Cryovac, Inc. v Bemis Company Inc - [2003] APO 49

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Patent: No. 692957 in the name of CRYOVAC, INC.

Title: Patch Bag Comprising Homogeneous Ethylene/Alpha-Olefin Copolymer

Action: Opposition by BEMIS COMPANY INC. under Section 104 of the Patents Act 1990

Decision: Issued 07 November 2003.
Abstract

Claims 4 and 5 were found to be clear. The amendment to include new claims 11 and 50 was also found to be an allowable amendment as this does not result in the specification claiming matter not in substance disclosed in the specification as filed. The request to amend was allowed.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent No. 692957 in the name of Cryovac, Inc. and opposition under section 104 thereto by Bemis Company Inc.

BACKGROUND

Patent 692957 was filed as application 40238/95 in the name of W. R. Grace & Co.-Conn. on 5 December 1995 claiming priority from US 354177 with an earliest priority date of 12 December 1994. This was advertised accepted on 18 June 1998 and sealed on 5 November 1998. The patent was subsequently assigned to Cryovac, Inc. (Cryovac).
Cryovac filed a request to amend the specification on 6 June 2000. Leave to amend was granted on 8 June 2000 and these amendments were advertised for opposition purposes on 29 June 2000. Viskase Corporation filed a notice of opposition to the amendments on 24 October 2000 with a request under section 223 for an extension of time from 29 September 2000 in which to file the notice of opposition. The section 223 extension was granted by a decision of a delegate of the Commissioner of Patents, issued 18 September 2001. The Commissioner was informed on 24 January 2001 that Viskase Corporation had assigned their rights in respect of their packaging film interests to Bemis Company Inc. (Bemis) and the opposition is now proceeding in that name.
The statement of grounds and particulars was served on 24 January 2001 and amended on 24 August 2001. The evidence stages were completed on 12 May 2003. The matter was heard in Canberra on 21 August 2003. Cryovac was represented by telephone by Mr Andrew Dark, patent attorney of Davies Collison Cave, Melbourne. Bemis was represented by videoconference by Mr Andrew Lee, patent attorney of Spruson & Ferguson, Sydney.
THE EVIDENCE
Evidence in support comprises a statutory declaration by Richard Hiram Baddeley (Patent Attorney of Watermark Patent and Trade Mark Attorneys) dated 22 February 2001, along with Exhibits RHB-1 to RHB-5.
Evidence in answer comprises a statutory declaration by Steven B Garland (Director of Product and Process Development for Cryovac) dated 23 August 2002, along with Exhibit SBG-1.
Evidence in reply comprises a statutory declaration by David H Solomon (Professorial Fellow in the Department of Chemical and Biomolecular Engineering at the University of Melbourne) dated 5 May 2003, along with Exhibits DHS-1 and DHS-2.
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).
(2A) For the purpose of subsection (2),
relevant time means:
(a)       in relation to an amendment proposed to a complete specification relating to a standard patent - after the specification has been accepted; …
(2B) …
(3) This section does not apply to an amendment for the purpose of correcting a clerical error or an obvious mistake made in, or in relation to, a complete specification.
I note that the only grounds for opposing an amendment under section 104 are in relation to section 102 and that the Commissioner has no discretion about whether to allow an amendment under section 104 which meets all the requirements of section 102 (see regulation 10.5 (1)(a)).
THE SPECIFICATION
The specification relates to packaging for meat products. More particularly, this is a heat-shrinkable bag with a heat-shrinkable protective patch adhered to it, with the protective patch serving to prevent or reduce puncture of the bag by exposed bone from the meat product within the bag. The invention appears to lie in a bag in which the heat-shrinkable patch comprises homogeneous ethylene/alpha-olefin copolymer film. This homogeneous polymer has been found to have certain advantageous properties compared to polymers previously used in such patch bags, for example in terms of puncture-resistance, heat-shrinkability, abrasion-resistance and transparency. The heat-shrinkable films can be monolayer or multilayer films in which two or more film layers are adhered to one another, with multilayered films being the preferred embodiment.
The specification as granted ends with 30 claims. The amendments dated 6 June 2000 increased the number of claims to 75, with corresponding changes to the description. The statement of grounds and particulars raises many issues with these amended claims. However, just prior to the hearing Bemis advised that they wished to limit their arguments in the opposition to just two sets of claims, claims 4 and 5 and claims 11 and 50.
Claims 4, 5, 11 and 50 are all dependent claims. These are reproduced below along with the relevant claims to which they are appended.
1.A patch bag having a single seal along one or more lay-flat edges thereof, and comprising a heat-shrinkable patch adhered to a heat-shrinkable bag, the heat-shrinkable patch comprising a first heat-shrinkable film and the heat-shrinkable bag comprising a second heat-shrinkable film, wherein the first heat-shrinkable film comprises homogeneous ethylene/alpha-olefin copolymer and has a free shrink, at 185ºF, of from 10 to 100%.
3.A patch bag according to claim 1 or 2, wherein the homogeneous ethylene/alpha-olefin copolymer comprises long chain branched homogeneous ethylene/alpha-olefin copolymer.
4.A patch bag according to claim 3, wherein the homogeneous ethylene/alpha-olefin copolymer comprises 5 to 100 wt% long chain branched homogeneous ethylene/alpha-olefin copolymer.
5.A patch bag according to claim 4, wherein the homogeneous ethylene/alpha-olefin copolymer comprises 15 to 85 wt% long chain branched homogeneous ethylene/alpha-olefin copolymer.
11.A patch bag according to any one of the preceding claims, wherein the first heat-shrinkable film further comprises an ionomer.
45.A patch bag having a single seal along one or more lay-flat edges thereof, and comprising a heat-shrinkable patch adhered to a heat-shrinkable bag, the heat-shrinkable patch comprising a first heat-shrinkable film which comprises homogeneous ethylene/alpha-olefin copolymer and the heat-shrinkable bag comprising a second heat-shrinkable film, wherein said patch does not extend to any lay flat edge of the bag and wherein said seal is located in a region of the bag which is not covered by a patch.
50.A patch bag according to any one of claims 45 to 49, wherein the first heat-shrinkable film further comprises an ionomer.
DECISION
Claims 11 and 50
As an initial issue, each party made submissions on the weight I should give to the evidence from the expert declarants, Mr Garland (Cryovac) and Professor Solomon (Bemis). Mr Garland undoubtedly has had considerable experience in the particular technical field of the patent but is not an independent witness as he is an employee of Cryovac. On the other hand, Professor Solomon is an independent expert who is clearly well qualified in the field of polymer chemistry. However, Cryovac disputed his experience in the particular technical field in question.
Mr Dark for Cryovac directed me to the decision of the Delegate in Viskase Corporation v W R Grace & Co.-Con [1997] APO 68 (19 December 1997) in relation to application 611601 entitled "Irradiated Multilayer Film for Primal Meat Packaging". This is clearly the same technical field as the present patent and in those proceedings, Professor Solomon gave evidence on behalf of the applicant Viskase. In that decision the Delegate found that Professor Solomon had not worked in the immediate field of the invention and reduced the weight given to his comments. However, the Delegate also reduced the weight given to one of the opponent's experts, Mr Woollard, as he was an employee of the opponent and not considered an independent expert. I believe in the present case I should not discount evidence from either party but consider each on its merits.
Amended claims 11 and 50 are dependent claims, which are appended back to claims 1 and 45. As such, claims 11 and 50 essentially define a patch bag in which the patch comprises a first heat-shrinkable film comprising homogeneous ethylene/alpha-olefin copolymer and further comprising an ionomer. An ionomer is a copolymer of ethylene with methacrylic acid. According to Bemis, claims 11 and 50 can be interpreted as including an ionomer as a component of any type of heat-shrinkable film, be it a single layered film or in any one or more of the layers of a multilayered film.
It is clear from the specification as filed that the first heat-shrinkable film may comprise 100% of homogeneous ethylene/alpha-olefin copolymer but it preferably includes a blend of the homogeneous ethylene/alpha-olefin copolymer with other polymers. This is stated on page 16 and in claim 14 before amendment, which defines the homogeneous ethylene/alpha-olefin copolymer as comprising 5 to 100 weight percent of the first heat-shrinkable film. While lines 26 to 32 on page 17 describe the inclusion of heterogeneous ethylene/alpha-olefin copolymer in conjunction with the homogeneous ethylene/alpha-olefin copolymer, it is not evident what other polymers are generally envisaged, as this is not specifically stated.
Page 5 of the specification as filed describes the first heat-shrinkable film as preferably being multilayered, comprising two outer layers and two inner layers. Lines 15 to 19 of page 5 describe an ionomer as being an optional polymer for inclusion in the two inner layers of such a multilayer film. A similar disclosure is given in claim 20 of the accepted claims. Thus, it is not in dispute that the specification discloses a patch bag comprising a first heat-shrinkable film where an ionomer is included in the inner layers of a multilayer film. What is in dispute is whether the specification also supports a claim to a patch bag in which the first heat-shrinkable film is a single layer and an ionomer is present in this single layer or the film is multilayered and the ionomer is present in layers other than the two substantially identical inner layers.
Bemis submitted that the amendment is not allowable under section 102(1) since, as a result of the amendment, the specification now claims matter not in substance disclosed in the specification as filed. In addition, Bemis submitted that the amendment results in the claims not being fairly based on the specification and so contravening section 102(2)(b). The test for determining if matter is "in substance disclosed" is very closely related to the test for fair basis. Thus, I need to determine if the specification before amendment contains a real and reasonably clear disclosure of an ionomer in any layer of the first heat-shrinkable film, even where this film constitutes the sole layer of a monolayer film.
Professor Solomon for Bemis states in his declaration that the disclosure in the specification would lead the reader to conclude that "the use of an ionomer would only be restricted to use in the two substantially identical inner layers". However, Professor Solomon does not explain why a skilled reader would interpret the specification in this way. It seems that ionomers are well known and neither party has suggested otherwise. The specification clearly shows that the first heat-shrinkable film is preferably a blend of polymers and it does not teach against the use of an ionomer in any particular layer of the first film. Rather, it contemplates an ionomer as one of a number of possible copolymers present in the first film. Professor Solomon has not indicated what polymers a skilled addressee would contemplate using or that that there is anything different about ionomers rendering them unsuitable for general use in the first film.
On the other hand, Mr Dark for Cryovac submitted that the disclosure on page 5 provides general support for a blend of homogeneous ethylene/alpha-olefin copolymer with an ionomer, with the particular example relating to the inner layers of a multilayered film. Mr Garland states at paragraph 2.18 of his declaration that "one of skill in the art would understand that ionomers could be used generally in the heat shrinkable patches of the invention and that the use of the ionomer would in no way have to be restricted to the specific layers under discussion on page 5. There is no reason that any such restriction should apply". However, Mr Garland also does not give any explanation as to why he or a skilled reader would interpret the disclosure in the specification in this way. He gives no assertion that it would be common in this art for such films to incorporate an ionomer or that an ionomer would be one of a small group of polymers that the person of skill in the art would choose to blend with the homogeneous ethylene/alpha-olefin copolymer.
Nevertheless, regardless of any shortfall in Mr Garland's evidence, I believe the onus in this case is on the opponent to establish the level of disclosure in the specification. There is clearly a specific disclosure of a multilayered film in which an ionomer may be a component of the two inner layers. Nothing has been provided to me to suggest that this disclosure could not be extrapolated more generally to other layers as in claims 11 and 50 as proposed to be amended. There is also no requirement for all embodiments to be exemplified in order for them to be considered "in substance disclosed". In my view, Professor Solomon's interpretation of the disclosure in the specification is very narrow.
Furthermore, Bemis has not shown that there is any selective advantage in incorporating an ionomer rather than any other polymeric component into the first film or into any particular layers of the first film. The use of an ionomer appears to be a routine choice of a suitable alternative polymeric component rather than involving any inventive step. (See the decisions in Hoffman-La Roche & Co. AG v Commissioner of Patents [1973] RPC 34 and Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd and Others 11 IPR 20).
As a result, I am of the view that the specification gives a real and reasonably clear disclosure of the inclusion of an ionomer in any layers of the first heat-shrinkable film. I thus conclude that the amendment to include claims 11 and 50 does not result in the specification claiming matter not in substance disclosed in the specification as filed and that this amendment is allowable.
Claims 4 and 5
It was submitted by Bemis that claims 4 and 5 as proposed to be amended are not clear and so do not comply with section 40(3). As such, the amendment would not be allowable under section 102(2)(b).
Amended Claims 4 and 5 claim a patch bag in which the homogeneous ethylene/alpha-olefin copolymer comprises 5 to 100 wt% or 15 to 85 wt% respectively of long chain branched homogeneous ethylene/alpha-olefin copolymer. These claims are appended to claim 3 and then back to claim 1. Claim 1 defines a patch bag comprising two heat-shrinkable films with the first heat-shrinkable film said to comprise homogeneous ethylene/alpha-olefin copolymer.
According to Mr Garland for Cryovac at paragraph 2.10 of his declaration, "claims 4 and 5 were intended to cover those embodiments of the invention in which the "first film" comprises, respectively, 5 to 100 wt% and 15 to 85 wt% of a long chain branched homogeneous ethylene/alpha-olefin copolymer based on the weight of the film." The argument by Bemis is that either the first or second film can comprise homogeneous ethylene/alpha-olefin copolymer but that the specification only teaches these weight percentage ranges as the preferred ranges for the homogeneous ethylene/alpha-olefin copolymer in the first film.
Mr Dark for Cryovac submitted that claims 4 and 5 are clear and it can be determined from the specification that they are further defining the components of the first heat-shrinkable film. Notwithstanding this, he indicated that Cryovac would be amenable to amending the claims to clarify this point if required. However, I am not convinced that this is necessary. On my reading of claims 4 and 5, they further define " the homogeneous ethylene/alpha-olefin copolymer" and the only homogeneous ethylene/alpha-olefin copolymer referred to in claim 1 is that in the first film. In my view, claims 4 and 5 are clear.
CONCLUSION
I have found above that claims 4 and 5 are clear and the amendment to include claims 11 and 50 is an allowable amendment as this does not result in the specification claiming matter not in substance disclosed in the specification as filed. As a consequence, all amendments are allowable under section 102 and I therefore allow the request to amend dated 6 June 2000.
COSTS
Both parties submitted that costs should follow the event. I see no reason to depart from this in the present case and since I have found the request to amend to be allowable, I award costs against the opponent Bemis.
Dr Gillian Jenkins
Delegate of the Commissioner of Patents
07 November 2003
Patent attorneys for the patentee : Davies Collison Cave, Melbourne
Patent attorneys for the opponent : Spruson & Ferguson, Sydney