Chocolate Makers International Pty Ltd v Chocolate Images Pty Ltd
[2000] APO 41
•6 June 2000
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Petty Patent : No. 691155 in the name of CHOCOLATE MAKERS INTERNATIONAL PTY LTD
Title: Chocolate with Raised Design
Action: Application for extension of term under section 69; Notice by CHOCOLATE IMAGES PTY LTD under section 28(1); hearing
Decision: Issued .
Abstract
The petty patent found to be invalid on the ground that the invention as claimed does not involve an inventive step.
No inventive step conferring subject matter identifiable in the specification.
Application for extension of the term of the petty patent refused.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Petty Patent Number 691155 in the name of CHOCOLATE MAKERS INTERNATIONAL PTY LTD, application under section 69 for an extension of the term of the petty patent, and notice under section 28(1) filed by CHOCOLATE IMAGES PTY LTD.
BACKGROUND
Petty Patent Application No. 48501/97 in the name of Chocolate Makers International Pty Ltd (hereinafter referred to as CHOCOLATE MAKERS) was filed on 19 December 1997, as a further application (divisional) of Patent Application No. 25618/97, claiming priority from provisional application PN 9432 filed on 22 April 1996. Application No. 48501/97 was sealed on 7 May 1998 as Petty Patent No. 691155.
CHOCOLATE MAKERS filed a section 69(1) application on 6 April 1999 to extend the term of 691155.
Chocolate Images Pty Ltd (hereinafter referred to as CHOCOLATE IMAGES) late filed a section 28(1) notice on 20 April 1999 having been granted an extension of time to do so under the provisions of section 223(2)(a).
Following the filing by CHOCOLATE IMAGES of evidence to support the section 28(1) notice, CHOCOLATE MAKERS filed evidence in response on 29 September 1999.
Further material was filed by CHOCOLATE IMAGES on 8 March 2000 and at the hearing.
I heard the matter in Canberra on 13 March 2000. CHOCOLATE MAKERS was represented by patent attorney Mr James Grant Adams of Fisher Adams Kelly and CHOCOLATE IMAGES by patent attorney Mr Wayne Alexander Slater of Pizzeys.
I note that petty patent no. 691155 is the subject of pending proceedings before the Supreme Court of Queensland for infringement and counterclaim for revocation.
THE NOTICE
The notice under section 28(1) relies on the following grounds:
a. That the patentee was not entitled to be granted the petty patent;
b. That the invention is not a patentable invention because it does not comply with paragraph 18(1)(a) or (b) of the Patents Act;
c. The specification does not comply with section 40(2) or (3) of the Patents Act.
EVIDENCE
The initial evidence filed in support of the section 28(1) notice consists of statutory declarations by:
- Wayne Alexander SLATER (with Exhibit WAS-1), patent attorney;
- Michael SMITH (with Exhibits MS-1 to MS-5), a resident of Australia who states that he is employed by Richard Foot Pty Ltd which is an Australian agent for the CHOCO-PRINT system of CHOCO-PRINT AG in Switzerland.
The initial evidence in response consists of a statutory declaration by:
- James Grant ADAMS, patent attorney.
Further material, filed just before or at the hearing, consists of :
(1) Statutory declarations by:
- Wayne Alexander SLATER (the second Slater declaration with Exhibits WAS-1 and WAS-2);
- Michael SMITH (the second Smith declaration);
- Marie GRANT, a resident of Australia, who states to running and owning a chocolate manufacturing business in Brisbane for the last seven years and to have worked for 20 years in the chocolate and confectionery industry (copy only of this declaration filed).
(2) "Witness statements" (copies only filed) said by Mr Slater to have been filed with the Supreme Court of Queensland in relation to a revocation action concerning Australian standard patent no. 583969 in the name of CHOCOLATE MAKERS. These statements are by Australian residents Donald JARMAN (chemist and consultant to the food industry), Ian CHARLTON (engraver and principal of the firm "Computer Engraving), Peter McGREGOR (engraver and Director of Darcy Engraving Pty Ltd), Barry DIAMOND (Director of Barwell Machine Tools Pty Ltd), Frank BELUCCI (Director of Bell Dies Pty Ltd), and Yakov SMAGARINSKY (a Director of Manglesi Pty Ltd). Each statement is signed but none are witnessed.
(3) Signed (but not witnessed) statements by Paul Adam and Steen Andersen.
Additional further material, filed on 27 March 2000 (after the hearing), consists of:
(1) Original of the Grant declaration referred to above;
(2) Statutory declarations by:
- Paul Mark ADAM, a resident of Australia who states that he is the proprietor of Otello and Duplessy Bralin Chocolates;
- Steen ANDERSEN, a resident of Australia who states that he is a Director of Jepska Enterprises Pty Ltd
- Hendrik TUYNMAN, a resident of Australia who states that he is the Managing Director of Jehbco Manufacturing Pty Ltd which trades under the name of Jehbco Silicones.
I allowed Mr Adams time to respond to the evidence late-filed by CHOCOLATE IMAGES and he did so by letter received 19 April 2000.
THE SPECIFICATION
The specification indicates that the invention relates to a method of producing a chocolate product having a thin layer of letters or other designs formed thereon of a different coloured chocolate than the rest of the chocolate product.
The invention is said to overcome a number of problems associated with a prior art process for producing such a product. In that prior art process the designs are engraved in cavities in a single mould plate for forming the “design” layer of one colour chocolate and then the “backing ” layer of a different colour chocolate is spread over the mould plate by hand. The product is then cut into squares. The operation of that process is said to be laborious and characterised by a high rejection rate and consequent low productivity even if performed by a skilled operative.
The invention is then described as comprising the steps of :
engraving patterns in a first mould plate, formed from engraving plastic laminate by computer assisted engraving, the patterns being a mirror-image of the desired design on the product;
introducing into each engraved pattern sufficient liquid chocolate of a first colour to fill each engraved pattern;
removing any excess chocolate of the first colour from the first mould plate;
placing a second mould plate, formed from silicon rubber or polyurethane, in non-slip contact, on the first mould plate, the second mould plate having at least one mould cavity of pre-selected shape therein in register with the or each engraved pattern;
introducing liquid chocolate of a second colour into each mould cavity to cover the chocolate of the first colour;
cooling both chocolate materials in the mould plates to solidify and bond them together;
removing the chocolate product from the mould plates.
It is said to be preferable that:
A plurality of identical patterns are engraved in the first mould plate and a respective mould cavity for each engraved pattern is provided in the second mould plate;
one chocolate layer is white or cream and the other is brown;
each mould cavity in the second mould plate has an inclined or bevelled side wall to enable a chocolate product to be easily stripped from the second mould plate.
Preferred embodiments of the invention are described with reference to figures 1 to 7 of drawings.
THE CLAIMS
“1. A method of forming a chocolate product having a thin raised design thereon of a different colour than the rest of the chocolate product, said method comprising the steps of:
engraving at least one pattern in a first mould plate, formed from engraving plastic laminate by computer assisted engraving, the pattern being a mirror-image of the desired design on the product;
introducing into the or each engraved pattern sufficient liquid chocolate material of a first colour to at least fill the or each engraved pattern;
removing any excess material of the first colour from the first mould plate;
placing a second mould plate, formed from silicon rubber or polyurethane, in non-slip contact, on the first mould plate, the second mould plate having at least one mould cavity of pre-selected shape therein in register with the or each engraved pattern;
introducing liquid chocolate material of a second colour into the or each mould cavity to cover the chocolate material of the first colour;
cooling both chocolate materials in the mould plates to solidify them and bond them together; and
removing the resultant chocolate product so formed from the mould plates.
2. A method as claimed in Claim 1 wherein:
a plurality of identical patterns are engraved in the first mould plate and a respective mould cavity for each engraved pattern is provided in the second mould plate.
3. A method as claimed in Claim 2 wherein:
the or each mould cavity in the second mould plate has an inclined or bevelled side wall to enable the chocolate product to be easily stripped from the second mould plate.”
SUBMISSIONS
I summarise Mr Slater’s main submissions, on behalf of the informant as follows:
Manner of Manufacture
The claims do not define a manner of manufacture since they a directed to a mere collocation of known integers each of which performs its own hitherto well known function. Thus, mould plates formed from engraving plastic laminate by computer assisted engraving were known in Australia before the priority date, as were mould plates formed from silicon rubber or polyurethane. Combination of the two known features produces a non-synergistic and predictable result.
Novelty
The invention as claimed is not novel in the light of each of the following patent documents:
(a) US 4501544, T. Akutagawa, (Exhibit WAS-1), published 26 February 1985
This document refers at column 1, to a prior art process for moulding a chocolate block having an ornamental relief pattern using an upper mould having one or more through openings in which chocolate is cast onto chocolate contained in an engraved mould cavity of a lower mould.
Column 4 lines 48 to 64 discloses the use of an upper mould made of synthetic resin. Column 6 lines 20 to 23 refers to resilient material such as synthetic resins or rubbers . Column 5 lines 55 to 62 describes the upper mould as having tapered walls to facilitate removal by inversion of the mould.
(b) US 4480974, T. Akutagawa, (Exhibit WAS-1), published 6 November 1984
At column 4 lines 56 to 58 of this document a scraper 7 is described as being made of a resilient material, for example a rubber or a synthetic resin so that the teaching of a second mould formed of a synthetic resin is a teaching of a second mould made of a resilient material.
While the above Akutagawa patents do not explicitly refer to computer-assisted engraving, this was the predominant technique used in commercial engraving at the time of publication of these patent documents. There were only two techniques which were used at this time namely, computer-assisted engraving and pantograph engraving. Computer-assisted engraving was vastly preferred for its productivity benefits. It is therefore a necessary inference from these documents that the engraving would have been carried out by computer-assisted engraving or pantograph engraving, preferably computer-assisted engraving. It would be routine or typical for the engraving to be carried out on an engraving plastic laminate.
The Akutagawa Patent (4501544) states that the moulds may be manufactured from a resilient material such as synthetic resin or rubber. Polyurethane and silicon rubber are synthetic resins or rubbers. There is no novelty in choosing a specific resin or rubber when the genus of synthetic resins or rubbers are disclosed.
There is no doubt that the second mould plate in the Akutagawa patents is in non-slip contact with the first mould plate. This is clearly necessary for the moulds to perform their function properly. Further Fig. 3 of US 4480974 shows that the surface of the second mould plate is roughened, at least around the entry of the mould openings. This amounts to a specific feature which has the function of resisting slipping of the mould plates relative to each other (see column 5 lines 25 to 65).
Inventive Step
Prior to the priority date it was common general knowledge (CGK) in Australia, in the art of making speciality chocolates to use rubber mat moulds and to engrave moulds with pre-selected designs. Thus it would have been obvious to the person skilled in the art to combine the teachings of either of the aforementioned Akutagawa patents (taken separately) with the CGK in the art to arrive at the presently claimed invention.
I summarise Mr Adams’s main submissions, on behalf of the patentee as follows:
Manner of Manufacture
The invention is not a mere collocation of known integers. Thus, even if each integer is well known separately, a patent for a combination of integers may be valid provided that the combination itself is new - see the Full High Court's discussion at pp. 269-273 in Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd reported at 34 IPR 256.
In the method of the present invention there is an interworking relationship between the first and second mould plate. In order for the desired result to be achieved, the first and second mould plates are placed "in non-slip contact " and the mould cavities of the second mould plate must be in registry with the respective engraved patterns on the first mould plate.
Novelty
The present invention is novel in the light of each of the cited Akutagawa patents (US 4501544 and US 4480974) neither of which discloses the essential features of the present invention of computer-assisted engraving, non-slip contact of the moulds, or the upper mould being of silicon rubber or polyurethane.
Inventive Step
The present invention is characterised by an inventive step since it involves more than "mere workshop variations" over the cited prior art documents - see R.D. Werner & Co. Inc. v BaileyAluminium Products Pty Ltd (1989) AIPC 90-568.
Even if the matters alleged to be common practice were indeed shown to be so, the notifier has not proven that it would be obvious to combine the steps of the method together.
In determining inventiveness it is not permissible to apply ex post facto analysis of the claims (see Minnesota Mining& Manufacturing Co. v. Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at 293).
DECISION
The only grounds pursued at the hearing were manner of manufacture, novelty and inventive step. Before considering the issues relating to those grounds, I shall first determine which features of the claimed invention that I consider to be essential.
Essential Features
A feature can be regarded as not essential if it does not have a material effect on the way in which the invention works. However, claims are to be given a purposive construction and initially it is to be assumed that all features of independent claims are essential (Catnic Components v Hill &Smith, [1982] RPC 183).
Claim 1 of 691155 can be broken down into the following features:
(A) A method of forming a chocolate product with a raised design thereon of a different colour than the rest of the chocolate product,
which comprises:
(B) introducing into a first mould plate,
(C) sufficient liquid chocolate of a first colour to fill engraved patterns in the first mould plate,
(D) removing any excess chocolate of the first colour from the first mould plate,
(E) placing a second mould plate in non-slip contact on the first mould plate,
(F) with the second mould plate having mould cavities in register with each of the engraved patterns of the first mould plate,
(G) introducing liquid chocolate of a second colour into each mould cavity to cover the chocolate of the first colour
(H) cooling both chocolate materials in the mould plates to solidify and bond them together, and then
removing the chocolate product from the mould plates,
and wherein:
(J) the first mould plate is formed of engraving plastic laminate, and
(K) the patterns in the first mould plate are formed by computer-assisted engraving,
and wherein:
(L) the second mould plate is formed of silicon rubber or polyurethane.
Each of features (A) to (L) above appears to have a material effect on the way in which the invention works. Given that, I find each of features (A) to (L) to be essential features of the method of the invention.
Manner of Manufacture
The notifier’s submissions on this ground assert that in the method claimed in 691155, the first and second moulds each perform no more than their own hitherto well known function.
On this point, I agree with the submissions made on behalf of the petty patentee that the contact between the mould plates and the alignment of the mould cavity in the second mould plate with the engraved pattern in the first mould plate means that they do not function independently of each other. Also, the method of the invention results in a product having an integrated raised design, whereas if the raised design portion and the other portion of the product were made in separated moulds an additional step would be required to unify the two portions.
I consider that in the context of the method of the present invention there is an interworking relationship between the first and second moulds.
I find that the notifier has not established that the invention as claimed does not define a manner of manufacture.
Novelty
The generally accepted test for anticipation is the “reverse infringement” test as set out in Meyers Taylor Pty Ltd v. Vicarr Industries Ltd (1977) 137 CLR 228 at 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
Infringement of a patent occurs when each and every one of the essential integers of the claim have been taken (Rodi and Wienenberger AG v. Henry Showell Ltd [1969] RPC 367).
To establish anticipation all that is required is to see whether if one is to carry out the teaching of the prior document, that action would inevitably constitute an infringement of the patent in suit. It is not necessary that the prior art be equal in practical utility or disclose the same invention in all respects as the patent in suit. (Decision of the English Court of Appeal in Glaverbel SA v. British Coal Corp. [1995] F.S.R. 254 at 256).
The citations relied on in evidence and in submissions for asserting lack of novelty are US Patents 4501544 and 4480974 (the Akutagawa patents). Each of these documents discloses a method for automatically moulding a chocolate block having an ornamental pattern, using first and second moulds, wherein the moulds may be made from resilient material such as synthetic resins or rubbers (polystyrene, polycarbonate or a metallic material are suggested for the first mould and also for the second mould).
Both of the Akutagawa patents disclose a two-mould system but neither discloses explicitly (or in my view implicitly):
- either mould having a pattern formed by computer-assisted engraving in an engraving plastic laminate ;
- either mould being formed from silicone rubber or polyurethane;
- the materials for the first and second moulds having been selected so as to provide non-slip contact between the surfaces of the moulds.
I have already identified each of those features as having a material effect on the way in which the invention of 691155 works.
I find that neither of the Akutagawa patents discloses all of the essential features of the invention the subject of the present action in such a way as to provide clear and unmistakable directions to perform the invention claimed in 691155, and I then conclude that the presently claimed invention is novel in the light of the disclosures of US Patent 4501544 and of US Patent 4480974.
Inventive Step
Having regard to the nature of the evidence filed and the submissions made, in order to determine whether or not the invention involves an inventive step, the Patents Act 1990 requires me to:
determine the art in which the invention lies;
determine what has been established as the relevant CGK in the art (if any) in the patent area before the priority date;
(iii) identify information in a citation (if any) which could have reasonably been expected to have been ascertained, understood and regarded as relevant to work in the art, and;
(iv) determine whether the invention as claimed would have been obvious to the person skilled in the art in the light of the common general knowledge considered separately or together with the information in the citation.
On the basis of the specification of 691155 and the surrounding facts, the technical problem underlying the present application was to devise an improved method for the manufacture of chocolates with a raised design of a different colour from the remainder of the chocolate material, characterised by high throughputs of defect-free product. This problem lies in the art, well established at the priority date, of manufacturing speciality or boutique chocolates.
In my view the person skilled in the relevant art in which the present invention lies is the manufacturer of speciality chocolates.
The initial questions I need to determine are whether:
(a) moulds with designs produced by computer-assisted engraving, and
(b) the use of silicon rubber moulds with through cavities
were CGK in the art of making speciality chocolates in Australia at the priority date?
(a) At the hearing, Mr Adams conceded that computer-assisted engraving per se was well known in Australia at the priority date.
Australian Patent No. 583969 (Gary John Green) published 25 June 1987, discloses a method (using a single mould) for making a chocolate product with a raised design wherein the pattern in the mould is created by computer-assisted engraving. The copies of the signed but not witnessed statements by Jarman, Charlton, McGregor, Diamond, Belucci and Smagarinsky are clearly of less probative value than if they were in the form of properly executed statutory declarations but are nevertheless indicative that computer-engraving was CGK in the chocolate manufacturing industry.
I am satisfied that the totality of the material before me on this point establishes that computer-assisted engraving was CGK in the art of making speciality chocolates in Australia at the priority date.
(b) In the Tuynman statutory declaration dated 18 March 2000, he states (in part):
"My company has sold silicone rubber sheets and other silicon rubber products to customers in Australia for over 20 years. One of the products we sell is silicone rubber sheeting.
Our customers include a variety of chocolate manufacturers one of which is Cadburys chocolates.
Over the years and certainly prior to 1996 we have sold large amounts of silicone rubber to customers in the chocolate making industry. The extent of these sales tells me that the use of silicone rubber moulds for use in chocolate manufacture is generally very wide spread.
I am aware that some of our customers who have purchased sheets of extruded silicone rubber of a thickness of two to five millimetres from us have used this silicone rubber for chocolate moulds. More specifically they have punched openings or mould cavities in the silicone rubber sheets which they have purchased from us to produce a mould mat or mould plate.
I verily believe that the use of silicone rubber moulds and particularly confectionery moulds has been widespread in Australia for over 20 years."
In the Grant declaration dated 14 March 2000, she states (in part):
"I currently work in the chocolate or confectionery industry in Australia. I have worked in this industry for a total of 20 years. I have lived in Australia for the last 13 years.
I initially learned about the chocolate industry by attending courses in Canada and Switzerland.
I run a chocolate manufacturing business in Brisbane which I have owned and run for seven years. The business makes chocolates with logos or impressions or designs thereon.
I am aware of the use of mould plates formed from silicon rubber having mould cavities or openings of pre-selected shape therein in the manufacture of chocolates. Typically, these mould plates are flexible. I have been aware of silicon rubber mats or moulds of this general type for many years."
In the Andersen declaration dated 19 March 2000, he states (in part):
"My company specialises in the manufacture and marketing of confectionery such as marzipan, chocolates and candy.
In April 1995 Mr Mike Smith of Richard Foot Pty Ltd visited our company and demonstrated the CHOCO-PRINT chocolate making process to us. Mr Smith advised that he was an agent for Chocoprint AG, a Swiss company who developed the process.
The CHOCO-PRINT system includes a silicone rubber mat defining a plurality of mould openings for chocolate which is mounted on a base plate. Logos are printed on a transfer sheet which is placed on the base plate. Thereafter the rubber mats are placed on the base plate and chocolate is poured into the mould openings. When the chocolate is removed from the mould the logos are mounted on the face of the chocolate."
In the Adam declaration dated 22 March 2000, he also states that Mr Smith demonstrated the CHOCO-PRINT process in April 1995. He goes on:
"I am of the belief that the mould used in the CHOCO-PRINT process is a silicone rubber mould.
The idea or concept of using a silicone rubber mat with apertures of the type used in the CHOCO-PRINT process is not new. I first saw these types of moulds in Basel in Switzerland in 1978.
I personally have used these types of moulds in my chocolate shop in Australia over the last 22 years."
In the Smith declaration dated 5 June 1998, he states (in part):
"My company first became involved with the CHOCO-PRINT process back in May 1992.
In about mid 1992 Chocoprint AG forwarded some brochures and an export list to us. Annexed hereto as Exhibit MS-2 is a copy of these documents.
These documents were inspected by prospective customers in Australia in 1992 in non-confidential circumstances. The brochures were made freely available to anyone who expressed an interest in the products. Page 5 of the brochure clearly shows rubber moulds defining an array of mould openings, each corresponding to the outline of a chocolate product. Pages 6 and 7 of the brochure give the 1992 price list including the prices of the rubber moulds.
My company obtained further brochures on the CHOCO-PRINT process in 1994 from Chocoprint AG. Annexed hereto as Exhibit MS-3 is a copy of this brochure. The brochure clearly shows the use of rubber mould.
In July 1994 my company placed an order with Chocoprint AG for CHOCO-PRINT products and equipment for making same. This order included an order for rubber mats which were subsequently imported into Australia by my company. Annexed hereto as Exhibit MS-4 is a copy of this order.
In September 1994 my company entered into written correspondence with Haighs Chocolates of Parkside in South Australia regarding their manufacture of chocolate products according to the CHOCO-PRINT process."
I am satisfied that the totality of the material before me on this point establishes that the use of silicon rubber moulds with through cavities was CGK in the art of making speciality chocolates in Australia at the priority date.
I am satisfied that information in each of the identified citations US 4501544 and US 4480974 could reasonably have been expected to have been ascertained, understood and regarded as relevant to work in the art.
The solution proposed by the applicant, to the above-stated technical problem underlying the present application, was to employ a two-mould system wherein the pattern in the lower mould is formed by computer-assisted engraving of engraving plastic laminate, the second mould plate is formed from silicon rubber or polyurethane, and the upper and lower mould plates are non-slip on contact.
At the hearing Mr Adams submitted that the invention of 691155 should be viewed as a true “combination”.
In 3M v Beiersdorf (supra), Aickin J at page 293 said:
"In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of perhaps many possibilities, which must be shown to be obvious."
In Fallshaw Holdings Pty Limited v Flexello Castors and Wheels plc, (1993) AIPC 91-018 at 39,555, the Full bench of the Federal Court said:
"There can be no subject matter … in a mutual relation which is already well known; inventiveness must lie, if at all, in the improvement which is claimed to have been effected in respect of one of the integers. Only if a change to an integer so transforms the combination as to establish what is truly a new mutual relation in the operation of the integers will it be correct to see the improved result as a new combination.
In our opinion, therefore, it is necessary in this case to consider whether the substitution of a multi-start thread for the previously used single-start thread was obvious.”
In the present case the mutual relation, between the lower mould with engraved design and the upper mould with through cavities in a method for making a chocolate product with a raised design of a different colour from the remainder of the chocolate material, was known at the priority date by way of the disclosures of the aforementioned Akutagawa patents. Consequently it is necessary for me to consider whether it was obvious for:
the design(s) of the lower mould plate to be created by computer-assisted engraving, and
the upper mould plate to be made of silicon rubber or polyurethane, and
the lower and upper mould plates being in non-slip contact.
Firstly, I address the question as to whether the pattern(s) of the lower mould plate being formed by computer-assisted engraving confers inventiveness?
I have already found that computer-assisted engraving was CGK in the art in Australia at the priority date. On behalf of the notifier it has been submitted that realistically the only choices for the method of engraving were the “computer-assisted technique” or the more labour-intensive “pantograph technique”. That view is supported by the copies of the signed statements by Jarman, Charlton, McGregor, Diamond, Belucci, and Smagarinsky. That none of those statements are witnessed detracts from their probative value. However, none of the material filed by the patentee, including the specification of 691155, indicates that computer-assisted engraving was a choice of engraving technique made other than from a few possibilities.
From the material before me, I conclude that specifying the computer-assisted technique as the engraving means was purely a matter of commercial choice from a small number of alternatives. Such a choice involved no more than routine evaluation of factors such as cost and quality without recourse to the exercise of inventive ingenuity.
Secondly, I address the question as to whether the upper mould plate being formed of silicon rubber or polyurethane confers inventiveness?
In describing a preferred embodiment of the invention, the specification of 691155 at page 5 lines 24 to 30 states:
“The second mould plate 20 (see FIG 5) is formed from a sheet of silicon rubber … . A suitable silicon rubber sheet is sold under the trade mark ELASTOSIL RTV by Wacker Chemicals … (In an alternative embodiment, the second mould plate 20 is formed from polyurethane or other inert plastics material).”
In the context of the present invention it appears from the above that “polyurethane “ is disclosed as a technical equivalent to “silicon rubber”.
In both of the Akutagawa patents (US 4501544 and US 4480974), synthetic resin is said to be a suitable material for the mould plates. I have already found that the use of silicon rubber moulds having through cavities was CGK in the art in Australia at the priority date. In my view the non-inventive person skilled in the art would have considered it worthwhile trying silicon rubber as a suitable material for the upper mould.
Thirdly I address the question as to whether placing the upper mould in non-slip contact with the lower mould confers inventiveness?
In the description of 691155, at lines 5 to 10 it is stated:
“Suitable spigot/hole combinations 22,13 may be provided at the corners of the mould plates 10,20, to ensure accurate register of the two plates together.
Alternatively, the physical characteristics of the plastics materials of the two mould plates 10,20 may ensure that the mould plates have a non-slip contact when brought together.”
If, as I have found above, the use of silicon rubber would have been considered worth trying because of its widespread use in moulds for making chocolates, the fact that it was non-slip I consider to be merely a bonus effect (see Asahi Kasei Kogyo KK v WR Grace & Co. (1992) AIPC 90-847 at page 38,089). There again it seems to me to be likely that one reason why silicon rubber was used for the mould in the CHOCO-PRINT process was because it did not slip when brought into contact with the transfer sheet. Whereas in the invention of 691155 silicon rubber may well be the most advantageous choice as the material for the upper mould, I have no evidence before me to suggest that any such advantage was in any way surprising in view of the known properties of silicon rubber.
If a claim is a mere technical equivalent of a citation, it will not be inventive.
"Nothing to my mind, would be more undesirable than that persons should be stopped … from using materials which it is also established would lie readily to their hand, and would come to their mind as being likely materials to use."
Philips (Bosgra's) Application, (1974) RPC 241 at page 251.
I believe that the non-inventive person skilled in the art, having come across the disclosures of the two-mould system disclosed in each of the Akutagawa patents would have ascertained them as relevant to solving the problem addressed by 691155. Further, I believe that substituting the specific CGK in the art integers “computer-assisted engraving” and “silicon rubber”, for the more generically designated integers “engraving” and “synthetic resin”, does not so transform the combination disclosed in each of the Akutagawa patents so as to establish what is truly a new mutual relation in the operation of the integers. That is, the combination of the present invention retains the same functionality as the combination disclosed in each of US 4501544 and US 4480974 in the context of the problem sought to be solved by 691155.
Looked at another way I have come to the opinion, in the light of the disclosures of US 4501544 when considered together with the CGK in the art in Australia at the priority date, that in terms of the approach expressed in R D Werner & Co v. Bailey Aluminium Products (1989) 85 ALR 679 at 688-689, “there has been neither a difficulty overcome nor a barrier crossed”. Similarly with respect to US 4480974.
I find that the invention defined by claim 1 does not involve an inventive step.
With respect to Claim 2 of 691155, Figs 2 and 5 of US 4480974 show a plurality of identical patterns engraved in the mould plate, and Figs 3,4 and 5 show respective mould cavities.
With respect to Claim 3 of 691155, the feature of each mould cavity in the second mould plate having an inclined or bevelled side wall is shown in the Figs 4 and 5 of US 4480974.
I find that the remaining dependent claims (2 and 3) do not add any features which might confer inventiveness and by the same reasoning as for claim 1 do not involve an inventive step.
CONCLUSION
I am satisfied that petty patent no. 691155 is invalid on the ground that the invention as claimed does not involve an inventive step.
I note the provisions of section 69(4). However, since I am unable to identify any subject matter in the specification that could allow the above deficiency to be overcome by suitable amendments, I consider that it is not appropriate for me to allow the petty patentee an opportunity to amend.
I refuse to grant an extension of the term of the petty patent.
COSTS
Under section 210(d) the Commissioner is empowered to award costs against a party to proceedings before the Commissioner.
In his letter dated 19 April 2000, Mr Adams submitted:
" … we believe that whatever the outcome of the section 28 proceedings, the patentee should be awarded costs in this matter as the late introduction of the Andersen/Adam/Grant/Tuynman material was detrimental to the effective deposition of the matter at the scheduled hearing on 13 March 2000. It must be further borne in mind that the hearing was deferred from 28 January 2000 at the request of the notifier, who had ample time to collect and serve any evidence."
I agree that the late filing of material by the notifier would have caused inconvenience and expense to the petty patentee. On the other hand, in the event I have found the petty patent to be invalid.
In the circumstances, I consider it appropriate that each party in these proceedings bear their own costs.
Alan Moore
Delegate of the Commissioner of Patents
Patent attorneys for the section 69(1) applicant : Fisher Adams Kelly, Brisbane
Patent attorneys for the section 28(1) notifier : Pizzeys, Bundall
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