CSR Building Products Limited v United States Gypsum Company - [2017] APO 15

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CSR Building Products Limited v United States Gypsum Company [2017] APO 15

Patent Application: 2012222102

Title:Lightweight, reduced density fire rated gypsum panels

Patent Applicant:  United States Gypsum Company
Opponent:  CSR Building Products Limited
Hearing Officer:  Dr S.D. Barker - Deputy Commissioner of Patents
Decision Date:  28 March 2017
Hearing Date:  9 March 2017, in Canberra
Catchwords:  PATENTS – opposition to the grant of a patent – final determination – the amendment does not overcome the grounds of opposition – application refused

Representation: Counsel for the applicant: E. Heerey QC
Patent attorney for the applicant: G. Hazel and A. Scott from James and Wells, New Zealand
Counsel for the opponent: N. Murray
Patent attorney for the opponent: D. Baigent and R. Wulff from Griffith Hack

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2012222102

Title:Lightweight, reduced density fire rated gypsum panels

Patent Applicant: United States Gypsum Company
Date of Decision: 28 March 2017
DECISION
I refuse the application.
I award costs in accordance with Schedule 8 against United States Gypsum Company.
REASONS FOR DECISION

Patent application number 2012222102 (the present application) was filed on 24 February 2012 under the provisions of the Patent Cooperation Treaty. The applicant is United States Gypsum Company (the applicant). An opposition to the grant of a patent was filed by CSR Building Products Limited (the opponent). A decision issued on 6 November 2015 finding that the opposition succeeded (the first decision).[1] The applicant was given an opportunity to amend, and the amendments have been allowed. The opponent asked to be heard in the final determination of the opposition, and a hearing was held on 9 March 2017 in Canberra.
[1] CSR Building Products Limited v United States Gypsum Company [2015] APO 72.
The first decision
In the first decision I stated that the present opposition is governed by the Patents Act 1990 (the Act) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act). Amendments to sections 7, 40 and 60 of the Act apply to the present case as a consequence of Schedule 1, items 55(1)(e) and 55(4)(b) of the Raising the Bar Act – the applicant had not asked for examination before 15 April 2013 (the request for examination was filed on 18 September 2013). The first decision found that the opposition succeeded on the grounds of section 40(2)(a) and section 40(3) – the specification does not disclose the invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the art, and the claims are not supported by matter disclosed in the specification.
The specification
The specification relates to building panels made from gypsum. The specification is discussed at length in the first decision. The amendment to the specification changed the claims, but made no alteration to the body of the specification.
Claim 1 as amended
Claim 1 as amended has a new portion of text added. The new text is shown underlined:
A fire resistant gypsum panel satisfying a one hour fire rating under ASTM E119 test standard using test assembly design number U305, the panel comprising a gypsum core disposed between two cover sheets, the gypsum core comprising a crystalline matrix of set gypsum and high expansion particles having a volume expansion of about 300% or more of their original volume after being heated for about one hour at about 1560°F, the gypsum core having a density (D) of about 40 pounds per cubic foot or less and a core hardness of at least about 11 pounds, and the gypsum core effective to provide a Thermal Insulation Index (TI) of about 20 minutes or greater.
When dealing with the claim at the time of the first decision, I said that the claim was directed to gypsum panels having several physical integers:
·a gypsum core containing high expansion particles (of a specified type), and
·two cover sheets
and having several properties:
·a defined core density,
·a defined core hardness,
·a defined core Thermal Insulation Index, and
·the panel is fire resistant.
I noted previously that fire resistant was a well understood term in the art, and that it implied the UL and ASTM tests:
"a person skilled in the art understands this to mean a panel that meets recognised standards of fire resistance. The claim does not explain which standards are intended, but the UL and ASTM tests are well known in the art, and I believe that a person skilled in the art would appreciate that these tests are intended. Consequently, claim 1 is limited to those panels that, in addition to the other properties defined in the claim, are fire resistant according to the standards known in the art."[2]
[2] The first decision at [70].
The amendment makes it clear that the fire resistance is assessed according to a one hour fire rating under ASTM E119 using test assembly U305. The applicant submitted that claim 1 as amended is narrower in scope than it was at the time of the first decision. In their written submissions they stated:
"These amendments mean that a panel which passes the one hour ASTM E119 test using the U419 or U423 assemblies but fails that test using the U305 assembly, will not fall within the amended claims."[3]
[3] Applicant written submissions at [8].
Consequently the applicant concludes that the amended claims are narrower in scope:
"It follows that the effect of the amendment is to narrow the claims so that they no longer apply to a panel that passes the one hour ASTM E119 test on any of the U419, U423 or U305 test assemblies, and instead apply only to those panels which pass that test on the U305 test assembly."[4]
[4] Applicant written submissions at [16].
At the hearing I questioned whether the amendment was narrowing or broadening on the basis that although the amendment had narrowed the range of tests, the proper question was whether it had narrowed the range of claimed subject matter. I do not believe it is necessary to determine this point in order to decide the present matter. It is not in dispute that claim 1 as amended is directed to gypsum panels having two physical integers:
·a gypsum core containing high expansion particles (of a specified type), and
·two cover sheets
and the following properties:
·a defined core density,
·a defined core hardness,
·a defined core Thermal Insulation Index, and
·the panel is fire resistant according to a one hour rating under ASTM E119 using test assembly U305.
Claim 10 as amended is essentially an amended form of claim 12 at the time of the first decision. I will quote claim 10 with the new text underlined:
A fire resistant gypsum panel satisfying a one hour fire rating under ASTM E119 test standard using test assembly design number U305, the panel comprising a gypsum core disposed between two cover sheets, the gypsum core comprising a crystalline matrix of set gypsum and high expansion particles having a volume expansion of about 300% or more of their original volume after being heated for about one hour at about 1560°F distributed within the gypsum core; the panel having a panel density of about 40 pounds per cubic foot or less and a core hardness of at least about 11 pounds, and the gypsum core and the high expansion particles effective to provide the panel with a High Temperature Shrinkage (S) of about 10% or less and a ratio of High Temperature Thickness Expansion to High Temperature Shrinkage (TE)/S of about 0.2 or more.
Claim 10 as amended is similar to claim 1 as amended, but instead of defining the Thermal Insulation Index of the core it defines the High Temperature Shrinkage and the ratio of the High Temperature Thickness Expansion to High Temperature Shrinkage of the panel.[5]
[5] Note [72] of the first decision.
The law
It is well established that the decision of the Delegate in an opposition proceeding is final, and determines all issues that were capable of determination at that time.[6] Thus, in a final determination the only questions are whether the amendments to the specification overcome the deficiencies identified in the first decision, and whether the amendments introduce any new deficiencies. New deficiencies are grounds of opposition that arise solely from the amendment of the specification (and exclude pre-existing deficiencies, whether or not these were argued at the original hearing).[7] At the hearing I asked the parties who carried the onus in a final determination. It appears to be common ground that the opponent carries the onus, but that must be viewed in the context of the first decision which creates a persuasive onus on the applicant to show that the grounds of opposition have been overcome.
[6] R v Smith; Ex parte Mole Engineering Pty Ltd [1981] HCA 25; (1981) 147 CLR 340 at 348-9.
[7] Iluka Midwest Ltd v Technological Resources Pty Ltd (2002) 58 IPR 467 at [34].
Does the amendment overcome the deficiencies identified in the first decision?
In the first decision I found that the opposition succeeded on the grounds of section 40(2)(a) (disclosure) and section 40(3) (support). I will consider each of these grounds separately.
Disclosure
In the first decision I said that in order to decide whether or not a specification provides a disclosure as required by section 40(2), it is necessary to undertake a three step approach:
i)construe the claims to determine the scope of invention as claimed,
ii)construe the description to determine what it discloses to the person skilled in the art, and
iii)decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.
Application to the facts of the case: what is the invention as claimed
Above I stated that claim 1 is directed to gypsum panels having several physical integers:
·a gypsum core containing high expansion particles (of a specified type), and
·two cover sheets
and having several properties:
·a defined core density,
·a defined core hardness,
·a defined core Thermal Insulation Index, and
·the panel is fire resistant according to a one hour rating under ASTM E119 using test assembly U305.
Application to the facts of the case: what does the specification disclose
The disclosure is unchanged as a result of the amendment. The applicant placed stress on the fact that the specification discusses bench tests that can be carried out in Examples 4A to 4E. It was argued that these tests can be understood as normal trial and error, and they give a person a strong indication of whether a panel will pass the U305 test. The applicant relied upon samples 19 and 20 which have TI values of 22.9 and 25.13 respectively (Figure 28A). These samples also pass the U305 test (Figure 25A). There are no examples of samples that have a TI of greater than 20 which do not pass the U305 test. The assertion is that the TI value is a reliable indicator of success against the U305 test. Of course, it needs to be remembered that samples 19 and 20 are the only samples that were subjected to the U305 test.
The flaw in the applicant's argument is that the bench tests are only intended to provide an indication of whether a panel is likely to pass the U305 test. There is no certainty that they will also pass the U305 test (as agreed by counsel at the hearing), and no certainty that those samples that fail the bench test will also fail the U305 test.
Application to the facts of the case: does the specification enable all of the things that fall within the scope of the claims
In the first decision I stated:
"The specification does not provide clear guidance telling the person skilled in the art how to adjust the process and materials so as to achieve with certitude the full combination of properties, in particular the fire resistance of the panel. Where the work involved in adjusting the composition of the panels amounts to reasonable trial and error, then the specification provides an adequate disclosure. However, if the work involved amounts to an undue burden, then the specification has not provided an adequate disclosure."[8]
and
"these comments as a whole suggest to me that it would be far from reasonable for a person in this art to carry out fire resistance testing according to the UL or ASTM procedures as part of normal trial and error. The cost of doing so would appear to be prohibitive."[9]
and
"Based on the evidence available to me, I conclude that the testing of samples to determine whether they are fire resistant would be an undue burden."[10]
[8] The first decision at [102].
[9] The first decision at [106].
[10] The first decision at [107].
The applicant's case is that the testing of samples to determine whether they are fire resistant to a one hour rating under ASTM E119 using test assembly U305 would not be an undue burden, largely due to the advantage gained by using the bench tests. As already noted, the bench tests are a useful guide, but they do not ensure success or failure. The claim is drafted by reference to the U305 test, and it is the U305 test that must be undertaken. The evidence (referred to in the first decision) is that fire resistance testing of panels is an undue burden:
"Mr Behrinig says simply at paragraph [42] that 'fire testing of gypsum panels was rare'. Although Dr Bruce considers at paragraph [137] of his second declaration that it was not rare, but 'often tested', these comments as a whole suggest to me that it would be far from reasonable for a person in this art to carry out fire resistance testing according to the UL or ASTM procedures as a part of normal trial and error. The cost of doing so would appear to be prohibitive."[11]
[11] The first decision at [106].
The same conclusion applies to the claim as amended. The claim is limited by reference to the U305 test, and it is that test that must be carried out to determine whether a panel falls within the scope of the claim. It follows that there remains an undue burden, so the specification as amended does not provide a disclosure that is clear enough and complete enough for the invention to be performed by a person skilled in the art.
Support
In the first decision I said that to determine whether there is support involves three steps:
i)construe the claims to determine the scope of the invention as claimed,
ii)construe the description to determine the technical contribution to the art, and
iii)decide whether the claims are supported by the technical contribution to the art.
Application to the facts of the case: what is the invention as claimed
I will repeat what I said previously about the invention; claim 1 as amended is directed to gypsum panels having two physical integers:
·a gypsum core containing high expansion particles (of a specified type), and
·two cover sheets
and having several properties:
·a defined core density,
·a defined core hardness,
·a defined core Thermal Insulation Index, and
·the panel is fire resistant according to a one hour rating under ASTM E119 using test assembly U305.
Application to the facts of the case: what is the technical contribution to the art
In the first decision I summarised the contribution to the art as follows:
"The art has been advanced only to the extent that it is now known that high expansion particulates CAN produce a low density, fire resistant gypsum panel in some instances. However, analogous to what was said by Lord Hoffmann in Biogen, the applicant cannot demonstrate a general principle by which the result of a low density, fire resistant gypsum panel will be achieved. The technical contribution to the art is that high expansion particulates can produce a low density, fire resistant panel when prepared according to the samples numbered 1, 4, 5, 12, 13, 14, 18, 19 and 20."[12]
[12] The first decision at [117].
The critical issue is whether the contribution to the art is:
a)high expansion particulates can produce a low density, fire resistant gypsum panel, or
b)high expansion particulates can produce a low density, fire resistant panel when prepared according to the samples numbered 1, 4, 5, 12, 13, 14, 18, 19 and 20
The applicant argued for interpretation a), and the opponent argued for interpretation b). Both parties approached the issue as one that has already been decided in the first decision, and that it is not appropriate to revisit the matter. It is solely a matter of understanding what has already been decided. I consider that it is clear that my finding was that a) is not the contribution to the art, as there is no general principle that has been disclosed. Rather it is only the panels recited in b) that are the contribution to the art.
Application to the facts of the case: are the claims supported
The claims are limited to gypsum panels that contain high expansion particles AND are fire resistant according to ASTM E119 and test assembly U305. However, the technical contribution to the art is more limited than this. Consequently, the scope of the claims as amended is not supported by the technical contribution to the art. This conclusion applies to all of the claims.
Conclusion
I conclude that the amendment has not overcome the deficiencies identified in the first decision. The only remaining question is whether I should allow a further opportunity to amend. The applicant did not make any submission that they should be given a further opportunity. I do not consider that the applicant has shown any desire to make the kind of amendment that would be required to overcome the grounds. I will not allow any further opportunity to amend.
Costs
The parties submitted that costs should follow the event. I see no reason to depart from that result. Costs should be awarded against the applicant.
Dr S.D. Barker
Deputy Commissioner of Patents