CSR Building Products Limited v James Hardie Technology Limited
[2017] APO 28
•8 June 2017
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CSR Building Products Limited v James Hardie Technology Limited [2017] APO 28
Patent Applications: 2006241323 & 2010246457
Title:Fiber Cement Building Materials with Low Density Additives
Patent Applicant: James Hardie Technology Limited
Opponent: CSR Building Products Limited
Delegate: M. G. Kraefft
Decision Date: 8 June 2017
Hearing Date: Written submissions completed on 26 May 2017
Catchwords: PATENTS – section 59 - final determination – amendments overcame defects identified in previous decision – whether amendments introduced new deficiencies - amendments have not introduced new deficiencies – both applications proceed to grant.
Representation: Patent attorney for the applicant: Shelston IP.
Patent attorney for the opponent: Griffith Hack.
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2006241323 & 2010246457
Title:Fiber Cement Building Materials with Low Density Additives
Patent Applicant: James Hardie Technology Limited
Date of Decision: 8 June 2017
DECISION
The amendments to the specifications of applications 2006241323 and 2010246457 have overcome the previously successful ground of opposition of lack of inventive step.
Moreover the amended claims of both specifications are clear and fairly based. The amendments have not introduced new deficiencies.
Subject to appeal, I direct that both applications proceed to grant.
Costs in accordance with Schedule 8 awarded against the opponent, CSR Building Products Limited.
REASONS FOR DECISION
BACKGROUND
Patent applications 2006241323 and 2010246457 are in the name of James Hardie Technology Limited (“the applicant”). After examination and acceptance of the applications, BGC (Australia) Pty Ltd and CSR Building Products Limited jointly filed notices of opposition against each of the applications.
In a decision dated 30 May 2016, BGC (Australia) Pty Ltd & CSR Building Products Limited v James Hardie Technology Limited, [2016] APO 31 (“the previous decision”), a delegate found the oppositions against each application were successful on the ground of lack of inventive step. The delegate allowed the applicant an opportunity to amend to overcome the successful ground of opposition.
On 29 July 2016, the applicant filed requests under Section 104 to amend the specifications of each application. Those requests were both subsequently allowed.
Prior to final determination, the applicant and the second opponent, CSR Building Products Limited (“the opponent”), requested to be heard. BGC (Australia) Pty Ltd did not wish to be heard. The hearing was conducted by way of written submissions.
APPLICABLE LAW
It is well established that the decision of a delegate in opposition proceedings determines the matter finally, subject to appeal (R v Smith (Commissioner of Patents); Ex parte Mole Engineering Pty Ltd, [1981] HCA 25; (1981) 147 CLR 340 at 348-349). There is no scope for the Commissioner to re-open or re-hear matters that had already been determined in the previous decision. Thus, in a final determination the only questions are whether the amendments to the specification overcome the deficiencies identified in the previous decision and whether the amendments introduce any new deficiencies. New deficiencies are grounds of opposition that arise solely from the amendment of the specification. That is, pre-existing deficiencies are excluded (Iluka Midwest Ltd v Technological Resources Pty Ltd, [2002] FCA 1233 at [34]).
SECTION 104 AMENDMENTS
For the claims of application 2006241323, the amendments were directed to promoting some features from former dependent claims into the independent claims, and consequential deletion of some claims and renumbering of the remaining claims.
For present purposes it suffices to recite claim 1, as amended, which appears below. The amendment is highlighted with underlining.
- A building material, comprising:
a cellulose fiber-reinforced cement formulation; and
a low density additive incorporated into the formulation, wherein the low density additive includes ceramic microspheres, wherein the low density additive lowers the density of the building material to between 0.9 to 1.2 g/cm3 while at the same time the low density additive maintains moisture expansion of the building material at a level of between about 0.15% and 0.2%, wherein said ceramic microspheres are cenospheres, wherein said cenospheres comprise about 62-65% SiO2, 23-26% Al2O3 and 3-4% Fe2O3.In the case of application 2010246457, the amendments generally introduced the above underlined features to the claims.
Claim 1, as amended, is recited below.
- A building material formulation used to form a building product, comprising:
a hydraulic binder;
ground silica;
cellulose fibers, wherein the cellulose fibers comprise greater than about 4% of the formulation by weight; and
hollow ceramic microspheres, wherein the hollow ceramic microspheres are incorporated into the formulation in a quantity sufficient to lower the density of the building material to about 1.2 g/cm3 or less, and wherein the hollow ceramic microspheres maintain the moisture expansion of the building material at a level of between about 0.13%-0.2%, wherein said ceramic microspheres are cenospheres, wherein said cenospheres comprise about 62-65% SiO2, 23-26% Al2O3 and 3-4% Fe2O3.Amendments to the descriptive parts of both specifications were principally directed to the consistory clauses to match them with the amended claims.
INVENTIVE STEP
The composition of the cenospheres in the underlined portions of the above claims is featured in claims 9, 25 and 41, before amendment, of the 2006 application. At [138] of the previous decision, the delegate stated that the evidence did not satisfy him that the selection of cenospheres of the defined composition would necessarily have been an obvious and routine choice. The delegate was thus not satisfied that claims 9, 25 and 41 lacked an inventive step.
The defined composition is now featured in the independent claims of both applications and thus is part of the scope of all claims of both applications. On the face of it, the applicant has overcome this ground of opposition.
SUBMISSIONS AND EXPLANATORY COMMENTS
The opponent submitted the amendments introduced new deficiencies, under Section 40, such that lack of clarity and lack of fair basis arose from the amendments to the specifications. The opponent noted the amendments introduced the expression “… wherein said ceramic microspheres are cenospheres [of a specific composition]” into the independent claims. In reading this phrase with the terms “ceramic microspheres” or “microspheres” in subsequent dependent claims, the opponent suggested there was now a variety of terms that do not have a clear, plain and consistent meaning.
At [43] of the previous decision, the delegate was not satisfied from the specification that the term “hollow ceramic microspheres” should be understood as relating exclusively to cenospheres. This would also be consistent with the evidence referred to by the delegate at [119] of the decision. Two declarants described Shirasu balloons as hollow ceramic microspheres. One of the declarants also included silica balloons and glass balloons in this category. The other declarant moreover described some distinctions between Shirasu balloons and cenospheres. At [61]-[64] of Sorrell 2, while both were very similar in terms of size, shape, morphology and chemistry, Shirasu balloons were manufactured by subjecting volcanic glass to heat whereby the sphere was formed by expansion of water (upon vaporisation) embodied in the glass. Cenospheres are typically produced as a by-product of coal combustion. The main difference in characteristics is that Shirasu balloons tend to have higher alkali contents than cenospheres.
Thus cenospheres, Shirasu balloons and silica balloons, amongst others, are all examples of hollow ceramic microspheres. It would appear to be on this basis that the opponent criticised in submissions the clarity in using the narrower term “cenospheres” in the independent claims while using the broader terms “hollow ceramic microspheres” or “microspheres”, or similar, in the dependent claims. For example, for application 2006241323, claim 1 defines the ceramic microspheres being cenospheres while dependent claim 7 defines the building material formulation incorporating about 5-30% by weight ceramic microspheres. That is, the applicant has not similarly limited the dependent claims to cenospheres as in the independent claims. The opponent submitted there is no weight limitation in claim 1, so claim 7 is narrower in that respect. On the other hand the incorporation of ceramic microspheres in claim 7 is a broader concept than the cenospheres of claim 1.
In respect to fair basis the opponent extended its issues with the use of the terms “cenospheres” and “hollow ceramic microspheres”, or similar, in the claims to argue that the claims now defined that the formulation, and specifically the low density additive, may comprise a mixture or combination of different ceramic microspheres. That is, the claims now included in their scope cenospheres of particular composition in conjunction with other hollow ceramic microspheres not limited to cenospheres. The opponent submitted there was no fair basis in the specification for a formulation or method that included a mixture of different microspheres.
The applicant principally submitted that the opponent’s case would amount to re-opening matters that had already been decided, contrary to the principle established in Mole Engineering. The applicant noted that the present claims in both applications overall claimed the same features as prior to amendment. In the previous decision, the delegate found all of the claims to be clear, including the claims dependent on old claim 9 of the 2006 application, from where the amended matter in the new independent claims of both applications originates. The applicant further stated that the amendments were allowed unopposed and thus to allow the opponent to re-agitate these matters under Section 40 in a final determination would require re-hearing an issue on which a determination had already been made.
In response, the opponent principally submitted the consideration of the amendments during examination were in the context of their allowability under Section 102, and not whether new deficiencies were introduced into the claims in a final determination. Moreover the opponent submitted it is clearly open to argue that the amendments have introduced new deficiencies which result in previously clear claims now lacking clarity and/or fair basis. The opponent disputed the applicant’s suggestion that introducing a claim which was previously found clear into another claim also previously found clear could not render the amended claim unclear. The opponent stated the effect of an amendment on a claim must be considered as a whole.
DISCUSSION
While the applicant is correct that, as per Mole Engineering, matters previously decided by the Commissioner cannot be re-opened, the opponent is also correct that the effect of an amendment needs to be considered as a whole. That is, in determining whether an argument against an amendment would amount to re-opening a previously decided matter, one needs to look at the matter as a whole. In the present case, I agree with the opponent that it does not necessarily follow that a resultant claim could not be found unclear just because aspects of two previous claims, now combined into the resultant claim, were previously both separately found to be clear. Each resultant claim and the set of claims per se must be considered as a whole. Furthermore, while there may be overlap in considering Section 40 matters as a result of the amendment under Section 102 vis-à-vis a final determination, it needs to be borne in mind that the criteria for allowability of an amendment under Section 102 are different to the considerations in a final determination of whether the delegate’s previous adverse findings have been overcome and whether any new deficiencies have been introduced. Moreover a consideration of matters in a hearing vis-à-vis the findings under Section 102 during examination does not offend against the principle of Mole Engineering.
Sheppard J summarised the rules of construction for a patent specification in Décor Corporation Pty Ltd v Dart Industries Inc, [1988] FCA 399, (1988) 13 IPR 385 at 400 [14]. The Full Federal Court endorsed this summary in Pfizer Overseas Pharmaceuticals v Eli Lilly and Company, [2005] FCAFC 224 at [249]. Relevantly to the present matter, the specification must be read as a whole, a purposive construction should be employed rather than a purely literal one, and if an expression in a claim is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of the words used in the claim.
In H Lundbeck A/S v Alphapharm Pty Ltd, [2009] FCAFC 70 at [118] – [120], Bennett J discussed the approach to the construction of claims as follows:-
“… the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear. … While the claims define the monopoly claimed in the words of the patentee’s choosing, the specification should be read as a whole. … It is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification. … However, terms in the claim which are unclear may be defined or clarified by reference to the body of the specification.”
In Eli Lilly and Company Ltd v Apotex Pty Ltd, [2013] FCA 214 at [139], Middleton J stated:-
“It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”
Using the above-mentioned claim 7 as an example, it may appear that this claim introduces separately another group of ceramic microspheres, which may or may not be cenospheres, that constitute about 5-30% by weight of the formulation. On the other hand, claim 1 defines a formulation that has a low density additive incorporated therein, wherein the additive includes ceramic microspheres wherein the latter are cenospheres. It may also be noted that claim 7 refers to the formulation (my emphasis) and this would indicate, since the claim is dependent directly or indirectly on claim 1, that the formulation of claim 1 is meant. I think the more natural, plain reading of the claims, when read in context and as a whole, is that the ceramic microspheres of claim 7 are the same as those in claim 1 and moreover that they are cenospheres. I make the same finding in this respect across the dependent claims vis-à-vis the independent claims of both applications.
I conclude that all the claims of both applications are clear.
If I were wrong with the above conclusion such that it were appropriate to refer to the body of the specification, as per Lundbeck, then the following discussion would appear pertinent. The descriptive parts of the specifications mention the evaluation of two low density additives with properties more desirable to fiber-reinforced cement (“FRC”) building materials than typical low density additives. These two low density additives are volcanic ash and hollow ceramic microspheres. The blending of microspheres with volcanic ash and/or other low density additives into the FRC building material is also discussed. Thus there is disclosure in the specifications of multiple low density additives in the one formulation. On the opponent’s points though, the question would appear to be whether the specifications envisage multiple different groups of microspheres in any one formulation. As mentioned earlier, silica balloons are one example of hollow ceramic microspheres. In the specifications, a common compound in various guises in some of the formulations is silica or SiO2. For example the aggregate may be silica. Moreover in the first embodiment, the volcanic ash is described as primarily consisting of silica. Also the claimed cenospheres comprise about 62-65% SiO2. By blending any two or more of the aggregate, the volcanic ash and the cenospheres in one formulation, it may be said that multiple forms of silica are disclosed in the specifications in at least one formulation. On the other hand the specifications do not mention any silica components in any formulation being silica balloons. An inference could be made that the claimed cenospheres, by virtue of comprising about 62-65% SiO2, are effectively silica balloons. On the other hand, the delegate at [119] of the previous decision noted that the applicant submitted that silica balloons were not cenospheres. I conclude the specifications do not envisage multiple different groups of microspheres in any one formulation. In following Lundbeck, again the ceramic microspheres of the dependent claims are the same as those of the independent claims and moreover that they are cenospheres.
Since I have determined that the dependent claims define microspheres that are the same as the microspheres, and thus the cenospheres, of the independent claims and not additional thereto, the opponent’s fair basis arguments are moot. There is insufficient cause for interpreting the claims to define the low density additive comprising a mixture or combination of cenospheres of particular composition in conjunction with other microspheres that may or may not be cenospheres.
I conclude the claims of both applications are fairly based.
CONCLUSION
I conclude the applicant’s amendments to both specifications have overcome the previously successful ground of opposition of lack of inventive step.
Moreover I have concluded the amended claims of both specifications are clear and fairly based. I find the amendments have not introduced new deficiencies.
There being no further impediment to the grant of patents in the present cases, subject to appeal, I direct that both applications proceed to grant.
COSTS
Both parties sought their costs in the present matter. Costs normally follow the event and I see insufficient reason in the present cases to depart from that practice. The opponent has been unsuccessful. I award costs in accordance with Schedule 8 against the opponent, CSR Building Products Limited.
M. G. Kraefft
Delegate of the Commissioner of Patents
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