Cecil S.A. v Malcolm John Royal
[2003] APO 53
•21 November 2003
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 689529 in the name of CECIL S.A.
Title: Method and Materials Giving Termite Protection to Buildings
Action: Opposition by MALCOLM JOHN ROYAL under Section 59 of the Patents Act 1990
Decision: Issued 21 November 2003.
Abstract
The opponent raised the grounds of novelty, inventive step, manner of manufacture and section 40/fair basis.
Under section 40/fair basis the opponent identified lack of sufficiency, clarity and fair basis of certain specified claims. None of these matters were proven.
In the matter of lack of novelty the opponent had raised nineteen citations against the opposed claims. One citation was not proven to be publicly available. Of the remaining eighteen citations, thirteen citations did not relate to building protection against termites and were not considered for novelty. The remaining five citations did not establish lack of novelty of claims 1 to 17 of the opposed application.
The five citations mentioned above were also considered individually when combined with the established common general knowledge for inventive step. The ground of lack of inventive step was not established.
The opponent was also unsuccessful on the ground of manner of manufacture.
Costs awarded against the opponent, Malcolm John Royal and in favour of the applicant, Cecil S.A.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 689529 by CECIL S.A. and opposition under Section 59 of the Patents Act 1990 by MALCOLM JOHN ROYAL.
BACKGROUND
Cecil S.A. filed patent application No. 689529 on 28 December 1994 under the Patent Cooperation Treaty. The application claims convention priority from FR 9400179 filed in France on 5 January 1994. The application was examined and advertised accepted on 2 April 1998.
Malcolm John Royal filed a notice of opposition on 21 July 1998. A statement of grounds and particulars was filed on 21 October 1998. The service of evidence in support, and evidence in answer was completed on 26 March 2001. Evidence in reply was not filed.
The hearing to deal with the substantive opposition was held in Canberra on 24 July 2003. Dr Charles Tansey and Dr David Osborn, both patent attorneys of Baldwin Shelston Waters, Sydney, represented the applicant. Mr David Macbeth, patent attorney of Phillips Ormonde & Fitzpatrick, Melbourne, represented the opponent.
EVIDENCE
Evidence in support consists of declarations made by:
· Thomas Peter Anderson, dated 23 February 2000 and exhibits TPA-1 to 21. He states that he is employed as Technology Manager with Crop Care Australasia Pty Ltd. and is currently involved in development of new technology and improved formulations. He says that he:
1. Holds a Bachelor of Applied Science (Chemistry) from the Queensland University of Technology and is a member of the Royal Australian Chemical Institute.
2. Previously worked for Incitec Limited and has over twenty years experience in formulation development for agricultural chemicals and development of novel controlled release technologies for agricultural chemicals including pesticides.
3. Is well familiar with the techniques employed in the development and use of controlled release technology for insecticides including the use of insecticide impregnated polymeric films.
· David Paul Macbeth, dated 21 February 2000 and exhibits DPM-1 to 3. He states that he is registered patent attorney with the firm Phillips Ormonde & Fitzpatrick, Melbourne.
Evidence in answer consists of declarations made by:
· Guy Marcotte, dated 2 January 2001 and 22 March 2001 and exhibits GM-1 to 7. He states that he graduated as a chemical engineer from the National Institute for Industrial Chemistry of Rouen, France in 1975. He also states that he was in charge of the R&D Dept. of Cecil SA, since 1991 and still supervises it today as Technical VP of the CONDAT group of which Cecil SA is an affiliate company. He further states that he is the joint inventor of the method, which is the subject matter of the opposed AU patent application.
· Peter Ross Meadows, dated 26 February 2001 and exhibit PRM-1. He states that he possesses over 30 years experience in the pest management industry and is currently a director and senior consultant in the firm of Peter Meadows Consulting Pty Limited which provides consultancy services in pest management. He lists his qualifications and experience as follows:
1. Holds a degree in Agricultural Science and is a qualified biologist.
2. Accredited pest management industry competency assessor.
3. Over 30 years of extensive field experience in all forms of pest control.
4. Industry representative on the Standards Australia committees that produced the Australian Standards on termite control, significant sections of which was written by him.
5. Recognition as an expert by Standards Australia and asked to comment on overseas termite standards submitted to Standards Australia.
6. Over 20 years of extensive experience in dealing with termite infestation and damage claims.
THE SPECIFICATION
The specification under consideration is the accepted specification. The specification states:-"The present invention relates to the preventative protection of buildings against termites." The specification then describes the prior art and its deficiencies. The aims/objects of the invention are set out as:
"…a method for the protection of buildings against termites, which method is put into effect during the construction of the buildings themselves, and which is characterised in that said protection is permanent and complete, even though it makes use of new generation termicides, this combination of properties hitherto being considered to be impossible."
Further prior art and defects thereof is discussed in terms of specific patent documents. This is followed by the consistory statement of the invention, which is similar to claim 1. A detailed description of the invention is provided followed by embodiments. The specification ends with seventeen claims. Key method and product claims are as follows:
1. A method for the protection of buildings against termites, comprising laying, prior to the erection of the building, over the entire building surface exposed by digging operations, including foundations, a film of plastic material which is impregnated throughout with an insecticide compound, the entire arrangement allowing the insecticide to diffuse slowly.
11. A method according to any one of claims 1 to 10, wherein, additionally, the building site is filled with a mixture of a substrate of normal filler and granules or materials of similar geometry of plastic material impregnated with insecticide, at the level of the zones where the film is either deliberately perforated or risks being accidentally perforated or interrupted.
14. Insecticide films when used in the method according to any one of claims 1 to 12.
15. Granules and analogous materials when used in the method according to either claim 11, 12 or 13.
16. Application of the methods, films or granules according to any one of claims 1 to 15 to one or more of new buildings, curative renewal treatments, preventative renewal treatments or protection of zones by deep vertical barriers.
17. A method for the protection of buildings against termites, substantially as herein described with reference to any one of the accompanying drawings.
STATEMENT OF GROUNDS AND PARTICULARS
The opponent raised grounds of novelty, inventive step, manner of manufacture, and section 40/fair basis. At the hearing the opponent stated they would specifically address grounds of inventive step and section 40/fair basis, but this did not signify that the grounds of novelty and manner of manufacture were withdrawn.
DECISION
Both parties made oral submissions at the hearing and I shall refer to those submissions wherever relevant in my decision.
Claims Construction, section 40/Fair Basis
The issues raised by the opponent in the statement of grounds and particulars and submissions have been summarised as follows:
1. The complete specification does not describe or sufficiently describe the invention including the best method known to the applicant of performing the invention as claimed in the claims having regard to the following:
(a) The claims require that the plastic material be impregnated throughout with an insecticide compound. There is no description of the best methods involved in impregnating the plastic material.
(b) The claims require that the plastic material is laid prior to erection of the building. There is no description of the best method or appropriate timing for laying plastic material, nor how much the plastic material should overlap (if any).
(c) Claim 1 lacks sufficiency as the term "diffuse slowly" has not been clearly defined.
2. The claims are not clear and succinct for the following reasons:
(a) (i) Claim 1 defines "…laying over the entire building surface exposed by digging operations, including foundations, a film of plastic material". The extent to which the film is laid over an entire building surface exposed by digging operations is not clear, as there is no indication as to what constitutes the entire building surface.
(ii) Claim 1 does not define the meaning of the term "slow diffusion" and does not provide any limitation on the rate of slow diffusion.
(b) Claim 2 is unclear as it is not clear what is intended by "overlapping sheets which project substantially at ground level."
(c) Claim 3 is unclear because it is not known what is meant by "analogous (co)polymers".
(d) Claim 7 is unclear as there is no reference to "carbamate" in claim 6.
3. Claim 1 is not fairly based on the matter described in the specification for the following reasons:
(a) Claim 1 is overly broad. It claims any form of plastic material whereas only polyethylene is exemplified.
(b) Claim 1 claims the use of any insecticide. The specification only shows data for two insecticides, namely permethrin and benfuracarbe.
I shall consider the above matters in serial number order. Item 1 relates to Section 40 (2) of the Patents Act which requires:
"A complete specification must:
(a) describe the invention fully, including the best method known to the applicant of performing the invention; and…"
The opposed specification at page 8, line 24 onwards, specifies the polymers from which plastic sheets are extruded and also indicates that the insecticide is incorporated into the plastic compound prior to its extrusion into a sheet. This is followed by a disclosure of various suitable insecticides and of the granules containing insecticide. The drawings and related detailed description thereof disclose the laying of sheets and the overlapping thereof. I consider that there is sufficient detail in the specification to enable the skilled addressee to determine when to lay the plastic material and the extent of overlap. Though the opponent's declarant does not express any difficulty with understanding of "slow diffusion", for the other matters, he states that:
"The opposed patent application is devoid of any details on the manufacturing process of the film or granules described. There is no teaching on the details of the extrusion processes or indeed the selection of polymers or materials used. There are no teachings on the issues of temperature sensitivity of the various insecticides during process or compatibilities with the various types of polymers claimed. In my view the application is deficient, as it does not provide sufficient details on the method of manufacture of the claimed invention."
The applicant submitted that sufficient teaching had been provided in the specification regarding production of the film (page 8) and the list of insecticides to be used (page 9). The applicant also said that if they (the applicant) had asserted that the films were not known, then the description would be insufficient. However as the films were known, the instruction of the specification when combined with the common general knowledge in the art would enable the skilled addressee to put the invention into practice. In the matter of "slow diffusion" the declarants of both parties are of the view that the system should be effective for at least ten years and maybe up to twenty years.
The opponent's declarant refers to lack of details of manufacture of extruded plastic sheets. The specification at page 8, line 32 states:
"The production of the film is carried out starting from this compound by hot extrusion-blowing or by extrusion, it being possible for either one of these extrusion methods to be followed, optionally, by hot-pressing and analogous processes known to the person skilled in the art."
Clearly, the reference is to those skilled in the art of extrusion processes. The Courts have dealt with this issue - see Osram Lamp Works Ltd. v Pope's Electric Lamp Co. Ltd., (1917) 34 RPC 369 at page 391, where it was stated:
"Where questions of interpretation or sufficiency arise, the court must ascertain the persons to whom the specification is addressed, and when the specification deals with technical matters, must instruct itself as to the technical knowledge which those persons may reasonably be supposed to have possessed at the date of the Patent ... These persons may be assumed to possess not only a reasonable amount of commonsense, but also a competent knowledge of the art or arts which have to be called into play in carrying the patentee's direction into effect."
and further:
"... in carrying out the directions given by the patentee it may well be necessary to call in aid more than one art. Some of the directions contained in a specification may have to be carried out by skilled mechanics, others by competent chemists. In such a case, the mechanic and the chemist must be assumed to co-operate for the purpose in view, each making good any deficiency in the other's technical equipment."
Extruded plastic sheets are well known and the details of their manufacture would be well known to the skilled addressee in the plastics manufacturing field. The opponent's declarant has focussed on the compatibility of the insecticide with the plastic and its temperature sensitivity during the extrusion process. The onus is on the opponent to prove their case (see the Court of Appeal in Dunlop Holdings Ltd.'s Application (1979) RPC 523). The applicant has conceded that the sheet is known. The opponent has not provided evidence to show that the sheet could not be manufactured by the skilled addressee using routine experimentation (in particular-a specification is not insufficient merely because some experiment of a routine nature is necessary to perform the invention-see Poseidon Industri A.B. v Cerosa Limited, (1982) FSR 209).
In the matter of "slow diffusion" the declarants of both parties are of the view that the system should be effective for at least ten years and maybe up to twenty years. Further there is no indication that the declarants for both parties find that the term "diffuse slowly" renders claim 1 insufficient or lacking in clarity. I do not consider that the opponent has shown the specification to be lacking in sufficiency.
I shall now consider item 2 which relates to the clarity of certain claims. Regarding claim 1 the opponent had stated that there was no indication of what constituted "the entire building surface". The relevant part of claim 1 states:
"…laying, prior to the erection of the building, over the entire building surface exposed by digging operations, including foundations, a film of plastic material…"
Clearly the claim refers to the building surface exposed by digging operations. If this statement lacks clarity the skilled addressee may refer to the description for clarification. The description (page 6 onwards) and drawings (figures 1 and 2) clearly show what is meant by the entire building surface exposed by digging operations. The drawings show the sheet covering the flat portion of the excavation as well as the sidewalls of the excavation and extending beyond that to lie flat (projecting horizontally outwards away from the wall) at ground level. None of the declarants have expressed any difficulty in understanding the meaning of this term. I do not consider claim 1 lacks clarity when it uses the term " the entire building surface". I have previously dealt with the issue of the term "slow diffusion" used in claim 1 and I do not find that this term causes claim 1 to lack clarity.
In the matter of claim 2 and the feature of "overlapping sheets which project substantially at ground level", I note that neither of the declarants have raised this as a clarity issue. The opposed description at pages 6 and 7 and in conjunction with figures 1 and 2 of the drawings disclose this feature, showing both the overlap of adjacent sheets and sheets projecting above ground level. I do not find that claim 2 lacks clarity by use of the term "overlapping sheets which project substantially at ground level".
The issue raised about claim 3 referred to the meaning of the term "analogous (co)polymers" when referring to "polyolefins, polyvinyl chloride and analogous (co)polymers". Both declarants have stated that they have read the opposed specification. The opponent's declarant, Mr Anderson has considered each claim but has not expressed any difficulty with the meaning of the term "analogous copolymer". The opponent has not shown where the lack of clarity lies, in particular any ambiguity or speculation that arises from the use of the term. The rules for interpretation of claims indicate that words should be given their plain meaning unless the specification provides a definition of the term in question.
The words of a specification should generally be given their ordinary English meaning (Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 478). The exception to this is that where a word or expression has a special meaning in the relevant art, then the specialised meaning should be adopted (Electric & Musical Industries Ltd v Lissen Ltd (1939) 56 RPC 23 at 41). This follows from the fact that the specification is read by a person skilled in the relevant art. This is brought out in many cases, exemplified by this quote from the decision of Lord Davey in the case of Patent Exploitation Ltd v Siemens Bros. 21 RPC 549:
"a specification like any other document should be construed by the Court according to the fair meaning of the language used after being informed by evidence of the nature of the subject-matter, the state of knowledge at the [priority] date of the patent, and the meaning of any scientific or technical terms that are in it."
Another exception to the plain meaning rule is that the specification may indicate a special meaning is to apply. A special meaning may only prevail over the plain and unambiguous meaning if the special meaning is clearly expressed. This is known as the dictionary principle.
The nature of the Dictionary Principle is reflected in British Thomson-Houston Company Ld. v Corona Lamp Works Ltd., (1922) 39 RPC 49 at page 67,"We have to scan the Specification with the closeness which is required in the case of any instrument conferring a monopoly, but, subject to this, all we can legitimately do is apply the ordinary rules for the construction of written instruments. One of these, which is relevant in the case before us, is that the instrument must be read as a whole. The Claiming Clauses, for example, are not to be taken as standing in complete isolation. For if the Patentee has used in these clauses expressions which he has already adequately interpreted in the body of his Specification, he is entitled to refer to the Specification as a dictionary in which the meaning of the words he uses has been defined."
The specification has not defined the term "analogous copolymer". I shall consider the plain meaning of the word "analogous" and apply it to the wording of claim 3. The Macquarie Dictionary, third Edition, reprinted 2001 provides the following definition for "analogous":
1. having analogy; corresponding in some particular.
The other definition provided relates to the biological field. The definition provided for "analogy" by the same dictionary states:
1. an agreement, likeness, or correspondence between the relations of things to one another; a partial similarity in particular circumstances on which a comparison may be based: the analogy between the heart and a pump.
2. agreement; similarity.
The other definitions provided lie in the fields of biology, linguistics and logic. Based on the above definitions, the meaning of "analogous (co)polymer" refers to (co)polymers that are similar, or correspond to or have a likeness to polyolefins and polyvinyl chloride. Neither declarant has specified that the use of this term prevented them from having a clear understanding of the claim or its ambit. I consider that in light of the above definitions and the statements of the declarants that claim 3 is not lacking in clarity by use of the term "analogous copolymers".
The next issue under item 2 for section 40 relates to a matter of antecedents where it is alleged that claim 7 is unclear as there is no reference to the term "carbamate" in claim 6. Claim 7 states:
"A method according to claim 5 or 6, wherein the carbamate is benfuracarbe."
Claims 5 and 6 read as follows:
5. A method according to any one of claims 1 to 4, wherein the insecticide is a termicide chosen from pyrethrins, carbamates, organohalogens, or organophosphorous compounds and the like.
6. A method according to claim 5, wherein the pyrethrin is permithrin (should read permethrin).
Thus claim 7 when appended to claim 6 clearly lacks clarity as claim 6 does not define a carbamate. The teaching of the courts regarding this matter of claim construction is that; where a claim is capable of more than one construction, then an absurd construction should be rejected in favour of an alternative construction (Henriksen v Tallon (1965) RPC 434). For instance see Lord Russell in EMI v Lissen, 56 RPC 23:
"…if possible, a specification should be construed so as not to lead to a foolish result or one which the patentee could not have contemplated".
In this particular case when claim 7 is appended to claim 5 the claim is clear as there is reference to carbamates and benfuracarbe is a carbamate. Thus as a choice of appendancy has been provided in claim 7 the skilled addressee would be able to make the right choice in terms of selecting a claim that is clear. The declarants of both parties have not raised a matter of clarity with regard to this claim, nor have they specified this claim as one that has presented an insurmountable problem in terms of claim construction. I do not consider that claim 7 lacks clarity and that on the right construction any perceived problem can be overcome.
In item 3, on fair basis, the opponent, identifies claim 1 as being broad in terms of:
a. Claiming any plastic material whereas only polyethylene is exemplified;
b. Claiming the use of any insecticide when data for only two insecticides, permethrin and benfuracarbe is provided.
The applicant contended that:
"Claim 1 was fairly based when subjected to the classic fair basis test as set out in Mond Nickel's Application 65 RPC 189. All limbs of the test were satisfied as the invention resided in a method for protection of buildings against termite attack. The specification shows how the invention is to be carried out and gives a broad disclosure of the plastics and insecticides to be used. There are no claimed features as to which the specification is wholly silent. The claims do not claim a plastic sheet impregnated with insecticide. The specification also satisfied the other test for fair basis - "Real and reasonable disclosure" - as set out in Rehm v Webster (1988) 81 ALR 79 at 95. It is plain on the face of the specification that the invention is fully described and that there is no need to exemplify each and every possible embodiment to support the claim."
Considering item 3a above I note that in claim 1 the term "plastic material" cannot be read in isolation from the rest of the claim. Claim 1 clearly indicates that the plastic material should be suitable for laying on building sites and also be capable of:
· being made into a film
· being impregnated throughout with an insecticide compound, and
· allowing the insecticide compound to diffuse slowly
The specification as whole is addressed to the person skilled in the art. The opponent contends that any plastic material is claimed whereas only polyethylene is exemplified. The claims indicate to the skilled addressee the requirements that the plastic must satisfy. Further if the skilled addressee is unsure they can resort to the body of the specification to seek clarification. The specification refers to plastic sheets being obtained by extrusion of polymers, particular examples being, polyolefins (such as polyethylene or polypropylene), polyvinyl chloride and analogous (co)polymers. There is no obligation on the applicant to describe more than a single preferred embodiment, see Ethyl Corporation v California Research Corp., (1970) AOJP 562. Further there is a real and reasonable disclosure in the specification of the plastics material for the purpose defined in claim 1. Thus I do not find claim 1 to be speculative and lacking fair basis when it defines, "…a film of plastic material…".
Now looking at Item 3b, claim 1 refers to "…a film of plastic material which is impregnated throughout with an insecticide compound,…". Claim 1 also indicates that it relates to a termite protection. Thus a skilled addressee reading the claims would be directed to insecticides suitable for use against termites. The description at page 9 discloses insecticides from the chemical families of pyrethrins and carbamates and also refers to organohalogens, organophosphorous compounds and known analogous products. The courts have taught that there is no obligation on the applicant to describe more than a single preferred embodiment, see Ethyl Corporation v California Research Corp., (1970) AOJP 562. Further there is real and reasonable disclosure in the specification of the insecticides for the purpose defined in claim 1. Thus I do not find claim 1 to be speculative and lacking fair basis when it defines, "…a film of plastic material which is impregnated throughout with an insecticide compound,…".
Thus the opponent has not proven that the opposed application does not satisfy the requirements of Section 40 and fair basis.
Novelty
The opponent submitted that the invention claimed in the opposed application lacked novelty in light of:
· documents listed in the declaration of Mr Anderson, and
· the known properties of plastic materials impregnated with an insecticide compound and to methods of protecting buildings against termites using such plastic materials.
The opponent's declarant provided exhibits TPA-3 to 21 in support of the ground of novelty. I note exhibits TPA-3 to 20 are documents that are freely available to the public. Exhibit-21 is a technical publication of a company manufacturing insecticides and there is no indication/evidence that this document was publicly available. (Information that is "publicly available" is information that the public has or can acquire by consulting some source open to it, i.e. material that can be inspected "as of right" by the public. It is enough that the information is available to a single person so long as that person is able to use the information freely without an obligation of confidence. See Gadd v Mayor of Manchester, (1892) 9 RPC 516 at page 527, Fomento v Mentmore, (1956) RPC 87 at page 105, Monsanto (Brignac's) Application, (1971) RPC 153 at page 159). I shall assess the novelty of the opposed application against documents TPA-3 to 20. These documents consist of 13 patent specifications, 1 patent abstract and four journal papers.
The applicant was of the view that none of the citations disclosed all the essential features of the invention and their declarant provided an assessment of the disclosures of each document against the claimed invention.
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).
I shall begin by assuming that all features of the independent claim are essential (Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183).
1. A method for the protection of buildings against termites, comprising
2. laying,
· prior to the erection of the building,
· over the entire building surface exposed by digging operations, including foundations,
a film of plastic material
3. which is impregnated throughout with an insecticide compound,
4. the entire arrangement allowing the insecticide to diffuse slowly.
The citations with exhibit numbers TPA-8 to 20 do not relate to building protection against termites and shall not be considered for the purposes of novelty. I shall now consider the issue of novelty of claims 1 to 17 against each of the following prior art documents.
AU-B-640256 Exhibit TPA-3, published 27 February 1992
The specification is directed to a method of producing a plastic, pesticide treated, termite barrier membrane. The barrier consists of two plastic sheets, with either one or both having faces treated with pesticide and the two treated faces being laminated face-to-face to enclose the treated faces. The description shows such laminated material being placed around the footings of a building structure and/or at strategic locations under the floor structure.
There is no disclosure of laying the material over "…the entire building surface exposed by digging operations, including foundations,…". Further the insecticide is not impregnated in the plastic sheet and there is no mention of the insecticide diffusing slowly through the plastic sheet.
The opponent submitted that their expert's evidence showed that the insecticide would diffuse through the plastic sheet. I note that no evidence (such as laboratory tests/experiments) has been provided but an assertion has been made. Even if the feature of diffusion were accepted as occurring, the other features have not been disclosed. I do not find that the opposed invention as claimed in claims 1 to 17 lacks novelty in light of AU-B-640256.
Japanese Abstract 89/51972 Exhibit TPA-4, published 22 July 1986
The abstract discloses an ant (particularly termite) control plastic resin moulding wherein the insecticide is incorporated in a plastic composition. The composition is moulded into a plate, tube, tape, sheet, etc. which is then used in the foundation, floor, walls, etc. of a building. It also discloses that the insecticide is mainly incorporated into the surface layer of the moulding.
Thus there is no disclosure that the insecticide is impregnated throughout the plastic and that the insecticide diffuses slowly though the plastic. Further there is no indication that the sheet covers the entire building surface exposed by digging and that the sheet is laid prior to the erection of the building. This document does not show that claims 1 to 17 of the opposed invention are lacking in novelty.
US 2899771 Exhibit TPA-5, published 18 August 1959
This invention provides a layered product consisting of a flexible relatively thin vapor barrier such as a polyethylene film coated with a flexible water soluble carrier (resin) impregnated with an insecticide. The layered product is laid only below the slab of the building (excluding walls and footings) and is not laid below the entire building surface. The insecticide is dispersed into surrounding areas by contact with moisture.
Thus the above document does not disclose a single sheet impregnated throughout with insecticide which diffuses slowly through the plastic. Also the sheet does not cover the entire building surface exposed by digging operations. I do not find that US 2899771 renders claims 1 to 17 of the opposed invention as lacking in novelty.
AU-A-62329/90 Exhibit TPA-6, published 14 March 1991 & AU-A-85176/82 Exhibit TPA-7, published 6 January 1983
A termite barrier is disclosed consisting of two sheets of plastics materials sealed along the sides and ends to form an envelope enclosing a layer of absorbent material impregnated with insecticide effective against termites. The barrier may be used as an underlay for concrete floors or as damp course for brick walls or footings. The termites come in contact with the insecticide when the facing sheet of the barrier is penetrated or ruptured, or when the insect penetrates the barrier sheet.
Thus a single plastic sheet impregnated throughout with insecticide which diffuses slowly has not been disclosed. Further there is no indication that the sheet is laid over the entire building site exposed by digging operations. I find that claims 1 to 17 of the opposed application do not lack novelty in light of AU-A-62329/90 and AU-A-85176/82.
Inventive Step/Obviousness
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."
Application of this test in light of Subsections 7(2) and 7(3) of the Patents Act 1990, would require:
· a determination of the problem sought to be solved by the opposed patent specification
· a determination of the non-inventive worker in the field (or the person of ordinary skill in the relevant art) in Australia
· a determination of the common general knowledge in Australia at the priority date (5 January 1994)
The problem identified in the opposed patent specification relates to long term protection of buildings against termites. The specification identifies that the solution sought should provide four essential properties. It says the simultaneous combination of these four properties was previously considered to be impossible and identifies the properties as:
1. Application prior to construction. (Termite protection)
2. Use of new generation substances. (approved insecticides)
3. "Complete" treatment (continuous "chemical barrier", therefore no unprotected paths).
4. "Permanent" treatment (no need to resort to preventative retreatments or curative treatments in the event of failure).
The problem lies in the area of termite treatments of buildings. The hypothetical non-inventive skilled worker in the field would consist of a team of workers such as builders, and chemists/pesticides experts specialised in the field of termite eradication.
The common general knowledge (hereinafter also referred to as cgk) 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."
The first step to applying the tests set out above for determining inventive step would involve the determination of those declarants who were persons skilled in the relevant art as set out above.
The opponent relied on the submissions of Mr Anderson for the ground of lack of inventive step. He indicates that his declaration is based on his own knowledge and experience in formulation development for agricultural chemicals and development of novel controlled release technologies for agricultural chemicals including insecticides. I consider that Mr Anderson could comment on pesticide formulations and slow release of insecticides but there is no indication that he possesses expertise in the field of building protection against termites. The applicant stated that Mr. Anderson was a patentee and hence was not the person of ordinary skill in the art. I note however that the relevant patents were granted/applied for in 1997/98. As the priority date lies in 1994, I consider that at the relevant date Mr Anderson would at least constitute the person of ordinary skill in the art for issues relating to slow release chemicals and pesticides.
The applicant relied on the declaration of Mr Meadows. This declarant has extensive experience in pest control including termite control. I consider that Mr Meadows constitutes the skilled addressee in the art. The applicant also put forth the declaration of Mr Guy Marcotte. Mr Marcotte is the joint inventor of the opposed invention but has not practised the art in Australia. He has provided material on the opposed invention and its working. However he has not been able to provide an indication of the state of the common general knowledge in Australia in the relevant art at the priority date.
The opponent submitted in the statements of grounds and particulars that the common general knowledge (henceforth cgk) in Australia before the priority date included:
· Knowledge that with certain polymeric materials that are impregnated with certain insecticides, then the insecticide is able to migrate to the surface through the plastic material.
· Plastic materials including films and granules, impregnated with insecticides are applicable to a wide variety of uses including use in the building industry and in other construction areas.
· The dose or concentration of the insecticide required is dependent upon the type of insecticide used, and the recommendations that are applicable for particular uses.
· The awareness of insecticidal products that are, or have been developed for use in buildings or foundations to control invasive insects.
· The documents listed for the ground of novelty of the opposed application
The opponent has not made clear that reference to insects/invasive insects definitely included termites. The opponent's declarant stated, "…as at the priority date of the opposed application there was already an awareness of insecticidal products being proposed, developed and possibly sold or placed under buildings or foundation for control of termites. The chemical, physical and insecticidal properties and activity of insecticides used for controlling termites was common general knowledge at the priority of the opposed application as was knowledge regarding migration of such insecticides through and out of various polymers."
The applicant conceded that slow release films for insecticides were known but did not agree that they were part of the cgk in Australia for termite control in buildings. Mr Meadows (declarant for the applicant) submits that before the relevant priority date:
· A stainless steel product TermiMesh was developed and was undergoing some limited use in Western Australia.
· On 1 July 1995 (priority date of the opposed application being 5 January 1994), the only two products that had undergone sufficient development and testing to allow for their inclusion in Australian Standard AS 3660.1-1995 (Protection of buildings from subterranean termites Part 1: New buildings) were TermiMesh and Granitgard, a crushed stone product through which termites could not pass.
· There were no flexible sheet plastic products, containing or carrying pesticides, on the market. I believe at that time that flexible sheet plastic products containing a termiticide would not have been considered a suitable option to protect buildings from termite invasion.
The opposed application acknowledges:
"Therefore, immediately prior to the present invention, the person skilled in the art understood:
· That it was necessary to provide a large surface area to diffuse a sufficient amount of product;
· That despite this precaution, the insect could reach the fibrous mat and penetrate it, which shows that the chemical barrier was considered to be inadequate; perhaps because of the immediate loss of product" by capillary attraction" into the ground.
Therefore the person skilled in the art was not directed towards a solution of the film or fibrous mat type but was diverted away therefrom."
The opponent has made several assertions regarding what constituted cgk in Australia before the relevant priority date. However there is no evidence to indicate that the documents cited for novelty considerations formed part of the cgk in Australia. The opponent's declarant says that these documents would have been ascertained understood and regarded as relevant but he does not show how these documents and/or their disclosures came to be considered as cgk in Australia.
In particular the courts have taught:
1. In general
"... 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 4822. 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.
None of the declarants have indicated that any of the cited documents were considered to be part of the cgk. Also no evidence has been provided to show that the skilled addressee in Australia had studied and made themselves familiar with the teachings of the documents in question. I consider that these documents did not form part of the cgk in Australia at the relevant date.
There is some disagreement regarding slow-release insecticide films but the applicant concedes that these films were known in Australia but not specifically for termite control. Based on the prior art documents provided there is no indication of the common usage/knowledge of slow release films for termite protection. The citations relevant to termite control do not disclose slow release films but do disclose insecticide on supports sealed between barrier sheets, or insecticide on the top layer of sheets. There is no supporting evidence to show that these documents formed part of the cgk in Australia at the relevant date.
Thus the only matter that I can consider as forming part of the common general knowledge in Australia is the knowledge of slow release insecticidal films for treatment of household and agricultural pests but not including termites. This conclusion is based on the expert opinion of Mr Meadows, who has had extensive Australian experience in termite control. He states at paragraph 19 of his declaration:
"I do wish to emphasise that termite control is so different from control of insects in agricultural crops. The most significant factor is the longevity of the systems designed for building control as compared to that in agriculture (my emphasis). I do not believe it would be a normal research step for a person seeking new ways of preventing termite invasion of buildings in 1994 to expect much help from information on products produced for agricultural use. For building control, the essential characteristics which might stimulate a person skilled in the art to try a particular type of insecticide delivered in a particular way would be if the prior art suggested longevity of action as required in the building environment. Such a term, in my view, needs to be at least 10 years and the longer that it can be effective the better."
Another matter raised by the applicant was that the skilled addressee would be aware that plastic sheets laid out on an excavation before a building was built would be subject to tears/ruptures/penetrations; either planned for plumbing, drainage, cabling or due to sharp objects. The opponent did not dispute or challenge this statement and I shall accept it as forming part of the cgk at the relevant date.
I now have to determine if all the documents raised against novelty of the opposed application would 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. As the citations variously provide for barrier protection and/or slow release of insecticide I consider that they would have been ascertained (except for the one whose publication has not been established - TPA-21) and understood by the skilled addressee. However only some of these citations relate to protection of buildings against termites. The rest relate to protection against household and agricultural pests. These citations do not refer to subterranean usage and the need to be secure against the persistence of termites. I consider that only those documents disclosing protection of buildings against termites (and whose publication has been established) would have been regarded as relevant. Consequently I shall assess the opposed claims against documents TPA-3 to 7 for lack of inventive step. I will now consider-in light of each document and the cgk combined on an individual basis-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.
Given the problem identified in the opposed application and the cgk set out above I do not consider that the skilled addressee when looking at each citation individually and combining it with the cgk would arrive at the claimed invention as a matter of routine. In particular there is no suggestion or teaching towards the selection of a plastic film impregnated throughout with a slow diffusing insecticide for incorporation across the entire building surface exposed by digging operations. The citations have variously disclosed sandwich films requiring insect penetration to reach the insecticide or in the case of the Japanese citation the insecticide is incorporated directly (only in a surface layer) into various materials. The citations teach use of plastic sandwich sheets below concrete slabs and at various locations but none identify that the whole site prior to building be covered by the sheet. Also none of the citations specifically identify slow diffusion. Given that the skilled addressee would be aware that plastic sheets can be torn or ruptured during construction (and also some planned cutting/penetration would be required for plumbing and drainage) there is nothing to indicate that they would select such a sheet knowing the behaviour of termites. Hence I conclude that the opponent has not proven that claims 1 to 17 of the opposed application lack an inventive step.
Manner of Manufacture
The opponent submitted the following in the statement of grounds and particulars:
1. That the alleged invention is not a patentable invention because it does not comply with subsection 18(1)(a) of the Patents Act (1990). The alleged invention for far as claimed in any claim is not a manner of manufacture within the meaning of Section 6 of the Statute of Monopolies having regard to the following:
(i) The claimed invention lacks any necessary quality of inventiveness.
(ii) It defines nothing more than the application of known materials to a known problem, and/or
(iii) It defines nothing more than a combination of integers with no interworking relationship; and
(iv) When considered on the face of the specification itself and/or in the light of the publication before the priority date of the claims of the documents listed hereunder, the specification does not disclose a new invention.
I will consider the issues raised in item 1(i) & (iv) above. The opponent has failed to show that the claims are lacking in novelty. They have been unable to establish the opposed invention as being obvious in light of the inventions disclosed in the citations raised when combined with the established cgk. Thus the opponent has relied on novelty and inventive step issues to support raising a ground of manner of manufacture. The teaching of the courts in Bristol Meyers v FH Faulding 46 IPR 553 at paragraph 45, Black CJ and Lehane J (Finkelstein J concurring) are pertinent:
"Indeed, there is in our view an element of unreality, in a case such as the present, even in posing the question in that form. Although Philips suggests that there may be such cases (it does not decide the question, because obviousness was not pressed), it is not easy to envisage circumstances in which a claimed invention may lack the threshold requirement of inventiveness, but yet involve (for the purposes of s 18(1)(b)(ii)) an inventive step. This is not a case, like Philips, where there was no attack on the patents on the ground of obviousness. It was, instead, a case where expert evidence, including evidence as to common general knowledge, was available (and was given). Where the Court has evidence on the basis of which it can make a finding about common general knowledge, and the other information referred to in s 7(2) and s 7(3), and about what would or would not have been obvious to persons skilled in the relevant art, it must be only rarely that it will be appropriate to find (by resort to a "threshold test") lack of inventiveness on the face of a specification. In our opinion this is not a case where such a finding is justified."
If this ground is consequential upon a finding of want of novelty or inventive step, it is fully encompassed by those other grounds – and a finding of lack of inventiveness on the face of the specification would not be justified. Regarding items 1(ii) & (iii) the opponent has not provided any supporting arguments. For the above reasons I consider that the opponent has been unable to show that the opposed invention does not constitute a manner of manufacture.
SUMMARY
The opponent has been unsuccessful on the grounds of fair basis/section 40, novelty, inventive step and manner of manufacture.
COSTS
Both parties submitted that costs should follow the event. The opponent has been unsuccessful on all grounds.
Consequently I find in favour of the applicant and award costs against the opponent, Malcolm John Royal.
Jacob Elijah
Delegate of the Commissioner of Patents21 November 2003
Patent attorneys for the applicant : Baldwin Shelston Waters, Sydney
Patent attorneys for the opponent : Phillips Ormonde & Fitzpatrick, Melbourne
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