Corus Aluminium Walzprodukte GmbH v Pechiney Rhenalu

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 709909 in the name of Pechiney Rhenalu

Title: AlMgMn Alloy Product for Welded Construction with Improved Corrosion Resistance

Action: Opposition to an amendment of the application by Corus Aluminium Walzprodukte Gmbh

Decision: Issued 17 November 2005
Abstract

The opposition was conceded by the applicant on two points. On the point that came to hearing, the opposition fails because any lack of fair basis (and consequently of in substance disclosure) does not arise as a result of the amendment.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 709909 by Pechiney Rhenalu, and an opposition to an amendment of the application by Corus Walzprodukte Gmbh

BACKGROUND

Patent application number 709909 in the name of Pechiney Rhenalu was advertised accepted on 9 September 1999. A notice of opposition was filed by Corus Aluminium Walzprodukte Gmbh on 8 December 1999. That opposition has not yet been heard.
On 20 March 2002 Pechiney requested amendment of the application. Following examination, the request was advertised on 4 July 2002. A notice of opposition to the amendment was filed by Corus on 4 October 2002. The present decision relates to this opposition to the amendment. The service of evidence was completed on 17 March 2005. The matter was heard in Canberra on 13 October 2005. Pechiney was represented by Ms Shahnaz Irani, patent attorney of Spruson & Ferguson. Corus was represented by Mr Bruce Caine of counsel, assisted by Virginia Beniac-Brooks and Ray Evans of Phillips Ormonde & Fitzpatrick. Professor Ian Polmear and Dr Martin Schmidt also attended on behalf of Pechiney.
THE AMENDMENT
The amendment proposes the replacement of several pages of the description, and the insertion of a new set of claims. The key claim is claim 1, which is reproduced below.
GROUNDS OF OPPOSITION
The statement of grounds and particulars specifies the amendment is not allowable under sections 102(1), 102(2)(a) and 102(2)(b). The particulars do not address section 102(2)(a), and focus on the issues that the amendment would introduce limitations on the amounts of Mg and Zn, would remove limitations on the amount of Cr, another broadening of claim 1, and some clarity matters.
The opposition revolves around 4 simple issues:
a)magnesium: claim 1 changes the lower limit of the magnesium content
b)chromium: claims 1 and 2 no longer refer to the chromium content
c)zinc: claim 2 changes the lower limit of the zinc content
d)fatigue strength
The fatigue strength issue was not pursued. At the hearing, Ms Irani conceded the issues relating to chromium and zinc, and undertook to make amendments in relation to these matters. Consequently, the only issue for determination relates to magnesium.
EVIDENCE
The evidence in support of the opposition consists of declarations by Clive Geoffrey Bennett, Anthony Samuel Malin and Brendon Aston Parker. The evidence in answer consists of a declaration by Ian J. Polmear. The evidence in reply consists of further declarations by Bennett, Malin and Parker.
THE SPECIFICATION
The specification relates to aluminium alloys of the AlMgMn type. Specifically, the alloys have properties that make them suitable for welding applications such as in ship building and vehicle manufacture. The alloys have a defined composition, and a specific microstructure.
Claim 1 (as proposed to be amended and as accepted) is as follows. Text inserted as a result of the amendment is shown underlined. Text deleted as a result of the amendment is shown with a strikethrough.
An AlMgMn aluminium alloy product for welded mechanical construction with the composition (% by weight): ~~3.0~~ 4.7 < Mg < 6.5, 0.2 < Mn <1.0, Fe <0.8, 0.05 < Si <0.6, Zn < 1.3, ~~possibly Cr 0.15~~ and/or one or more of the elements Cu, Ti, Ag, Zr, V with a content of < 0.30 each, other elements and inevitable impurities < 0.05 each and < 0.15 in total, characterised in that the number of Mg₂Si particles between 0.5mm and 5mm, in size is between 150 and 2000 per mm², ~~and preferably between 300 and 1500 per mm²~~.
DECISION
The relevant law
This opposition relates to the operation of section 102 of the Act, the relevant parts of which read:
(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.
(2) An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2) or (3).
Both parties were in agreement that the test of “in substance disclosed” in section 102(1) is similar to the test for fair basis. It is not necessary to refer to the cases that support this conclusion.
As a result of the amendment
The key issue is that an objection under either sub-section 102(1) or (2) is only available if a deficiency arises “as a result of the amendment”. Pre-existing deficiencies that are merely repeated by the amendment do not give rise to a ground of opposition.
The question that must be answered is whether, as a result of the amendment to claim 1, the claims as a whole would not be fairly based on (and as a consequence would claim matter not in substance disclosed in) the specification as filed. The restricted magnesium content in the new claim 1 falls entirely within the scope of that before amendment. To the extent that the new claim 1 may be lacking in fair basis, that problem does not arise as a result of the amendment, and must logically have been the case in relation to the claim before amendment. Further, there is no suggestion that the narrower range represents a selection. Consequently, any lack of fair basis (and consequently of in substance disclosure) does not arise as a result of the amendment.
In substance disclosed
As a result, it is not necessary to decide whether the magnesium content is in substance disclosed. In relation to the submissions that were made I note that the bulk of the evidence was directed to the fact that the specification does not indicate any significance that attaches to the figure of 4.7%. It is fair to say that the specification is wholly silent on any significance to be attached to the value of 4.7. This would not be fatal to the applicant’s case. The question is whether there is an in substance disclosure of the range of 4.7 to 6.5%, not a disclosure of the words “4.7 to 6.5%”. This is a matter that can be addressed as a fair basis matter during the hearing under section 59, if Corus wish to pursue the point.
CONCLUSION
The amendment, in so far as it relates to the magnesium content, is allowable. However, the parties have agreed that the opposition succeeds in relation to chromium and zinc.
Costs
I allow each party 21 days from the date of this decision to file written submissions in relation to costs.
Dr S.D.Barker
Delegate of the Commissioner of Patents
17 November 2005
Patent attorneys for the applicant : Spruson & Ferguson
Patent attorneys for the opponent : Phillips Ormonde & Fitzpatrick

[2005] APO 52

18 November 2005