis.

89. It follows from the above than any allegation of lack of inventive step according to s7(2) with respect to claim 1 must fail.

Lack of Inventive Step in View of Common General Knowledge and Prior Art (s 7(3))

Ascertained, Understood and Regarded as Relevant

90. Under s7(3) it is necessary to determine whether a skilled addressee could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded a document as relevant before it becomes part of the prior art base in assessing inventive step. I will now consider this in relation to D1 to D4. I will then consider the inventiveness or otherwise of claim 1 in view of those documents found to comprise prior art information for the purposes of s7(3).

Ascertained

91. In Dyno Nobel Asia Pacific Ltd. V Orica Australia Pty. Ltd. [1999] FCA 1369 (“Dyno Nobel”) at [190]; (1999) 47 IPR 257 the Full Federal Court held that “ascertained” in s7(3) meant “discovered” or “found”. In considering “ascertainment”, their Honours utilised the concept of a “diligent searcher” as outlined by Lord Reid from Technograph Printed Circuits Ltd. v Mills and Rockley (Electronics) Ltd. [1972] RPC 346 at 355:

“... there may be documents which, although available, would never be looked at by anyone making such a search as our hypothetical addressee is supposed to have made. Attention was drawn to the fact that both heads (e) (novelty) and (f) (obviousness) in section 32 contain the words `having regard to what was known or used ... in the United Kingdom'. I doubt whether they were intended to mean the same in each case. If they were there would now be little, if any, difference between novelty and obviousness. Obviousness would cover practically every case of lack of novelty. In head (e) these words are used in an artificial sense and are held to include matter which in fact no-one in the United Kingdom ever knew or was likely to know, such as the contents of some foreign specifications which no-one had ever looked at and which the most diligent searcher would probably miss. I think that in head (f) the words should have the more natural meaning of what was or ought to have been known to a diligent searcher.”

92. I first note that Mr Dittrich (Dittrich1 at [14]) indicated that he would receive a monthly bulletin comprising details of patent applications relating to the tobacco industry, and that he would “…review the patent applications for the purposes of deepening my own understanding of the relevant technologies but also to obtain information in relation to what BAT's competitors may be doing.”. This point has not been disputed by Dr Li or the Applicant. I am therefore satisfied that the skilled addressee would search patent databases in seeking to solve the problem at hand.

93. It is apparent that D1, D2 and D4 all deal with technical issues of interest to the skilled addressee in solving the problem at hand. D2 and D4 both deal with improving the ignition proclivities of smoking articles. In relation to D1, the skilled addressee would know that banded cigarette papers are used to control or improve the ignition proclivities of smoking articles; see Dittrich1 at [26] and Lt at [7]. Notably D1 deals with the manufacture of banded cigarette paper. Therefore I consider that a diligent searcher would ascertain D1 in view of the problem to be solved. I am therefore satisfied that a diligent searcher could be reasonably expected to have ascertained each one of D1, D2 and D4.

94. D3 deals with a wrapper for a smoking article having a patterned deposit comprising catalyst particles, and does not explicitly consider LIP cigarettes or self-extinguishment at all. Rather it is directed towards ways in which undesirable constituents in sidestream (non-puffing) and mainstream (while taking a puff) smoke. This might lead to questions as to whether the skilled addressee would ascertain D3. However in a general sense D3 is directed towards the controlling the combustion characteristics of cigarettes, which at this level of generality is conceptually related to the problem to be solved. Consequently in view of the problem to be solved, I consider that a diligent searcher could be expected to ascertain D3.

Understood

95. In Rohm Haas Company v Nippon Kayaku Kabushiki Kaisha and Sankyo Company Limited [1997] APO 40 (“Rohm Haas”) at [40], the Delegate noted that the “…requirements of understood and regarded as relevant are not likely to be an issue where a document relates to the same art as the problem”.

96. It is apparent that all of D1 to D4 relate to the same art as the problem to be solved. I see no reason to otherwise believe that the skilled addressee would be incapable of understanding any of these documents. I am therefore satisfied that the skilled addressee could be reasonably expected to understand each of D1 to D4.

Regard As Relevant

97. A test used to determine the relevance of a document is found in Beecham Group’s (Amoxycillin) Application [1980] RPC (“Beecham Group”) at 282:

“The test in my judgement is whether it can be expected that the skilled man will be likely to recognize the document in question as being particularly pertinent to, though it may not specifically solve the problem before him.”

I do not see any fundamental conflict between the test outlined in Beecham Group and the Delegate’s words at [40] of Rohm Haas. In particular the Delegate’s use of the words “not likely” indicates that a rigid test with respect to “regard as relevant” was not intended.

98. As noted D1, D2 and D4 all relate to the problem to be solved, or to technical issues understood by the skilled addressee as directly relating to the problem to be solved. I am therefore satisfied that the skilled addressee could be reasonably expected to regard each of D1, D2 and D4 as relevant. Consequently each of D1, D2 and D4 comprise prior art information for the purposes of s7(3).

99. As observed earlier, I consider that a skilled addressee would ascertain D3. However I consider that a closer inspection of D3 would lead the skilled addressee to the conclusion that D3 is not particularly pertinent to the problem at hand. D3 is not at all concerned with the ignition proclivities or self-extinguishment of cigarettes. Consequently the discussion in a number of places in D3 (see for example [0047]) of the distribution and density of catalyst particles affecting the permeability of the wrapper would be understood by the skilled addressee in terms of controlling unwanted constituents of cigarette smoke. I am therefore satisfied that the skilled addressee could not be reasonably expected to regard D3 as relevant in view of the problem to be solved. Consequently D3 does not comprise prior art information for the purposes of s7(3).

Consideration of s7(3) in view of D1

100.As noted earlier D1 does not disclose the said second zone having a width less than the width of either of the said first and said third zones. As also observed earlier, there is simply no discussion in D1 with regard to the width of the non-banded region.

101.There is no evidence indicating that the missing feature from D1 was CGK per se. In addition Mr Dittrich has not, in any way, directly considered what steps the skilled addressee would take as a matter of routine to reach the claimed invention on starting with D1 and in view of the CGK and the problem to be solved. At best one could consider that his evidence suggests that it was known that the width of the bands of add–on material, and the gaps between the same, influenced both the LIP and self-extinguishment properties of smoking articles (see for example Dittrich1 at [28]). In this regard Mr Dittrich’s evidence suggests that the skilled addressee could arrive at the invention of claim 1 on starting with D1 after some undefined period of experimentation. This is not commensurate with establishing that the skilled addressee would have arrived at the invention as a matter of routine in the sense of Wellcome Foundation.
102.In this regard it is notable that Dr Li suggests at [13] of his declaration that:
“The originally allowed claim 1 provided the person skilled in the art with clear instructions as to how to design a smoking article with improved SE and TB performance for any type of cigarette construction. Other teachings in the cited prior art, where explicit ranges or patterns are given, most likely would only work under certain further boundary conditions, or only for some smoking articles. By contrast, the present invention as defined by the originally allowed claims is applicable to all combinations of tobacco blend composition, rod and filter diameter, wrapper base paper, add-on formulations, ventilation and other parameters that can influence the burning characteristics of a smoking article.” (emphasis added)

Thus Dr Li’s evidence suggests that “boundary conditions” are an important consideration in terms of designing the areas of add-on material for the purposes of optimising the ignition proclivity and the self-extinguishment characteristics under free burn conditions of smoking articles. While Mr Dittrich disagrees (at [23] of Dittrich2) with Dr Li’s assertions of general applicability of the opposed application to a wide variety of smoking articles, he does not disagree with his assessment of the limitations of the prior art due to “boundary conditions”. I therefore consider that such boundary conditions are an important aspect for the skilled addressee to consider in terms of applying add-on material for the purposes of solving the problem at hand. This conclusion is bolstered by the disclosure at column 6, lines 41 to 67 of D4, where it is stated that the width and spacing of bands of add-on material is dependent on a number of variables, including permeability of the wrapper and density of the tobacco column.

103.Notably Mr Dittrich has not considered the effect of boundary conditions or other variables on the width and spacing of add-on material in his evidence. This reinforces my conclusions at [101] above.
104.In view of the above it follows I cannot be satisfied that the skilled addressee would, as a matter of routine in view of the CGK and the problem to be solved, arrive at the features of claim 1 on starting with D1. Consequently claim 1 does not lack inventive step in view of D1 and the CGK as per s7(3) of the Act.

Consideration of s7(3) in view of D2

105.As noted earlier, D2 does not disclose the feature of…the add-on material is substantially uniform with respect to parameters of thickness, density or composition, across each of the first and third zones…
106.Mr Dittrich in considering the missing feature (Dittrich2 at [19]) asserts that there is “nothing new or surprising in seeking to achieve consistency and I agree that it would have been obvious that this would have simplified the manufacturing and processing steps”. This could be taken to mean to that the missing feature comprised CGK. However the examples cited by the Opponent both explicitly teach the add-on material as having non-uniform thickness and composition. This teaches away from the missing feature, and Mr Dittrich has not supplied any explanation as to why, in view of the problem to be solved, it would be a matter of routine for the skilled addressee to ignore the teaching of D2 and so arrive at the missing feature.
107.In view of the above it follows I cannot be satisfied that the skilled addressee would, as a matter of routine in view of the CGK and the problem to be solved, arrive at the features of claim 1 on starting with D2. Consequently claim 1 does not lack inventive step in view of D2 and the CGK as per s7(3) of the Act.

Consideration of s7(3) in view of D4

108.As noted earlier, D4 does not disclose said second zone having a width less than the width of either of the said first and third zones.
109.I observe that this is the same feature as missing with regard to D1. In the event that a skilled addressee would start with any smoking article in general in seeking to solve the problem at hand, on starting with D4, my observations with regard to D1 and inventive step are also pertinent to D4. There is simply no evidence given by Mr Dittrich (or Dr Li) that provides a reasoned pathway that would be taken by the skilled addressee as a matter of routine, in view of the problem to be solved and the CGK that leads from the teaching of D4 to claim 1 of the opposed application.
110.In addition, as noted earlier, in the event the skilled addressee starts with the cigarettes tested in D4, it is not possible for the skilled addressee to arrive at claim 1. In effect this is teaching away from the invention, and Mr Dittrich has not provided any evidence as to why a skilled addressee, in the context of the problem, would ignore the teaching of D4 and so arrive at the invention of claim 1.
111.In view of the above it follows I cannot be satisfied that the skilled addressee would, as a matter of routine in view of the CGK and the problem to be solved, arrive at the features of claim 1 on starting with D4. Consequently claim 1 does not lack inventive step in view of D4 and the CGK as per s7(3) of the Act.

Inventive Step – Conclusion

112.It was not established that claim 1 lacks an inventive step. It follows that none of the dependent claims were established to lack inventive step. This ground of opposition is unsuccessful.

Manner of Manufacture

113.The statutory basis for manner of manufacture is found at s18(1)(a) of the Act which refers to the Statute of Monopolies 1623 (Imp) (the “Statute of Monopolies”):
“an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies.”

114.Notably Schedule 1 to the Act comprises a Dictionary which defines invention as follows:
“‘invention’ means any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies, and includes an alleged invention”.

115.The degree to which “newness” is imported into s18(1)(a), due to the wording of that subsection and the definition of invention as given in the Act has been considered by Brennan, Deane and Toohey JJ in NV Philips Gloeilampenfabrieken v Mirabella International Pty. Ltd. (“NV Philips”) 183 CLR 655; [1995] HCA 15 at [9]:
“The effect of those opening words of s 18(1) is that the primary or threshold requirement of a "patentable invention" is that it be an "invention". Read in the context of s 18(1) as a whole and the definition of "invention" in the Dictionary in Schedule 1, that clearly means "an alleged invention"(18), that is to say, an "alleged" "manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies"(19). In the light of what has been said above about what is involved in an alleged manner of new manufacture, that threshold requirement of "an alleged invention" will, notwithstanding an assertion of "newness", remain unsatisfied if it is apparent on the face of the relevant specification that the subject matter of the claim is, by reason of absence of the necessary quality of inventiveness, not a manner of new manufacture for the purposes of the Statute of Monopolies. That does not mean that the threshold requirement of "an alleged invention" corresponds with or renders otiose the more specific requirements of novelty and inventive step (when compared with the prior art base) contained in s 18(1)(b). It simply means that, if it is apparent on the face of the specification that the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent, one need go no further.”

116.It was observed in Grant v Commissioner of Patents [2006] FCAFC 120 at [47] that so called “working directions” do not comprise a manner of manufacture according to s6 of the Statute of Monopolies. The nature of working directions was considered in Commissioner of Patents v Lee [1913] HCA 22; (1913) CLR 138 and Rolls-Royce Ltd.’s Application (1963) 80 RPC 251. From these authorities it is clear that working directions comprise the mere variation in the working of an existing product or process that results in an identical product or process; however if the variation comprises the exercise of inventive ingenuity, then it will not comprise working directions.
117.The Opponent’s arguments with respect to manner of manufacture were supplied at [53] to [57] of their written submissions. The primary arguments made by the Opponent may be summarised as: firstly, lacking a manner of manufacture on the face of the specification (at [53] and [54]); and secondly, that the claims of the opposed application amount to mere working directions (at [55] and [56]). I will consider each of these arguments below.

118. In relation to the first argument put by the Opponent, I see no reason to make such a conclusion based on the opposed application using the principles outlined in NV Philips. I am satisfied that the claims meet the threshold requirement for manner of manufacture.

119.In relation to the second argument put by the Opponent, I note that I have already found the claims to not lack novelty or inventive step in view of the prior art and/or CGK as appropriate. It follows that the claims cannot be characterised as mere working directions.
120.In view of the above it follows that I am not satisfied that the claimed invention is not for a manner of manufacture.

Manner of Manufacture – Conclusion

121.None of the claims were established to lack a manner of manufacture. This ground of opposition is unsuccessful.

Conclusion

122.None of the grounds of opposition were made out. The opposition is unsuccessful.

Costs

123.Costs usually follow the event. However in seeking the EOT for filing EIA, the Applicant provided submissions indicating that the amendments to the claims reduced the relevance of the prior art cited in EIS. In this sense the Opponent can be seen as being partially successful despite the opposition per se being unsuccessful. As a consequence I award costs against the Applicant according to Schedule 8 of the Regulations up to the date the amendments were allowed, and from the date the amendments were allowed I award costs against the Opponent according to Schedule 8 of the Regulations.

Dr W.E. Guinea
Delegate of the Commissioner of Patents