British American Tobacco (Investments) Limited v Philip Morris Products S.A - [2019] APO 40

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
British American Tobacco (Investments) Limited v Philip Morris Products S.A. [2019] APO 40

Patent Application: 2013220405

Title:Resealable container having tactile elements

Patent Applicant:                   Philip Morris Products S.A.
Opponent:  British American Tobacco (Investments) Limited
Delegate:  Isaac Tan
Decision Date:  22 August 2019
Hearing Date:  26 March 2019 in Canberra, ACT

Catchwords: PATENTS – section 59 – container for storing cigarettes or cigars – controllable peeling force or tactile sensation – moisture barrier – insufficient evidence to conclude that the specification does not disclose the best method of performing the invention according to section 40(2)(aa) – lack of inventive step under section 18(1)(b)(ii) not established – no motivation to combine prior art documents – lack of support and clarity under section 40(3) not established – invention is useful according to section 18(1)(c) – whether the claims suffer from parameteritis – insufficient evidentiary support to establish false suggestion – opposition unsuccessful – costs awarded – application to proceed to grant

Representation: Applicant

Mr Andrew Musgrave, Counsel for the Applicant
Dr David Tso, Patent Attorney of Spruson & Ferguson
Opponent
Mr Stephen Worthley, Counsel for the Opponent
Dr Nigel Parker, Patent Attorney of Houlihan² Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2013220405

Title:Resealable container having tactile elements

Patent Applicant: Philip Morris Products S.A.
Date of Decision: 22 August 2019
DECISION
The Opposition is unsuccessful. None of the grounds have been made out. Costs are awarded against British American Tobacco (Investments) Limited in accordance with Schedule 8.
Subject to appeal, I direct that the application proceed to grant.
REASONS FOR DECISION
Background

Australian patent application 2013220405 (application) was filed on 13 February 2013 in the name of Philip Morris Products S.A. (Applicant), and claims a priority date of 15 February 2012 from international application PCT/EP2013/052909 filed under the Patent Cooperation Treaty (PCT). Examination of the application was requested on 15 January 2016, and a first examination report was issued on 14 June 2016. On 17 August 2016, British American Tobacco (Investments) Limited (Opponent) filed submissions under section 27 of the Patents Act 1990 (the Act). On 8 June 2017, a Notice of Acceptance was issued indicating that the application had been accepted on 1 June 2017, and is to be advertised in the Supplement to the Australian Official Journal of Patents on 22 June 2017. A Notice of Opposition was filed on 22 September 2017 by Houlihan² Pty Ltd on behalf of the Opponent. The Statement of Grounds and Particulars (SGP) was filed on 22 December 2017.
A hearing was held in Canberra, on the 26 March 2019, at the office of IP Australia.
Applicable Law
Examination of the application was requested after 15 April 2013. Consequently, the present opposition is governed by the Patents Act 1990 and Patents Regulations 1991 (the Regulations) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Raising the Bar). Amendments to sections 7, 40 and 49 of the Act apply to the present case as a consequence of Schedule 1, items 55(1)(d) and 55(4)(a), and Schedule 6, item 133(7)(d) of the Raising the Bar Act.
Thus the standard of proof that applies in the present case is the balance of probabilities. Under subsection 60(3A) of the Act, if I am satisfied, on the balance of probabilities, that a ground of opposition to the grant of a patent exists, I may refuse the application.
Evidence
The sole piece of evidence in the present matter is evidence filed as Evidence in Support. It consists of a declaration by Tobias Lord (Lord) dated 20 March 2018 with exhibits TL-1 to TL-13.
The Grounds of the Opposition
The SGP identifies grounds under Section 18(1)(a), Section 18(1)(b)(i), Section 18(1)(b)(ii), Section 18(1)(c), Section 40(2) and Section 40(3).
At the hearing, the Opponent only pressed the grounds of lack of inventive step, clarity, support, utility and a failure to disclose the best method of performing the invention.
The law
Section 18 of the Act provides as follow:
Patentable inventions for the purposes of a standard patent
(1) Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
(b) when compared with the prior art base as it existed before the priority date of that claim:
(i) is novel; and
(ii) involves an inventive step
(c) is useful;
At the relevant time, the ‘prior art base’ is provided by section 7(1):
(1) For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:
(a) prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;
(b) prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information;
(c) prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1.
Schedule 1 provides a dictionary of expressions and relevantly, ‘prior art information’ is defined as information that is part of the prior art base at the relevant time as:
“prior art base" means:
(a) in relation to deciding whether an invention does or does not involve an inventive step or an innovative step:
(i) information in a document that is publicly available, whether in or out of the patent area; and
(ii) information made publicly available through doing an act, whether in or out of the patent area.
(b) in relation to deciding whether an invention is or is not novel:
(i) information of a kind mentioned in paragraph (a); and
(ii) information contained in a published specification filed in respect of a complete application where:
(A) if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
(B) the specification was published on or after the priority date of the claim under consideration; and
(C) the information was contained in the specification on its filing date.
The relevant parts of Section 40 requires that:
(2) A complete specification must:
(a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; and
(aa) disclose the best method known to the applicant of performing the invention
(3) The claim or claims must be clear and succinct and supported by matter disclosed in the specification.
The specification
The invention, as described by the specification, relates to a resealable container with a resealable adhesive label. Specifically, the container is designed for storing elongate smoking articles, such as cigarettes. Traditionally:[1]
Smoking articles such as cigarettes and cigars are commonly packaged in rigid hinge-lid containers having a box and a lid connected to the box portion about a hinge line extending across the rear wall of the container. Such hinge-lid containers are typically constructed from one-piece laminar cardboard blanks. In use, the lid portion is pivoted about the hinge line to open the container and so gain access to a bundle of smoking articles housed in the box portion.
The bundle of smoking articles housed in the box portion is typically wrapped in an inner liner of metallised paper, metal foil or other flexible sheet material. To access the bundle of smoking articles within the inner liner, a consumer typically removes and discards a preperforated upper portion of the inner liner upon first opening the hinge-lid container.
However, to provide improved protection against the ingress and egress of, for example, air, moisture, flavours and odours, it is also known to enclose the bundle of smoking articles in a resealable substantially airtight wrapper.
When such a container is opened, the consumer can feel the resistance of the peeling force that needs to be overcome in order to separate the cover label from the underlying surface. When the cover layer or flap is opened and closed a plurality of times the tactile experience of the consumer may change during opening of the cover layer or flap due to the irregularity of the adhesive connection. In addition, the force required to open the cover layer or flap changes in dependence on the number of times the cover layer or flap has been opened. Therefore, it would be desirable to provide a resealable container for consumer goods [sic] improved opening characteristics, such as a more consistent opening force, or a tactile sensation for the user. It would also be desirable to provide a resealable container with controllable opening force.
[1] Specification as accepted, Page 1 Lines 7 – 19; at Page 1 Line 34 – Page 2 Line 6.
The present invention seeks to address the deficiencies of traditional containers, by providing a resealable container which comprises an adhesive label covering the access opening of the package and extending beyond the periphery of the access opening of the package. The adhesive label is at least partially releasably affixed to the package by a resealable adhesive provided on the inner surface of the label extending about at least a sealing portion of the package located at the periphery of the access opening. At least the sealing portion of the package is provided with a plurality of formations provided in a continuous repeating pattern and in spaced apart rows. The plurality of formations is adapted to reduce the effective area of the sealing portion.[2] An embodiment of the claimed invention is depicted in Figure 1, which is shown and described below:[3]
Figure 1 shows a perspective view of a container 100 comprising a resealable package with the lid in an open position. The container 100 comprises box 102, and a lid 104 hinged to the box along a hinge line on the rear wall of the box. The box has a resealable package 106 provided inside. The resealable package 106 is provided with an adhesive label 108 to seal the resealable package when the container is not in use. The adhesive label 108 is permanently affixed to the inner surface of the front wall 110 of the lid portion 104. By permanently affixing the adhesive label to the lid portion, the adhesive label is automatically peeled away from the resealable package when the lid is moved from the closed position to the open position shown in Figure 1.
To enable the adhesive label to be more securely and easily resealed to the resealable package, an inner frame 112 is provided within the resealable package 106. The inner frame is a cardboard element, having a front wall and two opposed side walls. The side walls of the inner frame 112 act to strengthen the front wall of the resealable package. As can be seen, a plurality of formations 116 is provided on the front wall of the resealable package in the area that the adhesive label seals with the package when in the closed position. This area is a sealing portion of the resealable package, and the formations act to reduce the effective area of the sealing portion is discussed in further detail below.
In use, as the lid is moved from the closed position to the open position the adhesive label is automatically peeled from the package to reveal the access opening. As can be seen, the adhesive label is peeled in a direction corresponding to the longitudinal axis of the container.
[2] Ibid Page 2 Lines 7 – 17.
[3] Specification as accepted, Page 11 Lines 11 – 33.
The plurality of formations (116) is further exemplified in Figures 2, 3(a) and 3(b), shown below.
Notably, when the rows of formations are parallel to the direction of the peeling (302) such as shown in Figure 3(a), the force required to peel the adhesive label away from the sealing portion of the resealable package remains substantially constant during one opening operation, thereby providing the user with a smooth tactile experience. However, where the rows of formations are substantially perpendicular to the peeling direction (306), as shown in Figure 3(b), a ‘zipper effect’ may be created. The ‘zipper effect’ is experienced by the user as an oscillating high to low force as the adhesive label is peeled from the package. In this respect, the initial force is high due to the surface area in the region adjacent the peeling line of the adhesive label being continuous and uninterrupted by formations in the material. When the peeling line intersects the rows of formations, the peeling force is reduced due to the decrease in surface area of the adhesive label being in contact with the resealable package. This process is repeated each time a row of formations is encountered. By altering the space between the rows, the width of each row, the frequency and amplitude of the oscillating peeling force can be tuned to provide the user with an improved tactile and potentially acoustic sensation.[4]
[4] Ibid Page 12 Line 14 – Page 13 Line 2.
The claims
The specification, as accepted, contains 1 independent claim and 5 dependent claims. All 6 claims are provided below:
Claim 1
A hinge lid container for consumer goods, including a box, a lid hinged to the box along a hinge line extending across a rear wall of the hinge lid container, and a resealable container for consumer goods, the resealable container received within the box and including:
a package for containing consumer goods, the package having an access opening through which consumer goods can be removed; and
an adhesive label covering the access opening of the package and extending beyond the periphery of the access opening of the package, the adhesive label is at least partially releasably affixed to the package by a resealable adhesive provided on the inner surface of the label extending about at least a sealing portion of the package located at the periphery of the access opening.
wherein an outer surface of the adhesive label is permanently affixed to the inner surface of the front wall of the lid such that upon opening the lid the adhesive label is peeled away to reveal the access opening; and
wherein, at least the sealing portion of the package is provided with a plurality of formations provided in a continuous repeating pattern and in spaced part, substantially linear rows perpendicular to a direction in which the adhesive label is peeled from the package, the plurality of formations being adapted to reduce the effective area of the sealing portion by from about 10 percent to about 25 percent, whereby as the adhesive label is removed from the sealing portion of the package a peeling line of the adhesive label intersects with a row of formations, such that the force required to peel the label from the package alternates between high and a low peeling force during a peeling operation.
Claim 2
A hinge lid according to claim 1, wherein the shape of each formation is rectangular, triangular or circular.
Claim 3
A hinge lid container according to claim 1 or 2 wherein the formations are printed on the package.
Claim 4
A hinge lid container according to claim 1 or 2 wherein the formations are formed using lacquer.
Claim 5
A hinge lid container according to claim 1 or 2 wherein the formations reduce the effective area by at least 17 percent.
Claim 6
A hinge lid container according to any one of the preceding claims, wherein the consumer goods are smoking articles.
Person skilled in the art
In KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd, Kiefel J identified the skilled addressee as:[5]
...a person acquainted with the surrounding circumstances of the state of the art and manufacture at the relevant time ... They are likely to have a practical interest in the subject matter of the invention ... and may often work in the art with which the invention is connected.
[5] KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd (2007) FCA 481;71 IPR 615 at [16].
In Root Quality Pty Ltd v Root Control Technologies Pty Ltd, Finkelstein J stated:[6]
He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious.
[6] Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; 49 IPR 225 at [70].
However in AstraZeneca AB v Apotex Pty Ltd, the High Court noted that:[7]
The notional person is not an avatar for expert witnesses whose testimony is accepted by the court. It is a pale shadow of a real person – a tool of analysis which guides the court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step.
[7] AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30 at [23].
Mr Lord is general manager at Boldinc Brand Innovation, and holds a Bachelor of Arts, majoring in Corporate Communications from the American University of Paris. Since 2002, Mr Lord has held a number of positions with a strong focus on the packaging and positioning of brands. Some of these products include non-alcoholic beverages, teas, coffees, chocolate, other food products, as well as products relating to the beauty and cosmetics industry. Relevantly, Mr Lord has worked with numerous international cigarette brands across a number of different regions. Currently, Mr Lord’s role as general manager involves acting in the capacity of project leader on the development of packaging for a number of brands falling within the British American Tobacco portfolio throughout the Asia-Pacific Region and Europe.[8] Mr Lord explains that the primary focus of his work has been, and is currently, in the design of packaging:[9]
By way of explanation, [through the line] communications refers to an advertising strategy involving both above-the-line…and below-the-line…communications. This strategic approach allows brands to engage with a customer at multiple points. For example, the customer will see the television commercial, hear the radio advertisement and be handed an advertising flyer on the street corner, not to mention the packaging as the primary brand touchpoint in many markets due to [business to consumer] communications restrictions. This enables an integrated communications approach where consistent messaging across multiple media create a customer perception.
[8] Lord, [1]-[9]; TL-1
[9] Lord, [10].
It is clear that Mr Lord has ample experience in the design of packaging that is aesthetically pleasing, and fits within a brand’s overall marketing strategy. While nothing is said on the functional aspects of a packaging design, reasonably, there needs to be a balance between aesthetic and functional considerations. This leaves me with some concerns as to Mr Lord’s suitability to provide evidence as a person skilled in the art. Consequently, I will consider what weight should be given to certain portions of the evidence as necessary.
Claim Construction
The rules of construction are well established. In Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd, Stone J set out that:[10]
[i]t is well established that the claims contained in the specification set out the legal limits of the monopoly. Yet, when construing the claims and determining the nature and extent of this monopoly it is necessary to consider the context in which the claims are made. This requires a consideration of the specification as a whole even if there is no apparent ambiguity in the claim.
[10]Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd [2006] FCA 261 at [16] citing Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9; Decor Corporation Pty Ltd (formerly Brian Davis & Company Pty Ltd) & Anor v Dart Industries Inc. [1988] FCA 682; Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890.

If the claims are clear and unambiguous, ‘[i]t is not legitimate to narrow or expand the boundaries of the monopoly as fixed by the words of the claims by adding to those words a gloss drawn from other parts of the specification’.[11]
[11] Ibid [17] citing Welch Perrin & Co. Pty Ltd. v. Worrel [1961] HCA 91; 106 CLR 588. See also Kimberly-Clark Australia Pty Limited v Multigate Medical Products Pty Limited [2010] FCA 1318, [39]; Ranbaxy Australia Pty Ltd v Warner-Lambert Company LLC (No 2) [2006] FCA 1787; 71 IPR 46.
Moreover, as noted by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd:[12]
the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear. Words used in a specification are to be given the meaning which the person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification.
[12] H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 at [118] citing Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90; (2005) 222 ALR 155 at [67].
Clarity
The principles relevant to whether claims are clear is as articulated by Hely J in Flexible Steel Lacing Co v Beltreco Ltd:[13]
It is permissible for an invention to be described in a way which involves matters of degree. Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to the intended use. The consideration is whether, on any reasonable view, the claim has meaning. In determining this, the expressions in question must be understood in a practical, common-sense [sic] manner. Absurd constructions should be avoided and mere technicalities should not defeat the grant of protection.
As a general rule, the terms of a specification should be accorded their ordinary English meaning.
Evidence can be given by experts on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings given by such persons to words which might otherwise bear their ordinary meaning.
However, the construction of the specification is for the Court, not for the expert witness. Insofar as a view expressed by an expert depends upon a reading of the patent, it cannot carry the day unless the Court reads the patent in the same way.
[13] Flexible Steel Lacing Co v Beltreco Ltd [2000] FCA 890; 49 IPR 331 at [81] cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121; 77 IPR 229.
With regard to what constitutes ‘a workable standard’, consideration should be given to whether a claim provides a reasonable basis by which a third party could, without difficulty, determine whether or not what he or she propose to do falls within the scope of the claim. A claim will lack clarity if the standard specified by the terms of the claim would not permit a third party to ascertain whether an act would fall within the scope of the claim.[14]
Perpendicular Orientation
[14] Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59 at 60.
The Opponent submits that claim 1 requires inter alia that the sealing portion of the package be ‘provided with a plurality of formations provided in a continuous repeating pattern and in spaced part, substantially linear rows perpendicular to a direction in which the adhesive label is peeled from the package’. Specifically, the Opponent is of the view that the integer ‘direction in which the adhesive label is peeled from the package’ is unclear.
Mr Lord notes that the formations ‘can be placed in a position where they are either perpendicular or parallel to the direction in which the adhesive label is peeled’,[15] and that ‘the formations can be placed on the sealing portion in any arrangement and that a more controlled peeling force will be obtained.’[16] However, Mr Lord notes that this appears to be ‘very arbitrary’ to him.[17] Mr Lord further states:[18]
If I look at Figures 3(a) and 3(b), it is not clear to me whether the formations depicted therein are either perpendicular or parallel, because arguably in both of these Figures, the formations are in one sense both perpendicular and parallel at some point to the peeling direction of the adhesive label. Accordingly, the statement that if the formations are parallel to the peeling direction of the adhesive label, the force will be constant, whereas if the formations are perpendicular to the peeling direction of the adhesive label, the peeling force will alternative between a low and (a) high force does not really make sense to me.
[15] Lord, [46].
[16] Lord, [46].
[17] Lord, [47].
[18] Lord, [48].
In this regard, the Opponent is of the view that Mr Lord ‘has identified a lack of clarity about whether one can tell whether a particular formation is positioned perpendicular or parallel. Accordingly, this raises doubt about whether a particular product having formations will fall within the scope of the Claim’.[19]
[19] Opponent’s Submission, [49] citing Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59.
The Applicant disagrees on the basis that the Opponent’s view ‘emerge form [sic] a mistaken reading of Claim 1 in isolation not only from the balance of the opposed application, but in isolation from the other words contained within the claim itself.’[20] The Applicant refers to the following parts of claim 1:
A hinge lid container for consumer goods, including a box, a lid hinged to the box along a hinge line extending across a rear wall of the hinge lid container…
…whereby as the adhesive label is removed from the sealing portion of the package a peeling line of the adhesive label intersects with a row of formations, such that the force required to peel the label from the package alternates between high and a low peeling force during a peeling operation.
[20] Applicant’s Submission, [53].
On this basis, the Applicant submits that ‘[i]t matters not whether the rows are parallel to each other (in any orientation) provided the rows are perpendicular to the direction in which the adhesive label is peeled from the package.’[21]
[21] Ibid.
I agree with the Applicant. Claim 1, read as a whole, defines where the plurality of formations, provided in a continuous repeating pattern and in substantially linear rows, is located on the container. This is shown in Figure 3(a) and Figure 3(b), which also depicts the direction of the peeling of the adhesive label. With this frame of reference in mind, it is therefore clear in my view, how the linear rows of formations should be provided, such that the rows are perpendicular to the direction in which the adhesive label is peeled from the package. It follows that I should find that this feature, does not make claim 1 unclear.
Effective Area of the Sealing Portion
The Opponent submits that the term ‘effective area’ is unclear. In claim 1, the ‘plurality of formations’ are ‘adapted to reduce the effective area of the sealing portion by from about 10 percent to about 25 percent’.[22] The specification defines the term ‘effective area’ as follows:[23]
The term "effective area" is used throughout the specification to refer to the area of the sealing portion that is predominantly contributing to the peeling force when the adhesive label is peeled from the underlying surface of the inner package.
[22] Opponent’s Submission, [50].
[23] Opponent’s Submission, [51] citing Specification as accepted, Page 2 Lines 18-20.
The Opponent submits that there are several problems with the recitation of this feature:[24]
(a)     the definition provided in the Specification is still unclear. It makes reference to the area that is “predominantly contributing to the peeling force…”, but it does not fully explain what this area is actually made up of, and how to assess this in relation to the size, shape and/or number of formations;
(b)    with respect to the feature wherein the formations are adapted to “reduce” the effective area of the sealing portion, no reference with respect to the precise reduction which has occurred is provided. It is therefore not clear whether a particular sealing portion will have an effective area that is “reduced” or not. For example, embossing or debossing normally takes place prior to assembly of the container, and the “effective area”, however that is defined, will remain the same, i.e., it will not be “reduced” from the moment of the assembly of the container;
(c)     the requirement that the effective area be reduced “by from about 10 percent to about 25 percent” is unclear, due to the presence of the word “about” at both ends of a range. In Acushnet Company v. Spalding Australia Pty Ltd.,[25] although in relation to novelty, the Acting Assistant Commissioner of Patents decided that:
“In these circumstances the inclusion of percentage ranges of the fluorescent material in the claims is substantially meaningless… I note that in similar circumstances in The Carlton Tyre Saving Co.'s Application (1973) 43 AOJP 1404, where the applicant claimed a specific wall thickness of a badminton racquet frame, the delegate of the Commissioner found that the claims of the specification were not novel because "all the applicant had done was to optimise a range of values and as some thicknesses must have better results than others, finding the best thickness could not be regarded as novel".
(d)    The percentages given (10 to 25% in Claim 1 and at least 17% in Claim 5) are completely arbitrary. No suggestion is given in the specification that an “effective area”, however that may be defined, will depend on other factors which are not claimed, or even disclosed in the Opposed Application. For example, the strength of the adhesive will affect the ‘optimum’ choice of “effective area”, yet no adhesive is even described in the Opposed Application, let alone recited in the Claims.
(e)     The sealing portion is “located at the periphery of the access opening”, and so has only nominal width about the border of the access opening. It is unclear how the “effective area” can be calculated, for a region of only nominal width.
(f)   It is not clear whether the top face of the package (about the periphery of the access opening), or the immediate periphery of the access opening about the front wall of the package, are intended to be used in the calculation of the “effective area”. Neither area has any formations on it.
(emphasis in quote)
[24] Opponent’s Submissions, [52].
[25] Acushnet Company v. Spalding Australia Pty Limited [1989] APO 24.
Furthermore, the Opponent refers to Mr Lord’s evidence where he states throughout his declaration, that he is ‘left in the dark as to the size, shape, and number of formations needed to achieve the peeling force promised by the alleged invention.’[26]
[26] Lord, [91]. See also Lord, [102].
The Applicant contends that the Opponent has, by their own admission, conceded that the term ‘effective area’ is defined within the specification.[27] Moreover, the complete specification provides an explanation of the term ‘sealing portion’ immediately preceding the definition of ‘effective area’, and is useful to provide a contextual understanding what is envisioned by the ‘effective area’.[28] The relevant passage is provided as follows:[29]
The adhesive label is at least partially releasably affixed to the package by a resealable adhesive provided on the inner surface of the label extending about at least a sealing portion of the package located at the periphery of the access opening. At least the sealing portion of the package is provided with a plurality of formations provided in a continuous repeating pattern and in spaced apart rows. The plurality of formations are adapted to reduce the effective area of the sealing portion.
[27] Applicant’s Submission, [54].
[28] Ibid.
[29] Specification as accepted, Page 2 Lines 11-17.
In essence, it is the Applicant’s view that ‘[t]he “effective area” is that portion of the “sealing portion” which contacts the adhesive label and contributes to the peeling force. The peeling force is conditioned by the presence or absence of formations.’[30] In relation to the Opponent’s submission that the percentages given in the claims are completely arbitrary, the Applicant submits that ‘[w]hatever the validity of this complaint…this is not a complaint concerning clarity.’[31]
[30] Applicant’s Submission, [54].
[31] Applicant’s Submission, [54].
I agree with the Applicant. It is clear from the claim, that on the container, is a sealing portion which contacts an adhesive label. Without any formations, the effective area of the sealing portion would be at 100%. Once there are formations, the formations would prevent a portion of the adhesive label from contacting the sealing portion, such that the area which contacts the adhesive label, is reduced by a certain percentage. As a result, the effective area is thus reduced. It follows that in my view, that this feature is clear.
The Sealing Portion Located at the Periphery of the Access Opening
The Opponent’s complaint[32] is directed towards the following parts of claim 1:
an adhesive label covering the access opening of the package and extending beyond the periphery of the access opening of the package, the adhesive label is at least partially releasably affixed to the package by a resealable adhesive provided on the inner surface of the label extending about at least a sealing portion of the package located at the periphery of the access opening.
(my emphasis added)
[32] Opponent’s Submissions, [57].
The Opponent submits that the ‘sealing portion’ is an important aspect of the alleged invention, and therefore, it is important to clearly understand the boundaries of what defines the ‘sealing portion’.[33] In support of this contention, the Opponent submits that, in context, ‘[a] periphery is defined as “the outer edge of an area”, and is, by definition, ‘only of nominal thickness and is defined by the edge of the opening on the front face of the package on and the top face of the package.’[34] The Opponent submits that this definition is inconsistent with the specification, which defines the ‘sealing portion’ as being on the front wall of the package, rather than about the periphery of the access opening. The Opponent refers to the following definition in respect of the embodiment depicted in Figure 1.[35]
…a plurality of formations 116 is provided on the front wall of the resealable package in the area that the adhesive label seals with the package when in the closed position. This area is a sealing portion of the resealable package…
(emphasis added by the Opponent)
[33] Opponent’s Submissions, [58].
[34] Opponent’s Submissions, [59] referring to definition provided by the Cambridge English Dictionary.
[35] Opponent’s Submissions, [60].
The Applicant disagrees and submits that ‘[t]he Complete Specification states that the access opening is provided in the top wall and the front wall. The plurality of formations is provided on the front wall of the resealable packaging in the area that the adhesive label seals with the package when in the closed position.’[36]
[36] Applicant’s Submissions, [55] referring to Specification as accepted, Page 11 Lines 26-30.
Although figure 1 was previously provided above, it is useful that I again reproduce figure 1 to assist in better understanding the Opponent’s position.
As shown in figure 1, the plurality of formations (116) is provided only on the front wall. In the Opponent’s view, these formations should be located around the entire periphery of the access opening which includes the top wall. Respectfully, I must disagree. There is nothing in the claims which indicates that this is the case, nor does it impose any limitations as to the dimensions of the edge of the opening. Rather, the claim only requires that the sealing portion is in an area, which could be considered peripheral to the access opening. On this basis, I find the Opponent’s interpretation to be unduly narrow.
For completeness, I note that this is consistent with the definition provided by Cambridge English Dictionary,[37] as referred to by the Opponent, and by the Macquarie Dictionary, provided below:[38]
periphery
/pəˈrɪfəri/ (say puh'rifuhree)
noun (plural peripheries)
1. the external boundary of any surface or area.
2. the external surface, or outside, of a body.
[37] Cambridge Dictionary (online at 28 May 2019) ‘peripheral’.
[38] Macquarie Dictionary (online at 28 May 2019) ‘peripheral’.
[Late Latin peripherīa, from Greek periphereia]
At the hearing, the Opponent directed me towards the inner frame (112), which is situated around the opening. Because of this inner frame, it is the Opponent’s view that the formations can no longer be considered peripheral to the access opening. According to the specification:[39]
The package may comprise an inner frame, provided within the package, adapted to increase the structural resilience of the package such that the adhesive label may be more easily sealed to the package.
[39] Specification as accepted, Page 6 Lines 29-31.
Notwithstanding that the inner frame is not claimed, in my view, the use of the term ‘may’ indicate that the inner frame is an optional feature. In any event, even if the inner frame was an essential part of the package, it is possible that the frame may be inside the packaging and not necessarily visible as in figure 1. There is nothing which indicates that the dimensions of the frame are so significant, that the formations could be said to no longer be located at the periphery of the access opening. That is, while the term ‘periphery’ may be imprecise, this does not give rise to a lack of clarity if it is possible to ascertain whether an act would fall within the scope of the claim.[40] A patent specification should also be given a purposive construction rather than a purely literal one.[41] Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to their intended use.[42] On this basis, I find that this feature is clear.
Antecedent Issues
[40] Glaverbel SA v British Coal Corp [1994] RPC 443 at 495.
[41] Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183.
[42] Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121; 77 IPR 229 at [14]. See also Flexible Steel Lacing Co v Beltreco Ltd [2000] FCA 890; 49 IPR 331 at [81].
The Opponent submits that there are several terms, which have no antecedent basis, and so lack clarity. These terms appear on page 14 of the specification as claim 1, and are provided below:
(a)     “the periphery of the access opening” (at line 10);
(b)    “the inner surface of the label” (at lines 11-12);
(c)     “the label” (at line 12; as opposed to “the adhesive label”);
(d)    “the outer surface of the adhesive label” (at line 14);
(e)     “the inner surface of the front wall” (at lines 14-15);
(f)   “the effective area” (at line 20); and
(g)    “the force required to peal [sic] the label from the package” (at line 23).
While the Applicant acknowledges that these terms lack an antecedent basis, the Applicant submits that none of these ‘typographical errors renders the claims unclear upon a fair reading of the Claims and Complete Specification.’[43] I agree that none of these antecedent issues give rise to a lack of clarity. While it would be better if the claims referred to ‘a periphery’, ‘an inner surface’, ‘a label’ for example, it is reasonably clear to a skilled addressee what is meant by these terms. I am not satisfied that this ground has been made out.
Conclusion on Clarity
[43] Applicant’s Submission, [56].
Consequently, on balance, I find that the claims are clear.
Inventive Step
In Albany Molecular Research Inc v Alphapharm Pty Ltd, Jessup J conveniently laid out the relevant principles applying to Section 18(1)(b)(ii) for lack of inventive step:[44]
Armed with common general knowledge, and possibly also with one of the kinds of information referred to in s 7(3), the invention in question will have been obvious to the skilled person referred to in s 7(2) if he or she “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”: Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262, 286; Aktiebolaget Hassle v Alphapharm Pty Ltd (2002) 212 CLR 411, 432 [50]. The content of the concept of “a matter of routine” approved by the High Court in the latter case was that provided by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157, 187-188:
Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art … directly be led as a matter of course to try [that which was invented under the patent in suit] … in the expectation that it might well produce [the solution to the problem which gave rise to the invention in suit]?
[44] Albany Molecular Research Inc v Alphapharm Pty Ltd [2011] FCA 120; 90 IPR 457 at [152].

Where the invention involves a combination of integers, obviousness is to be determined by reference to the combination as a whole and not each integer individually:[45]
the interaction between the integers of which is the essential requirement for the presence of an inventive step. It is the selection of the integers out of "perhaps many possibilities" which must be shown by [the Respondent] to be obvious, bearing in mind that the selection of the integers in which the invention lies can be expected to be a process necessarily involving rejection of other possible integers.
[45] Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; 212 CLR 411 at [41]; See also Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9; 144 CLR 253.
Problem to be solved and Common General Knowledge
In order to determine whether an invention would be obvious in light of common general knowledge, a useful test that should be applied is the Cripps question which can be simplified to:[46]
Would the person skilled in the art (in all the circumstances) directly be led as a matter of course to try the claimed invention in the expectation that it might well produce a solution to the problem?
[46] Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at [187]-[188]; The question was endorsed in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; 212 CLR 411 as a ‘reformulation of the Cripps question’.
Moreover, it is not sufficient to establish common general knowledge solely by reference to a publication. Rather, it must be shown that the information contained in the publication formed part of the common general knowledge. This principle is set out in Ranbaxy Laboratories Limited v AstraZeneca AB where Middleton J stated:[47]
As I noted in Eli Lilly [2013] FCA 214, information does not constitute common general knowledge merely because it might be found, for example, in a journal, even if widely read by persons in the art: see Wake Forest University Health Sciences v Smith & Nephew Pty Ltd (No 2) (2011) 92 IPR 496; [2011] FCA 1002 at 514 [96], citing British Acoustic Films (1936) 53 RPC 221 at 250 (which was also affirmed in General Tire (1971) 1A IPR 121 at 135). Reference in this regard is made to the words of Luxmoore J in British Acoustic Films (1936) 53 RPC 221 at 250, cited by Lehane J in Aktiebolaget Hässle v Alphapharm Pty Ltd (1999) 44 IPR 593; [1999] FCA 628 at 605 [39]:
In my judgment it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less because it is widely circulated. Such a piece of knowledge only becomes general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art.
In Alphapharm (2008) 76 IPR 618; [2008] FCA 559, Lindgren J observed that (at 667 [221]):
[I]t was held in Astra that information recorded in a document, even a document widely circulated within the art, is not part of general common knowledge merely because the skilled addressee could be expected to locate it. The question is whether it is “‘generally accepted without question”‘ or “‘generally regarded as a good basis for further action”‘ by the bulk of those in the art.
[47] Ranbaxy Laboratories Limited v AstraZeneca AB [2013] FCA 368 at [217]-[218].
This concept was reiterated in Meat & Livestock Australia Limited v Cargill, Inc, where Beach J stated:[48]
There is also a further point to be made concerning common general knowledge. There is no general principle permitting admissions in the specification of a patent to be used to establish in and of themselves that information is common general knowledge. Whether information has become so widely assimilated that it forms part of common general knowledge must be determined on the evidence, although admissions can be considered as part of that evidence.
[48] Meat & Livestock Australia Limited v Cargill, Inc [2018] FCA 51 at [688].
Mr Lord explains that at the priority date of 15 February 2012, he was a regular visitor and contributor to the ‘Dieline’ website. As I understand, Dieline is a marketplace which allows users to advertise work for sale. Mr Lord states that he visited Dieline regularly to see what other designers in the field were doing, materials they were using, and what effects they were introducing into their packaging. Mr Lord also kept up to date on industrial trends in packaging, through news updates, and LinkedIn^®. These trends include new inks, substrates, adhesives, and closing mechanisms that were being trialled or used in the global marketplace.[49] Over the course of his career, Mr Lord explains that he paid particular attention to the perception of a brand and how to best attract a customer’s attention, and ‘[t]his involved suggesting the use of certain materials that not only provided a functional purpose, but also provided a sensory experience for the user of the produce, and included consideration of tactile effects included in the packaging.’[50]
[49] Lord at [16]-[21]
[50] Lord at [22].
Mr Lord goes on to describe what he calls, ‘tactile varnishes’, and the various stages of a design project:[51]
Back in early 2012, certainly in Australia, there was still an opportunity in the marketplace to add value to a brand by creating what I will call “tactile varnishes”, where the surface is slightly raised or embossed so that if one runs one’s finger across the surface of the package, one would feel as if one were sliding one’s finger over a braille piece of copy. This would provide a sensory added value or experience for the user and would be done to distinguish one brand from another.
The first stages of a project are often visual, so we would initially share images and photographs of what we envisaged the pack would look like and then in subsequent stages of the brand presentation, we would start to introduce annotations on the piece of packaging. In my experience, the client’s production line usually has nine or ten different print stations which functions with cylinders. The cylinders each add one of the required colours at which embossing or debossing of the packaging can be introduced, as well as occasional off-line stations, where inks, emboss/deboss plates, or varnishes can be added. If we wanted to add a varnish to produce a tactile effect, we could use either the on-line of [sic] the off-line stations to do a debossing, or we would use one of our cylinders to add a structed [sic] varnish so that when you felt this with your fingers, it would have a raised effect.
[51] Lord at [23]-[24].
Mr Lord then provides an explanation on various ways which tactile varnishes can be used to add aesthetic value to a pack.[52] Mr Lord also provided some comments on what the specification describes to be common packaging for storing cigarettes and other articles, which I’ve covered above. Specifically, Mr Lord agrees with the specification that these packaging are typically constructed as a rigid hinge-lid container having a box and a lid connected to the box portion about a hinge line extending across the rear wall of the container. The packaging also includes inner foil liners or wrappers which are discarded upon opening the box. Furthermore, in order to provide improved protection against the ingress and egress of, for example, air, moisture, flavours and odours, it is also known to enclose the bundle of smoking articles in a resealable substantially airtight wrapper. By way of example, Mr Lord states that in February 2012, he was familiar with the Dunhill Reloc^™packet of cigarettes. The Dunhill Reloc^™packet is shown below:[53]
[52] Lord at [25]-[27].
[53] Exhibit TL-13
On this basis, I am reasonably satisfied that common general knowledge at the priority date, constitutes rigid hinge-lid containers for storing cigarettes. I am also satisfied that these containers include inner foil liners or wrappers, that it is known to enclose cigarettes in a resealable airtight wrapper, and that ‘tactile varnishes’ can be used to add aesthetic value to a pack.
Mr Lord does briefly explain that to best attract a customer’s attention, one consideration is the use of certain materials that ‘not only provided a functional purpose, but also provided a sensory experience for the user of the produce, and included consideration of tactile effects included in the packaging’.[54] However, nothing further is said. Generally, I agree with Mr Lord that in principle, from a practical and manufacturing point of view, it would be desirable if one could implement ‘tactile varnishes’ in a manner which provided a plurality of different benefits. However, noting that the design of packaging is continuously evolving, ephemerally, in accordance with a marketing strategy, it appears likely that a greater emphasis is placed on the aesthetic value, rather than any functional benefits. Consequently, I am not satisfied that the use of ‘tactile varnishes’, to provide a functional purpose, forms part of the common general knowledge at the priority date.
[54] Lord at [25]-[27].
Moving on to the question of the problem to be solved, according to the specification, when a container is opened:[55]
the consumer can feel the resistance of the peeling force that needs to be overcome in order to separate the cover label from the underlying surface. When the cover layer or flap is opened and closed a plurality of times the tactile experience of the consumer may change during opening of the cover layer or flap due to the irregularity of the adhesive connection. In addition, the force required to open the cover layer or flap changes in dependence on the number of times the cover layer or flap has been opened. Therefore, it would be desirable to provide a resealable container for consumer goods improved opening characteristics, such as a more consistent opening force, or a tactile sensation for the user. It would also be desirable to provide a resealable container with controllable opening force.
[55] Specification as accepted, Page 1 Line 34 – Page 2 Line 6.
Mr Lord disagrees:[56]
Being a smoker, I knew about and had experienced the peeling force that was required to lift the label. However, I would disagree that this force was uncontrollable, or that the force required improvement and needed to be more consistent. Further, it is debatable whether tactile elements per se were required to be introduced to control the peeling force. Depending on how many cigarettes were smoked a day, for example, a smoker could smoke an entire pack of cigarettes in one day, I do not believe that the peeling force would be an issue if the process of opening and closing was repeating 20 times, which is the standard number of cigarettes in a pack.
[56] Lord, [39].
Rather, it is Mr Lord’s opinion that ‘the major problem associated with resealable cigarette packs on the market before February 2012 was that loose tobacco particles would often become stuck to the adhesive surface, which would interfere with the re-adhesion process.’ [57] Mr Lord is also of the view that if the adhesive label was not re-aligned perfectly, this would result in wrinkling or misalignment, resulting in negating the sealing properties of the label, if it does not close properly.[58] Relevantly, the specification states:[59]
The adhesive label preferably comprises an adhesive free surface area, wherein this adhesive free surface area corresponds in size to the access opening in the package. When the lid is in the closed position with the adhesive label sealed to the package, this adhesive free surface area covers the access opening in the inner package. This will prevent dust or small particles, for example tobacco shorts or other residue from the consumer goods within the package, from adhering to the adhesive label. This can happen if the adhesive label comes into contact with the consumer foods within the inner package.
[57] Lord, [40].
[58] Lord, [40].
[59] Specification as accepted, Page 3 Lines 17 – 23.
In this regard, it is Mr Lord’s opinion that these issues are more problematic, compared to the need to provide a more consistent peeling force or a tactile sensation for the user.[60]
[60] Lord, [40]
Respectfully, I am inclined to disagree. In my view, Mr Lord has provided what he perceives to be issues with pre-existing resealable cigarette containers, based on his own personal experience as a consumer of the product. However, Mr Lord’s experience in developing a marketing and advertising strategy appears to suggest that all elements of a user’s experience are important. For example, the inclusion of ‘tactile varnishes’ to provide a sensory added value or experience for the user, and further distinguish one brand from another.[61]
[61] Lord, [23]
In this respect, the problem to be solved can be framed, generally, as how to provide a resealable container for consumer goods with an improved opening characteristic. This can be, for example, a more consistent and controllable opening force, or a tactile sensation for the user.
Obviousness in light of Common General Knowledge alone
To press this issue, the Opponent’s case stems from certain documents being found to either formed part of the common general knowledge, or include a description of what formed the common general knowledge. However, the question of ‘[w]hether information has become so widely assimilated that it forms part of common general knowledge must be determined on the evidence, although admissions can be considered as part of that evidence.’[62] In this regard, I am not satisfied that all of the individual integers of the claim are known as common general knowledge.
[62] Meat & Livestock Australia Limited v Cargill, Inc [2018] FCA 51 at [688].
Moreover, even if all of the individual integers of the claim are known as common general knowledge, the Opponent’s evidence falls short of establishing that the person skilled in the art would be directly led to the precise combination of features claimed.[63] The Opponent has not established that the claims lack an inventive step in light of common general knowledge alone.
[63] Cf Global Blue S.A. v Visa U.S.A. Inc. [2018] APO 86 at [65]-[68]. See also Raymond Ludwig John Tettman v Technological Resources Pty. Limited [2018] APO 22 at [113]- [142]; Commonwealth Scientific and Industrial Research Organisation v Technological Resources Pty. Limited [2018] APO 23 at [142]- [174].
Obviousness in light of common general knowledge and prior art
The Opponent primarily relies on the disclosure of the following prior art documents:
·US 2008/142540 A1, in the name of G.D SOCIETA' PER AZIONI, and having a publication date of 27 November 2008 (D4).
·US 2003/0129343 A1, in the name of Galkiewicz et al, and having a publication date of 10 July 2003 (D3).
·H07-006182, in the name of Meisei Sansho Co., Ltd., and having a publication date of 27 January 1995 (D6).
·H08-000030, in the name of Nichiei Kakoh Co., Ltd, and having a publication date of 19 January 1996 (D7).
As background, D4 explains that:[64]
Tobacco is highly sensitive to environment. That is, in contact with the atmosphere, its organic characteristics tend to vary alongside variations in humidity (by losing or absorbing too much moisture) or due to evaporation of the volatile substances with which the tobacco is impregnated (especially in the case of aromatic cigarettes treated with spices such as cloves). To preserve the tobacco, packets of cigarettes are therefore cellophane -wrapped, i.e. wrapped in a heat-sealed overwrapping of airtight plastic material. This, however, may not always be sufficient to fully preserve the tobacco in the packet, especially if the packet is consumed some time after manufacture. Moreover, when the packet is unsealed, the overwrapping is removed, thus exposing the tobacco to the atmosphere, and, if the cigarettes are not consumed soon after the packet is unsealed, the organic characteristics of the remaining cigarettes may deteriorate visibly.
[64] D4, Page 2.
D4 further explains one attempt to address this issue, involves making the inner package airtight, and including fastening means to secure the cover flap of the packaging in a closed position.[65] An overview of this packaging provided in the abstract, and exemplified in figures 3 and 4:[66]
Abstract: A package of tobacco articles, having: a group of tobacco articles; a cup- shaped outer container (2) having an open top end (6), and a cup- shaped lid (7) hinged to the outer container (2) along a hinge (8) to rotate, with respect to the outer container (2), between an open position and a closed position opening and closing the open top end (6) respectively; and an inner package (3) which is housed inside the outer container (2), encloses the group of tobacco articles, and has a tobacco article extraction opening (4) closed by a cover flap (5); at least a portion of the cover flap (5) is connected permanently and non- removably to the lid (7), so that opening and closing the lid (7) simultaneously also opens and closes the cover flap (5).
[65] Ibid.
[66] D4, Abstract; Figure 3; Figure 4.
D4 discloses most of the features of at least claim 1,[67] except for ‘a plurality of formations’.[68] It is Mr Lord’s opinion that:[69]
there is nothing new about including formations on packaging for consumer products in this manner. I was very familiar with this type of embellishment for increasing brand awareness at the Priority Date. There is also nothing new about including tactile effects on packaging. This was frequently used to enhance brand perception and I had used it myself, at the Priority Date.
[67] Lord, [181]; Opponent Submissions [75]-[76].
[68] Lord, [182]
[69] Lord, [183].
Although I do not disagree with Mr Lord that the inclusion of formations on packaging to enhance brand perception, is a technique which is generally utilised, it does not follow that these formations are generally used to provide a functional purpose. There is no evidence with indicates or suggests, that it is generally known to use formations to provide a packaging with improved opening characteristics. On this basis, it follows that I should find claim 1 to be inventive in light of D4.
Briefly, the Opponent also refers to D3, D6 and D7, which are all alleged to disclose formations.[70] Although the parties have provided submissions as to the disclosure of these documents, for reasons that will shortly become apparent, I see no need to discuss these documents in any detail.
[70] Opponent’s Submissions, [81].
However to provide context, it is worth briefly referring to the Applicant’s explanation of what D3, D6 and D7 discloses:[71]
D3 relates to a micro-structured release liner. It does not concern any packaging at all. D3 does not teach that the optimum arrangement for a hinge lid container is for a plurality of formations, in rows perpendicular to the direction of force, which reduce the surface area in contact with the adhesive surface by 10% to 25%.
D6 does not disclose that the adhesive label is permanently affixed to the inner surface of the front wall of a lid, such that opening the lid reveals the openable position. In fact, D6 does not disclose a lid at all...[t]he figures of D6 depict a number of formations that are not provided as substantially linear rows formed perpendicular to a direction in which the adhesive label is peeled from the package. In contrast, D6 plainly depicts that the formations encircle the opening and label. As such, no motivation would be provided from D6 to only provide substantially linear rows perpendicular to a direction to which the adhesive label is peeled. In fact, D6 would teach counter to substantially linear rows formed perpendicular to a direction in which the adhesive label is peeled from the package. Additionally, D6 provides no teachings to alternating the force from a high and a low peeling force when peeling the adhesive label.
D7 relates to an adhesive sheet and release liner. D7 does not concern any packaging at all.
[71] Applicant’s Submissions, [92]; [103]-[104]; [108].

In my view, the relevant question is whether it would be obvious to combine with disclosure of D4, with any one of these documents, and arrive at the claimed invention.[72] Mr Lord states that he ‘would have considered it worthwhile’ to make such a combination.[73] However, nothing more is said. While the absence or lack of evidence is not fatal in determining if a combination of documents should be made,[74] the fact that a combination may be ‘worthwhile’, is a phrase not readily understood as synonymous with obvious[75] and is disparate to whether there would be any motivation to combine. Moreover, D4 is concerned with preventing accidently opening of the container lid, and in keeping its contents secure.[76] It is not apparent, how the inclusion of formations on the packaging, would address the problem in D4. I am not satisfied that the present circumstance allows such a combination to be made.
[72] Ibid [81]-[97].
[73] Lord, [218].
[74] Shen Dian Enterprise Ltd v ARK Corporation Pty Ltd [2018] APO 92.
[75] Aktiebolaget Hassle v Alphapharm PtyLtd [2002] HCA 59; 212 CLR 411; 56 IPR 129 at [34]. See also ABB Schweiz AG [2019] APO 27.
[76] D4, Pages 2 – 3.
Consequently, on balance, I find that claim 1 is inventive in light of D4, alone, or in combination with other documents. It follows that the same consideration also applies to all of the dependent claims.
Parameteritis
In the alternative, the Opponent has argued that the reduction of the effective area of the sealing portion by from about 10 percent to about 25 percent, appears to be ‘merely arbitrary percentages’.[77] The concept of ‘parameteritis’ was described by Laddie J in Raychem Corp’s Patents as:[78]
This is the practice of seeking to repatent the prior art by limiting claims by reference to a series of parameters which were not mentioned in the prior art. Sometimes it includes reference to parameters measured on test equipment which did not exist at the time of the prior art. The attraction of this to a patentee is that it may be impossible to prove now that the prior art inevitably exhibited the parameters and therefore it is impossible for an opponent to prove anticipation.
[77] Opponent’s Submissions, [79] referring to Lord, [102]; [67].
[78] Raychem Corp’s Patents [1997] EWHC 372; [1998] RPC 31 at 37. See also Regeneron Pharmaceuticals, Inc. v Kymab Limited [2019] APO 36 at [108]-[117]; Dyno Nobel Inc v Orica Explosives Technology Pty Ltd [2016] APO 36 at [165]-[175]; Euroceltique S.A. v Sandoz Pty Ltd [2009] APO 21 at [112].
It is clear that parameteritis is not objectionable per se. It is still necessary to show that the claim in question was invalid on one of the statutory grounds of invalidity:[79]
Even if that is what has happened here, it does not alter the task of the court. It must decide whether the opponent has proved anticipation or some other statutory ground of invalidity. Parametritis may make the court's task more difficult, but at the end of the day the test of invalidity must be the same, whatever the form of the claims.
[79] Ibid.
In Williams Advanced Materials, Inc v Target Technology Company LLC, Bennett J considered claims directed to an optical storage medium having a reflective layer including a silver-palladium allow and noted that the parameters were selected without a purpose:[80]
Indeed, there is nothing in the specification that suggests that the proportions or the ranges of the metals in the alloys are in any way part of the invention, other than the mere reference to them. It is a case of ‘parameteritis’.
[80] Williams Advanced Materials, Inc v Target Technology Company LLC [2004] FCA 1405; 63 IPR 645 at [48].
However, Bennett J distinguished this in Austal Ships Pty Ltd v Stena Rederi Aktiebolag stating:[81]
Unlike in Williams Advanced Materials, Inc v Target Technology Company LLC [2004] FCA 1405 at [48], there is reference in the patent specification and evidence which supports the fact that the parameters have been carefully chosen, are part of the invention and are related to a claimed advantage as part of the combination of the design.
[81] Austal Ships Pty Ltd v Stena Rederi Aktiebolag [2005] FCA 805; 66 IPR 420 at [108].
The Applicant submits that this feature is essential, as the specification discusses how the ‘formations reduce the effective area of the sealing portion by preventing sections of the sealing portion from contacting the adhesive label’,[82] and that the Opponent has not provided any evidence to support the assertion that this feature is not essential.[83] I am inclined to agree. Claim 1 defines the sealing portion of the package as being provided with a plurality of formations in a continuous repeating pattern and spaced apart, such that when the adhesive label is removed from the sealing portion of the package, the adhesive label intersects with a row of formations such that the force required to peel the label from the package alternates between a high and low peeling force. It is clear in my view, that the reduction in the effective area of the sealing portion, has been carefully selected for a functional purpose and is not arbitrary.
[82] Applicant’s Submissions, [77] referring to Specification as accepted, Page 5 Lines 26-27.
[83] Ibid [79].
Accordingly, in my opinion, the reduction in the effective area as claimed does have a technical effect, and therefore does not suffer from a case of parameteritis.
Section 40(2)(aa) – Best Method of performing the invention
Section 40(2)(aa) of the Act requires that a complete specification must ‘disclose the best method known to the applicant of performing the invention’. To my best knowledge, this ground is in desuetude and to date, been addressed in a small number of Patent Office decisions.[84]
[84] See, eg, Rimfrost AS v Aker BioMarine Antarctic AS [2019] APO 28; Metso Sweden AB v Outotec Pty Ltd [2019] APO 25; EnGene IC Pty Ltd v Vaxiion Therapeutics, LLC [2018] APO 6; Cytec Industries Inc. v Nalco Company [2018] APO 4; Merial, Inc. v Bayer New Zealand Limited [2018] APO 14.
After reviewing a number of authorities, the delegate in Kineta, Inc. (Kineta) determined that the question of whether a specification discloses the best method of performing an invention can be answered from the following considerations:[85]
1.what is the invention for which a best method must be provided;
2.what method is described in the specification; and
3.was the applicant aware of a better method?
[85] Kineta, Inc. [2017] APO 45; 131 IPR 285 at [20]-[30] citing Catnic Components Limited v Hill & Smith Limited [1982] RPC 183; Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd [1972] RPC 346; CCOM Pty Ltd v Jeijing Pty Ltd [1993] FCA 1168; 27 IPR 577; Illinois Tool Works Inc v Autobars Co (Services) Ltd [1974] RPC 337; Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27; Expo-Net Danmark A/S v Buono-Net Australia Pty Ltd (No 2) [2011] FCA 710; Enka BV v E I Dupont De Nemours & Co (1987) BP 13 (TPD).
In Vidal Dyes Syndicate Ltd v Levenstein Ltd, Fletcher Moulton LJ said:[86]
It is settled law that a patentee must act towards the public uberrima fide, and must give the best information in his power as to how to carry out the invention. He is therefore bound to tell the public all the steps that can advantageously be taken in carrying out the invention. But he is not limited to claiming only the best way of carrying it out.
[86] Vidal Dyes Syndicate Ltd v Levenstein Ltd (1912) 29 RPC 245 at 269 cited with approval in Firebelt Pty Ltd v Brambles Australia Ltd & Ors [2000] FCA 1689; 51 IPR 531. See also Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd [2016] FCA 236; 118 IPR 421.
However, what is required to provide a best method of performing the invention will depend on the facts of the case. As stated by the Full Court in Les Laboratoires Servier v Apotex Pty Ltd (Servier):[87]
It can be accepted that there are cases where the claim is to a product or class of products and the best method requirement is satisfied by a description of the best embodiment known to the patentee at the relevant time. It can also be accepted that there are cases where the claim is to a product and there is no requirement to provide a method of using that product. It is also the case that there is no requirement actually to have carried out the best method and that a prediction will suffice (New England Biolabs, Inc v Hoffmann-La Roche AG [2004] FCA 1651; (2004) 63 IPR 524 at [33]). However, it is necessary to understand the invention itself [Expo-Net Danmark A/S v Buono-Net Australia Pty Ltd (No 2) [2011] FCA 710]. As was succinctly stated by Lord Hoffman in Kirin-Amgen Inc. v Hoechst Marion Roussel Limited [2005] RPC 9 at [104]:
‘in order to decide whether the invention has been fully enabled, you first have to decide what the invention is’.
Lord Hoffman was there addressing the sufficiency requirement, but the observation applies equally to the best method requirement. The nature of the invention will determine what is “best” in the circumstances.
[87] Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27; 247 FCR 61 at [129].
It must also be established, that the Applicant was aware of a better method of performance at the filing date of the application. In Dometic Australia Pty Ltd v Houghton Leisure Products Pty Ltd, White J, with reference to Pfizer Overseas Pharmaceuticals v Eli Lilly and Company (Pfizer)[88] and Rescare Ltd v Anaesthetic Supplies P/L (Rescare),[89] reaffirmed this position:[90]
However, the position stated in Rescare was clarified by French and Lindgren JJ in Pfizer. Their Honours noted a distinction between the date at which the best method known to the applicant is to be identified, on the one hand, and the date by which the specification’s full description of the invention must include a disclosure of it, on the other, at [375]. Later, at [378], French and Lindgren JJ noted that in Rescare, Gummow J had been concerned with the first of these dates, namely, the date at which the best method known to the applicant for the patent was to be identified. Their Honours went on to confirm that it is the best method known to the applicant at the filing date which must be disclosed in the complete specification, at [375], [379]:
Lest there be any doubt, we would make it clear that s 40(2)(a) requires an applicant for a patent to disclose in the complete specification at the time of filing it the best method of performing it known to the applicant at that time: compare C Van Der Lely NV v Ruston’s Engineering Co Ltd [1993] RPC 45 at 56 and Rediffusion Simulation Ltd v Link‑Miles Ltd [1993] FSR 369 at 405, which were decided on ss 4(3)(b) and 32(1)(h) of the Patents Act 1949 (UK).
In each of Rediffusion Simulation and Van Der Lely NV, it had been held that the English counterpart of s 40(2)(aa) required disclosure of the best method known to the applicant at the time when the complete specification was filed.
[88] Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224; 68 IPR 1.
[89] Rescare Ltd v Anaesthetic Supplies P/L [1992] FCA 811; 111 ALR 205.
[90] Dometic Australia Pty Ltd v Houghton Leisure Products Pty Ltd [2018] FCA 1573; 135 IPR 403 at [229].
White J further noted that the above conclusion is supported by the Full Court in Servier,[91] and for the following reasons:[92]
[91] Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27; 247 FCR 61 at [114].
[92] Dometic Australia Pty Ltd v Houghton Leisure Products Pty Ltd [2018] FCA 1573; 135 IPR 403 at [231]-[233].
Secondly, the statutory scheme supports the conclusion. By s 29(1) of the Act, a person may apply for a patent for an invention by filing in accordance with the regulations a patent request and such other documents as are prescribed. By s 29(4), a patent request in relation to a complete application must be in an approved form and accompanied by “a complete specification”. The term “complete specification” is defined in the Dictionary in Sch 1 to the Act to mean “a specification filed in respect of a complete patent application or, if the specification has been amended, the complete specification as amended”. Section 40(2) is concerned with the content of a complete specification. The remaining subsections in s 40 also impose obligations with respect to the complete specification. They do so in a manner suggesting that compliance is required at the time of filing of the specification. That scheme suggests naturally that, putting to one side the possibility of subsequent amendment, the disclosure required by s 40(2)(aa) must occur in the complete specification when it is filed.
Thirdly, in respect of the requirements of s 40, the High Court in Kimberly‑Clark said:[93]
[5] [G]rounds such as lack of fair‑basing, inadequate disclosure, ambiguity and the like are to be determined in this litigation … under the Patents Act … and by reference to the terms of the Patent as granted.
(Emphasis added)
Houghton accepted that the date at which the knowledge of an applicant is to be assessed is the filing date but submitted that this was to be understood as the date which provides the “date of the patent”, that is, the date from which the exclusive rights commence to run. This would mean in the present case that it is the knowledge of the Patent by the person lodging the PCT application which is to be assessed. In the light of the decisions in Pfizer and in Servier and the matters referred to above, I do not accept Houghton’s submission.
[93] Kimberly Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; 207 CLR 1 at [5].
White J concluded and proceeded on the basis that for a divisional application, the relevant date for the purposes of section 40(2)(aa) is the filing date of the respective divisional application. Therefore, I understand that I must determine whether the Applicant has disclosed the best method of performing the invention, on the filing date of the present application.
The Opponent takes offence to the use of an adhesive, in that the specification does not disclose the exact type of adhesive used. The Opponent refers to the following passage in the specification, which is said to recite specific characteristics of suitable adhesives:[94]
…it has been found that the strength of the adhesive reduces which [sic] each peeling operation, and thus if the adhesive strength of the adhesive label is reduced initially, the adhesive label may not perform adequately after a number of peeling operations. Thus, reducing the effective area of the sealing portion of the package advantageously allows the adhesive strength to remain suitably high while reducing the force required peeling the adhesive label from the package.
(emphasis added by the Opponent)
[94] Opponent’s Submission, [29]; Specification as accepted, Page 6 Lines 13-18.
The Opponent asserts, that the specification confirms that the Applicant has performed testing of at least one embodiment of the invention, as indicated by the following passage:[95]
It has been found that, advantageously, despite the reduction in the effective sealing area, the moisture barrier property of the sealing is maintained.
(emphasis added by the Opponent)
and that:[96]
Suitable resealable adhesives would be known to the skilled person and a wide variety of adhesives are commercially available from a number of suppliers. The selection of a suitable adhesive may depend upon the material forming the sealing portion of the package to which the adhesive label is sealed and resealed during use.
[95] Opponent’s Submission, [30]; Specification as accepted, Page 3 Lines 3-5.
[96] Opponent’s Submission, [31]; Specification as accepted, Page 3 Lines 13-16.
Mr Lord reaffirms the above assertion and is of the view that ‘it would be important to know what type of adhesive one should employ that would work effectively.’[97] Moreover, as the Opponent pointed out, ‘weaker adhesives may not perform adequately over multiple peeling operations’, and ‘the adhesive used in the Alleged Invention should therefore have a “suitably high” level of adhesive strength’.[98] Ultimately, the type of adhesive used is important as: [99]
This is not a situation where the type of adhesive is an irrelevant or ancillary detail of the Alleged Invention. Rather, this is a critical detail of the invention since the entire invention is aimed at “control” or modification of the peeling force, and in providing a more consistent peeling force over multiple sealing and resealing operations. The nature and identify of the adhesive used bears directly on the peeling force experienced by the user.
(emphasis added by the Opponent)
[97] Lord, [44].
[98] Opponent’s Submissions, [33].
[99] Opponent’s Submissions, [35].
The Applicant disagrees with the passages identified by the Opponent, and submits that when read in the context of the surrounding disclosure, the specification ‘addresses a different issue, namely other possible solutions rather than the solution of the Complete specification; the drawbacks associated with just reducing the adhesive strength utilized on the adhesive label’.[100] The Applicant submits:[101]
The specification calls for adhesives which are known to the person skilled in the art. This meets the requirement that the specification describes the best method for performing the invention. The specification further calls for a subset of these adhesives which provide sufficient adhesion for the label to be reattached at least as many times as there are consumer goods within the package. In any case, there is nothing in the specification to suggest that one adhesive in the subset performs materially better than any other adhesive in the subset.
In any event, the opponent has not provided any evidence or data showing that the applicant was aware of a ‘best method’ other than that disclosed in the Complete Application.
[100] Applicant’s Submissions, [37] referring to Specification as accepted, Page 6 Lines 12-18.
[101] Applicant’s Submissions, [38]-[39].
In Kineta, the delegate determined that where an invention relates to the preparation of a compound,[102] the specification must be sufficiently instructive such that a person skilled in the art, would have appreciated how to prepare any of the compounds from a reading of the specification in the light of the common general knowledge.’[103] However where the task of preparing the compound was contracted out, and that the applicant’s knowledge of said compound was limited to where it could be purchased, the applicant should provide some information within the specification specifying where said compound could be obtained.[104] However, ‘[w]hile the authorities state that it is not necessary to disclose how starting materials for a process are to be obtained, this is only the situation when the starting material is not the invention.’[105]
[102] Kineta, Inc. [2017] APO 45 at [34]-[38].
[103] Ibid [38].
[104] Ibid [40]-[45].
[105] Ibid [45] with reference to Blanco-White, Patents for Inventions, 4th ed, 1974.
Turning to the present application, I agree with the Opponent, insofar that the adhesive used is an important element of the invention. I also agree with the Applicant, that the specification addresses the issue of the drawbacks associated with just reducing the adhesive strength utilized on the adhesive label.’[106] This drawback is addressed, by ‘reducing the effective area of the sealing portion of the package advantageously allows the adhesive strength to remain suitably high while reducing the force required peeling the adhesive label from the package’[107] and that the type of adhesive selected is dependent upon the material forming the sealing portion.[108] In my opinion, there is a balance which needs to be struck between the type of adhesive used, and the effective area provided by the formations. The specification appears to provide a framework, stipulating the general nature of formations which could be used, and the importance of selecting an appropriate adhesive. However, no specific examples are provided in the specification as to what types of formations may be appropriate, or with what adhesive. The only requirement, appears to be that a plurality of formations is provided on substantially the entire front wall of the package, and reduces the effective area of the sealing portion by at least about 10 percent, 15 percent, 17 percent or 25 percent.[109] A balance can thus obtained in two ways:[110]
By preventing the adhesive label from contacting the sealing portion of the package in a controlled manner, the force required to peel the adhesive label from the package may be reduced, but the seal formed between the adhesive label and the package is not adversely affected. Reducing the force required to peel the adhesive label from the package allows the standard deviation of the peeling force during a peeling operation to be reduced. A reduction in the standard deviation of the peeling force has the effect, that the peeling operation of the adhesive layer from the package is more even
Alternatively, the reduction of the peeling force could be achieved by reducing the strength of the adhesive utilised on the adhesive label. However, it has been found that the strength of the adhesive reduces which [sic] each peeling operation, and thus if the adhesive strength of the adhesive label is reduced initially, the adhesive label may not perform adequately after a number of peeling operations. Thus, reducing the effect area of the sealing portion of the package advantageously allows the adhesive strength to remain suitably high while reducing the force required peeling the adhesive label from the package.
[106] Applicant’s Submissions, [37] referring to Specification as accepted, Page 6 Lines 12-18.
[107] Specification as accepted, Page 6 Lines 13-18.
[108] Ibid Page 3 Lines 13-16.
[109] Ibid Page 5 Lines 23-28.
[110] Ibid Page 6 Lines 5 – 18.

In Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd (Sandvik), the full court stated that ‘[t]he requirement to describe the best method of performing the invention is ordinarily satisfied by including in the specification a detailed description of one or more preferred embodiments of the invention.[111] The Court held that, based on expert evidence, ‘that the use of an adequate water seal was a critical (rather than a minor or incidental) aspect of the best method of performing the invention’,[112] and ‘the use of an effective water seal is nevertheless necessary and important to perform the invention (or carry it into effect).’[113] Although the ‘specification purported to describe the best method of performing the invention by describing two preferred embodiments’,[114] neither of these embodiments depicts this best sealing member.
[111] Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd [2017] FCAFC 138; 348 ALR 156; 126 IPR 427 at [115].
[112] Ibid [122].
[113] Ibid [125].
[114] Ibid [124].
Like Sandvik, in my opinion, the specification makes it clear that as a minimum, the invention is best performed by selecting the appropriate adhesive, or controlling the effective area provided by the formations. It would appear to be common ground that no specific adhesive, or properties of adhesives, have been identified in the specification. Moreover, in relation to the effective area provided by the formations, the specification simply requires that the effective area is reduced by a certain percentage and nothing further is said. Unlike Sandvik, I have no evidence available, which establishes, that the Applicant was aware of a better method of performing the invention, or that the Applicant did not know of anything beyond what is disclosed in the specification.
Although it would be unlikely that the applicant had not worked at least one specific instance of how to put the invention into practice, I have no evidence showing that the methods currently disclosed in the specification are deficient in any way. Moreover, it is not beyond the realms of possibilities a person skilled in the art could put the invention into practice, albeit with a degree of trial and error in order to determine the ideal balance between the effective area reduced by the formations, and the choice of adhesive. The evidence on hand does not establish why it would be inappropriate that this method be left to the person skilled in the art, such that it would be onerous or unworkable. Thus, while the example of preferred embodiments provided in the specification, are provided with a degree of generality, I am unable to find this to constitute an absence of a best method. Put another way, it appears that the specification describes a method, and there is no evidence that there exists a better method known to the applicant.
Consequently, it follows that I should find that the specification does complies with section 40(2)(aa).
Lack of support

100. The law on support is well established and has been set out in a number of recent decisions.[115] The provisions of section 40(3) were considered in detailed by a delegate of the Commissioner in CSR Building Products Limited v United States Gypsum Company [2015] APO 72 (CSR), who having reviewed several UK and EPO decisions and having regard to the guidance they provided, formulated a test in order to determine whether a claim is supported by the description.[116]
[115] See generally Pesense Pty Ltd v Dow AgroSciences LLC [2019] APO 39; Foxtel Management Pty Ltd v The Advanced Technology Group Pty Ltd [2018] APO 83; Evolva SA [2017] APO 57; 133 IPR 147; Inter Aqua Advance A/S v Bent Urup Holding ApS [2018] APO 43; 142 IPR 344; Stephen Anderson v K-fee System GmbH [2018] APO 31; Fisher & Paykel Healthcare Limited v ResMed Limited [2018] APO 67; YWIDAG-Systems International Pty Limited v FCI Holdings Delaware, Inc. [2018] APO 75.
[116] CSR Building Products Limited v United States Gypsum Company [2015] APO 72 at [115].
101. The support requirement was first considered by the Federal Court of Australia in Encompass where Perram J did not have regard to the approach formulated in CSR, but instead directed attention to the two elements said by the Explanatory Memorandum to be broadly encompassed by the term ‘support’. That is, there must be (a) a basis in the description for each claim and (b) the scope of the claims must not be broader than is justified by the extent of the description, drawings or contribution to the art.[117]
[117] Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421, [170] citing Lockwood Security Products Pty Limited v Doric Products Pty Limited [2004] HCA 58; 217 CLR 274.
102. The Opponent submits that there is a lack of support in the claims, for the specific ranges of the ‘effective areas’, and that there is no disclosure of how the peeling force is being controlled,[118] how to determine an appropriate adhesive,[119] and that there is no disclosure of a sealing portion located at the periphery of the access opening.[120] In relation to the effective area, Mr Lord expressed an uncertainty as to how these percentages have been arrived at, and that he would have expected to see some data or metric calculations to prove that these percentage reductions achieve the promise of the invention.[121] In relation to the effective area, the Applicant submits that the reduction is expressed as a specific range and have been recited in the specification. Moreover, the Opponent has not provided any evidence or supporting data that this range is completely arbitrary.[122] In relation to the adhesive, the Applicant submits that the specification teaches a principle of general application to the choice of adhesive.[123] Lastly, the Applicant has referred to passages in the specification which discloses the sealing portion in relation to the access opening.[124]
[118] Opponent’s Submission, [112]-[114].
[119] Ibid [121]-[127].
[120] Ibid [128]-[132].
[121] Ibid [114]-[118]; Lord, [66]-[67]; [91]; [102]; [138].
[122] Applicant’s Submission, [133]-[137].
[123] Ibid [141]-[146].
[124] Ibid [147]-[151].
103. First, I have previously addressed the issue of the location of the sealing portion above on the issue of clarity, and for the same reasons, I disagree with the Opponent. Second, I agree with the Applicant that the effective area is expressed within the claims as a specific range, and I do not find this to be inconsistent with what is describes in the specification. Moreover, due to the general manner upon which the adhesive is claimed, I agree that the specification provides a principle of general application.

104. I am unable to be satisfied that this ground has been made out. It follows that the claims are supported.
Utility
105. Section 18(1)(c) requires that a patentable invention to be useful. Everything that is within the scope of a claim must be useful:[125]
[125] H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 177 FCR 151 at [81].
A claim is bad if it covers means that will not produce the desired result, even if a skilled person would know which means to avoid. That is to say, everything that is within the scope of a claim must be useful, otherwise the claim will fail for inutility

106. In Apotex Pty Ltd v AstraZeneca AB (No 4), the following principles were adopted by Jagot J:[126]
[126] Apotex Pty Ltd v AstraZeneca AB (No 4) [2013] FCA 162; 100 IPR 285 at [352].
Section 18(1)(c) requires that an invention be “useful”. This will be the case if the claimed invention does what it is intended by the patentee to do, in the sense of meeting the object or promise in the specification, and the end result obtained is itself useful [Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC (2008) 77 IPR 449; [2008] FCAFC 82 at [141]]. For this purpose, the claims must be construed from the perspective of a skilled person in a commonsense way, and not in a way that any such addressee would appreciate would lead to an unworkable result [SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Ltd (2011) 92 IPR 46; [2011] FCA 452 at [293]].

It is not necessary for the description in the specification to spell out matters which the skilled person could supply without the exercise of any inventive faculty in order to achieve the promise of the invention. The patentee is entitled to assume that the reader has a reasonably competent knowledge of what was known before and reasonably competent skill in the practical mode of doing what was then known. A purposeful adoption of an embodiment that would obviously lead to an unworkable or inferior result is not an appropriate way of testing utility. It is also relevant to pay attention to the nature of the alleged “promise” in the specification. See, by way of analogy, Austal Ships Pty Ltd v Stena Rederi Aktiebolag (2005) 66 IPR 420; [[2005] FCA 805] at [254]- [255]. Ultimately, an asserted lack of utility must be established by appropriate evidence, not by mere speculation that the invention will not work or meet the promise set out in the specification.

107. More recently, in Artcraft Urban Group Pty Ltd v Streetworx Pty Ltd, Greenwood J stated that an assessment into whether an invention is useful involves two questions:[127]
[127] Artcraft Urban Group Pty Ltd v Streetworx Pty Ltd [2016] FCAFC 29; 245 FCR 485; 117 IPR 210 at [119]-[121].
[119] It is “no objection” to the validity of an innovation patent granted under the Act that it is “commercially impracticable”. The utility of the patent depends upon whether, by following the teaching of the specification, the result claimed is produced.

[120] The “basic principle” of inutility is that if an invention “does what it is intended by the patentee to do, and the end attained is itself useful, the invention is a useful invention”…What the invention is “intended” to do is a matter to be gathered from “title and the whole of the specification”
[121] Put another way, the two questions are: first, what is the promise of the invention derived from the whole of the specification?; second, by following the teaching of the specification, does the invention, as claimed in the patent, attain the result promised for it by the patentee…Further, “everything” that is within the scope of a claim must be useful, that is, attain the result promised for the invention by the patentee:
(citations omitted)

108. The Opponent submits that the promise of the invention, is as set out in the specification and reproduced below:[128]
[128] Opponent’s Submissions, [139]; Specification as accepted, Page 1 Line 36 – Page 2 Line 6.
When the cover layer or flap is opened and closed a plurality of times the tactile experience of the consumer may change during opening of the cover layer or flap due to the irregularity of the adhesive connection. In addition, the force required to open the cover layer or flap changes in dependence on the number of times the cover layer or flap has been opened. Therefore, it would be desirable to provide a resealable container for consumer goods improved opening characteristics, such as a more consistent opening force, or a tactile sensation for the user. It would also be desirable to provide a resealable container with controllable opening force.

109. That is, the application makes, but fails to meet, the following promises:[129]
[129] Ibid [140].
That is, the Opposed Application is promising a container which provides a “more consistent opening force” over repeated openings of the container, an improved “tactile sensation of the user”, and a controllable opening force”.

110. The Opponent further submits that the claimed ‘effective area’ is, in itself, ‘insufficient to achieve any of the promises of the invention.’[130] Moreover, as the application does not define any adhesive, or any properties of the adhesive itself within the claim,[131] the Opponent submits that ‘it is not clear that any promise of the invention can be met.’[132]
[130] Ibid [142].
[131] Ibid [143]-[145].
[132] Ibid [145].

111. The Applicant disagrees and submits that ‘[t]he use of the term “or” in this passage must be read disjunctively, as would be usual for the proper construction of the expression “or”. Therefore, this passage must be taken to be a reference to a resealable container which has a more consistent opening force or a tactile sensation for the user’,[133] that ‘the use of the term “desirable” does not infer necessity, rather it is a want’,[134] and ‘the term “improved” is a relative term.’[135]
[133] Applicant’s Submission, [164].
[134] Ibid [165].
[135] Ibid [166].
112. In the absence of any evidence specifically addressing this ground, I must respectfully disagree with the Opponent. There is no reason for me to doubt that the invention as claimed, would not provide a more consistent opening force, more consistent a tactile sensation for the user, or a controllable opening force. Although Mr Lord has indicated that he is unsure as to how the invention would work or achieve the promised benefit, specifically in selecting the appropriate formations or adhesive, this appears to be based on Mr Lord’s desire to see test results and metrics.[136] Like in Britax Childcare Pty Ltd v HBG IP Holding Pty Limited, ‘[t]his assertion lacks proper evidentiary support, but in any event…it is not appropriate to test the requirement for usefulness on the basis of an embodiment that would obviously lead to an unworkable or inferior result.’[137]
[136] See, eg, Lord, [66]-[67]; [91]; [102]; [138].
[137] Britax Childcare Pty Ltd v HBG IP Holding Pty Limited [2019] APO 31 at [152].

113. Consequently, in the absence of proper evidentiary support, I am unable to be satisfied that on balance, the claim is not useful. It follows that this ground should fail.
False Suggestion
114. During the hearing, the Opponent referred to Morellini v Mizzi Family Holdings Pty Ltd (Morellini) on the issue of false suggestion, in support of some of the above grounds.[138] Briefly, I note that false suggestion is not a ground available under section 59. In any event, I understand that the Opponent’s argument is based on the notion that the specification infers that certain tests have been conducted to confirm that the application provides certain benefits. In Morellini, the appellant relied on use of the term ‘it is found’ in the following passage:[139]
[138] Morellini v Mizzi Family Holdings Pty Ltd [2016] FCAFC 13; 116 IPR 411.
[139] Ibid [82].
In one form, the invention resides in … profiling the mound such that the soil about the billets [is] better warmed by the sun’s rays … It is found that the mound can be much better kept warm by the sun if each side of the mound is an [incline] of between 20-60^o and typically about 40^o.

115. The appellant argued that ‘the Statement comprises a representation that the soil around the billets in the mound can be much better kept warm by the sun if each side of the mound is inclined between 20-60^o, and typically about 40^o, and a representation that experiments had been undertaken to establish that fact.’[140] While the Court ultimately found that this representation was merely conjecture, this appears to be established based on expert evidence,[141] and a failure on behalf of the patentee to ‘adduce evidence of the existence of such a finding, when it must have been within its power to adduce such evidence.’[142]
[140] Ibid [83].
[141] Ibid [91]-[92].
[142] Ibid [92].
116. In the present matter, although Mr Lord is doubtful as to whether any of the representations of the advantages provided by the application can be achieved, nothing further is said. Consequently, in the absence of proper evidentiary support, I am not satisfied that the application contains words amounting to a false suggestion, or that I should incorporate this consideration in any of the above grounds.
Conclusion
117. The opposition is unsuccessful. None of the grounds have been made out.
Costs
118. The opposition has been unsuccessful. Philip Morris Products S.A. has been successful and I see no reason to depart from the usual practice that costs are awarded in accordance with the event. I therefore award costs, according to Schedule 8, against British American Tobacco (Investments) Limited.
Isaac Tan
Delegate of the Commissioner of Patents