British American Tobacco (Germany) GmbH v Philip Morris Products S.A - [2015] APO 61

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
British American Tobacco (Germany) GmbH v Philip Morris Products S.A. [2015] APO 61

Patent Application: 2007232212
Title:Slit banded paper

Patent Applicant:                   Philip Morris Products S.A.
Opponent:  British American Tobacco (Germany) GmbH
Delegate:  Dr S. K. Aggarwal
Decision Date:  14 September 2015
Submissions Completed:       23 June 2015, in Canberra
Catchwords:  PATENTS – opposition to the allowance of amendments under subsection 102(1) and paragraph 102(2)(b) of the Patents Act 1990 – amended claims in-substance disclosed – amended claims comply with subsection 40(3) – amendment allowed - cost in accordance with Schedule 8 awarded against the opponent.

Representation: Patent applicant: Callinans
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: 14 September 2015
DECISION
I have found that the proposed amendments satisfy the requirements of subsection 102(1) and paragraph 102(2)(b) of the Patents Act 1990, and consequently the opposition fails on all grounds. Thus, subject to appeal against this decision, I allow the amendments filed on 19 August 2014.
I award costs against the opponent.
REASONS FOR DECISION
Background

Patent application 2007232212 (“the application”) directed to a Slit banded paper was filed on 2 April 2007 by Philip Morris Products S.A. (“the applicant”). The application proceeded to acceptance and was advertised accepted on 15 August 2013. A notice of opposition to the grant of patent was filed by British American Tobacco (Germany) GmbH (”the opponent”) on 15 November 2013. A statement of grounds and particulars was filed on 17 February 2014 and the evidence in support was completed on 19 May 2014.
On 19 August 2014, the applicant filed a request to amend the complete specification. An application for an extension of time to file evidence in answer was filed by the applicant on 20 August 2014. The applicant requested a stay on the substantive opposition proceedings on 24 September 2014 pending the outcome of the amendments. Following a hearing, a delegate of the Commissioner on 18 December 2014 decided to grant a stay on the substantive opposition until the Commissioner informs the parties of the outcome of the amendments, and also extended the time to file evidence in answer to one month after the stay is lifted.
On 18 September 2014, a delegate of the Commissioner granted leave to amend the complete specification of the application in accordance with the statement of proposed amendment filed on 19 August 2014 by the applicant. The amendments were advertised on 2 October 2014 for the purpose of opposition.
A notice of opposition to the allowance of amendments was filed by the opponent on 2 December 2014 and a statement of grounds and particulars was filed on 2 January 2015. The opponent did not file any evidence in support, however the applicant filed their evidence in answer on 11 March 2015. No evidence in reply was filed by the opponent.
Subsequent to the correspondence with the parties, a delegate of the Commissioner advised the parties on 13 May 2015 that they would be heard on the basis of written submissions. The opponent filed their written submissions on 2 June 2015 while the applicant filed their written submissions on 16 June 2015. The opponent filed their written responding submissions on 23 June 2015.
The request to amend the patent specification is the subject of this decision.
The Particulars
The statement of grounds and particulars opposes the amendments under subsection 102(1) and paragraph 102(2)(b) of the Patents Act. Under paragraph 102(2)(b), it is asserted that the proposed amendments would not comply with subsection 40(3).
The Specification
The present invention relates to a wrapper of a smoking article comprising transverse banded regions exhibiting reduced occurrences of self-extinguishment under free burn conditions and substantially no occurrences of total burn through.
The Nature of Amendments
The specification before amendment contained 22 claims (“the accepted claims”) with claim 1 being the only independent claim.
The statement of proposed amendment filed on 19 August 2014 amends claims 1 and 17 and deletes dependent claims 6 and 7. The remaining claims have been consequentially renumbered and their respective appendancies have been revised. The accepted claim 17 becomes claim 15 following the amendment.
Claims 1 and 15 after the amendments (“the amended claims”) read as follows:
1. A wrapper of 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 2 mm to 5 mm 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 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 whereon the first and third zones are applied as a single continuous band, while maintaining substantially no occurrences of total burn through.
15.A method of making a banded wrapper according to any one of the preceding claims, comprising:
supplying a base web; and
forming at least one transverse banded region comprising first, second and third zones on the base web;
wherein the first and third zones are outward of the second zone,
wherein the second zone has a greater permeability compared to the first and third zones,
wherein at least the first and third zones are formed from a single layer of an add-on material free of fillers and the second zone comprises no add-on material;
wherein the width of the second zone is less that those of the first and third zones, in which
the first and third zones are formed so that the add-on material is substantially uniform with respect to parameters of thickness, density or composition, across each of the first and third zones and in that
the first and third zones are formed so that each of the first and third zones has a width of 2 mm to 5 mm 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.
[Added text is underlined]
Evidence
The evidence in answer consists of a single statutory declaration from Mr Ping Li accompanied with an exhibit PL-1. Mr Li is working as a Manager, Filter Technology and Development, with the applicant. Mr Li has a Ph.D. in Physical Chemistry and is a designated inventor on a number of patents. He has also published a number of research papers.
As noted earlier, the opponent did not file any evidence in support or reply.
I will provide the details of what is contained in the evidence, and the details of parties’ submissions, where relevant, later in my decision.
Law Relating to Allowability of Amendments
The request for examination in relation to the patent application was filed before 15 April 2013. As a consequence, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present application. This includes an amendment to subsection 102(1) which precludes the inclusion of subject matter extending beyond the original disclosure.
Instead, the relevant sections of the Patents Act in the current case are subsections 102(1) and (2) as they existed prior to the introduction of the Raising the Bar Act. These are set out below:
(1)An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in-substance disclosed in the specification as filed.
(2)An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a) a claim of the specification would not in-substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2) or (3).
(2A) For the purpose of subsection (2), relevant time means:
(a) in relation to an amendment proposed to a complete specification relating to a standard patent - after the specification has been accepted.
(3)This section does not apply to an amendment for the purpose of correcting a clerical error or an obvious mistake made in, or in relation to, a complete specification.
The applicable parts of section 40 of the Patents Act 1990 as they apply to the present case are set out below:
(2)A complete specification must:
(a) describe the invention fully, including the best method known to the applicant of performing the invention; and
(b) where it relates to an application for a standard patent – end with a claim or claims defining the invention.
(3)The claim or claims must be clear and succinct and fairy based on the matter described in the specification.
It is plain from the wording of section 102 that the test provided by this section of the Patents Act is confined to matters which arise as a result of amendment (see Bristol-Myers Squibb Company v Apotex Pty Ltd [2010] FCA 814 at [38]). Consequently any pre-existing deficiencies in the specification which are unaffected by amendment are irrelevant to the present action.
Paragraph 102(1): In-substance Disclosed in the Specification as Filed
When determining whether a matter is in-substance disclosed in the specification as filed, the courts have basically applied the test for fair basis. Thus for an amended claim to claim matter in-substance disclosed in the specification as filed, the amended claim must be fairly based on the specification as filed (see United-Carr Incorporated's Application [1971] RPC 23, RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd (1998) 42 IPR 353).
Under Section 40(3), fair basis is “concerned purely with the relationship between the body and claims of the one specification.” (Lockwood Security v Doric Products [2004] HCA 58; 217 CLR 274; 212 ALR 1; 79 ALJR 260). As was noted in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; 207 CLR 1; 177 ALR 460; 75 ALJR 518 “a comparison between the matter described in the specification and the claim which defines the scope of the monopoly”, following the reasoning of Barwick CJ in Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23; (1994) 180 CLR 236 when he said:
“The question whether the claim is fairly based is not to be resolved ... by considering whether a monopoly in the product would be an undue reward for the disclosure. Rather, the question is a narrow one, namely whether the claim to the product being new, useful, and inventive, that is to say, the claim as expressed, travels beyond the matter disclosed in the specification.”
As was noted in Lockwood (supra):
“the statutory test as expounded by Barwick CJ does not call for any evaluation of whether the breadth of the claims exceeds "the technical contribution to the art embodied in the invention", merely for an evaluation of whether the claims travel beyond the matter described in the specification”
I also note that it was said in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd [1988] FCA 162 at [54]:
“The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification”
This was cited with approval in Lockwood (supra).
The first particular states that the proposed amendments will result in claims directed to a wrapper having first and third zones comprising a single layer of add-on material and the second zone comprising no add-on material, and that such a product was not in-substance disclosed in the complete specification as filed.
The opponent submitted that the complete specification describes the alleged invention as a wrapper for a smoking article comprising multiple (two or more) layers in the first and third zones and that this specific requirement is explicitly recited at page 6A, lines 11 to 14 of the complete specification as follows:
“The first and third zones of the add-on material 31, 33 preferably comprise multiple layers of add-on material, such as, for example, two, three or four layers of add-on material, while the second zone of less add-on material 32 may comprise, for example, one or two layers of add-on material.”
In support of their case, the opponent also submitted that Figs 1-3 of the complete specification show a wrapper with the first and third zones comprising multiple layers of add-on material, and the exemplary wrappers described in Tables 1-5 include the first and third zones comprising multiple layers of add-on material and the second zones comprising at least one layer of add-on material.
The applicant argued that, while describing the invention, the complete specification uses the terms “may” and “preferably” and it is clear that the features identified by the opponent are not essential to the invention. The applicant stated that the complete specification clearly describes the second zone as comprising less or no add-on material (page 3, lines 25-29).
The applicant further asserted that the complete specification describes the first and third zones of preferably uniform add-on material (page 3, lines 33-34), and also indicates that the zones of the banded region may be applied in a single printing stage with a gravure cylinder or roller, patterned to apply add-on material only in the first and third zones (page 10, lines 3-6). Mr Li, the applicant’s witness, stated that the skilled person would, therefore, conclude that if the zones are applied in a single pass printing operation, then only one layer of add-on material is deposited in each of the first and third zones and no-add on material is applied in the second zone.
The opponent criticized the applicant’s assertions and argued that the alleged invention must be construed in light of the complete specification as a whole. They submitted that the term “preferably” at page 6A lines 11-14 of the complete specification be understood as describing advantageous element of the alleged invention - that the first and third zones have multiple layers of add-on material. The opponent also added that similarly the specification be understood to mean that the second zone has at least one layer of add-on material, but may have more than one layer despite references in the specification indicating that the second zone comprise “no add-on material”.
The opponent further submitted that references to “uniform add-on material” have been made in respect of the “material” itself rather than the number of layers of add-on material in the first and third zones, and the characterisation of the parameters of the add-on material is quite separate to the question as to how many layers of add-on material are in the first and third zones. The opponent submitted that references to single-pass operations in the complete specification are clearly referring to the printing operation itself being done in a single pass, and that it is not a disclosure of the number of layers of add-on material in the first and third zones.
I can see that the specification at several places clearly refers to the second zone with less or no add-on material. Therefore the opponent’s argument that despite these references, the specification be understood to mean that the second zone has at least one layer of add-on material is untenable. However, I agree with the opponent that references to “uniform add-on material” in the complete specification appear to be in respect of the material itself rather than the number of layers in the first and third zones.
I cannot accept the applicant’s suggestion that a reference to applying the zones of the banded region in a single printing stage with a gravure cylinder patterned to apply add-on material only in the first and third zones amounts to a disclosure of each of said zones having only one layer of add-on material. It is clear from reading the specification that a single printing stage refers to applying the add-on material in the first and third zones simultaneously, and not to the number of add-on layers in these zones.
I note that the complete specification, while referring to gravure printing, describes the successive layers of add-on material as optional (page 8, lines 11-14) just before describing the process of manufacturing the wrapper using successive gravure printing in some detail (page 8, line 15- page 9, line 9). The manufacturing process comprises passing the base web through a first gravure printing station where the first layer of each banded region is printed on the paper. After the application of the first layer, the base web is allowed to dry using suitable arrangements prior to passing through a second printing station where a second layer of a banded region is printed on the corresponding first layer. Additional layers of add-on material may be applied to the banded regions in a similar manner. The specification then goes on to describe on page 9, lines 12-13 that a single pass technique can be used to make the banded region instead of a multi-pass technique. It appears to me from the above process that since only one layer of add-on material is applied to the banded regions in each pass, a wrapper produced using a single pass technique would only have one layer of add-on material in each of the first and third zones. This is consistent with Mr Li’s testimony that if the zones are applied in a single pass printing operation, the skilled person would conclude that only one layer of add-on material is deposited in each of the first and third zones and no-add on material is applied in the second zone.
In view of the above, I am inclined to accept that there is a real and reasonably clear disclosure of a wrapper in the complete specification having first and third zones comprising a single layer of add-on material and the second zone comprising no add-on material.
I conclude that the amended claims meet the requirements of subsection 102(1) and consequently the opposition fails on this ground.
Paragraph 102(2)(b): Comply With Subsection 40(3)
Claims must be clear and succcinct and fairly based on the matter described in the specification

In relation to the above ground of opposition, the statement of grounds and particulars raises several aspect of clarity in respect of the amended claims 5 (when read on claim 1), 8, 19 and 20.
I consider that the only issue of any significance relates to clarity of claim 5. The opponent submitted that the claim refers to the first and third zones having a basis weight in grams per square meter “at least twice” the basis weight in grams per square meter of the second zone. They stated that as a result of the proposed amendments, the basis weight in grams per square meter of the second zone would be zero and therefore it is unclear how the first and third zones could be said to comprise a basis weight of “at least twice” of zero.
Mr Li observed that it would make no sense to refer to the basis weight of the paper alone and the skilled person would understand that the basis weight of the second zone can only refer to the weight of the add-on material in the second zone. The opponent did not contest the observation made by Mr Li. In my view the skilled addressee would read claim 5 as comprising some add on material in the second zone in order to overcome any ambiguity that may arise when claim 5 is read on claim 1.
Overall, I find that there is no merit in the opponent's arguments regarding clarity as all matters are easily understood when the specification is read as a whole. I consider that a skilled addressee would have no problem in construing the amended claims.
The particular raised under subsection 102(1) has also been raised under paragraph 102(2)(b) to assert that the amended claims would not be fairly based on the specification.
The test for fair basis involves a comparison of the amended claims with the amended description. If there are no amendments proposed to the description then the consideration for fair basis under paragraph 102(2)(b) would equate to the test for “in-substance disclosed” under subsection 102(1). In the present case, the applicant has not proposed any amendment to the description. I have already found that the amended claims meet the requirement of subsection 102(1), therefore, there cannot be any basis for the opponent’s argument in the present matter.
Consequently, the opposition fails on this ground.
Conclusion
I have found that the proposed amendments satisfy the requirements of subsection 102(1) and paragraph 102(2)(b) of the Patent Act 1990 and, as a consequence, the opposition fails on all grounds relied on. Thus, subject to appeal against this decision, I allow the amendments filed on 19 August 2014.
Costs
Ordinarily in proceedings such as these, costs follow the event. There appears to be no special circumstances applying in relation to this matter which warrants varying that approach. Therefore, I award costs in accordance with Schedule 8 of the Patents Regulations against the opponent.

Dr S. K. Aggarwal
Delegate of the Commissioner of Patents