Castrip, LLC v Acciai Speciali Terni SpA
[2006] APO 32
•21 September 2006
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 744196 in the name of ACCIAI SPECIALI TERNI SpA; VOEST-ALPINE INDUSTRIEANLAGENBAU GmbH
Title: Continuous Casting Process for Producing Low Carbon Steel Strips and Strips so Obtainable with Good As Cast Mechanical Properties
Action: Opposition by CASTRIP, LLC under section 59 of the Patents Act 1990
Decision: Issued 21 September 2006 .
Abstract
The opponent pursued the grounds of novelty and inventive step at the hearing. The opposed invention relates to a process of continuous casting, subsequent cooling, hot rolling, cooling and coiling of low carbon steel sheet.
The opponent raised six citations against novelty of which two were to be considered in combination. The combination was found not to be justified and hence only five citations were considered for novelty. Claims 1 to 7 were found to be novel in light of the citations. The novelty citations when combined on an individual basis with the established common general knowledge were considered for the purposes of inventive step. Claims 1 to 7 were found to be inventive in light of the common general knowledge alone as well as in light of the cited documents when combined on an individual basis with the common general knowledge. Thus the opponent has been unsuccessful on the grounds of novelty and inventive step.
I direct that the application be sealed after twenty-eight (28) days from the date of this decision. If the Commissioner of Patents is served with a notice of appeal from this decision before that time, I direct that sealing not occur until the appeal has been decided or discontinued.
As the opponent has been unsuccessful, I award costs against the opponent Castrip, LLC and in favour of the applicants Acciai Speciali Terni SpA and Voest-Alpine Industrieanlagenbau GmbH.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 744196 by ACCIAI SPECIALI TERNI SpA; VOEST-ALPINE INDUSTRIEANLAGENBAU GmbH and an opposition under section 59 of the Patents Act 1990 by CASTRIP, LLC.
BACKGROUND
Acciai Speciali Terni SpA and Voest-Alpine Industrieanlagenbau GmbH filed patent application No 744196 on 19 June 1998 under the provisions of the Patent Cooperation Treaty (PCT). The application claims priority from an Italian basic application RM97A000367 filed on 19 June 1997. The application was examined and advertised accepted on 21 February 2002.
Castrip, LLC filed a notice of opposition on 20 May 2002. A statement of grounds and particulars was filed on 20 August 2002. Evidence in support was filed by 20 February 2003. Several extensions of time were granted for the filing of evidence in answer. The final extension date of 20 August 2005 passed without evidence in answer being filed. Thus the filing of evidence in reply did not arise.
A hearing to deal with the substantive opposition was held in Sydney on 19 April 2006. Russell Davies, patent attorney, Shelston ip, Sydney, represented the applicant. David Catterns, Senior counsel, assisted by Geoff Mansfield and Gennaro Simonetta, patent attorneys of Griffith Hack, Melbourne, represented the opponent. Mr Udo Buecher, Intellectual Property Manager of Bluescope Steel Limited which is a shareholder in Castrip, LLC, the opponent, was also present. Prior to the hearing, on 18 April 2006 the applicant filed written submissions. The opponent filed written submissions at the hearing on 19 April 2006. The opposing parties sought further time to respond to these submissions. Both parties were granted time until 10 May 2006 to file their responses.
EVIDENCE
Evidence in support consists of declarations made by:
Harold Roland Kaul, dated 18 February 2003 and exhibits HRK-1 to 26. He states that he is currently employed as a Senior Metallurgical Development Officer by BHP Steel Limited which operates under the name of BHP Steel and is a shareholder in Castrip, LLC (the opponent). He indicates that he has a Bachelor of Metallurgy from the University of Wollongong. He further states that he has been employed by BHP Steel since 1983 when he joined as a trainee metallurgist. He also indicates that he has technical qualifications in the field of metallurgy and extensive experience in steel making and steel processing including aspects of steel metallurgy and performance and continuous casting of thin steel strip. He further indicates that he has authored/co-authored several publications in the field of metallurgy.
Evidence in answer was not filed by the applicant; consequently there was no evidence in reply.
THE SPECIFICATION
The specification under opposition was advertised accepted on 21 February 2002. The specification commences by stating that “The present invention refers to a process for the production of low carbon steel strips, having a good combination of strength and cold formability, as cast.” Then it describes some prior art processes and their defects such as, the need for further installations and higher energy consumptions (e.g. rolling lines, furnace for intermediate heating etc.) and larger space requirements. The specification also states that, ‘…they do not teach how to obtain a product with the desired mechanical and technological properties, by exploiting the peculiarities of the phase transformation features for the as cast steels with big austenitic grain (usually 150-400µm).
It continues by stating, “It is an object of the present invention to overcome or ameliorate at least one of the disadvantages of the prior art, or to provide a useful alternative. Accordingly, the present invention provides a process for the production of low carbon steel strips having a good combination of strength and formability, as cast, and a good weldability after the pickling by usual processes,…” This is followed by a consistory statement of the invention, detailed description of the invention accompanied by several drawings, and some embodiments of the invention including several examples. The specification concludes with independent claim 1, which is similar to the consistory statement, several appended claims and a couple of omnibus claims. Claims 1 and 2 are process claims, whereas claims 3 to 7 are directed to a low carbon as cast steel strip. Claims 2 and 7 are omnibus claims. Main claim 1, and omnibus claims 2 and 7, read as follows:
1. A process for the production of low carbon steel strips having a good combination of strength and formability, as cast, and a good weldability after the pickling by usual processes, consisting of the following steps:
- casting, in a twin rolls continuous casting machine comprising pinch rolls, a strip with a thickness comprised between 1 and 8mm, having the following composition as weight percentage of the total weight:
C 0,02-0,10; Mn 0,1-0,6; Si 0,02-0,35; Al 0,01-0,05; S<0,015; P<0,02; Cr 0,05-0,35; Ni 0,05-0,3; N 0,003-0,012; and, optionally, Ti<0,03; V<0,10; Nb<0.035, the remaining part being substantially Fe;
- cooling the strip in the area comprise (sic) between the casting-rolls and the pinch rolls;
- hot deforming the strip cast through said pinch rolls at a temperature comprised between 1000 and 1300oC until reaching a thickness reduction less than 15%, in order to encourage the closing of the shrinkage porosities;
- cooling the strip at a speed comprised between 5 and 80oC/s down to a temperature (Tavv) comprised between 500 and 850oC; and
- coiling in to a reel the so obtainable strip.
2. A process for the production of low carbon steel strips having a good combination of strength and formability, as cast, and a good weldability after the pickling by usual processes, said process being substantially as hereinbefore described with reference to the accompanying drawings.
7. A low carbon steel strip substantially as hereinbefore described with reference to the
accompanying drawings.STATEMENT OF GROUNDS AND PARTICULARS
The opponent raised grounds of novelty, inventive step, manner of manufacture and section 40/fair basis. The opponent addressed the grounds of novelty and inventive step at the hearing. The opponent submitted that if the late submissions of the applicant raised any issues which impacted on manner of manufacture and section 40, they would raise these matters in their further submissions. As previously indicated under BACKGROUND both parties were given until 10 May 2006 to respond to each others late submissions. Only the opponent responded, filing material on 10 May 2006. Based on all submissions made the grounds of novelty and inventive step are the major grounds of the opposition.
DECISION
Both parties made oral submissions at the hearing. Written submissions for presentation at the hearing had also been provided by both parties. The opponent filed a response to submissions made at the hearing on 10 May 2006. I shall refer to these as well as any earlier filed evidence wherever relevant in my decision.
Novelty
The opponent had listed nine documents for the ground of novelty in the statement of grounds and particulars. At the hearing they alleged lack of novelty on the basis of five documents when considered individually and a sixth document when considered in combination with one of the previous five documents.
The applicant submitted that for novelty purposes, “…none of the prior publications relied upon by the Opponent contains a clear description of, or clear instructions to do or make, the process or product of the present invention.” The applicant drew attention to the teachings of:
General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd, (1972) RPC 457 at pages 485, 486, which states; "…the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee."
The opponent submitted that based on a variety of case law the following propositions were established:
·Precise identity between the invention claimed and the prior art is not required;
·The degree of difference which is permissible is not subject to a rigid formula, although “workshop variations” or “mechanical equivalents” are included, while work which involved an inventive step is not. A trivial or immaterial addition such as an integer which a skilled addressee (armed, of course, with common general knowledge) could readily supply will not confer novelty.
The reverse infringement test from Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1976) 137 CLR 228 at 235 sets out the basic test for anticipation or want of novelty:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
It follows from the reverse infringement test that if a citation discloses all the features of the claim, the claim will lack novelty. If the citation does not disclose all the features of the claim, the claim will still lack novelty provided the citation discloses all the essential features of the claim; but if the essential features are not disclosed in the citation, the claim is novel (Nicaro Holdings v Martin Engineering 16 IPR 545 and Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183).
Before proceeding to considering the documents raised by the opponent against novelty, I shall proceed to assess the invention set out in claim 1 of the specification. Claim 1 commences by stating:
“A process for the production of low carbon steel strips having a good combination of strength and formability, as cast, and a good weldability after the pickling by usual processes, consisting of the following steps:…”
This is followed by specific process steps of casting steel strips including a specified steel composition. The introductory paragraph makes clear that the steel strips should have “… a good combination of strength and formability, as cast, and a good weldability…”. Referring to the description, the strength and formability are defined (see page 6, lines 20 to 24) in terms of stress and Erichsen trials. In particular, yield stress, fracture stress, the ratio of yield stress to fracture stress and the Erichsen Index (a measure of ductility) are specified for various embodiments of cast steel obtained via the process. The claim is directed to a process which produces a product with specified physical properties. Thus for the purposes of novelty a process disclosing all the steps defined in claim 1 would render claim 1, as well as the product claims, not novel.
I shall address the documents raised against novelty on an individual basis except where the opponent has raised a combination. Before I proceed, I note that the opponent has indicated for novelty considerations that the citations must be read in light of the common general knowledge available to the skilled addressee at the relevant date. I concur with the opponent in this regard but note that this must be done in accordance with the teachings of Acme Bedstead v Newlands, 58 CLR 689 at page 704:
"a given specification is not to be read in a vacuum. The reader must be regarded as having at least the common knowledge of the art."
and,
"It is contended, however, that there is no justification for, to put it shortly, adding common general knowledge to an alleged paper anticipation and thus depriving a patent of subject matter."
The common general knowledge (henceforth referred to as cgk) was described by Aickin J. in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Limited, (1980) 144 CLR 253 at 292 as:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
In order to determine the cgk in Australia I shall have regard to the submissions of both parties as well as the single declarant (Mr Kaul) in this matter. The opponent stated that several documents they had filed constituted cgk in Australia and they also indicated that their declarant, who they considered to be the non-inventive worker, skilled in the relevant art in Australia had spelt out what constituted the relevant cgk. I shall assess the documents (including technical papers and patent specifications) filed to determine if they constitute the cgk in Australia. Regarding journal articles/technical papers the courts have indicated:
"In my judgement it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or a 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 merely because it is widely circulated. Such a piece of knowledge only becomes common 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."
and
"It is certainly difficult to appreciate how the use of something which has in fact never been used in a particular art can ever be held to be common general knowledge in the art."
British Acoustic Films Ld v Nettlefold Productions (1936) 53 RPC 221 at page 250, and affirmed in General Tire & Rubber Company v Firestone Tyre and Rubber Company Ltd (1972) RPC 457 with the qualification that "without question" should read "generally regarded as a good basis for further action".
In the matter of patent specifications the Courts have addressed this matter as follows:
"... it is clear that individual patent specifications and their contents do not normally form part of the relevant common general knowledge .."
General Tire & Rubber Company v Firestone Tyre and Rubber Company Ltd (1972) RPC 457 at page 482
However, as was stated in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at page 294:
"There may be some fields of endeavour in which those who work therein study and make themselves familiar with all patent specifications as they become available for inspection in one or in many countries so that what was contained therein becomes common general knowledge in that particular trade or field of manufacture in the country in question. Examples are provided by Vidal Dyes Syndicate Ltd v Levinstein Ltd.** and British Celanese Ltd v Courtaulds Ltd.*"
** (1912) 29 RPC 245 at pages 279-280
* (1933) 50 RPC 259 at page 280
Thus where multiple specifications refer to a piece of knowledge, this may be indicative of that knowledge being common general knowledge, especially when the applications are by different applicants.
Going through the list of documents provided as cgk, for the patent documents listed, I have considered relevant features disclosed therein which are common to the cited documents. I have listed these features in the established common general knowledge for the relevant art. Regarding the remaining documents, I have weighed up the submissions from both parties regarding the features in the documents which both agree form part of the cgk and have listed the relevant features agreed upon as forming part of the cgk in Australia.
I shall now consider the submissions of the declarant including his experience in the relevant art in Australia and whether that would provide him with the cgk in the relevant art in Australia at the relevant date. Mr Kaul indicates that he has technical qualifications in the field of metallurgy and extensive experience in steel making and steel processing including aspects of steel metallurgy and performance and continuous casting of thin steel strip. He further indicates that he has authored/co-authored several publications in the field of metallurgy and is a nominated inventor in a number of patents/patent applications. The applicant submitted that as Mr Kaul worked for the opponent his submissions should be weighted accordingly, also that his evidence was tainted by hindsight and further as an inventor he could not be considered to be the notional ‘non-inventive’ skilled addressee in the field. The opponent indicated that though Mr Kaul had been named as an inventor in a few patent applications, these were related to mechanical aspects of the strip casting process and not the chemical/metallurgical aspects.
Having considered all the matter before me I consider that Mr Kaul is quite clearly the ordinary non-inventive skilled worker in the field. However, I shall only give weight to his assertions regarding the common general knowledge and not to any statements regarding the alleged novelty or inventiveness of the opposed invention.
On the basis of evidence provided, the state of the common general knowledge in Australia at the relevant date, that I can ascertain, was the following:
· Twin roll continuous casting of steel is known. By its very nature this requires rapid cooling of the steel in order to ensure that although molten steel enters the rolls, solid steel leaves them. However, no specific cooling rates are disclosed as being part of the common general knowledge;
· This type of casting may be reduced in thickness by hot rolling directly after casting or, cooled and then reheated for thickness reduction by hot rolling wherein the rolling generally involves the use of pinch rolls;
· On cooling, cast steels form particular crystal structures depending on their thermal history [i.e. the way they are cooled and/or reheated];
· After hot deforming the steel sheet is cooled to a temperature suitable for coiling;
· Coiling of twin roll continuously cast steel is known as a convenient way of handling the product produced.
The composition of carbon steel is so varied that one cannot determine which particular composition was part of the common general knowledge. However, what is acknowledged, is the presence of impurities due to the use of scrap metal. Thus metals such as nickel and chromium would inevitably be present in the steel. However one cannot say with certainty that they would inevitably be present within the ranges specified in the opposed invention wherever scrap carbon steel was used to make the cast steel. In particular I have noted that several patent specifications have indicated that certain metals may be present as impurities in carbon steel compositions but have then proceeded to specify the presence of these metals, in weight percentage terms, as a necessary part of the steel composition.
Another impurity present in cast steel is identified as nitrogen. Exhibit HRK-19, “Effects of tramp elements in flat and long products”, a technical steel research report of the European Commission indicates that nitrogen is present as an impurity in the ranges 70 to 90 ppm and that figures as low as 20 to 30 ppm have been reported. I consider that the skilled addressee when looking at impurities present in cast steel would expect nitrogen to be present in the range of 70 to 90 ppm or 0.0070 to 0.0090 per cent by weight of the steel composition.
I shall commence with novelty considerations based on documents raised by the opponent. I shall begin by assuming that all features of the independent claim are necessary for working of the invention (Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183) and then assess the essential/non-essential nature of the various integers when comparing the relevant claims with the citations against novelty. The features of the process of claim 1 are:
1. A process for the production of low carbon steel strips having a good combination of strength and formability, as cast, and a good weldability after the pickling by usual processes, consisting of the following steps:
2. casting, in a twin rolls continuous casting machine comprising pinch rolls, a strip with a thickness comprised between 1 and 8mm,
3. having the following composition as weight percentage of the total weight: C 0,02-0,10; Mn 0,1-0,6; Si 0,02-0,35; Al 0,01-0,05; S<0,015; P<0,02; Cr 0,05-0,35; Ni 0,05-0,3; N 0,003-0,012; the remaining part being substantially Fe;
4. cooling the strip in the area comprise (sic) between the casting-rolls and the pinch rolls;
5. hot deforming the strip cast through said pinch rolls at a temperature comprised between 1000 and 1300oC until reaching a thickness reduction less than 15%, in order to encourage the closing of the shrinkage porosities;
6. cooling the strip at a speed comprised between 5 and 80oC/s down to a temperature (Tavv) comprised between 500 and 850oC; and
7. coiling into reel the so obtainable strip.
In claim 1, feature 3 also defines, “and, optionally, Ti<0,03; V<0,10; Nb<0.035,”. As these are clearly optional elements I will not consider them for the purpose of assessing the novelty of claim 1. I note that wherever the opponent has raised Japanese citations, a copy of the English translation of the original Japanese patent application is provided. The applicant has not objected to these documents or challenged the accuracy of the translation. I shall proceed to assess the novelty and inventive step of the opposed claims based on the disclosure of these English translations.
All the citations raised are directed to processes of casting carbon steel sheet and as such features 1, 4, and 7 are part of the process of strip casting and as indicated by the acknowledged common general knowledge would form part of the process unless exclusively excluded by express statements in the citation. I shall therefore assess the citations to see if there is a clear disclosure of features 2, 3, 5 and 6.
JP 08-290242-A (exhibit HRK-3)
This document is directed to a method of manufacture that is supposed to consistently yield thin carbon steel strip having strength of not more than 500 MPa. The opponent asserted that all essential features of the opposed invention were disclosed in the citation. Assessing the disclosure against the features of claim 1 listed above, I find that feature 2 has been clearly disclosed, noting that the citation discloses cast strips with thickness between 1 to 10 mm which includes the range of 1 to 8 mm of feature 2 and also that the feature of ‘twin roll casting machine comprising pinch rolls’ forms part of the common general knowledge acknowledged above.
Regarding the composition set out in feature 3, the citation at page 6, lines 22 to 39 and at page 8, Table 2, Steel Type E discloses compositions falling within the ranges specified in the claim. Other steel types exemplified, the closest being Type D and Type F, do not have nickel and chromium and in case of Type F the nitrogen percentage lies outside the range of claim 1. The description does refer to the possible presence of “copper, tin and so forth...” if scrap metal is used. Nickel and chromium are identified as possible components of the carbon steel, which are specifically added for certain steel types, and in Table 3 have been listed, wherever present, under ‘Other elements’.
The fifth feature refers to a hot rolling/deforming step within a specified temperature range and a thickness reduction less than 15%. The citation discloses hot rolling at a temperature not less than 900oC and a reduction of not more than 50%. At page 9, Table 3, steel type E (falling within the composition of opposed claim 1) does not have a hot rolling reduction less than 15%. Other steel types exemplified - the closest being Type D and Type F - do not have the relevant composition when disclosing a hot rolling reduction of less than 15%. I find that feature 5 lacks a disclosure in the citation. The ranges of cooling speeds and final temperature prior to coiling set out in feature 6 do encompass the disclosure made in the citation. I conclude that opposed claim 1 does not lack novelty in light of JP 08-290242-A as the claimed combination of composition and hot rolling thickness reduction below 15% has not been disclosed therein. Consequently claims 2 to 7 also do not lack novelty in light of JP 08-290242-A.
JP 09-122839-A (exhibit HRK-5)
The opponent’s declarant asserts that all essential features of opposed claim 1 are present in the citation. The applicant countered that the practical embodiment 2 of the citation (page 8, line 1 to page 9, line 7 and more specifically page 11, lines 1 to 8) discloses a steel composition wherein Cr, Ni and N are absent and that cold rolling reduction is 70% (see page 11, line 13). Feature 2 of claim 1 has been disclosed in the citation. For feature 2, I note that the pinch rolls form part of the common general knowledge acknowledged above.
Feature 3, the composition range, is encompassed by the disclosure at page 8 and also encompasses the disclosure of Practical embodiment 2 of the citation with the exception of Cr, Ni and N. The opponent asserted that the missing elements “may be regarded as within the ambit of the term, ‘impurities: small amounts’ (which are commonly present in low carbon steels) as disclosed at page 8 of the citation.” The citation does not indicate the elements/materials which are present as impurities nor does it state the weight percentage ranges in which they may be present. The common general knowledge in the art indicates that nickel, chromium and nitrogen could be present as impurities within the specified ranges. The relevant documents setting out the cgk indicate that metal impurities are likely to be present and that the level of nitrogen in steel does not originate in the scrap itself but rather in the steelmaking practice use in the electric arc furnace. In particular, exhibit HRK-19 (“Effects of tramp elements in flat and long products”) discloses the presence of nitrogen as an impurity in the range of 70 to 90 ppm which works out to percentage ranges of 0.007 to 0.009. Thus, I find that feature 3 has been disclosed in the citation.
Regarding the hot rolling step (feature 5) the citation refers to a lower level thickness reduction of 10% (thus within the 15% set out in feature 5) but does not specify the actual temperature range for this reduction. The opponent refers to practical embodiment 1 which discloses a temperature of 1000oC (within the specified range) but the reduction is set at 20% and the steel composition is not encompassed within that of the opposed invention. Practical embodiment 2, which has the composition of feature 3, however is directed to cold rolling reduction of 70%. I find that feature 5 lacks disclosure in the citation.
The cooling rate after rolling and the final temperature prior to coiling has not been specifically disclosed in the citation. Reference has been made to “…the strip is cooled under the conditions normally employed for the hot rolling process…” and “cooling velocity after rolling: 30oC/s and coiling temperature: 750oC”. What these normal conditions are, have not been specified and the cooling rate and temperature disclosed, though within the ranges of opposed claim 1, are specified for a different steel composition and a rolling reduction of 20%. However the opponent’s declarant had indicated that the cooling rate of feature 6 was so broad as to encompass cooling rates of the citation. I agree. I find that feature 6 has been disclosed in the citation. Thus the citation fails to disclose the specified hot rolling reduction being applied to the defined steel composition. I find that claims 1 to 7 are novel when compared with the teachings of JP 09-122839-A.
JP 06-335706-A (exhibit HRK-6)
The opponent’s declarant asserts that all essential features of opposed claim 1 are present in the citation. An assessment of the citation shows that feature 2 is disclosed. Looking for the composition of feature 3, I find that the presence of silicon, phosphorous, chromium and nickel has not been mentioned. However, inevitable impurities have been mentioned as being present but no indication of the specific elements and weight ranges have been provided. Further, though the common general knowledge in the art indicates that nickel, chromium and nitrogen could be present as impurities within the specified ranges there is nothing to confirm the presence of silicon and phosphorous. The opponent’s declarant does not comment on the absence of these elements from the composition of the citation. The relevant documents setting out the cgk indicate that only metal impurities and nitrogen are likely to be present. There is no firm evidence which establishes that silicon and phosphorous would inevitably be present in the ranges specified in the opposed invention. Thus feature 3 has not been disclosed in the citation.
The temperature range of hot rolling and the range of thickness reduction are clearly disclosed in respect of feature 5. Looking at the cooling rate for the cast strip prior to coiling, the citation does disclose a cooling process and similar final temperatures, but no cooling rate is disclosed. As indicated previously I had found that the cooling rate specified in feature 6 was so broad as to encompass the cooling rates required in the casting process. I find that feature 6 has been disclosed in the citation. I find that the opposed invention as set out in claims 1 to 7 does not lack novelty in light of the disclosure of JP 06-335706-A.
AU-A-77417/94 (exhibit HRK-7)
The opponent submitted that AU-A-77417/94 when combined with JP-A-02-236228 disclosed the opposed invention. I shall determine if the two documents cited can be combined for the purposes of novelty. Section 7(1)(b) of the Patents Act 1990 provides that for novelty (other than for "whole of contents"), prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts can be used - if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information (my emphasis).
Some guidance of when two or more documents constitute a single source of information is obtained from Nicaro Holdings Pty Ltd v Martin Engineering Co, 16 IPR 545 at page 570 where Gummow J stated:
"What degree of lack of connection between two or more documents will make them 'independent' and so forbid the making of a mosaic to destroy novelty, will be very much a question in the particular case. Much will depend upon the nature of the art in which the skilled addressee is to be treated as versed at the priority date; this appears to have been important in the Sharpe & Dohme case*. Plainly, the degree of connection which is stated to exist in the documents themselves will be important. It is difficult to see how mere identification of prior patents as related or prior art would bring them sufficiently closely together for the purpose under consideration here. Again, even where there is a further description of the prior publication, it may nevertheless be that the purpose of the reference is to direct the reader away from it, as disclosing something outmoded or defective. On the other end of the scale, the terms of the specification of the patent in suit in the Sharpe & Dohme case* indicated that the patentees themselves had been relying upon the prior publications in question; and the publications themselves formed what Astbury J called 'one consistent whole'." (* (1927) 44 RPC 367, (1928) 45 RPC 153).
Occasionally a single document will incorporate several distinct embodiments or disclosures. The above principles apply when deciding whether or not the features of one embodiment can be considered with the features of another embodiment as a single source of information. Thus the fact that an earlier patent describes some of the integers of a combination, and refers to other patents which describe the remainder of the integers, does not destroy the novelty of the combination unless there is a real link between the various earlier patents, as opposed to a mere reference. Looking at the reference to the Japanese patent specification in the Australian patent specification, I note it relates to the fact that the use of particular cooling temperatures and rates for the cast steel strip in the Australian specification was previously disclosed in the Japanese patent specification. There is no indication that the Japanese specification should be specifically consulted for guidance on carrying out these steps or any other steps. Hence I shall assess the Australian Patent specification on an individual basis for novelty.
Looking for feature 2, reference is made to a casting thickness in the range 0.5 to 5 mm, which is mostly covered by the range of 1 to 8 mm of feature 2. Thus feature 2 is disclosed. The composition of feature 3 is disclosed at pages 7 and 8 of the citation. Some of the elements have been classified as impurities that are inevitably present or acquired impurities. They have been clearly identified and weight percentage ranges have been specified for those elements. I find that the citation has clearly disclosed feature 3. Feature 4, wherein the cast strip is cooled between casting and the pinch rolls is disclosed in terms of continuous cooling between casting and coiling.
For the hot rolling/deforming step (feature 5), what is disclosed is an optional light rolling step with no specified temperature but a choice of rolling reduction not exceeding 20% between casting and coiling. The citation indicates that there is no need for carrying out rolling of the cast sheet as the casting thickness of 0.5 to 5 mm is the desired sheet thickness and then it states, “However, the effect of the present invention is not inhibited by rolling the steel sheet with a low reduction ratio of not more than 20% in an in-line manner for the purpose of regulating the surface roughness and the crown of the cast slab or breaking shrinkage cavities at the center portion of the sheet thickness caused by casting”. No specific temperature range for rolling reduction is disclosed. The opponent stated that “…temperature range of between 1000 and 1300oC is known and described in the acknowledged prior art documents listed on pages 2 to 4 of AU-A-77417/94.” The existence of such knowledge in patent specifications does not establish it as being part of the cgk. The opponent has not identified the specific applications nor has it cited the exact disclosure. I find that the citation does not indicate that hot rolling is necessary for the working of the invention of the citation and neither does it indicate a suitable temperature range if rolling were carried out. I find that the citation does not disclose feature 5. Feature 6 is clearly disclosed as cooling speeds of 8 to 48oC/s down to temperatures of 620 to 450oC are disclosed which fall within or overlap the ranges specified in the opposed invention. I find that claim 1 does not lack novelty in light of AU-A-77417/94. Hence claims 2 to 7 also do not lack novelty in light of AU-A-77417/94.
AU-A-20853/95 (exhibit HRK-8)
This citation discloses production of steel sheet via casting and in-line rolling (hot deforming) to a reduction ratio of 5 to 50%, followed by coiling of the resultant sheet. Feature 2 has clearly been disclosed as is evident from Figure 1, the related description and Table 11. Regarding the steel composition (feature 3), three compositions are shown. The first two (A&B) have disclosed all the essential elements in the prescribed ranges except for nickel and chromium. The description does refer to their possible presence if scrap metal is used but no ranges are specified and also the description does not state that they are essential to the invention. In fact nickel and chromium are not specified as being present together as “other elements” for the compositions set out in Table 10 though they are present individually in some of those compositions. Looking at composition C, the carbon percentage is outside the specified range and even though chromium is present in the specified range, nickel is missing from the composition. Thus I do not find a disclosure of feature 3 in the citation.
Regarding feature 5 the citation discloses a hot deforming/rolling temperature range of 850 to 1350oC and reduction ratio of 5 to 50%, which covers or overlaps the ranges of the opposed invention. Thus feature 5 is disclosed. The citation discloses cooling of the strip subsequent to rolling down to a temperature of 500 to 700oC but no cooling rate is specified. However the opponent’s declarant had indicated that the cooling rate of feature 6 was so broad as to encompass the cooling rates used in this part of the casting process. The opponent’s declarant asserts that he expects the rate to be in the range of 20-80oC/sec and that this would fall within the specified range of 5 to 80oC/sec. He further asserts that, “…it can be deduced that the cooling rate achieved (in the citation)…must fall within the specified range because the two casters are very similar and the temperature drop between the in-line hot deformation and coiling is much the same.” I agree. I find that feature 6 has been disclosed in the citation. Thus claims 1 to 7 of the opposed invention do not lack novelty in light of AU-A-20853/95.
Inventive Step
The opponent submitted that the invention so far as claimed in any claim did not involve an inventive step when compared with the prior art base as it existed before the priority date of the claims. Subsections 7(2) and 7(3) of the Patents Act 1990 indicate that a claimed invention will lack an inventive step if it is obvious to a person skilled in the relevant art in the light of:
(a) common general knowledge in the art; or
(b) common general knowledge considered together with information publicly available in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
Aickin J set out the following test for obviousness in Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at page 286:
"The test is whether the hypothetical addressee 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."
The problem of the prior art identified in the opposed specification relates to the requirement for further installations and higher energy consumption (e.g. rolling lines, furnace for intermediate heating etc.), and the requirement for a larger space, and therefore less unity of the whole installation from the casting machine to the coiling reel. A further problem indicated that the prior art did not teach how to obtain a product with the desired mechanical and technological properties, by exploiting the peculiarities of the phase transformation features for the as cast steels with big austenitic grain (usually 150-400µm). The object of the invention was to overcome or ameliorate at least one of the disadvantages of the prior art, or to provide a useful alternative.
The hypothetical non-inventive skilled worker in the field would be a metallurgist/materials scientist with knowledge of the metallurgy of cast and rolled carbon steel strip and knowledge of the processes for strip casting of carbon steels.
The common general knowledge relevant to the question of obviousness was described by Aickin J. in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Limited, (1980) 144 CLR 253 at 292 as:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
I had previously set out under the heading of Novelty, the state of the common general knowledge in Australia that I was able to ascertain and hence I shall not repeat it here.
By itself, this common general knowledge is not sufficient to deprive the claims of the opposed specification of an inventive step. The cgk does not disclose the combination of features as set out in claim 1 of the opposed application, though it does disclose some of the individual features in isolation. It does not specify the following features of the invention: a cooling rate between casting and hot rolling; the exact composition of the carbon steel; the temperature of hot deformation; the original thickness of the cast steel plate and the reduction ratio. In short, it does not deprive the claims of an inventive step.
The opponent submitted that the opposed specification had identified two patent documents as forming part of the cgk in Australia. This submission was based on reference to those particular documents in the opposed specification wherein it stated:
“Different methods for producing carbon steel strips through twin roll continuous casting devices are already known (my emphasis). These methods aim at the production of carbon steel strips having good properties of strength and ductility.
In particular in EP 0707908 A1 a twin roll continuous casting apparatus….
From WO 95/13155 an in line thermical treatment for cast carbon steel strips…is shown.”
The applicant countered that a disclaimer had been provided to indicate that discussion of prior art should in no way be construed as an admission that such art formed part of the cgk. I note that this disclaimer had been inserted as an amendment after the filing of the original application. In most patent specifications reference is made to prior art products/processes with particular reference to a related patent application number. In this case reference is made to processes disclosed in specific patent documents as known methods. This in no way indicates if the known processes form part of the cgk. The opposed specification did not indicate that the process formed part of the cgk or that it was a process well known in the art. The Courts have indicated that (see General Tire & Rubber Company v Firestone Tyre and Rubber Company Ltd (1972) RPC 457 at page 482):
"... it is clear that individual patent specifications and their contents do not normally form part of the relevant common general knowledge ..."
However, as was stated in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at page 294:
"There may be some fields of endeavour in which those who work therein study and make themselves familiar with all patent specifications as they become available for inspection in one or in many countries so that what was contained therein becomes common general knowledge in that particular trade or field of manufacture in the country in question.”
Examples are provided by Vidal Dyes Syndicate Ltd v Levinstein Ltd. (1912) 29 RPC 245 at pages 279-280 and British Celanese Ltd v Courtaulds Ltd. (1933) 50 RPC 259 at page 280. Thus where multiple specifications refer to a piece of knowledge, this may be indicative of that knowledge being common general knowledge, especially when the applications are by different applicants. No evidence has been provided to show that this is the case for JP 08-290242-A and WO 95/13155. Thus I shall treat these documents as public knowledge rather than cgk.
The applicant submitted that the documents cited for inventive step should satisfy the requirements of section 7(3) of the Act. They stated:
“…for the purposes of 7(3) of the Act, information in a document can only be taken into account if the skilled person “could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood [and] regarded [it] as relevant”. This cannot simply be assumed to be the case; it must be established by evidence: see EI Dupont de Nemours & Co v Imperial Chemical Industries PLC (2002) 54 IPR 304 at [108] per Branson J; and, more recently, Emperor Sports Pty Ltd v Commissioner of Patents [2005] FCA 996 at [108] per Lindgren J.
For example the mere fact that a document could have been ascertained by conducting a literature search is insufficient to satisfy the requirements of s 7(3) of the Act. It must be shown by appropriate evidence, that the search is one that would reasonably be expected to have been undertaken by the skilled worker without hindsight and in the ordinary course of events: see EI Dupont de Nemours & Co v Imperial Chemical Industries PLC (2002) 54 IPR 304 at [108].”
Looking at the case of EI Dupont de Nemours & Co v Imperial Chemical Industries PLC (2002) 54 IPR 304 at [103-104], Branson J. stated:
“103 An issue arose in this proceeding as to the boundaries of common general knowledge in the relevant field at the priority date of the patent application. The applicant argued that it was appropriate for the Court to take into account the fact that any skilled refrigeration or refrigerant expert, or any chemist, seeking to select an appropriate replacement refrigerant would have conducted a literature search at the commencement of the research task. On this basis the applicant argued that the hypothetical fruits of such a literature search should be understood to form part of common general knowledge in the field.
104 This argument was, it seems to me, rejected by the Full Court of this Court in Aktiebolaget Hässle v Alphapharm Pty Ltd ("Alphapharm") [2000] FCA 1303, 51 IPR 375 at [71]-[72] where the Court said:
"While manufacturers' literature may well play an important role in the work of a hypothetical formulator, as Lehane J observed at para 42, in the light of the authorities it would be a `bold' submission to contend that material, which is not part of common general knowledge, can be relied upon to determine the question of obviousness. Nevertheless, by a process that his Honour characterised as taking the routine steps that the hypothetical formulator would take for the purpose of formulating a drug, such documents were held to be admissible for the purpose of raising `general ideas'.
If that process were permissible, the concept of common general knowledge would lose much of its significance. If it is shown that the particular skilled worker in the field would, as a matter of routine, read literature beyond the common general knowledge of the field, the distinction becomes quite meaningless. The question is not whether a skilled worker conducting a literature search would find pieces from which there might have been selective elements which make up a patent: Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at 293. What might be found by a diligent searcher is not the same as `common general knowledge'."See also Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 per Aickin J at 294-295.”
Thus the issue here is one where the opponent sought to show that certain documentation formed part of the common general knowledge on the basis that it was matter that the skilled addressee, while conducting a literature search would have ascertained, understood and regarded as relevant. The courts have quite clearly rejected that argument. In the matter at hand the documents cited for novelty purposes have not been established as part of the common general knowledge, but for the purposes of s 7(3) do form part of the information which can be combined with the established common general knowledge to show a lack of inventive step.
Having assessed the documents raised against novelty, I am satisfied that these documents would have been ascertained, understood and regarded as relevant by the skilled addressee in the field of casting of steel sheet. I shall now assess these documents for the purposes of inventive step, noting that I have previously provided a list of features which I considered to form part of the common general knowledge in Australia in the relevant art.
JP 08-290242-A (exhibit HRK-3)
This document is directed to a method of manufacture of thin carbon steel strip having strength of not more than 500 MPa. It also indicates that it is exploiting features of phase transformation to obtain a steel strip with a strength not exceeding 500 MPa. This document did not disclose feature 5 (hot deforming the strip cast through said pinch rolls at a temperature comprised between 1000 and 1300oC until reaching a thickness reduction less than 15%, in order to encourage the closing of the shrinkage porosities) in respect of the defined steel composition. Given the problem faced by the skilled addressee and the cgk available there is nothing to indicate what would point towards the choice of a thickness reduction less than 15% for a specific steel composition. The citation discloses that its method does not require excess heating/cooling equipment and reheating/re-rolling equipment as the steel is cast thin, hot rolled and then cooled and coiled. Thus there is no evidence of what matter would directly lead the skilled addressee to choose a particular combination of steel composition and thickness reduction. I do not find that the opposed claims lack an inventive step in light of JP 08-290242-A.
JP 09-122839-A (exhibit HRK-5)
The invention herein discloses a method of manufacturing a cast steel strip at specified conditions of temperature, reduction ratios and cooling rates and also indicates that it is exploiting phase transformation behaviour to obtain cast steel of desired mechanical strength. I had found under novelty that the feature 5 had not been disclosed for the specified steel composition. This feature relates to the hot rolling deformation of the cast steel strip within a certain temperature range and a reduction ratio less than 15% and should be applied to the opposed steel composition. Given the problem faced by the skilled addressee, there is no indication of what would lead to:
·In the case of Practical Embodiment 1, where the correct rolling temperature is disclosed - choice of a reduction ratio below 15% and choice of the opposed steel composition.
·In the case of Practical Embodiment 2, where the opposed steel composition is disclosed – choice of a reduction ratio below 15% and choice of hot rolling instead of cold rolling.
The citation discloses that its method does not require excess heating/cooling equipment and reheating/re-rolling equipment as the steel is cast thin, hot/cold rolled and then cooled and coiled. Thus there is no indication of what would direct the skilled addressee to choose a particular combination of steel composition, specific thickness reduction, and hot deformation of the cast steel strip within a certain temperature range. I do not find that the opposed claims lack an inventive step in light of JP 09-122839-A.
JP 06-335706-A (exhibit HRK-6)
This citation discloses a method of manufacture of cast steel sheet with a specified composition, and conditions of casting, cooling, hot rolling, further cooling and coiling. Under novelty, I had determined that feature 3 of the opposed invention lacked disclosure. Thus the opposed steel composition is not disclosed. The citation discloses minimal equipment relating to casting a thin steel strip, followed by cooling/hot rolling and final cooling prior to coiling. Given the problem set out in the opposed specification, there is no indication of what matters would lead the skilled addressee, possessing the relevant cgk to seek the relevant composition of the hot rolled steel sheet. I find that claims 1 to 7 of the opposed application do not lack an inventive step in light of JP 06-335706-A.
AU-A-77417/94 (exhibit HRK-7)
The invention disclosed herein refers to both a cast steel sheet as well as a process of producing a cast steel sheet. I had determined that this citation had not disclosed feature 5 which stated, “hot deforming the strip cast through said pinch rolls at a temperature comprised between 1000 and 1300oC until reaching a thickness reduction less than 15%, in order to encourage the closing of the shrinkage porosities”. Thus the skilled addressee looking to provide minimal equipment and energy consumption from casting to coiling as defined in the problem would, when looking at this document in light of the cgk find that the process defined therein provides the results sought. The citation teaches away from the need for a hot rolling reduction step. I had determined under novelty that, " the citation does not indicate that hot rolling is necessary for the working of the invention of the citation and neither does it indicate a suitable temperature range if rolling were carried out.” Facing the problem set out in the opposed specification, there is no indication of what matters would lead the skilled addressee, possessing the relevant cgk to seek to include the hot rolling reduction step, within a suitable temperature range, as an essential feature of the invention. Thus the opponent has not established that claim 1 of the opposed invention lacks an inventive step in light of the citation. Thus I find that claims 1 to 7 of the opposed invention possess an inventive step in light of AU-A-77417/94.
AU-A-20853/95 (exhibit HRK-8)
This citation discloses production of steel sheet via casting and in-line rolling (hot deforming) to a reduction ratio of 5 to 50%, followed by coiling of the resultant sheet. Under novelty considerations I had determined that feature 3 of the opposed invention had not been disclosed. The citation discloses (fig 1 and related parts of the description) the use of equipment for casting, hot rolling and coiling for producing a thin sheet with excellent mechanical strength (317 to 458 MPa – tensile strength). Facing the problem set out in the opposed specification and having regard to the prior art, there is no indication of what would directly lead the skilled addressee to seek the composition of the invention for the hot rolled cast steel sheet. I do not find that claims 1 to 7 of the opposed application lack an inventive step in light of AU-A-20853/95.
CONCLUSION
The opponent pursued grounds of novelty and inventive step. I have found that claims 1 to 7 of the opposed invention are novel in light of the citations raised by the opponent. I have also determined that the claims of the opposed invention possess an inventive step in light of the common general knowledge alone as well as the common general knowledge when combined on an individual basis with the citations raised against novelty. The opponent has been unsuccessful on all grounds.
I direct that the application be sealed after twenty-eight (28) days from the date of this decision. If the Commissioner of Patents is served with a notice of appeal from this decision before that time, I direct that sealing not occur until the appeal has been decided or discontinued.
COSTS
Both parties indicated that costs should follow the event. The power of the Commissioner to award costs is based on section 210 and regulation 22.8. The opponent has been unsuccessful under novelty and inventive step in regard to claims 1 to 7 of the opposed invention. Accordingly I award costs against the opponent Castrip LLC and in favour of the applicants Acciai Speciali Terni SpA and Voest-Alpine Industrieanlagenbau GmbH.
Jacob Elijah
Delegate of the Commissioner of Patents21 September 2006
Patent attorneys for the applicant : Shelston ip, Sydney
Patent attorneys for the opponent : Griffith Hack, Melbourne
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