Cpc International Incorporated v N B Love Pty Limited
[1992] APO 7
•3 March 1992
official notice
decision of a delegate of the commissioner of patents
Application : No. 542496 in the name of CPC INTERNATIONAL INCORPORATED
Title : Starch adhesives
Action: Opposition by N B LOVE PTY LIMITED under section 59 of the Patents Act 1952
Decision: Issued . the opposition succeeds because the specification does not include a best method of performance and is insufficient, the claims lack clarity, the invention as claimed is prior published and lacks novelty and inventive step.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Application No. 542496 by CPC INTERNATIONAL INCORPORATED and opposition by N B LOVE PTY LIMITED under section 59 of the Patents Act 1952.
BACKGROUND
The Office advertised acceptance of application number 542496 (CPC application) on 21 February 1985. N B LOVE PTY LIMITED (Love) opposed the grant of the patent and the Notice of Opposition was lodged on 10 May 1985. All evidence stages were completed by 14 August 1989.
The hearing was set down for 14 October 1991 in Sydney. Mr Robert Shelston of Carter, Smith and Beadle, patent attorneys, represented CPC International Incorporated (CPC) and Dr Ian Ernst of Shelston Waters, patent attorneys, represented Love. I allowed Mr Shelston to lodge a further written submission following the hearing. Dr Ernst lodged a written submission in reply.
The Notice of Opposition lists all the grounds available under section 59(1) of the Patents Act 1952.
SPECIFICATION
The CPC application was lodged on 25 March 1981 and published on 1 October 1981. It was a convention application with priority of 28 March 1980, based on Danish application 1343/80.
The subject matter of the invention relates to an adhesive consisting of starch, water and alkali in such proportions that the mixture contains between 10 and 40% by weight of starch solids and has a pH value of between 8 and 13, a gel point of between 52 and 75oC and a Stein-Hall viscosity between 20 and 120 seconds. It also relates to a process for producing the adhesive. The adhesive is used to make corrugated cardboard.
The invention is described on page 2 line 28 to page 3 line 37 as follows:
"It has been known for several years that adhesives containing starch may be used in the making of corrugated cardboard if at least part of the starch is ungelatinized and is suspended in an aqueous medium. However, ungelatinized starch is not self suspending in water as it precipitates in aqueous mixture. In contrast to this, gelatinized starch is suspended fairly readily in water, and the well known Stein-Hall process used this fact by first gelatinizing starch in an aqueous medium and then adding ungelatinized starch which sticks to the gelatinized starch and is in this manner kept suspended in the aqueous medium. In other words, these known adhesives contain two different starch components, the gelatinized one acting as a "carrier" for the ungelatinized component.......
Today, corrugated cardboard is made with these known adhesives at machine rates of up to 200 to 250 m/min, and 100 to 120 m/min in respect of heavier qualities. These high machine rates require that the adhesive, besides being viscous, has a very fast wet tack. By wet tack is understood the time that elapses from the application of the adhesive until fibre tearing occurs in the substrate applied. It is constantly desired to increase machine rates in the making of corrugated cardboard, and, in fact, machines are constructed which can process the paper at greater speeds, but in practice the wet tack obtainable with these known adhesives sets a limit to the production rate of corrugated cardboard at said speeds.
According to the invention we have found that the wet tack of the adhesive depends directly upon the heat added, the pressure applied and the gelatinization rate of the adhesive. By gelatinization rate is understood the rate at which the normal viscosity of the adhesive at the temperature of application is increased to the viscosity that produces fibre tearing. As the heat and pressure applied in the given machine are constant, it is thus the gelatinization rate of the adhesive which decides its wet tack and thereby the production rate of corrugated cardboard.
Contrary to the previous assumption, viz. that completely gelatinized starch practically does not contribute to the wet tack of the adhesive, it has now surprisingly been found that an adhesive with a greatly increased gelatinization rate and thereby shortened wet tack can be obtained by adding completely gelatinized starch to said one-component-adhesive containing partly swollen starch.
This is achieved with the adhesive of the invention which is of the type that contains starch, water and alkali in such proportions that the mixture contains between 10 and 40% by weight of starch solids and has a pH value between 8 and 13, a gel point between 52 and 75oC, characterised in that the starch consists of completely gelatinized starch and partly gelatinized starch in a weight ration (sic) of from 0.2:100 to 2:1, said ratio and the degree of gelatinization of the partially gelatinized starch so adapted that the Stein-Hall viscosity of the adhesive is from 50 to 120 seconds."
The description of the invention also includes 8 Examples illustrating the invention followed by 8 claims.
The claims include independent claim 1 to the adhesive, claim 3 to a process for producing the adhesive and 2 omnibus claims.
Claim 1
"An adhesive consisting of starch, water and alkali in such proportions that the mixture contains from 10 to 40% by weight of starch solids and has a pH value in the range of from 8 to 13 and a gel point in the range of from 52 to 75oC, characterised in that the starch consists of completely gelatinized starch and partially gelatinized starch in a weight ratio of from 0.2:100 to 2:1, said ratio and the degree of gelatinization of the partially gelatinized starch being so adapted that the Stein-Hall viscosity of the adhesive is from 50 to 100 seconds."
Claim 3
"A process for producing an adhesive according to claim 1 or 2, characterised by:
(a) combining completely gelatinized starch, ungelatinized starch and water in such proportions that the mixture contains a total of from 10 to 40% by weight of starch solids in the weight ratio of completely gelatinized starch to ungelatinized starch of from 0.2:100 to 1:1, adjusting the pH to a value in the range of from 8 to 13 and maintaining the temperature of the mixture within the range of from 52 to 75oC until it has reached a Stein-Hall viscosity of from 55 to 130 seconds, whereby the ungelatinized starch has become partially gelatinized, and then
(b) terminating the gelatinization reaction by adding a reaction inhibitor in an amount sufficient to result in the final composition having a gel point within the range of 52 to 75oC."
EVIDENCE
Evidence-in-support consists of a number of statutory declarations, some with exhibits. They are by:
Dr Michael Wootton, a senior lecturer in the School of Food Technology at the University of New South Wales, dated 29 September 1986;
Mr David Benjamin Marshall, a representative of Dundas Smith & Sons Pty Limited, distributor in Australia of the Brabender Viscograph, a device for the measurement of viscosity in starch, dated 20 March 1986;
Mr Raymond Bede Neale, a marketing executive of N B Love Industries, dated 7 October 1986;
Mr Terry Kriaris, a technical sales representative of N B Love Industries, dated 9 October 1986; and
Mr Raymond Stanley Lindner, a production manager of Fibreboard Containers during 1978 and 1979.
Evidence-in-answer consists of a statutory declaration, dated 12 August 1988, and exhibit by Mr Hans Henning Kofoed of CPC International Incorporated, a co-inventor of application 542496.
Evidence-in-reply also consists of a number of statutory declarations, some with exhibits. They are by:
Mr Kaljo Linke, a director of Fetive Pty Ltd a company involved in "providing technical and consulting services to corrugation and paper manufacturing industries", dated 31 July 1989;
Mr Brian James Warnes, manager of N B Love Starches (W.A.) Pty Ltd dated 2 August 1989;
Mr Brian James Warnes, manager of N B Love Starches (W.A.) Pty Ltd dated 10 August 1989;
Mr Robert Delasandro, a production manager of Visyboard Pty Limited, dated 21 July 1989;
Mr John Brown, a production manager of Smorgan Fibre Containers, dated 11 August 1989; and
Mr William Tracey Briston, a quality control manager of ACI Containers (now Visyboard) from 1972 to 1988, dated 31 July 1989.
DECISION
Dr Ernst's submissions on behalf of the opponent are, in summary, as follows:
a.Product claims 1, 2, 6 and 8 are not clear and the description insufficient.
b.Claims 3, 4, 5 and 7 as accepted are not fairly based.
c.Dr Ernst said that the product claims were not novel and lacked inventive step in the light of N B Love Industries Pty Ltd patent No. 519796 and the evidence.
Clarity and sufficiency
Dr Ernst submitted that the product claims were not clear and required amendment. Even if the claims were amended to specify that the viscosity is measured at a temperature of 35-48oC and from 15-30 minutes following completion of addition of reaction stopper they would, he said, still lack clarity.
This is, he said, because the viscosity of an adhesive of this kind, at any time after the reaction stopper is added, varies according to the equipment in which it is prepared and is especially dependent upon the size of the reaction vessel and the shear of the stirrer.
The effect of shear, Dr Ernst said, is clearly conceded by Kofoed in his declaration at paragraph 22:
"Final viscosity of starch-based adhesives are very dependent upon the stirring intensity".
The magnitude of the effect of shear is illustrated by Linke in his declaration at page 10, paragraph 4.11:
"4.11 Viscosity: Summary - in summary then, it will be seen that:
(1) Batch viscosity is a relative rather than an absolute measure.
(2) A batch of given peak Love cup viscosity, say 120 seconds/20oC might initially drop in batch viscosity to a stable level, say 40-50 seconds/20oC, then increase in viscosity with storage at a manufacturing plant to say 100 seconds/20oC drop in in (sic) viscosity when pumped into a tanker for delivery to say 40-50 seconds/20oC, increase in viscosity in storage at a corrugators plant to 75 seconds/20oC, and be applied in use from a tray at 20 seconds/20oC (10 seconds/38oC).
(3) Batch viscosity has no direct relationship to the viscosity in the application tray. Viscosity in the tray depends on adhesive storage history and corrugator plant variables.
(4) The viscosities given in the 200g examples of the CPC application must be regarded as relative and not absolute and ± 20 seconds in accuracy."
Unless shear is specified, Dr Ernst argued, no absolute property of the adhesive is defined. The description of the specification is fatally insufficient in this respect, he said. In addition the claims must clearly define the metes and bounds of the alleged invention.
The process for preparing the adhesive as broadly described, for example on page 4 lines 19 to 34 in step (b), is operated at a pH of between 8 and 13, etc., until the mixture has reached a Stein-Hall viscosity of between 25 and 130 seconds and then the reaction stopper added. This contradicts the best method of performance given in the Examples where, for example in Example 1 lines 18 to 21, "... the mixture was stirred and allowed to react for 15 minutes, and then 3 grams of boric acid (reaction stopper) were added, and after 15 minutes stirring the mixture was ready. The resulting adhesive had a Stein-Hall viscosity of 50 s ..." where the viscosity appears to be measured after the reaction stopper is added and the mixture stirred for 15 minutes. The viscosity is therefore measured under different shear conditions in the Examples than in the broad description and claim 3.
In my view, it is not clear from the description how, under what conditions and with what viscosity the adhesives are prepared.
In No-fume v Pitchford 52 RPC 243 Romer L.J. says at page 243:
"Be it observed from the very words I have used, that the patentee fulfils his duty if in his complete specification he describes and ascertains the nature of the invention, and the manner in which the invention is to be performed sufficiently and fairly. It is not necessary that he should describe in his specification the manner in which the invention is to be performed, with that wealth of detail with which the specification of the manufacturer of something is usually put before the workman who is engaged to manufacture it. Specifications very frequently contain mistakes; they also have omissions. But if a man skilled in the art can readily rectify the mistakes and can readily supply the omissions, the patent will not be held to be invalid. The test to be applied for the purpose of ascertaining whether a man skilled in the art can readily supply the omissions has been stated to be this: Can he rectify the mistakes and supply the omissions without the exercise of any inventive faculty? If he can, then the description of the specification is sufficient. If he cannot then the patent is void for want of sufficiency."
This inconsistency is reflected in the claims. Claim 3, for example, claims the process described by the broad description and claims 6 and 7 refer to adhesives produced by the Examples.
Mr Shelston contends that this contradiction is only apparent and is due to difficulties in translation from the Danish language.
Dr Wootton, in paragraph 12.4 of his evidence declares
"... I concluded from my experiments that no example described in the CPC specification falls within the scope of any claim of the CPC specification."
In paragraph 12.5 he declares
"The Stein-Hall viscosity that I obtained was in each case considerably lower than indicated in the CPC specification. It was in each case lower than 50 seconds Stein-Hall and in fact was lower than the Stein-Hall viscosity of the adhesive described in the N.B. Love Specification when made under the same conditions."
In paragraph 13 Dr Wootton declares that:
"With the exception of two examples with gel points of 75oC, the observed gel points I measured were substantially higher than those given in the CPC specification."
In paragraph 22 Dr Wootton declares
"The eight examples in the CPC specification as manufactured by me were of lower viscosity and higher gel point than the prior art N B Love adhesives I made. The adhesives manufactured by me by use of inadequate stirring (which had excessively great viscosities) were not homogeneous and did not appear to offer any advantage over the N B Love adhesives let alone any surprising advantage. The CPC specification is also silent as to actual machine rates achievable by use of the alleged invention other than to indicate in respect of example 2 that the machine rate which could be increased by 69% in comparison with a conventional "no carrier adhesive". Example 4 alleges that the adhesive thereof have a machine rate which could be increased by 38% in comparison with a conventional "no carrier adhesive". Prior to 1980 "No Carrier" adhesives were commonly used at 75m/min. on a double walled heavy weight board. Speeds of 100m/min. would have been exceptional. The adhesives of N B Love specification Example 2 having a machine rate of 150 metres per second could be said to have a machine rate showing an increase of between 50% and 100% in comparison with conventional "no carrier adhesive" i.e., of the same order as indicated in the CPC specification."
Mr Linke, in paragraph 19 of his declaration, also questions the results obtained in the CPC application Examples.
Mr Kofoed, in paragraph 21 and 22 of his declaration declares:
"21 .... The crucial thing is to follow the teaching of the CPC invention and let the reaction proceed until the mixture has reached a Stein-Hall viscosity of from 55 to 130 seconds before adding a reaction inhibitor (boric acid).
22. More important, final viscosities of starch-based adhesives are very dependent on the stirring intensity, so when Dr Wootton runs the stirrer as if for a conventional Stein-Hall adhesive, he would break up an adhesive according to the CPC invention."
In my view Dr Wootton has followed the process described in the CPC application but has not been able to reproduce the results described. There is inconsistency between the broad description of the invention and the Examples purporting to provide the best method of performance which I do not believe to be due to poor translation from the Danish. Under these circumstances, Dr Wootton could not, in my view, be expected to rectify any mistakes and supply any omissions in the specification, in these circumstances, to achieve the results described without the exercise of any inventive faculty.
In summary I find the requirements of section 40 of the Patents Act 1952 have not been met in that a skilled addressee would not be able to use the specification to obtain the product claimed. There has been no best method of performance described. The claims are also unclear due to the manner in which the invention has been described.
Fair basis
Dr Ernst argued that claim 3 is not fairly based because it has no basis in the specification as it exists or as lodged. The description at page 4 lines 29-33 states that the reaction inhibitor is added after gelatinization is initiated (by adjusting pH and temperature) and when viscosity reaches 25-130 secs Stein-Hall. The description does not provide a specific basis for selecting to continue partial gelatinization until the Stein-Hall viscosity has reached 55 secs as claimed in claim 3. The references to viscosity on pages 1a and 2 are to the prior art. The reference on page 3 line 36 is to the "batch viscosity" of the product. Also Examples 1-8 refer to the viscosity measured 15-30 minutes after the reaction inhibitor is added. There is no mention in the Examples of when you add the reaction stopper and this does not appear to be critical.
Mr Shelston argued that Danish to English translation difficulties have left the specification not clear in these aspects but that the claims were fairly based as the features are broadly described.
Dr Ernst also argued that claim 5 has no basis. The use of powdered completely gelatinized starch is not described on page 4 lines 10 to 18 in the manner claimed.
The Mond Nickel Company Ltd's Application (1956) RPC 189 decision provides the following rules for determining fair basis:
Is the alleged invention broadly described in the specification?
Is there anything in the specification which is inconsistent with the alleged invention as claimed?
Does the claim include as a characteristic of the invention a feature as to which the specification is wholly silent?
I have applied these rules to the claims of the CPC application.
Claim 3 is fairly based. It does not fail the first of the Mond Nickel rules because, although the description of the process is brief, claim 3 is broadly described in the specification. The problem is not one of fair basis of the claims but, as I have said earlier in the part of this decision on clarity and sufficiency, the problem is that invention has not been fully described including the best method of performance.
Claim 5 in my view claims the subject matter described on page 4 lines 10 to 18 and is fairly based.
The process of Claim 4 is broadly described and fairly based.
In summary, the claims are all fairly based on the description. The problem with the claims, as I have said earlier, is one of clarity not one of fair basis.
Prior Publication and Novelty
Dr Ernst said that the product claims were not novel and lacked inventive step in the light of N B Love Industries Pty Ltd patent No. 519796 (Love patent), published on 3 January 1980, and the evidence. He said that even if the product claims were amended to make them clear, that is to include a feature that viscosity is measured at 38-43oC after stirring for 15-30 minutes after the addition of reaction stopper, they would still be anticipated by the Love patent.
Dr Ernst argued that Mr Linke's declaration showed that the adhesives disclosed in the Love patent and the process used for their preparation were identical to that claimed in the CPC specification. He referred to paragraph 3.7 of Linke's declaration which provides a comparison of Example 1 of the Love patent with Example 1 of the CPC specification as follows:
Paragraph 3.7
"Love patent 519796 (and adhesives made and used in Australia prior to March 1980 in accordance with the teaching of the Love patent which I shall call 'Love adhesives') were starch adhesives having starch solids within the range 10-40% by weight of starch solids, a pH of from 8 -13 and a gel point in the range of from 52oC - 75oC. The Love adhesives are characterised in that they consist of completely gelatinized starch and partially gelatinized starch in a weight ratio of from 0:2:100 (sic) to 2:1.
In Table I, I set out by way of example the composition of example 1 of the N B Love specification and Example 1 of the CPC specification.
CPC Example 1 Love Patent Example 1
Fully gelatinized starch
15g starch 8.5% 22.5 Kg starch 9.2%
2.5 Kg CMC 1.0%
160g water 91.4% 220.0 Kg water 89.7%
175 g 99.9% 245.0 Kg 99.9%
Raw starch to be partially gelatinized
480 ml water 69.7% 900 Kg water 68.9%
205 g starch 29.8% 400 Kg starch 30.6%
4 g caustic 0.5% 13x0.46=5.98 caustic 0.5%
100.0% 100.0%
Ratio of fully gelatinized starch to partially gelatinized starch
15 g fully gelatinized 6.8% 22.5 Kg fully gelatinized
starch 5.3%
205 g partially gelat. 93.2% 400.0 Kg partially gelat. 94.6%
225 g422.5 Kg
CMC 2.5 Kg = 0.16%
1545 Kg"
The ratio of fully gelatinized to partially gelatinized starch of examples of the CPC application range from 0.5 to 6.8% of total starch."
CMC = Carboxy methyl cellulose, a thickener.
In paragraph 3.5, 3.6 and 3.8 Mr Linke declares that:
Paragraph 3.5
"..... Consequently, for low film thickness applications a mixture of starch with other lyophillic colloids is preferred. Those of ordinary skill in the art would recognise that Examples 1 and 2 of my patent incorporate in the final product 0.16% of carboxymethyl cellulose ("CMC") for that purpose. However, those skilled in the art would also understand that the addition or omission of such a minor amount of a carboxymethyl cellulose was optional being merely preferable if low film thicknesses were desired. .... The teaching and claims of the Love patent do not require more than one lyophillic colloid to be present, nor would any surprising advantage be obtained by excluding CMC (or any other incidental constituents)."
Paragraph 3.6
"I am aware that the CPC application claims an adhesive which 'consists' of starch, water and alkali.
The Love specification discloses examples which consist of starch, water and alkali but also include a clearly optional 0.16% of CMC. I do not consider that omission of 0.16% of CMC confers novelty on the CPC claims or results in an adhesive different in substance from that taught in the Love specification."
Paragraph 3.8
"As the compositions are substantially identical, I therefore understand Mr Kofoed to assert that "the CPC invention" resides in a love adhesive having 'a degree of gelatinization of the partially gelatinized starch of from 50 to 120 seconds Stein-Hall (measured at 38oC to 43oC)'."
Mr Linke, in paragraph 2.1 of his declaration, declares as follows
"I wish to make it clear that in my opinion:-
(a) The CPC Application does not in substance disclose any invention not disclosed in Love patent no. 519,796.
(b) The CPC Application does not in substance disclose any invention which had not been commercially used in Australia prior to 1980 on an extensive commercial scale.
(c) Any suggestion that the adhesive (or method of making the same) described in the CPC application is distinguishable in any matter of practical significance or substance from adhesives (or methods for manufacture) known and used in Australia prior to 1980 is untrue and utterly without foundation."
Mr Shelston acknowledged that the specification as lodged was anticipated by the Love patent but argued that the accepted CPC claims were a selection comprising a group of adhesives which solidify quicker on use. He said it was a non-obvious selection because the Love patent, which refers to thin film adhesives, directs the reader away from the range of batch viscosities the invention is based on. The invention, he said, is a two tier invention relating to:
.higher corrugator speeds attainable with higher rates of gelatinization; and
.simple criteria for establishing adhesives which have this property.
The Love specification is not relevant, Mr Shelston said, because it does not rely on starch as the only colloid and contains CMC. The thrust of the Love patent is to rheology and water holding capacity. It is directed towards low viscosity thin film adhesives from which water can be quickly evaporated. The selection is made on the basis of what had previously been contra-indicated and thought of as desirable and on previously unknown properties.
I accept Mr Linke's evidence about CMC in paragraph 3.5 (supra). The presence or absence of CMC in the mixture appears to be irrelevant to the present context.
I accept Mr Linke's evidence, in paragraph 3.6 of his declaration (supra), that the omission of CMC does not "result in an adhesive different in substance from that taught in the Love specification".
I am satisfied that the features of product claims 1, 2 and 6 are disclosed in the Love patent and that the CPC application is prima facie prior published by this patent.
I will now consider whether the conditions which allow a selection patent exist.
Dr Ernst referred to the words of Buckley J in the decision in E I Du Pont De Nemours (1981) FSR 377 when, in discussing selection patents, he referred at page 388, to I G Farbenindustrie A G's Patents (supra), where Maugham J said:
"It is clear, for example, that mere verification is not an invention (see Sharpe & Dohme Inc. v Boots Pure Drug Co. Ltd. (1928) 45 RPC 153). Where the method of manufacture is laid down in the originating patent the selection must not be an exact repetition of the same process coupled with a statement of the properties possessed by the selected bodies. No man can have a patent for ascertaining the properties of a known substance."
Dr Ernst argued that the CPC application was not a valid selection as the supposed advantages of the CPC application over the Love patent were not sustainable. He said that in order to salvage something of the invention the applicant had opted to restrict the viscosity range to 55-130 seconds Stein-Hall.
There are two issues for me to consider here. The first is the effect of the gelatinization rate of the adhesives and the second is the advantage of high machine speed and "one starting material" (page 5 lines 1 to 5).
Firstly the effect of the gelatinization rate of the adhesive is described on page 3 of the specification as follows:
"According to the invention we have found that the wet tack of the adhesive depends directly upon the heat added, the pressure applied and the gelatinization rate of the adhesive. By gelatinization rate is understood the rate at which the normal viscosity of the adhesive at the temperature of application is increased to the viscosity that produces fibre tearing. As the heat and pressure applied in the given machine are constant, it is thus the gelatinization rate of the adhesive which decides its wet tack and thereby the production rate of corrugated cardboard.
Contrary to the previous assumption, viz. that completely gelatinized starch practically does not contribute to the wet tack of the adhesive, it has now surprisingly been found that an adhesive with a greatly increased gelatinization rate and thereby shortened wet tack can be obtained by adding completely gelatinized starch to said one-component-adhesive containing partly swollen starch."
Mr Kriaris states that gelatinization rates of the CPC application are an implicit parameter of the Love patent adhesives. In paragraph 8 he declares
"... N. B. Love Australian Patent 519,796 teaches every aspect of Application 542,496. Although no examples disclosed in N. B. Love Patent 519, 796 have viscosities of greater that 55 seconds Stein-Hall, the patent as a whole clearly teaches that the rheology and flow characteristics of the adhesive (of which viscosity is an important aspect) may be varied according to the requirements of the plant.
Specification 542,496 asserts that 'it has now been surprisingly found that an adhesive with a greatly increased gelatinization rate can be obtained by adding completely gelatinized starch to partly swollen starch'.
The prior art to which I have referred combines a completely gelatinized starch and a partially gelatinized starch and gelatinization rate is an implicit parameter of such mixtures...."
In my view Mr Linke has shown, in paragraph 3.7 (supra), that the adhesives of both specifications are substantially the same. The CPC application has therefore, by specifying the gelatinization rates as the inventive step, merely ascertained a property of known substances (the Love adhesives) and has not passed Buckley J's test.
Secondly the CPC application describes the advantages of high machine speed on pages 2 and 3 (supra) and of one starting material, on page 5 of the specification, as follows:
Page 5
"This process offers the advantage that only one starting material is used, viz. ungelatinized starch so that it is not necessary to provide separate tanks for each component. Moreover it ensures completely homogeneous dispersion of both components in the mixture.
The second advantage is also achieved if step (a) of the invention is replaced by an addition of completely gelatinized starch powder in step (b)."
Mr Delasandro, of Visy Board Pty. Limited, refers in his declaration to the preparation and use of the N. B. Love adhesives of the type referred to by Mr Kriaris in his declaration. Mr Delasandro also declares in paragraph 15:
"There is now shown to me Exhibit RD-1 which I identify as a report in 'Board Converting News" dated 10th July 1989 of a shift run at Visy Board's Warwick Farm plant in Sydney during which a new world record running speed of 804 feet/minute was established for a corrugating machine.
The record was established using an N. B. Love starch adhesive of substantially the same kind as described by Mr Kriaris and used by this company since 1979. The improved running speed was due to improvements in machinery and not to improvements in the adhesive. The viscosity of the adhesive at application was below 30 secs. Love Cup at 38o - 42oC."
In my view the CPC application does not provide any advantage over the adhesives of Love patent and does not meet the conditions necessary for a selection patent. It is clear from Mr Warnes evidence that the Love adhesives have machine rates which are at least equivalent to the CPC adhesives. It is also clear that the starting materials of the CPC adhesives are the same as those for the Love adhesives.
Mr Shelston, in his written submission dated 15 October 1991, states that
"We now concede that the product claims require amendment to specify that the viscosity is measured at the defined temperature range and after 15-30 min. stirring following addition of the reaction stopper; but given that qualification we now submit that there is no conflict between the claims, as the stirring could be expected to lower the viscosity.
Given that qualification, we would argue strongly for the retention of the product claims, which we tended to dismiss at the hearing because we were persuaded that they lacked novelty, as it was not appreciated that the final viscosity immediately after the final stirring of 50 seconds S.H. implies a high 55 seconds S.H. at the addition of the reaction stopper, being well above any corresponding figure disclosed or taught by the Opponent's evidence."
I do not accept that amendment of the claims as Mr Shelston suggests will overcome the prior publication as this proposal does not distinguish the CPC adhesive from those disclosed in the Love patent which prepares adhesives in this manner. The proposal further renders the product claims inconsistent with the process claims for reasons discussed earlier.
I find the product claims, that is, claims 1, 2 and 6, prior published by the Love patent.
The difference between the CPC process and the process of the Love patent is that the process of claim 3 of the CPC application determines the appropriate viscosity prior to adding the reaction stopper while the Love patent process involves viscosities measured 15-30 minutes after the addition of the reaction stopper and in the range claimed in the CPC application. This is confirmed by Mr Warnes, in paragraph 2 of his declaration dated 2 August 1989, where he states
"There is now shown to me Exhibit BJW-1 which I identify as a copy of a formulation sheet titled 'W.A. Corrugator Slurry' from the files of The Company. The sheet is dated in my hand '2/3/79' and signifies the date on which the formulation was given to me. There is now shown to me Exhibit BJW-2 in which I have elaborated upon the significance of each step of Exhibit BJW-1.
The batch viscosity of batches made in accordance with the procedure of BJW-1 is generally from 20 to 30 seconds Love Cup when measured from 15 to 30 minutes after addition of reaction stopper at which time the temperature is generally 38oC - 40oC.
However, it is and was in 1979 quite common for batch viscosity to reach 40 seconds Love Cup when measured under those conditions."
Claims 3 is not novel because even though the viscosity of the adhesives prepared by the Love process appears to be measured 15-30 minutes after the reaction stopper has been added, Mr Linke declares in paragraph 4.13 of his declaration (see below) that
"those of ordinary skill in the art reading the Love specification would understand that the degree of partial gelatinization is best controlled during manufacture by monitoring the viscosity during gelatinization and adding reaction stopper at the right stage as more particularly explained on page 6 lines 22-30 of the Love Patent".
The features of claims 4, 5, 7 and 8 are also disclosed in the Love patent.
In summary I find claims 1, 2 and 6 to be prior published by Australian patent no 519796 and claims 3, 4, 5, 7 and 8 to be not novel in the light of the same patent.
Inventive step
I have previously found the invention to be prior published and to lack novelty.
Consequently, the CPC adhesives and their method of preparation also lack inventive step.
conclusion
I have found the opposition succeeds because the specification does not satisfy the requirements of section 40 as the description does not include a best method of performance and is insufficient and the claims lack clarity. The opposition also succeeds because the invention as claimed is prior published and lacks novelty and inventive step.
It is not clear to me that the objections to the CPC application can be overcome, however, I am willing allow the applicant the opportunity to propose suitable amendments within 60 days.
I award costs against the applicant.
Bob Sawyer
Delegate of the Commissioner of Patents
Patent Attorneys for the applicant: Carter, Smith and Beadle, Sydney
Patent Attorneys for the opponent : Shelston Waters, Sydney
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