Brown and Williamson Tobacco Corporation v. Philip Morris Incorporated

[1987] APO 13

In the Matter of the Patents Act 1952

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In the Matter of Patent Application No. 517072 in the Name of BROWN AND WILLIAMSON TOBACCO CORPORATION

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In the Matter of Section 59 Opposition thereto 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.  The application is a Convention application claiming priority from a United States application dated 11 April, 1979.  Acceptance of the application and complete specification was notified in the Official Journal on 9 July, 1981.  PHILIP MORRIS INCORPORATED (PHILIP) lodged a Notice of Opposition under section 59 on 8 January, 1982, following allowance of an extension of time in which to do so.
         The service of evidence was completed by 18 December, 1985 and the matter was heard in Canberra on 16 and 17 February, 1987.  PHILIP was represented by Dr. J. McL. Emmerson, Q.C., instructed by Messrs. R.C. Kelson and C.D. Macauley, Patent Attorneys of Callinan & Associates, Melbourne.  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, Sydney.

The Notice of Opposition specified all the available grounds under sub‑section 59(1), however at the hearing, the opponent relied only on grounds of prior publication, lack of novelty, and non‑compliance of the specification with section 40 i.e. the grounds specified in paragraphs (e), (h) and (i) of sub‑section 59(1) of the Act.
The Specification
         The specification commences by stating that the 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."

The specification explains that it has previously been known to provide ventilating means in cigarettes, the purpose of which was to dilute the smoke stream thereby reducing the quantity of smoke particulates and gas phase components delivered to the mouth of the smoker.  This ventilation has been achieved by having either porous or perforated tobacco wrapping material which allows air to enter along the entire length of the cigarette where it mixes with the smoke stream passing therethrough. Another way of diluting the smoke stream was to provide perforations in the filter wrapper to allow ventilating air to enter the filter.  It has also been suggested to incorporate grooves within the filter and the filter plug to facilitate the addition of the ventilating air.
         The present invention achieves ventilation by having a filter rod covered by a non‑porous wrapper in which there are a number of grooves.  Each of these grooves starts at either end of the filter rod and runs part way along the length thereof.  The filter and the wrapper are surrounded with tipping paper in which there are flow‑through openings.  These openings are in communication with the grooves.  As a consequence of this construction, ventilating air flows through the openings into the grooves and along to the end or ends of the filter rod.
         The specification continues by illustrating a number of embodiments of the invention.  These embodiments show grooves communicating with either the smoker's mouth or the tobacco end of the filter or a combination of both.  In most embodiments the grooves are longitudinally extending, whereas in one embodiment they are illustrated as spiral in form and connecting one end of the filter with a circumferentially extending groove located part way along the filter.
         The specification concludes with 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 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 longitudinal 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."

Evidence
         The evidence‑in‑support of the opposition consists of a statutory declaration by Thomas William James.  Mr. James is the Supply Manager of Philip Morris Limited of Victoria and has been involved in the tobacco industry since 1964.  He exhibits with his declaration a number of patent specifications as follows:

(i)TWJ1 ‑ the opposed specification,

(ii)TWJ2 ‑ Australian Patent Specification 504195 in the name of British‑American Tobacco Company Limited,

(iii)TWJ3 ‑ United States Patent Specification 3490461 in the name of Osmalov et al (hereinafter called the "Osmalov specification"),

(iv)TWJ4 ‑ United States Patent Specification 3324862 in the name of De Simone (hereinafter called the "De Simone specification"),

(v)TWJ5 ‑ United States Patent Specification 1718122 in the name of De Shon (hereinafter called the "De Shon specification),

(vi)TWJ6 ‑ United States Patent Specification 4022221 in the name of Berger, and

(vii)TWJ7 ‑ United States Patent Specification 3768489 in the names of Kiefer and Mumpower.

The evidence‑in‑answer consists of statutory declarations by Peter Maxwell Lindsay Denton and Martin Lance Reynolds.
         Mr. Denton is the Assistant Managing Director of W.D. & H.O. Wills (Australia) Limited which is a manufacturer and distributor of cigarettes and tobacco products in Australia and overseas.  He deposes that a large effort has been made in the tobacco industry to reduce the particulate matter in the smoke by, among other means, venting, and he gives a brief history of this development.  Also he deposes that a filter in accordance with the present invention has been marketed in cigarettes under the trade mark "Barclay".  Mr. Denton exhibits a packet of "Barclay" cigarettes with his declaration.
         Mr. Reynolds is the Department Head of the Product Development Department in the Research and Development Department of BROWN.  He exhibits with his declaration a number of exhibits as follows:

(i)Exhibit 1 ‑ drawings of the smoking machine used for obtaining results in Exhibits 2 to 5 inclusive,

(ii)Exhibits 2 to 5 ‑ drawings, and photographs of tests on a number of commercially available cigarettes made according to the teachings of the present invention and United States Patent Specifications 3490461, 3324862 and 1718122 (exhibited in Mr. James' declaration),

(iii)Exhibits 3A and 6 ‑ packets of "Multifilter" and "Vantage" cigarettes made according to teachings of United States Patent Specifications 3490461 and 4022221 respectively,

(iv)Exhibit 7 ‑ United States Patent Specification 4256122, the corresponding United States application to the present application,

(v)Exhibit 8 ‑ copy of allowed claims (English translation) of the corresponding West German application, and

(vi)Exhibit 9 ‑ European Patent Application 59042 in the name of Fabriques De Tabac Reunies S.A.

The evidence‑in‑reply consists of a statutory declaration by Warren Edward Claflin.  Mr. Claflin is a Principal Engineer in the Research and Development Department of PHILIP with whom he has been employed since 1965.  His declaration includes two exhibits as follows:

(i)WEC1 ‑ Report of United States Federal Trade Commission on "Barclay" cigarettes,

(ii)WEC2 ‑ Decision of the West German Patent Office on the corresponding West German application.

On reviewing all the evidence before me I consider that only the Osmalov, De Simone and De Shon specifications are directly relevant to the issues in these proceedings. Consequently I will not detail the submissions made at the hearing in relation to the other exhibits.
Section 40
          Dr Emmerson submitted that the specification does not comply with the requirements of Section 40 as it is not clear from the specification what the invention is.  He pointed out that from the applicant's evidence and submissions, the alleged advantages of the invention appear to be:

(i)increased turbulent flow which causes greater mixing of air and smoke in the smoker's mouth,

(ii)the air and smoke streams are kept separate until they reach the smoker's mouth, and

(iii)constant air supply to the cigarette throughout the smoking of the entire cigarette.

According to Dr Emmerson the specification is silent on these advantages, and in fact, it is silent on any advantages.  Furthermore, the claims are not limited by reference to any of these advantages, or indeed by reference to any advantages.  Mr Simos contended that there is no requirement that the advantages of an invention have to be specified in the body of the specification nor do the claims have to recite such advantages.  I do not entirely agree with the submissions of either Counsel on this matter.  Firstly, I note that at page 2 of the specification some advantages of the present invention are in fact stated.  The last paragraph on page 2 reads as follows:

"The present invention advantageously provides a straight forward arrangement of a filter for a cigarette which in one form achieves normal cigarette pressure drop with low to moderate efficiency filters.  The present invention further provides a cigarette filter for lowering tar predominantly by ventilation instead of filtration."

In other words, the present invention is a better way of achieving the results of normal pressure drop and tar reduction.  Furthermore, even though the specification does not specifically state how these advantages are achieved, it would not be unreasonable to assume that this would be readily apparent to a skilled addressee.  Secondly, in my view there is no requirement that claims should be limited to specifying advantages of the invention as such ‑ this is to be distinguished from the situation where claiming by result is involved; on the other hand, a claim to an article (as here) which does not define a construction embodying the advantages of the invention would not be fairly based.
          Dr Emmerson also submitted that there are no limitations on the size of the grooves in the specification and claims.   This again I consider is not an essential requirement in the present circumstances as it should be remembered that the specification has to be read by a skilled addressee.  As is well known law, a skilled addressee is allowed to do some experimentation which is of a routine nature in order to carry out the invention.  In my view, this is the case here.
          Dr. Emmerson went on to say that in any case, the groove construction defined in the claims is quite unclear.  For instance claim 1 is directed to a filter for a cigarette including a porous filter rod circumscribed by a non‑porous wrapper, the wrapper and the rod having "a plurality of longitudinally extending grooves circumferentially spaced therearound".  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.  I agree with Dr. Emmerson that the expression referred to above is not necessarily limited to the latter construction.  Within the scope of the expression, there is no necessity for the grooves to be actually in the rod or the wrapper.  The grooves could be spaced around them (cf Osmalov specification).   Another possibility is that there are grooves in the rod and the wrapper but the number of grooves in each could be different with the grooves in rod and wrapper not necessarily coinciding.  For these reasons, claims 1 et al are not clear nor fairly based.
         Claim 1 continues by defining that the grooves extend "from at least one end a preselected distance therealong".   Mr Simos suggested that this expression implied that the grooves only went part way along the length of the filter.   In response, Dr Emmerson stated that "preselected" suggests that it was any distance one chose but it does not mean that one cannot choose to have the grooves extending all the way along the filter.   Of the two interpretations, I consider that the one put forward by Dr Emmerson is correct.  The presence of the term "preselected" implies that a choice of the distance is involved but there is no limit in the claim as to the range of the choice.  Therefore, the claim includes a construction in which the grooves provide a fluid channel direct from the tobacco of the cigarette to the smoker's mouth.  Clearly this construction is outside the terms of the invention described, and accordingly, the claim is not fairly based.
Anticipation
         The first citation of note is the "Osmalov" specification.  This specification illustrates a filter cigarette with an integral mouthpiece, having a number of grooves on its external surface. The embodiment most relevant to this action is that illustrated in Figure 4.  Here the mouthpiece circumscribes the filter rod and itself is covered by an air impervious wrapper sheet or tipping paper so that the ends of the grooves are left open.  The mouthpiece can be constructed from thermoplastics material, corrugated paper or metal foil, and is non‑porous.
          Mr Simos submitted that the present invention can be distinguished from the Osmalov disclosure as the mouthpiece thereof is quite separate from the filter, and there is no suggestion that there are corrugations in the filter. Dr Emmerson in response submitted that the two differences stressed by Mr Simos were not differences at all ‑ thus the specification in suit is entirely silent on any advantage achieved by having grooves in the filter as well as in the wrapper.   The present invention he said, was no more than a mere workshop variation on Osmalov as groove formation in filters was well known.  He submitted also that the mouthpiece in Osmalov is an integral part of the cigarette, and is not something added on at a later stage for example, immediately prior to smoking; furthermore, no distinction arises out of the use of the term "non‑porous wrapper" as opposed to the term "mouthpiece", and these (in the respective contexts) were simply names for the same item.
          On the matter of the grooves, it seems to me that both Mr Simos' and Dr Emmerson's remarks are directed to the invention as illustrated rather than as claimed.  As I have stated earlier, claim 1 is not limited to a construction having grooves in the filter and can include within its scope the arrangement shown in the Osmalov specification.   I do agree with Dr Emmerson's remarks on the mouthpiece.  It seems to me that the mouthpiece can be considered to be a type of wrapper around the filter rod, and certainly it constitutes an integral part of the filter.
         However, I note that in Osmalov, the tipping paper has no "flow‑through openings" in communication with the grooves, as defined in present claim 1, but instead has the ends of the grooves themselves open. With either arrangement air is allowed to flow into the grooves, and thence to a smoker's mouth.  Having regard to my comments on claim 1 under Section 40, I can see no novelty in this constructional variation.
          The De Simone specification illustrates (especially in Figures 5 and 6), a filter cigarette with grooves in the filter which is covered by a "shell".  The tobacco rod and the filter with the "shell" are covered by a wrapper.  Formed in the wrapper and through portions of the tobacco adjacent the filter are air passages each of which communicates with one of the grooves in the filter.  The "shell" is made of a material, stated to be preferably paper, which is rigid enough to prevent the grooves from being closed during smoking.
         Mr Simos submitted that this type of cigarette is made to allow cooling of the smoke stream and not particularly for the purpose of allowing separation of the air and smoke streams. He supported this view by explaining that there are passages through the tobacco which means that the air and smoke would be mixed before reaching the grooves.  Also, Mr Simos pointed out that there is no disclosure that the shell is impermeable.
          Dr Emmerson submitted in reply that although there is no rigorous separation of the smoke and air streams, the fluid stream flowing down the tubes or grooves is substantially all air.  Dr Emmerson further pointed out that in any case, some of the embodiments of the specification in suit illustrate that there is mixing of the smoke and air streams before they reach the filter.  I agree.
  Upon consideration of the embodiment illustrated in Figures 5 and 6 of De Simone and having regard to my comments under Section 40, I conclude that claim 1 is not novel.  As previously stated, the grooves in the filter defined in claim 1 do not necessarily coincide with those in the wrapper.  In such an arrangement, air flowing down the grooves in the filter is mixed with the smoke stream as in the De Simone specification.  Consequently, the inclusion of a non‑porous grooved wrapper makes no real contribution to the operation of the filter arrangement as compared to the use of a porous "shell" (i.e. the non‑porous wrapper would not prevent the air and smoke streams mixing). Furthermore, even though there is no tipping paper in the De Simone cigarette, the wrapper covering the tobacco rod and filter serves the same function as it joins these two items together and has flow‑through openings which are in communication with the grooves.
          The other relevant specification was that by De Shon.  Both parties agreed that because of the age of this specification, it could not be relied upon by itself because of the provisions of Section 158 of the Act.  However, Dr Emmerson contended that under the principles set out in George C. Warner Laboratories v Chemspray Pty. Ltd. (1967) AOJP 2513, it was possible to combine the De Shon specification with the Osmalov and/or the De Simone specifications.
Both the Osmalov and De Simone specifications make reference to the De Shon specification in their lists of related art.  Mr Simos submitted that as in each case this reference was made by the United States Patent Office, and not by the respective patentees, the Warner v. Chemspray judgement was not applicable. 
         I find the circumstances here unlike those in Warner v Chemspray (supra); thus it is not apparent what particular features from each of the specifications concerned could legitimately be combined to produce the claimed invention.  That is, even reading the three specifications together, I cannot find a disclosure that is more relevant than those I have separately considered in dealing with Osmalov and De Simone.  It should be remembered that even when dealing with a single document, it is not permissible for a reader to indiscriminately combine separate portions thereof to generate a disclosure that is not one that would be contemplated by a person skilled in the art ‑ this is basic law.  I note also that Dr Emmerson made no submissions on this point, nor did Mr James comment in his declaration.  Consequently, I reject this particular submission. As to whether it is possible in this type of situation, despite Section 158 to combine a specification over 50 years old with another, this is not something which I need consider.

          My remarks above have been concerned with the novelty of claim 1.  With regard to the remaining claims, I cannot see that these add anything that would give rise to novelty over Osmalov or De Simone.  Again, this has to be taken in the context of my comments under Section 40.
Conclusion
          I have found that the opposition succeeds on the grounds of lack of novelty and non‑compliance with Section 40.  In my view there is patentable subject matter disclosed in the specification, consequently I allow the applicant 60 days in which to propose amendments with a view to appropriately claiming that matter.
          I award costs against the applicant.

(J.L. ROVETA)           

Patent Attorneys for the Applicant:  Shelston Waters