Brown and Williamson Tobacco Corporation v Philip Morris Incorporated
[1994] APO 12
•3 February 1994
official notice
decision of a delegate of the commissioner of patents
Application : No. 517072 in the name of BROWN AND
WILLIAMSON TOBACCO CORPORATION
Title: A CIGARETTE FILTER
Action : Opposition by PHILIP MORRIS INCORPORATED
under sub-section 104(4).
Decision: Issued . Opposition succeeds, amendments not allowable under section 102(2)(b).
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 517072 by BROWN AND WILLIAMSON
TOBACCO CORPORATION and opposition by PHILIP MORRIS
INCORPORATED under Section 104(4) of the Patents Act 1990.
background
Patent application 517072 by Brown and Williamson Tobacco Corporation (Brown) for an invention entitled "A Cigarette Filter" was filed on 20 March 1980. The application was advertised accepted on 9 July 1981 and opposed by Philip Morris Incorporated (Philip) on 8 January 1982. In a decision dated 12 June 1987 a delegate of the Commissioner found that the opposition succeeded on the grounds of lack of novelty and non-compliance with Section 40 of the Patents Act 1952, but the applicant was given the opportunity to amend the specification.
Proposed amendments were advertised on 3 December 1987 and were opposed by Philip under Section 82 of the Patents Act 1952. A hearing on this matter was set down for 9 May 1991. On 30 April 1991 the applicant filed a new request to amend and statements of proposed amendments were filed on 30 April and 8 May 1991. At the hearing both parties addressed their submissions to the new amendments and not to the amendments which were the subject of the opposition.
In a letter to both parties dated 20 May 1991 the delegate of the Commissioner suggested that action on the case proceed as follows:
" (i) The 1987 amendments are formally withdrawn;
(ii) The new amendments are examined, and advertised
if allowable;(iii) If the opponent still wishes to oppose the
amendments, a notice of opposition be filed;(iv) A decision is made on the new opposition,
taking into account submissions made at the
hearing."
The applicant agreed to this suggestion in a letter dated 3 June 1991 and subsequently withdrew the 1987 request to amend.
A further statement of proposed amendments was filed on 18 July 1991. The new amendments were advertised on 15 August 1991 and Philip filed a new notice of opposition under Section 104(4) of the Patents Act 1990 on 15 November 1991. Further to this notice the opponent filed a statement of grounds and particulars on 13 December 1991. Amendments to this statement were filed on 28 January 1992 and allowed on 5 August 1992. The opponent requested a new hearing on the matter on 24 March 1992.
A hearing to determine the Section 104(4) matter took place in Sydney on 14 October 1992. Brown was represented by
Mr David Yates of Counsel and Mr Peter Heathcote, patent attorney with Shelston Waters. Philip was represented by
Dr John Emmerson QC and Mr Robert Kelson, patent attorney with Callinan Lawrie. Mr Rafik El-Kilany was the delegate of the Commissioner who presided at the hearing but he died before a decision was issued. I was subsequently appointed as the delegate and, with the agreement of both parties, decided the matter on the basis of the tape recording of the hearing.
the specification as filed and accepted
The specification as filed opens as follows:
"This invention relates to filters for cigarettes. In one aspect it relates to a filter with novel ventilating means therein. In another respect the invention relates to a filter cigarette having flow directing grooves therein for directing ventilating air either to the tobacco end of the filter or to the mouth end of the filter or a combination thereof."
It then states that the invention provides an arrangement of a filter for a cigarette which in one form achieves normal cigarette pressure drop with low to moderate efficiency filters and further provides a cigarette filter for lowering tar predominantly by ventilation instead of filtration. The ventilation is provided by utilizing grooves in the filter plug extending from tipping perforations in the tipping paper to one end of the filter. The invention also provides a grooved filter with a non-porous plug wrap.
The drawing comprises six figures:
-Figure 1 shows a filter plug comprising a filter circumscribed by a non-porous wrapper. The plug has a plurality of grooves extending longitudinally along approximately three-quarters of the length of the filter.
-Figure 2 shows a filter plug wherein the grooves are disposed at an angle around the filter plug so that they appear helically-shaped. These grooves end in a circumferentially extending groove at the approximate midpoint of the filter.
-Figure 3 shows a filter plug with grooves extending from both ends. This filter plug is attached to a cigarette or tobacco column and the plug is surrounded by tipping material which includes two parallel rows of ventilating perforations, one aligned with each set of grooves. In use the ventilating air travels into the smoker's mouth and into the tobacco column simultaneously.
-Figure 4 shows the filter plug of Figure 1 attached to a tobacco column or cigarette in such a way that the ventilating air travels down the grooves and toward the smokers mouth.
-Figure 5 shows the filter plug of Figure 2 attached to a tobacco column such that the ventilating air is introduced into the tobacco column.
-Figure 6 shows a cigarette or tobacco column with a filter plug with a set of grooves extending from each end. The two sets of grooves do not meet but are disposed in what is described as a "spaced overlapping relation". The filter is enclosed by tipping material with a single row of perforations which is in communication with both sets of grooves.
The specification ends with nine claims which read as follows:
"1. A filter for a cigarette comprising:
a porous filter rod of cylindrical configuration;
a non-porous wrapper extending longitudinally of and circumscribing said rod leaving flow-through opposed ends of said rod, said wrapper and rod having a plurality of longitudinally extending grooves circumferentially spaced therearound, said grooves extending from at least one end a preselected distance therealong; and,
tipping material extending longitudinally of and circumscribing said wrapper, said tipping material including flow-through openings therein in flow-communication with said grooves.2. The filter of claim 1 in combination with a cigarette, said grooves of said filter being in flow-communication with said cigarette.
3. The filter of claim 1 in combination with a cigarette, said grooves of said filter being in flow-communication with a smoker's mouth.
4. The filter of claim 1 wherein said tipping material is permeable to air.
5. The filter of claim 1 wherein said tipping is impervious to air, said tipping material having selective perforations therein in flow-communication with said grooves.
6. The filter of claim 1, said grooves being disposed at an angle around said filter rod.
7. The filter of claim 1 including a circumferentially extending groove in flow-communication with said longitudinally extending grooves, said circumferentially extending groove being in alignment with said flow-through opening in said tipping material.
8. The filter of claim 1, said grooves extending from both ends a preselected distance therealong, said grooves being non-connectable.
9. The filter of claim 1, said non-porous wrapper being integral with said porous filter rod."
Parts of the description were amended during examination but the claims at acceptance were the same as those filed.
the specification as proposed to be amended
The amendments proposed to the specification seek to replace the claims as accepted with a new set of claims and to make corresponding changes to the description including the deletion of Figure 5.
Proposed claims 1 to 8 read as follows:
"1. A filter for a cigarette comprising:
a porous filter rod of cylindrical configuration;
a non-porous wrapper extending longitudinally of and circumscribing said rod leaving flow-through opposed ends of said rod, said wrapper and rod having a first plurality of longitudinally extending grooves formed therein and circumferentially spaced therearound, each said groove being open ended at and extending from that end of the filter which is in communication with the smoker's mouth when the filter is used in combination with a cigarette part way towards that end of the filter which is adjacent said cigarette;
said wrapper being conformed to the contours of the outer surface of the rod such that the grooves of said wrapper conform to the grooves of said rod; and,
tipping material extending longitudinally of and circumscribing said wrapper, said tipping material bridging said grooves and including flow-through openings therein in flow-communication with said grooves to permit flow of ambient air into said grooves, said air being the only fluid flowing in said grooves when the filter is used in combination with a cigarette during a normal smoke draw.2. A filter according to claim 1 wherein said tipping material is permeable to air apart from said flow through openings.
3. A filter according to any one of the preceding claims wherein each said groove is helical.
4. A filter according to any one of the preceding claims including a circumferentially extending groove in flow communication with the first plurality of grooves, said circumferentially extending groove being in register with flow-through openings in said tipping material.
5. A filter according to any one of the preceding claims wherein said wrapper is a non-porous outer layer of the material of said rod.
6. A filter according to any one of claims 1 to 3 or 5, wherein said wrapper and rod have a further plurality of longitudinally extending additional grooves formed therein and circumferentially spaced therearound, each said additional groove being open ended at and extending from that end of the filter which is adjacent said cigarette when the filter is used in combination with a cigarette part way towards that end of the filter which is in communication with the smoker's mouth; the first plurality of grooves and said additional grooves being non-connected, said wrapper being conformed to the contours of the outer surface of the rod such that the additional grooves of said wrapper conform to the additional grooves of said rod; said flow-through openings or additional flow-through openings in said tipping paper being in flow-communication with said additional grooves to permit flow of ambient air into said additional grooves.
7. A cigarette incorporating a filter according to any one of claims 1 to 5 wherein, in use, said first plurality of grooves communicate with a smoker's mouth.
8. A cigarette incorporating a filter according to claim 6 wherein, in use, the said first plurality of grooves communicate with a smoker's mouth and said additional grooves communicate with the interior of the cigarette."
Claims 9 and 10 are omnibus claims defining a filter and a cigarette respectively with reference to the drawings.
the grounds and particulars of the opposition
The grounds of opposition as given in the statement of grounds and particulars were that the amendments were not allowable for the reasons set out in sections 102(1), (2)(a) and (2)(b) of the Patents Act 1990. The opponent also set out several particulars relating to each ground.
At the hearing Mr Yates for the applicant submitted that under the provisions of the Patents Act 1990 the opponent was limited to the particulars as set out in this statement and could not supplement or modify them at the hearing.
Dr Emmerson submitted that this was not an ordinary opposition and that as a decision had not been issued pursuant to the hearing of 9 May 1991 there were two sets of issues to be considered;
Whether the proposed amendments overcame the objections raised at the previous hearing. He submitted that these grounds need not be particularised.
Whether the proposed amendments introduced new difficulties. These grounds had been listed in the statement.
The purpose of the statement of grounds and particulars is to give the applicant fair notice of the case to be met, and to define the issues of the opposition. In general the opponent is bound by the statement of grounds and particulars, and its case is confined to the issues raised in that statement. Consideration of issues not particularised can potentially lead to a denial of natural justice if the applicant is not given a further opportunity to respond to these issues.
This case is unusual in that there has been a previous hearing on the matter and consequently the applicant was aware of these further issues and could be said to have fair notice of the case to be met. Furthermore, the letter from the delegate dated 20 May 1991 stated explicitly that submissions made at the first hearing would be taken into account. Although at that time a further hearing was not contemplated, the applicant agreed to this proposal.
It is not clear whether the opponent could be said to be acting in good faith by not setting out all of the relevant particulars on which they were relying but, because of the particular circumstances of this case, these matters will be considered.
Mr Yates submitted further that matters particularised in the statement but not pursued at the hearing should be taken as abandoned. I would agree with this in situations where further explanation is needed to comprehend fully the basis of the objection but where the grounds are self-explanatory the Commissioner may review them having regard to protecting the public interest.
decision
In substance disclosed
The first ground of opposition is that the amendments are not allowable under section 102(1).
Dr Emmerson's main arguments at the hearing were based on the submission that in the specification as filed it did not matter whether the air went to the tobacco end of the filter or to the smoker's mouth whereas in the specification as amended the essence of the invention was that the air went to the smoker's mouth. He concluded that the effect of the proposed amendment was wholly inconsistent with the specification as filed and that the aspect now being claimed was not in substance disclosed in the specification as filed.
Although this issue was not specified in the statement of grounds and particulars I will consider it further because it also formed a substantial part of the submissions at the previous hearing.
In support of his argument Dr Emmerson sought analogy with Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd 11 IPR 20 in which it was held that a claim of a petty patent was not fairly based on the provisional specification. In particular he drew attention to the words of Fox J. at page 28 to 29;
"The use of DGBE as part of the carrier, and more particularly the proportion in which it is to be used, is not treated as part of the invention claimed in the provisional specification. It is adverted to in a general way ... the selection of DGBE, as distinct from other glycol ethers, only appears indirectly ..."
and
"The patent claim concerning DGBE is not simply a more specific application of what is claimed in the provisional specification. It is the result of further experimentation, and can properly be regarded as involving an inventive step. Indeed, the whole product is different from any which could be regarded as part of an invention disclosed in the provisional specification ... a reading, or a study, of the provisional specification would not lead readily, or by a process of selection, to what is set forth in the patent claim."
Dr Emmerson submitted that the specification as proposed to be amended claimed a different alleged invention which was not disclosed in the specification as filed.
Mr Yates contended that the purpose of the amendments was to limit the claim so as to avoid the prior art cited during the section 59 (Patents Act 1952) proceedings and that what was proposed to be claimed was an embodiment of the specification as filed. The inventive concept resided in the construction of the filter and this was the same.
In his judgement in United-Carr Incorporated's Application [1971] RPC 23 Whitford J. held that it was not unreasonable to adopt the principles of Mond Nickels Co Ltd's Application [1956] RPC 189 in comparing the proposed claim with the specification as lodged to determine whether the matter was "in substance disclosed". If the claim was fairly based then the amendment should be allowed.
The Mond Nickel test involves three questions:
Is the alleged invention as claimed broadly (i.e. in a general sense) described in the basic application?
Is there anything in the basic application which is inconsistent with the alleged invention as claimed?
Does the claim include as a characteristic of the invention a feature as to which the basic application is wholly silent?
I believe that the new claims do satisfy the Mond Nickel tests. In the specification as filed basis for the amended claims is found in the description, in particular in the figures, and also in the claims. Claim 1 as filed defines the invention in the broadest terms with respect to the air going either to the tobacco or the mouth end of the filter. Appended claims 2, 3 and 8 define alternative embodiments which specify the direct of air-flow. Despite a difference in wording, what is now proposed to be claimed are the alternatives defined in original claims 3 and 8.
Although a large portion has been excluded from the invention as filed it cannot be said that the claim as proposed to be amended is inconsistent with the specification as filed. The claim does not include any feature which the specification as filed does not contemplate. The feature that the air travel towards the smoker's mouth was one alternative within the original inventive concept and not inconsistent with it.
It is clear that what has happened is that there has been a choice from alternative embodiments given in the filed application but that, unlike the situation in CoopersAnimalHealthAustraliaLtd, supra, this choice is not in the nature of a selection which involves an inventive step beyond that disclosed in the specification as filed. See also F. Hoffman La Roche and Co AG v Commissioner of Patents (1970) 123 CLR 529.
The other main thrust of Dr Emmerson's arguments centred on the introduction of the term "first" into Claim 1. He submitted that this word implied the presence of other grooves which were not defined and that this resulted in the claims claiming matter not in substance disclosed in the specification as filed. Mr Yates contended that the filter might well have other grooves but these additional grooves were not a feature of claim 1. He referred to the decision in Yamazaki MazakCorporationv Interact Machine Tools (NSW) Pty Ltd anors 22 IPR 79 at page 97 in which it was held that the expression "at least" in a claim was something left open for inclusion as an additional feature, but which was not specified as an integer.
I agree with Mr Yates. The insertion of the word "first" does not in itself change the ambit or meaning of claim 1. It is not uncommon in the drafting of patent claims for the main claim to define an invention with certain features and appended claims to define inventions with additional features which inventions still fall within the scope of the main claim. Unless an additional feature is explicitly excluded from the main claim or is inconsistent with the invention as defined by the main claim there is no problem.
Thus both claim 1 as filed as well as proposed claim 1 include within their scope filters with the optional feature of additional grooves, but these additional grooves are not a feature used to define the filter of either claim. Thus the proposed inclusion of the word "first" does not result in claim 1 lacking fair basis in the specification as filed. It appears that the actual function of the word "first" is to differentiate this plurality of grooves from the further plurality of grooves defined in proposed claim 6.
The words of Jacobs J. in AMP Incorporated v The Commissioner of Patents (1974) AOJP 3224 at 3227 are relevant here:
"Although the Act does not now expressly say so, it is clear that within the limited framework which I have described an amendment may be allowed where it does no more than explain what is already in the claim when it is properly construed. It may be said that such an amendment is unnecessary because it adds nothing to the claim so construed. However, when it is borne in mind that the claim is intended to speak to the world, an amendment by way of explanation so that any misapprehension can be avoided may clearly be desirable."
The final objection to proposed claim 1 under section 102(1) is to the new feature that air be the only fluid flowing in the grooves. This ground was stated in the list of grounds and particulars but was not pursued at the hearing. As sufficient details were given to understand the basis for this objection I will consider it further.
It is clear from the specification as filed that the purpose of the grooves is for the passage of air directly into the smokers mouth or tobacco from outside of the filter. Although it is not stated explicitly that air is the only fluid flowing in the grooves in the embodiment in which the grooves are directed towards the smoker's mouth, this is readily apparent from an understanding of the construction of the filter and its function. Thus the addition of this feature appears to be a further example of an amendment which "does no more than explain what is already in the claim when it is properly construed" (AMP Incorporated, supra).
Dr Emmerson also submitted that there was no basis in the specification as filed for proposed claim 2, i.e. the permeability of the tipping material to air apart from the flow through openings. Claim 4 as filed states merely that the tipping material is permeable to air. As claim 1 as filed defines flow-through openings in the tipping material and claim 4 is appended to claim 1 it is clear that this permeability is in addition to the openings and this disclosure provides fair basis for proposed claim 2.
In the specification as filed the only use of a filter of the structure depicted in Figure 2 was in a cigarette as depicted in Figure 5, i.e. with the air travelling toward the tobacco. In the specification as proposed to be amended Figure 5 is deleted. As this embodiment would now fall outside the scope of the proposed claims Dr Emmerson contended that there was no fair basis for proposed claims 3 and 4 in which the grooves are helical (as depicted in Figure 2). I note that in the specification as filed Figure 2 can be considered to be an embodiment on its own. The fact that the same filter is depicted in Figure 5 attached to a tobacco column in a separate embodiment that is now excluded from the invention does not prevent Figure 2 from providing fair basis for claims 3 and 4.
Dr Emmerson also submitted that there was no fair basis for proposed claim 6 but, although worded somewhat differently, claim 8 as filed appears to define essentially the same structure as proposed claim 6 and Figure 6 illustrates an embodiment of this structure.
Fall within the scope of the claims before amendment
The second ground of opposition is that the proposed amendments contravene section 102(2)(a).
When considering whether a claim of the specification would in substance fall within the scope of the claims of the specification before amendment the relevant test is whether a proposed amendment would have the effect of causing infringement when none existed before (see W.J. Voit Rubber Corp's Application (1965) AOJP 1752).
The opponent submits that the introduction of the term "first" in claim 1 results in broadening of the scope of that claim and subsequent dependent claims. As I have explained above I do not agree that the proposed claims are broader in this way. I believe that a filter substantially as described in claim 1 as filed but with additional grooves would infringe the claims as filed as well as the proposed claims. I cannot see that the proposed amendment would cause infringement when none existed before.
Compliance with subsection 40(2) or (3)
The final ground for opposition is that the amendments contravene section 102(2)(b).
The opponent submits that the introduction of the word "first" in claim 1 results in there being no limitation on the number and nature of grooves and leads to lack of clarity in that claim and subsequent dependent claims. I do not consider the number of grooves to be an essential requirement in the present application as it should be remembered that the specification has to be read by a skilled addressee who may be allowed to do some routine experimentation in order to carry out the invention. As far as the nature of any optional additional grooves is concerned, they are not a feature of claim 1 and hence there is no necessity to define them within that claim.
The opponent further submits that the term "conformed to the contours" is unclear. The applicant attempted to rebut this by quoting the actual words used by the delegate of the Commissioner in the matter of the section 59 (Patents Act 1952) decision on this patent application. When describing the drawings the delegate said:
"However, as illustrated in each of the preferred embodiments, there are grooves in the filter rod, and the wrapper conforms to the contours of the outer surface of the rod."
In this case I agree with the applicant that the expression "conformed to the contours" is an accurate and clear definition of the relationship between the wrapper and the rod. I would note that in reaching this conclusion I placed no weight on the fact that these were the actual words used by the delegate.
A further ground of objection is that the term "in flow-communication with said grooves" is unclear. I note from section 102(2)(b) that non-compliance with section 40(2) or 40(3) is only a grounds of opposition if it occurs as a result of the amendment. As the relevant term appears in the claims before amendment in much the same context I cannot see how the proposed amendment introduces any further clarity problems.
The final ground of opposition is that there is no clear feature which determines the relevant end of the filter. Dr Emmerson submitted that in a filter per se there was no way of distinguishing that end of the filter in communication with the smoker's mouth from the end in communication with the tobacco, and as a result it would not be possible to tell whether a filter would infringe unless it was attached to a cigarette. He cited as an example the filter of Figure 2 which could serve both as an example of the invention as defined in proposed claim 1 as well as be used as depicted in original Figure 5, that is, it could also be used as an example of a filter which was now to be excluded from the invention. He concluded that as proposed claim 1 included filters that could be used in a way excluded from the invention it failed to define the invention.
In addition Dr Emmerson referred to proposed claim 7 which defines a cigarette incorporating a filter. He submitted that the need to define the direction of grooves in this claim reinforced the idea that the definition of the filter in proposed claim 1 was not clear.
Mr Yates submitted that it was sufficient and appropriate to define the orientation of the filter by reference to the smoker's mouth and that there was no difficulty when the claim was construed to give a sensible meaning.
It is clear from the specification as proposed to be amended, that it is essential to the invention that the grooves are in a particular direction when the filter is attached to a cigarette. This direction must be defined in the claim. In The Mullard Radio Valve Co. Ltd. v Philco Radio Corp. of Great Britain Ltd., (1936) 53 RPC 323 at page 347 it was written:
"If an inventor claims an article in his invention, but the article will only achieve his avowed object in a particular juxtaposition and his inventive idea consists in the discovery that in that particular juxtaposition it will give new and useful results, I do not think that he is entitled to claim the article at large apart from the juxtaposition which is essential to the achievement of those results."
In a cigarette filter without grooves and which is not attached to a cigarette the two ends are equivalent. The only way in which it is possible to define the direction of the grooves in the filter of the present invention is by reference to an external object to which the filter is attached, namely a cigarette.
The part of claim 1 which attempts to define the direction of the grooves are:
"... each said groove being open ended at and extending from that end of the filter which is in communication with the smoker's mouth when the filter is used in combination with a cigarette part way towards that end of the filter which is adjacent said cigarette;"
A fundamental rule in construing claims is the purposive construction rule (Decor Corp. v Dart Industries, 13 IPR 385). In IBM Corporation v Commissioner of Patents 22 IPR 415 at 421 to 422 Burchett J applied this rule and emphasised that when construing claims it was important to consider necessary inferences which may restrict the claim and that the claim should be read in the context of the specification.
It may be argued in this case that if the specification is read as a whole it is apparent that, although claim 1 defines a filter per se, the clear intention is that this filter is to be used in combination with a cigarette. Furthermore, the directional elements of the filter can only be clearly defined when it is attached to a cigarette. It could be concluded therefore that a proper inference of the extract of claim 1 given above is that the claim actually defines a filter when attached to a cigarette as this is the only circumstance in which this feature can be given a sensible construction.
There are two problems with this approach:
The words "when the filter is used in combination with a cigarette ..." imply that the claim also includes within its scope filters which are not in combination with a cigarette.
The fact that there is a separate distinct claim to a cigarette incorporating a filter according to claim 1 (claim 7) and that this claim again defines the direction of the grooves indicates firstly that claim 1 defines a filter in isolation and secondly that the direction of grooves is not a requirement of claim 1.
The alternative construction of claim 1 is that the extract quoted above merely defines a functional limitation. That is to say that when the filter is used in combination with a cigarette the grooves are in a certain direction, but that a filter not in combination with a cigarette is still within the scope of the claim and for such a filter the direction of the grooves is not defined.
I agree with this interpretation and find that proposed claims 1 to 6 and 9 do not define the invention because they do not clearly define the feature of the direction of the grooves. As a result of this the amendments are not allowable for the reasons set out in section 102(2)(b).
conclusion
I have decided that the opposition fails on the grounds set out in section 102(1) and 102(2)(a) but succeeds on the grounds set out in section 102(2)(b). I therefore refuse to allow the amendments.
costs
The normal rule for the award of costs before the Commissioner is that costs follow the event. As the grounds on which the opponents succeeded were clearly set out in the statement of grounds and particulars I see no reason to vary this rule. I therefore award costs against Brown and Williamson Tobacco Corporation.
Vivienne Thom
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : SHELSTON WATERS
Patent attorneys for the opponent : CALLINAN LAWRIE
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