Brown and Williamson Tobacco Corporation v. Philip Morris Incorporated

[1987] APO 14

In the Matter of the Patents Act 1952

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In the Matter of Application No. 517072 for a Patent by BROWN AND WILLIAMSON TOBACCO CORPORATION

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In the Matter of a Request under Section 77

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In the Matter of Opposition thereto under Section 82 by PHILIP MORRIS INCORPORATED.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
         BROWN AND WILLIAMSON TOBACCO CORPORATION (BROWN) lodged patent application 517072 entitled "A Cigarette Filter" on 20 March, 1980.  It was advertised accepted on 9 July 1981, and PHILIP MORRIS INCORPORATED (PHILIP) lodged a Notice of Opposition under Section 59 on 8 January, 1982.
         The opponent served evidence‑in‑support of the Section 59 opposition on 7 January, 1983.  Subsequently, BROWN lodged proposed amendments under Section 77 on 1 March, 1983, and following examination, particulars of the request to amend were advertised in the Official Journal on 23 June, 1983.  PHILIP subsequently lodged a Notice of Opposition under Section 82 on 28 September, 1983.
         Service of evidence was completed by 29 November, 1985 and the matter was heard in Canberra on 16 and 17 February, 1987

sequentially with the hearing of the Section 59 Opposition.   Dr J. McL. Emmerson, Q.C., instructed by Messrs R.C. Kelson and C.D. Macauley, Patent Attorneys of Callinan and Associates, Patent Attorneys, Melbourne represented PHILIP while BROWN was represented by Mr T. Simos, Q.C., and Mr D.K. Catterns of Counsel instructed by Mr R.G. Shelston, Patent Attorney of Shelston Waters, Patent Attorneys, Sydney.
         The Section 82 Notice sets out the following grounds of opposition:

1.As a result of the amendment the specification claims matter not in substance disclosed in the specification as lodged.

2.As a result of the amendment, at least one claim of the specification would not in substance fall within the scope of the claims of the specification before amendment.

3.As a result of the amendment the specification does not comply with the requirements of Section 40.

The Specification and Proposed Amendments
         The specification as accepted relates to a filter for a cigarette having grooves therein for directing ventilating air entering through perforated or permeable tipping paper to the tobacco end and/or the mouth end of the filter.  The accepted specification contains nine claims 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 longtudinally 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."

The proposed amendment, if allowed, would replace the description, the statement of the claims, and would delete Figure 5 from the drawings and make some consequential changes accordingly.  At this stage it is interesting to note that the Figure 5 proposed to be deleted illustrates a cigarette having the filter of claim 7, with the restriction of claim 2.  The proposed statement of claims reads as follows:

1. A filter for a cigarette comprising a porous filter rod of cylindrical configuration; a smoke impervious wrapper extending longitudinally of and circumscribing said rod leaving flow‑through opposed ends of said rod, said wrapper having a plurality of longitudinally extending grooves circumferentially spaced therearound embedded into the rod, each said groove being open ended at and extending from one of said ends part way towards the other end;  and, tipping material extending longitudinally of and circumscribing said wrapper, said tipping material bridging said grooves and permitting flow and 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 normal smoke draw.

2.A filter according to claim 1 wherein said tipping material is permeable to air.

3.A filter according to claim 1 wherein said tipping material is impervious to air but has selective perforations therein in flow communication with said grooves.

4.A filter according to any one of the preceding claims wherein each said groove is helical.

5.A filter according to any one of the preceding claims including a circumferentially extending groove in flow communication with the first‑mentioned grooves, said circumferentially extending groove being in register with flow‑through openings in said tipping material.

6.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.

7.A filter according to any one of the preceding claims wherein said wrapper has a further plurality of longitudinally extending additional grooves spaced therearound embedded into the rod, each said additional groove being open ended at and extending from said other end part way towards said one end, the first mentioned grooves and said additional grooves being non‑connected.

8.A cigarette incorporating a filter according to any one of claims 1 to 6 wherein, in use, said grooves communicate with a smoker's mouth.

9.A cigarette incorporating a filter according to claim 7 wherein, in use, the said first‑mentioned grooves communicate with a smoker's mouth at said one end and said additional grooves communicate with the interior of the cigarette at said other end.

10.A filter for a cigarette substantially as described herein with reference to Figure 1 or Figure 2 of the accompanying drawings.

11.A cigarette substantially as described herein with reference to Figure 3 or Figure 4 or Figure 5 of the accompanying drawings."

Evidence
         The evidence‑in‑support comprises a declaration by Colin Douglas Macauley who is a registered Patent Attorney of Callinan and Associates.  In his declaration, Mr Macauley makes an analysis and comparison of the accepted and amended specifications and comes to the conclusion that the amendment is not allowable.  He bases this conclusion on the assertion that the proposed amended claim 1 includes matter not in substance disclosed in the specification as lodged, and does not fall within the scope of the claims of the specification before amendment because the term "smoke impervious" has a broader meaning than "non‑porous" and also because the claim now includes within its scope mere permeable tipping paper with no "flow through openings" as required in the accepted claim 1.  Also, he declares that claims 8 to 11 are not within the scope of the claims of the specification before amendment because claims 8 and 9 are directed to a "cigarette" whereas, as accepted all claims were directed to a "filter" per se, and claims 10 and 11 do not include within their scope the "tipping paper".   Finally Mr Macauley asserts that the proposed amendment offends against Section 40 in that the formation of the grooves in claim 1 is unclear and that the invention is not clearly described in the description.
         In support of his construction of the claims, Mr Macauley makes reference to the declaration by Martin Lance Reynolds which forms the evidence‑in‑answer of the Section 59 Opposition.   In this declaration Mr Reynolds makes a statement about what he considers to be the features of the invention.  Mr Macauley includes with his declaration copies of the specification as accepted and as proposed to be amended, and dictionary definitions of the terms "impervious" and "porous".
          The evidence‑in‑answer comprises a declaration by Robert Gale Shelston who is a registered Patent Attorney of Shelston Waters.  With regard to the formation of the grooves, Mr Shelston desposes that the reference in the specification to the technique for forming the grooves is exemplary only.  Furthermore, he states that it can be clearly seen from the description that the grooves are embedded into the filter rod and the amended claim 1 is "more clearly fairly based on the description" than was the accepted claim 1.
         On the matter of the "flow‑through openings", Mr Shelston believes that Mr Macauley has misdirected himself to the invention as illustrated by the preferred embodiments.  He declares that the term "flow through openings" is intended to cover something other than mere perforations and if only perforations were intended then the term would surely have appeared in claim 1. He continues by stating that: 

"Both specifications indicate that smoke may flow through pores in an appropriately porous wrapper or paper and I believe the term "flow‑through openings" as used in both specifications is properly construed as a generalised reference to all forms of opening through which smoke may flow including the pores of a porous paper and the ports of a perforated paper."

Mr Shelston continues by declaring that the description is clear and complies with Section 40.  With regard to the Reynolds' declaration, he desposes that he considers that what Mr Reynolds has to say is irrelevant to the construction of the complete specification.  Mr Shelston makes no statement regarding the objections to proposed amended claims 10 and 11.
         The evidence‑in‑reply comprises a declaration by Warren Edward Claflin who is a Principal Engineer in the Research and Development Department of PHILIP.  He desposes that in relation to the "flow‑through openings", it is clear that in claim 1 as accepted:

"the ventilating air" is intended to pass through openings perforated in the tipping paper.  Such openings, as described in that application, are distinct from any pores that may be inherent in the tipping paper.  Typically in April, 1979, tipping paper was not porous with respect to air, and thus "ventilating air" could only pass through holes perforating the tipping paper.  My conclusion here is reinforced by claim 4, which defines the tipping paper to be permeable to air.  If the tipping paper of claim 1 were not understood to be impermeable to air (except for perforations), claim 4 would be redundant."

Finally, Mr Claflin declares that the accepted specification did not disclose a wrapper for the filter which is a separate layer of the same material as the filter element.  As the proposed amended claim 6 defines this combination, he believes it is directed to matter not in substance disclosed in the specification as lodged.
Submissions
         (The following is a summary of only the major submissions by Counsel for both parties.  I note also that Mr. Simos opened his address by saying that BROWN did not wish to persist with the change of "non‑porous" to "smoke impervious" in claim 1.  Dr. Emmerson likewise indicated that PHILIP would not pursue its objections to claims 8 and 9.)
         On behalf of BROWN, Mr Simos submitted that "from common sense and language," paper which is permeable allows something to permeate through it and of course that something must be flowing through openings in the paper.  As such, "tipping material including flow‑through openings" cannot be limited to tipping material with perforations but also includes permeable material, this view being supported from a reading of claim 4 as accepted, which recites that the tipping material is permeable.  In response to the objection raised to proposed amended claims 10 and 11, Mr Simos submitted that as a general principle, omnibus claims are always narrower in scope than claims expressed in more general terms.  He also submitted that it is not a proper construction of claim 10 to say that the claim is limited to the drawings and nothing else.  Such a construction would totally ignore the words "substantially as described herein".   This wording, according to Mr Simos, refers one back to the specification and tipping paper is referred to in the body of the specification, therefore the claim is limited to tipping paper.  He made similar remarks about claim 11.
         In answer Dr Emmerson submitted that the expression "flow‑through openings" is not an apt description of tipping paper which is merely porous.  In the context of the known art and in the context of the disclosure in the present specification, a distinction is drawn between something which has openings and something which is merely porous.  He admitted that something that is porous has microscopic or sub‑microscopic openings.  But the expression "flow‑through openings" is insufficient to cover both the known ways of allowing air to flow through a material.  With regard to the omnibus claims (i.e. proposed amended claims 10 and 11), Dr Emmerson agreed with Mr Simos that omnibus claims are normally narrow in scope, but did not agree that they are necessarily narrower in scope than the other claims.  In this particular case, there are no words to suggest that they do fall within the scope of the other claims.  Thus these claims define respectively a filter and a cigarette substantially as described with reference to certain specified drawings and according to Dr Emmerson that does not allow them to be construed as if they go beyond those drawings and claim something else.  As the drawings do not include tipping paper, the claims are not so limited and therefore these claims do not fall within the scope of the claims before amendment.
Allowability (S.78)
         Claim 1 as accepted and as proposed to be amended varies significantly in the following areas:

1.  Wrapper         "non‑porous"         "smoke‑impervious"

2.  Definition of    Spaced around the     Spaced around the rod and
    the grooves     rod and wrapper      wrapper, embedded into the
  rod

3.  Tipping         has flow through     permits flow of ambient air
    material        openings communic‑    into the grooves
  ating with the
  grooves

In the context of claim 1, the expression "non‑porous wrapper" must be related to the fluids with which the filter comes in contact, i.e. air (externally of the wrapper) and air plus combustion products, including smoke particles (internally of the wrapper, within the filter).  A "non‑porous wrapper" is therefore one that will not pass either of those two fluids.  I think it is self‑
evident that if the wrapper blocks air, it will also block smoke which comprises a particulate material suspended in the air.  It follows that a "non‑porous wrapper" is also "smoke‑impervious", and consequently, I cannot agree with the arguments put to me that this particular proposed change would cause the claiming of matter not originally disclosed.  However, a wrapper which is categorised as "smoke‑impervious" might in fact pass air, but still filter out the particulate matter in smoke, and therefore would not necessarily be "non‑porous".  Accordingly, this particular proposed amendment if made, would extend the scope of the claim, thereby causing the request to contravene the terms of sub‑section 78(2).
         Concerning the definition of the groove arrangement, in my view neither the accepted nor proposed amended versions are satisfactory.  Essentially, the arrangement is quite simple ‑ the filter rod is longitudinally grooved, and the wrapper conforms to the surface of the rod accordingly.  To a certain extent this matter (and indeed this whole action) has been overtaken by events.  Thus my decision on the section 59 opposition issues together with this decision and in view of my findings on that action I need not go into further detail here.
         As to the matter of the tipping material, I find myself in agreement with Dr. Emmerson's views.  Permeability is a specific property which characterises a material and while it might be said with reference to certain classes of material that the permeability was a characteristic devolving from flow‑through openings, this certainly would not be a general conclusion.  In the present instance, the concern is with tipping paper which is a fine material, and I see a very great distinction between a fine paper that is permeable (in the context, this must mean at least air‑
permeable) and one that has holes in it as described and illustrated in the original and accepted specifications.  I do note that accepted claim 4 recites:

"The filter of claim 1 wherein said tipping material is permeable to air."

However, this does not assist Mr. Simos' argument ‑ it seems to me that this recitation is vastly different from the notional construction of this claim made by Mr. Simos, i.e. "wherein the flow‑through openings in the tipping paper are the consequence of that paper being permeable".  Accordingly, I find that proposed amended claim 1 falls outside the scope of the accepted claim.  Pursuant to the issuance concurrently of my decision on the section 59 action, I do not propose to consider the remaining matters put to me by Dr. Emmerson on behalf of the opponents, with one exception.  That exception is the matter of the scope of the omnibus claims, 10 and 11.  These claims are entirely new, and there are no equivalent claims in the specification as accepted.  It seems to me that the objection is that these claims are not fairly based because they do not include "tipping paper" as a limitation.  The basis for this appears to be that Figures 1 and 2 do not show tipping paper.  I cannot agree with this view.  The scope of claims such as these is, in general, determined by taking the essential features of the invention insofar as they are described with respect to the specified drawings.  This type of exercise never necessarily limits the claim to the precise form of a feature illustrated, nor does it permit the exclusion of an essential feature (unless the wording of the claim clearly excludes it) because it does not appear in the specified drawings.  In any case, I note that Figures 3, 4 and 5 to which claim 11 refers, all illustrate tipping paper.
Conclusion
         I have found that certain of the proposed amendments contravene the provisions of section 78; however, because of the nature of the request, it is not possible for me to take any decision except the rejection of the request in toto.  Accordingly, I refuse to allow the request, and I award costs in favour of the opponent.

(J.L. ROVETA)