CSR Building Products Limited v United States Gypsum Company

[2016] APO 41

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

CSR Building Products Limited v United States Gypsum Company [2016] APO 41

Patent Application:                   2007322350

Title:Low dust gypsum wallboard

Patent Applicant:  United States Gypsum Company

Opponent:  CSR Building Products Limited

Delegate:  O L Haggar

Decision Date:  4 July 2016

Hearing Date:  17 March 2016 in Canberra

Catchwords:  PATENTS – opposition under section 104 – onus of proof – the general onus on an opponent in opposition proceedings under section 59 does not shift to the applicant in opposition proceedings under section 104 – whether the amendments proposed contravene section 102(1) – the inquiry under this section is directed to the proposed claim in its entirety and not just the amended portion of the claim – whether the amendments contravene section 102(2)(b) – the inquiry under this section is to disregard pre-existing section 40(2) and 40(3) deficiencies – amendments refused – costs awarded against the patent applicant

Representation:  Patent applicant:  Ed Heerey SC instructed by Gus Hazel and Andrew Scott of James & Wells Intellectual Property

Opponent:Neil Murray of counsel instructed by Samantha Keirs of Griffith Hack

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                   2007322350

Title:Low dust gypsum wallboard

Patent Applicant:  United States Gypsum Company

Date of Decision:  4 July 2016

DECISION

The opposition succeeds and, consequently, I refuse the amendments.  Costs are awarded against the applicant, United States Gypsum Company.

BACKGROUND

1. Patent application 2007222896 was filed by United States Gypsum Company (USG) on 9 October 2007 under the provisions of the Patent Cooperation Treaty as international application PCT/US2007/021573.  The application was examined and accepted by the Commissioner, and subsequently opposed by CSR Building Products Limited (CSR).

2. Following the completion of evidence, on 28 November 2014 USG requested leave to amend the specification.  Leave was granted and advertised on 30 April 2015.  CSR filed a notice of opposition under section 104 to the allowance of the proposed amendments on 14 May 2015 and a statement of grounds and particulars on 15 June 2015.  On 3 July 2015 the parties were advised that the Commissioner did not intend hearing the substantive opposition until after CSR’s opposition to the allowance of the proposed amendments had been finalised.  This decision is accordingly concerned only with the opposition under section 104.

   THE OPPOSITION UNDER SECTION 104

   Grounds of opposition

3. The grounds pressed by CSL are that the proposed amendments do not comply with section 102(1) and section 102(2)(b).  With regard to the latter ground, CSR asserts that as a result of the proposed amendments (i) the specification would not describe the invention fully, including the best method known to USG of performing the invention and (ii) the claims would lack fair basis.

4. USG requested leave to amend after 15 April 2013, but requested examination of the application well before that date.  As a result, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment(Raising the Bar) Act 2012 do not apply.  These include the amendment to section 102(1) to preclude matter disclosed or claimed by the amended specification that extends beyond that disclosed in the specification as filed.

   The evidence

5. CSR relies on evidence in the form of declarations made by Dr Bob Bruce and Gregory J Neil on 29 July (Bruce) and 30 July 2015 (Neil), respectively, both of which have been accompanied by a number of exhibits.  USG in turn relies on a declaration made by Prof Qingxia Liu on 27 September 2015 (Liu) which also incorporates by reference extracts from evidence given by him in relation to the substantive opposition.  

6. On 7 October 2015 CSR confirmed that it did not wish to adduce evidence in reply.    

   The hearing

7. A hearing to determine the section 104 opposition was held in Canberra on 17 March 2016.  USG was represented by Ed Heerey SC instructed by Gus Hazel and Andrew Scott of James & Wells Intellectual Property, and CSR was represented by Neil Murray of counsel instructed by Samantha Keirs of Griffith Hack.

   SUBJECT MATTER

8. The specification describes the field of the invention as relating to industrial and building products made from gypsum, such as gypsum wallboard.  The specification explains that gypsum is a plentiful and generally inexpensive raw material which, through a process of dehydration and rehydration, can be cast, moulded or otherwise formed into various shapes.  The base material from which gypsum wallboard and other gypsum products are manufactured is the hemihydrate form of calcium sulphate commonly termed “stucco”.  The specification however indicates that although conventional gypsum-containing products such as gypsum wallboard have many advantages, they are susceptible to dust generation during handling and installation.  The specification notes that it would accordingly be desirable to find a way “to produce a low density wallboard in which such dust generation is significantly reduced”.    

   THE PROPOSED AMENDMENTS  

9. The specification at acceptance included 22 claims.  So far as is relevant for present purposes, the proposed amendments seek to cancel the accepted claims and replace them with a considerably enlarged claim set.  It is useful to set out the way in which the substitute claims differ from the accepted claims (with added text underlined and deleted text struck through).

   “1. A light weight gypsum board comprising:
   a set gypsum core disposed between two cover sheets;
   the set gypsum core comprising a gypsum crystal matrix having a pore size distribution comprising (i) voids having a pore size less than about 50 microns in diameter, (ii) voids having a pore size from about 50 microns to about 100 microns in diameter, and (iii) voids having a pore size greater than about 100 microns in diameter such that the voids having a pore size greater than about 100 microns in diameter comprise at least about 20% of the total void volume of the set gypsum core, wherein the voids are measured using scanning electron photomicrograph imaging;
   the gypsum crystal matrix is formed such that the set gypsum core has an average core hardness of at least about 11 pounds (about 5 kg) as determined in accordance with ASTM C-473; and
   the board having a density of about 35 33 pcf (about 560 530 kg/m³) or less.

   2.  A light weight gypsum board comprising:
   a set gypsum core disposed between two cover sheets;
   the set gypsum core comprising a gypsum crystal matrix having a pore size distribution comprising (i) voids having a pore size less than about 50 microns in diameter, (ii) voids having a pore size from about 50 microns to about 100 microns in diameter, and (iii) voids having a pore size greater than about 100 microns in diameter such that the voids having a pore size greater than about 100 microns in diameter comprise at least about 20% of the total void volume of the set gypsum core, wherein the voids are measured using scanning electron photomicrograph imaging;
   the gypsum crystal matrix is formed such that the set gypsum core has an average core hardness of at least about 11 pounds (about 5 kg) as determined in accordance with ASTM C-473; and
   the board having a density of about 35 pcf (about 560 kg/m³) or less,
   wherein at least one of the following apply:
   a) the set gypsum core is formed from a slurry comprising water, stucco, foam, and pregelatinised starch in an amount from about 0.5% to about 10% by weight based on the weight of the stucco;
   b) the average air void size is less than about 100 microns in diameter;
   c) the majority of air voids have a diameter of about 100 microns or less;
   d) the air void size having greatest frequency is a diameter of about 100 microns or less;
   e) at least about 75% of the total void area of a scanning electron photomicrograph image at 50X magnification of the set gypsum core in cross-section is formed of air voids having a pore size greater than about 50 microns in diameter;
   f) at least about 70% of the total void area of a scanning electron photomicrograph image at 50X magnification of the set gypsum core in cross-section is formed from air voids having a pore size greater than about 100 microns in diameter; and/or
   g) the volume ratio of air voids to water voids is from about 1.8 to 1 to about 9 to 1.

   4. 3. A light weight gypsum board comprising a set gypsum core disposed between two cover sheets, wherein (a) the set gypsum core comprises air voids and water voids in a volume ratio of air voids to water voids from about 1.8 to 1 to about 9 to 1, (b) the set gypsum core comprises voids having a pore size greater than about 100 microns in diameter such that the voids having a pore size greater than about 100 microns in diameter comprise at least about 20% of the total void volume of the set gypsum core, wherein the voids are measured using scanning electron photomicrograph imaging, and (c) the board has a density from about 24 pcf (about 380 kg/m³) to about 35 pcf (about 560 kg/m³), and a ratio of density (pcf) to average core hardness (lb) of less than about 3.2, wherein the core hardness is determined in accordance with ASTM C473.

   6. 4. A light weight gypsum board comprising:
   a set gypsum core disposed between two cover sheets;
   the set gypsum core comprising a gypsum crystal matrix having a pore size distribution comprising (i) voids having a pore size less than about 50 microns in diameter, (ii) voids having a pore size from about 50 microns to about 100 microns in diameter, and (iii) voids having a pore size greater than about 100 microns in diameter such that the voids having a pore size greater than about 100 microns in diameter comprise at least about 20% of the total void volume of the set gypsum core, wherein the voids are measured using three-dimensional imaging acquired by X-ray CT-scanning analysis (XMT);
   the board, when at a thickness of about ½ inch (about 1.3 cm), has a nail pull resistance to average core hardness ratio from about 4 to about 8, each as determined in accordance with ASTM C473; and   
   the board having a density of about 35 33 pcf (about 560 530 kg/m³).

   5.  A light weight gypsum board comprising:
   a set gypsum core disposed between two cover sheets;
   the set gypsum core comprising a gypsum crystal matrix having a pore size distribution comprising (i) voids having a pore size less than about 50 microns in diameter, (ii) voids having a pore size from about 50 microns to about 100 microns in diameter, and (iii) voids having a pore size greater than about 100 microns in diameter such that the voids having a pore size greater than about 100 microns in diameter comprise at least about 20% of the total void volume of the set gypsum core, wherein the voids are measured using three-dimensional imaging acquired by X-ray CT-scanning analysis (XMT);
   the board, when at a thickness of about ½ inch (about 1.3 cm), has a nail pull resistance to average core hardness ratio from about 4 to about 8, each as determined in accordance with ASTM C473; and
   the board having a density of about 35 pcf (about 560 kg/m³) or less,
   wherein at least one of the following apply:
   a) the set gypsum core is formed from a slurry comprising water, stucco, foam, and pregelatinised starch in an amount from about 0.5% to about 10% by weight based on the weight of the stucco;
   b) the average air void size is less than about 100 microns in diameter;
   c) the majority of air voids have a diameter of about 100 microns or less;
   d) the air void size having greatest frequency is a diameter of about 100 microns or less; and/or
   e) the volume ratio of air voids to water voids is from about 1.8 to 1 to about 9 to 1.

   7. 6. A light weight gypsum board comprising:
   a set gypsum core disposed between two cover sheets;
   the set gypsum core comprising a gypsum crystal matrix having a pore size distribution comprising (i) voids having a pore size less than about 50 microns in diameter, (ii) voids having a pore size from about 50 microns to about 100 microns in diameter, and (iii) voids having a pore size greater than about 100 microns in diameter such that the voids having a pore size greater than about 100 microns in diameter comprise at least about 20% of the total void volume of the set gypsum core, wherein the voids are measured using three-dimensional imaging acquired by X-ray CT-scanning analysis (XMT);
   the gypsum crystal matrix is formed such that the set gypsum core has an average core hardness of at least about 11 pounds (about 5 kg) as determined in accordance with ASTM C-473; and
   the board having a density of about 35 33 pcf (about 560 530 kg/m³) or less.

   7. A light weight gypsum board comprising:
   a set gypsum core disposed between two cover sheets;
   the set gypsum core comprising a gypsum crystal matrix having a pore size distribution comprising (i) voids having a pore size less than about 50 microns in diameter, (ii) voids having a pore size from about 50 microns to about 100 microns in diameter, and (iii) voids having a pore size greater than about 100 microns in diameter such that the voids having a pore size greater than about 100 microns in diameter comprise at least about 20% of the total void volume of the set gypsum core, wherein the voids are measured using three-dimensional imaging acquired by X-ray CT-scanning analysis (XMT);
   the gypsum crystal matrix is formed such that the set gypsum core has an average core hardness of at least about 11 pounds (about 5 kg) as determined in accordance with ASTM C-473; and
   the board having a density of about 35 pcf (about 560 kg/m³) or less,
   wherein at least one of the following apply:
   a) the set gypsum core is formed from a slurry comprising water, stucco, foam, and pregelatinised starch in an amount from about 0.5% to about 10% by weight based on the weight of the stucco;
   b) the average air void size is less than about 100 microns in diameter;
   c) the majority of air voids have a diameter of about 100 microns or less;
   d) the air void size having greatest frequency is a diameter of about 100 microns or less; and/or
   e) the volume ratio of air voids to water voids is from about 1.8 to 1 to about 9 to 1.

   8. The light weight gypsum board of any one of claims 2, 3, 5 and 7 wherein the board has a density of about 33 pcf (about 530 kg/m³) or less.

   9. The light weight gypsum board of any one of claims 1 to 8, wherein the board density is from about 24 pcf (about 380 kg/m³) to about 35 pcf (about 560 kg/m³).

   9. The light weight gypsum board of any one of claims 1 to 8 wherein the board has a density of about 32 pcf (about 510 kg/m³) or less.

   10. The light weight gypsum board of any one of claims 1 to 9 wherein the board has a density of about 31 pcf (about 500 kg/m³) or less.

   11. The light weight gypsum board of any one of claims 1 to 10 wherein the board has a density greater than about 10 pcf (about 160 kg/m³).

   12.  The light weight gypsum board of any one of claims 1 to 11 wherein the board has a density from about 10 pcf (about 160 kg/m3) to about 30 pcf (about 480 kg/m3).

   13. The light weight gypsum board of any one of claims 1, 2 and 4 to 12, wherein the board has a density greater than about 24 pcf (about 380 kg/m3).

   2. 14. The light weight gypsum board of claim 1 any one of claims 1 to 13, wherein at least about 75% of the total void area of a scanning electron photomicrograph image at 50X magnification of the set gypsum core in cross-section is formed from air voids having a pore size greater than about 50 microns in diameter.

   3. 15. The light weight gypsum board of claim 1 or claim 2 any one of claims 1 to 13, wherein at least about 70% of the total void area of a scanning electron photomicrograph image at 50X magnification of the set gypsum core in cross-section is formed from air voids having a pore size greater than about 100 microns in diameter.

   5. 16. The light weight gypsum board of claim 4 any one of claims 1 to 15, wherein the volume ratio of air voids to water voids is from about 2.3 to 1 to about 9 to 1.

   17. The light weight gypsum board of any one of claims 1 to 16, wherein the volume ratio of air voids to water voids is from about 2.3 to 1 to about 9 to 1.

   8. 18. The light weight gypsum board of any one of claims 1 to 7 17, wherein at least about 50% of the total void volume are voids having a pore size greater than about 50 microns in diameter.

   10. 19. The light weight gypsum board of any one of claims 1 to 9 18, wherein the voids having a pore size less than about 50 microns in diameter comprise voids having a pore size of from about 10 microns to about 50 microns.

   11. 20. The light weight gypsum board of any one of claims 1 to 10 19, the set gypsum core formed from a slurry comprising water, foam, stucco, naphthalenesulphonate dispersant, and pregelatinised starch.

   12. 21. The light weight gypsum board of any one of claims 4, 6 or 9 to 11 1 to 20, the set gypsum core formed from a slurry comprising water, stucco, foam, and: (i) starch present in an amount from about 0.5% to about 10% by weight based on the weight of the stucco, the starch effective to increase the core hardness of the gypsum board relative to the core hardness of the gypsum board without the starch; or (ii) a trimetaphosphate compound chosen from the group consisting of sodium trimetaphosphate, potassium trimetaphosphate, lithium trimetaphosphate, and ammonium trimetaphosphate, the trimetaphosphate compound being present in an amount from about 0.12% to about 0.4% by weight based on the weight of the stucco; or (iii) naphthalenesulphonate dispersant present in an amount from about 0.1% to about 3.0% by weight based on the weight of the stucco; or (iv) any combination of (i) – (iii).

   13. 22. The light weight gypsum board of claim 12 21, wherein at least (i) is present and the starch is a pregelatinised starch.

   14. 23. The light weight gypsum board of claim 1 or 4 any one of claims 1 to 22, wherein the board, when at a thickness of about ½ inch (about 1.3 cm), has: (i) a dry weight from about 1000 lb/MSF (about 5 kg/SQM) to about 1400 lb/MSF (about 6.8 kg/SQM); or (ii) a nail pull resistance to core hardness ratio from about 4 to about 8, each as determined in accordance with ASTM C473; or (iii) a nail pull resistance of at least 65 lb (29 kg), as determined in accordance with ASTM C473; or (iv) an average flexural strength of at least 36 lb (16 kg) in a machine direction and/or 107 lb (48.5 kg) in a cross-machine direction, as determined in accordance with ASTM C473; or (v) any combination of (i) – (iv).

   24. The light weight gypsum board of any one of claims 1 to 23 wherein the average air void size is less than about 100 microns in diameter.

   25. The light weight gypsum board of any one of claims 1 to 24 wherein the average air void size is between about 10 microns in diameter to about 100 microns in diameter.

   26.  The light weight gypsum board of any one of claims 1 to 25 wherein the average air void size is between about 20 microns in diameter and about 100 microns in diameter.
   27. The light weight gypsum board of any one of claims 1 to 26 wherein the majority of air voids have a diameter of about 100 microns or less.

   28. The light weight gypsum board of any one of claims 1 to 27 wherein the air void size having greatest frequency is a diameter of about 100 microns or less.

   29. The light weight gypsum board of any one of claims 1 to 28 wherein the set gypsum core has a total void volume from about 75% to about 95%.

   30. The light weight gypsum board of any one of claims 1 to 29 wherein the set gypsum core has a total void volume from about 80% to about 92%.

   15. 31. The light weight gypsum board of claim 7 any one of claims 1 to 30, wherein the set gypsum core has a total void volume from about 75% to about 92% of the core volume.

   32. The light weight gypsum board of any one of claims 1 to 31 wherein the voids having a pore size greater than about 100 microns in diameter comprise at least about 20% and less than about 40% of the total void volume of the set gypsum core, wherein the voids are measured using scanning electron photomicrograph imaging.

   33. The light weight gypsum board of any one of claims 1 to 32 wherein voids having a pore size of more than about 10 microns and voids having a void [sic] size of less than about 5 microns are in a ratio from about 2.3:1 to about 9:1.

   34. The light weight gypsum board of any one of claims 1 to 33 wherein about 10% to about 35% of the voids are less than about 5 microns in diameter.

   35.  The light weight gypsum board of any one of claims 1 to 34 wherein the set gypsum core has about 20% to about 40% of the voids having a pore size in the range of about 10 to about 50 microns.

   36. The light weight gypsum board of any one of claims 1 to 35 wherein the set gypsum core has about 30% to about 50% of the voids in the range of about 10 to about 100 microns.

   37.  The light weight gypsum board of any one of claims 1 to 36 wherein about 70% to about 90% of the pores have a pore size of more than about 10 microns.

   38.  The light weight gypsum board of any one of claims 1 to 37 wherein not more than about 20% of the voids have a pore size of more than about 100 microns.

   16. 39. A method of making a light weight gypsum board, the method comprising:
   (A) preparing a gypsum slurry having foam dispersed therein;
   (B) disposing the gypsum slurry between a first cover sheet and a second cover sheet to form a panel;
   (C) cutting the panel into a board of predetermined dimensions;
   (D) drying the board;
   such that a set of gypsum core comprising a gypsum crystal matrix is formed between the cover sheets such that:
   (1) the set gypsum core has a pore size distribution comprising (a) voids having a pore size less than about 50 microns in diameter, (b) voids having a void size from about 50 microns to about 100 microns in diameter, and (c) voids having a pore size greater than about 100 microns in diameter such that the voids having a pore size greater than about 100 microns in diameter comprise at least about 20% of the total void volume, wherein the voids are measured using scanning electron photomicrograph imaging,
   (2) the set gypsum core has an average core hardness of at least about 11 pounds (about 5 kg) as determined in accordance with ASTM C-473, and
   (3) the dry board density is about 35 33 pcf (about 560 kg/m³) or less.

   40. A method of making a light weight gypsum board, the method comprising:
   (A) preparing a gypsum slurry having foam dispersed therein;
   (B) disposing the gypsum slurry between a first cover sheet and a second cover sheet to form a panel;
   (C) cutting the panel into a board of predetermined dimensions;
   (D) drying the board;
   such that a set of gypsum core comprising a gypsum crystal matrix is formed between the cover sheets such that:
   (1) the set gypsum core has a pore size distribution comprising (a) voids having a pore size less than about 50 microns in diameter, (b) voids having a void size from about 50 microns to about 100 microns in diameter, and (c) voids having a pore size greater than about 100 microns in diameter such that the voids having a pore size greater than about 100 microns in diameter comprise at least about 20% of the total void volume, wherein the voids are measured using scanning electron photomicrograph imaging,
   (2) the set gypsum core has an average core hardness of at least about 11 pounds (about 5 kg) as determined in accordance with ASTM C-473, and
   (3) the dry board density is about 35 pcf (about 560 kg/m³) or less,
   wherein at least one of the following apply:
   a) the gypsum slurry comprises water, stucco, foam, and pregelatinised starch in an amount from about 0.5% to about 10% by weight based on the weight of the stucco;
   b) the average air void size is less than about 100 microns in diameter;
   c) the majority of air voids have a diameter of about 100 microns or less;
   d) the air void size having greatest frequency is a diameter of about 100 microns or less;
   e) at least about 75% of the total void area of a scanning electron photomicrograph image at 50X magnification of the set gypsum core in cross-section is formed from air voids having a pore size greater than about 50 microns in diameter;
   f) at least about 75% of the total void area of a scanning electron photomicrograph image at 50X magnification of the set gypsum core in cross-section is formed from air voids having a pore size greater than about 100 microns in diameter; and/or
   g) the volume ratio of air voids to water voids is from about 1.8 to 1 to 9 to 1.

   17. 41. The method of claim 16 39 or claim 40, wherein at least about 50% of the total void volume comprises voids having a pore size greater than about 50 microns in diameter.

   18. The method of claim 16 or 17, wherein the board density is from about 24 pcf (about 380 kg/m³) to about 35 pcf (about 560 kg/m³).

   42. The method any one of claims 39 to 41, wherein the board density is greater than from about [sic] 24 pcf (380 kg/m³).
   19. 43. The method of any one of claims 16 to 18 39 to 42, the set gypsum core formed from a slurry comprising water, stucco, foam, and: (i) starch present in an amount from about 0.5% to about 10% by weight based on the weight of the stucco, the starch effective to increase the core hardness of the gypsum board relative to the core hardness of the gypsum board without the starch; or (ii) a trimetaphosphate compound chosen from the group consisting of sodium trimetaphosphate, potassium trimetaphosphate, lithium trimetaphosphate, and ammonium trimetaphosphate, the trimetaphosphate compound being present in an amount from about 0.12% to about 0.4% by weight based on the weight of the stucco; or (iii) naphthalenesulphonate dispersant present in an amount from about 0.1% to about 3.0% by weight based on the weight of the stucco; or (iv) any combination of (i) – (iii).

   44. The method of claim 43, wherein wherein [sic] at least (i) is present and the starch is a pregelatinised starch.

   21. 45. The method of claim 16 any one of claims 39 to 44, wherein the board, when at a thickness of about ½ inch (about 1.3 cm), has (i) a dry weight from about 1000 lb/MSF (about 5 kg/SQM) to about 1400 lb/MSF (about 6.8 kg/SQM); or (ii) a nail pull resistance to core hardness ratio from about 4 to about 8, each as determined in accordance with ASTM C473; or (iii) a nail pull resistance of at least 65 lb (29 kg), as determined in accordance with ASTM C473; or (iv) an average flexural strength of at least 36 lb (16 kg) in a machine direction and/or 107 lb (48.5 kg) in a cross-machine direction, as determined in accordance with ASTM C473; or (v) any combination of (i) – (iv).

   22. 46. A light weight gypsum board according to any one of claims 1 to 15 38 or a method of making a light weight gypsum board according to any one of claims 16 to 21 39 to 45, substantially as hereinbefore described with reference to the examples.

   ONUS OF PROOF

1. There is a dispute between the parties as to who between them bears the onus of proof in these proceedings.

2. CSR submits that early UK authority supports the proposition that the burden of showing that the amendments sought meet the relevant statutory criteria falls on USG.  CSR refers to the decision of the Privy Council in Cowper v Paper Sacks Pty Ltd [1932] AC 709 at 713 where it was said:

   “Now an applicant for amendment has upon him the burden of showing that his amendment falls within one or other of the three categories of disclaimer, correction, or explanation, and that he is not claiming an invention which is substantially larger than or different from that originally claimed.  This necessarily involves that his amendment must be unambiguous, otherwise the onus upon him cannot be discharged.”

3. CSR further submits that later UK authority continued to place the onus on the applicant for amendment which it argues has also been followed by Australian authority.  According to CSR, this is evident from Weiss v Luft [1941] HCA 19; 65 CLR 528 (Weiss) which related to an appeal from a decision of the Deputy Commissioner of Patents to refuse leave to amend.  At 539 Williams J said that “the applicant must show that the amendment [meets the relevant criteria]” and also cited with apparent approval the above passage from the decision of the Privy Council.  CSR points out that as more recently affirmed by Bennett J in Apotex Pty Ltd v Les Laboratories Servier (No 2) [2009] FCA 1019; 79 IPR 100 (Apotex) at [88], “the onus is on the patentee to satisfy the court that the amendments should be allowed.”

4. I am not persuaded by CSR’s submission for a number of reasons.  First, Apotex was concerned with the discretion conferred on a Court by section 105 in relation to an application to amend a patent. As stated by Bennett J at [86], this meant that:

   “… even if proposed amendments are otherwise allowable under s 102 of the Act, the Court may still refuse to direct the amendments on discretionary grounds.  The Court should consider all relevant factors in deciding the exercise of that discretion.”

5. Later at [88]:

   “The Court does not approach the exercise of its discretion in a manner hostile or antipathetic to amendment.  However, the onus is on the patentee to satisfy the Court that the amendments should be allowed.  The Court is concerned with the conduct of the patentee and not with the merit of the invention.”

6. As contended by USG, it is not surprising then that the patentee would bear the onus under section 105 of satisfying the Court that the proposed amendments should be allowed.  By contrast, the Commissioner is not empowered to refuse or allow an amendment as a matter of discretion.  In making that decision, the Commissioner can only have regard to whether the amendment complies with the provisions of section 102.  This was made clear by Emmett J in New England BiolabsInc v Commissioner of Patents [2001] FCA 787; 110 FCR 357 at [56]-[58]:

   “Section 104(7) provides for an appeal to this Court against a decision of the Commissioner allowing, or refusing to allow certain requested amendments.  As indicated above … r 5.3(4) provides that a person may not oppose the amendment of a complete specification except on the ground that the amendment is not allowable under s 102.  When s 104(1) is read in the context of s 104(5) and r 5.3(4), such a right of appeal must be taken to be limited to the grounds set out in s 102.  As I have already observed, s 104 provides the mechanism for review of the Commissioner's decisions allowing or disallowing amendments. It would be curious if the statutory regime excluded review on the Commissioner's decisions allowing amendments on other grounds.  This points to a legislative intent that the Commissioner should not have a discretion to allow or disallow amendments.

   Section 105 empowers the Court to direct an amendment in the context of relevant proceedings. The Court's power is discretionary except to the extent that, under s 105(4), the Court may not direct an amendment that is not allowable under s 102.  On the other hand, the Court must exercise that discretion judicially.  In so doing, the Court exercises the judicial power of the Commonwealth and must do so subject to all of the safeguards that apply in relation to the exercise of that power.

   The position of the Commissioner, as an administrative officer, is in stark contrast.  The detailed nature of the regulatory scheme provided for in Chapter 10 of the Regulations indicates an absence of a general discretion such as would permit account to be taken of the conduct of an applicant prior to the making of the request for leave to amend.  The process contemplated by the Regulations prior to publishing notice of the grant of leave under r 10.5(2) is not appropriate for an enquiry of the nature suggested by [the applicant].  The Commissioner, or her delegate, is required to make a determination in opposition proceedings, whether under s 60 or under s 104.  However, the Commissioner, as an administrative officer, is ill equipped to conduct what could be a wide ranging inquiry involving assessment of credit in order to determine whether conduct of an applicant prior to making a request for leave to amend should in some way disentitle the applicant to leave.”

7. Second, the High Court in Weiss was concerned with statutory provisions which were drafted in quite different terms to those of section 104 and, critically, imported a discretion on the part of a Court on whether to allow an amendment.  This meant that, as in Apotex, the High Court was entitled to take account of the conduct of the patentee who as a consequence carried the burden of convincing the Court to exercise that discretion in its favour.  As I have said, the allowance or refusal of an amendment by the Commissioner does not involve the exercise of a discretionary power.

8. And finally, the UK authorities on which CSR relies were also decided under a different statutory regime.  This is most apparent from Re Chevron Research Company’s Patent [1970] RPC 580 at 586 which speaks of the “heavy onus” imposed on the applicant for amendment which could only be discharged “if they have full evidence to prove their case and put the whole story before the court.” The similarities here with the strict regime under which Apotex and Weiss were decided are obvious.  I agree with USG that such authority is irreconcilable with the “well settled approach” recognised by the Federal Court that “s 102 should generally be given a liberal construction” so as to “permit any fair amendment which had previously been disclosed” (Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd [1999] FCA 1848; 48 IPR 625 at [25], cited with approval by the Full Court in Gambro Pty Ltd v Fresenius Medical CareSouth East Asia Pty Ltd [2000] FCA 1044; 49 IPR 321 (Gambro) at [18]).

9. On the basis of the foregoing, I do not as a matter of logic or principle see why the general onus on an opponent in opposition proceedings under section 59 should be any different in opposition proceedings under section 104.  I therefore find that for present purposes the onus lies with CSR which must as a consequence show on the balance of probabilities that the amendments sought by USG do not meet the requirements of section 102. 

   ISSUES TO BE DECIDED

10. As explained by CSL, three common themes emerge from its objections to the claims as proposed to be amended.  These themes have been summarised in the following terms:

    • Amended ranges claimed are greater than those described and taught – the amended claims cover boards with parameters of defined properties within various ranges.  However, the body of the specification does not disclose or teach those ranges, but rather only a very small portion thereof, if any.
    • Limits of ranges previously undisclosed – the amended claims refer to limits of various parameters that are not mentioned or given any significance prior to amendment.  While the parameters themselves were disclosed, the limit claimed was not.
    • New features not disclosed or taught in combination – the amended claims refer to features that, although disclosed in isolation in the specification, are not disclosed in combination with the other features claimed.

11. CSR has provided a detailed explanation of the features of the proposed claims on which its objections are based in a set of tables which need not be reproduced in this decision.  However, for ease of understanding, I will follow the approach adopted by the parties in discussing those features in the same groupings and order in which they appear in the tables.  I observe for the moment that CSR relies on the same reasons when advancing its objections as to substantial disclosure and fair basis (referred to in its written submissions as the “first s 102(2)(b) objection”).

    LEGAL PRINCIPLES

    General

12. CSR has opposed the proposed amendments under sections 102(1) and 102(2)(b).  Those sections provide that an amendment is not allowable “if, as a result of the amendment” the specification would claim matter not in substance disclosed in the specification as filed, or would not comply with sections 40(2) or (3) and, consequently, direct attention to the effect of the amendment being considered.

13. It has thus been said by the Full Court in RGC Mineral Sands v Wimmera Industrial Minerals PtyLtd [1998] FCA 1358; 89 FCR 458 (RGC) at 466 that the proper application of section 102(1) involves a “two stage process”. The “first stage” is to compare the specification as it stood immediately prior to amendment with how it would stand after amendment. This comparison identifies what matter results from the proposed amendment(s). Once that is determined, the “second stage” is to read the specification as a whole (that is, as amended in the manner proposed) and compare it with what is “in substance disclosed” in the specification as filed. The key point emphasised by the Full Court is that the words “as a result of the amendment” are not to be confused with the expression “after the amendment”.

14. In Bristol-Myers Squibb Co v Apotex Pty Ltd [2010] FCA 814; 87 IPR 816 at [38], Yates J reiterated that the analysis undertaken pursuant to section 102(1) must be confined to a consideration of the consequences that follow as a result of the proposed amendments.

15. The language of section 102(2)(b) also insists on a consideration of the result of the proposed amendments.  As said by Bennett J in Apotex at [34], this involves:

    “1. Identification of the precise amendment sought by identifying the difference between the specification as it stood immediately before the amendment and the specification as proposed to be amended; and
    2. Determination whether, as a result of the amendment, the specification would not comply with ss 40(2) or 40(3).”

16. In the present case the specification immediately before amendment is the specification as it existed at acceptance.

    Section 102(1)

17. Section 102(1) states:

    “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.”

18. Schedule 1 to the Act defines that “claim” when used as a verb means “to claim in a claim (including a dependent claim) of a complete specification”.  

19. It is well established that the question of whether matter is in substance disclosed is at least “very similar to” or has a “close relationship” with the test for fair basis (Gambro at [18], ICI Chemicals &Polymers Ltd v Lubrizol Incorporation Inc [2000] FCA 1349; 106 FCR 214 (ICI Chemicals) at [118]). The Full Court in ICIChemicals expressed the view that it would “be a rare case indeed where a claim which claims matter in substance disclosed in the specification as filed is not, equally, fairly based on the matter described in the specification (and vice versa)”.  The inquiry mandated by section 102(1) therefore becomes whether there has been a “real and reasonably clear disclosure” of an amended claim when compared against the original disclosure.

20. The leading authority as to the requirement of fair basing is Lockwood Security Products Pty Ltdv Doric Products Pty Ltd (No 1) [2004] HCA 58; 217 CLR 274 (Lockwood) which confirmed that the fair basis of a claim depends on whether the specification has made a real and reasonably clear disclosure of what is claimed by it.  The relevant principles to be drawn from Lockwood were conveniently summarised by Bennett J in Apotex at [36]-[37]:

    “Fair basing requires a consideration of whether the claims are fairly based on the matter in the specification that describes the invention.  The ‘invention’ means the embodiment which is described and around which the claims are drawn (Lockwood at [53]). The High Court noted in Lockwood at [68] that fair basis is not tested by isolating in the body of the specification ‘essential integers’ or ‘essential features’ of an alleged invention and then asking whether they correspond with the essential integers of the claim in question. The question is whether the subject matter of the claims is broadly described in the body of the specification. However, while the High Court pointed out that it was necessary to consider the whole of the specification, it warned against including ‘loose or stray remarks’ in determining the ‘real’ disclosure in the body of the specification.  Coincidence of language, such as in a consistory clause, is insufficient, on its own, to provide fair basis if that is inconsistent with the description of the invention when considering the specification as a whole (Lockwood at [87], [91]). The inquiry is into what the body of the specification, read as a whole, discloses as the invention (Lockwood at [99])” (original emphasis).

21. It was also said in Lockwood (at [68]) that the comparison which section 40(3) calls for is not analogous to that between a claim and an alleged anticipation or infringement, and it was therefore wrong to employ “an over meticulous verbal analysis”. Later authority has confirmed that the task of construing the specification is to be approached “with a generous measure of common sense” from the perspective of the person skilled in the art (Eli Lilly and Company Limited v Apotex PtyLtd [2013] FCA 214; 100 IPR 451 at [139]).

    Section 102(2)

22. Section 102(2) states:

    “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).”

23. Section 102(2)(A) prescribes that for the purposes of section 102(2), “relevant time” means after the specification has been accepted.    

24. It will be recalled that section 102(2) requires a comparison between the specification in the form it took immediately prior to amendment and the specification as proposed to be amended.  In terms of section 102(2)(b), the question accordingly becomes whether any failure to comply with section 40(2) or (3) would arise because of an amendment that is proposed, and did not exist beforehand.  Put another way, any pre-existing deficiencies in the specification under section 40(2) or (3) which are unaffected by amendment are to be disregarded when undertaking the comparison required by section 102(2)(b) (Kornelis’Kunthars Producten Industrie BV v WR Grace & Co-Conn [1994] FCA 969; [1994] AIPC 91-056 at [24], Roads Corporation v Axent Holdings Pty Ltd [2011] APO 43 at [17]-[20]).

    CONSIDERATION: SECTION 102(1) AND FIRST SECTION 102(2)(B) OBJECTION

    E.1 Density

    Feature 1 (proposed claims 1, 4, 6, 8 and 39)

25. Feature 1 is “the board having a density of about 33 pcf or less”.  The specification explains that “pcf” is a measure of board density in terms of pounds per cubic foot.

26. The body of the specification, aside from the general summary of the invention, has not been subject to any amendment.  Thus the greater part of the body of the specification as originally filed is in materially the same terms and makes like disclosures as it stood when accepted.  Importantly for present purposes, it has at all relevant times described a variety of embodiments of the invention which are further illustrated by reference to the results of tests conducted on sample gypsum wallboards prepared using different formulations.  Details of the formulations used and the test results are set out in a number of tables.  Tables 3, 6 and 7 refer to the property of board weight (expressed as pounds per 1,000 square feet of material (lb/MSF)).  Prof Liu has explained in this regard that:

    “Table 7 provides several board weights that can be readily converted to densities, as understood by one of ordinary skill.  The board weights, in lbs/MSF, of 1400, 1300, 1200, 1000, 900, 800, and 500 for a ½ inch board convert to pcf values of 33.6, 31.2, 28.88, 26.4, 24, 21.6, 19.2 and 12, respectively.”[1]   

    [1] Liu at [21]

27. As advised by Mr Heerey during the course of the hearing, applying the same conversion to the board weights listed in Tables 3 and 6 results in pcf values of 38.7, 37.7, 34.8 and 31.7, and 26.5 and 24.3, respectively.  The conversion when additionally applied to original claims 9, 10, 30, 38 and 40 produces a board density ranging from 33.6 to 12 pcf.  Mr Murray did not submit to the contrary.  In fact as acknowledged by Mr Neil in his evidence in support:

    “It is apparent to me that some of the examples disclosed in Table 3, Table 6, and Table 7 of the Application include a gypsum board with a density ‘of about 33 pcf or less’, with Trial Board 6 in Table 7 having a board density of 33.6 pcf.”[2]

    [2] Neil at [10]

28. Mr Neil has, however, complained that this particular board density appears to have been arbitrarily chosen.[3]  Dr Bruce has also stated that “some examples in Table 7 satisfy this feature”, but again questions the significance of a board density of about 33 pcf or less.[4]     

    [3] Neil GJN-9

    [4] Bruce BB-12, point 1

29. I fail to see the relevance of the alleged arbitrary nature of a board density of “about 33 pcf or less” to the question of whether there has been a real and reasonably clear disclosure of this feature of the proposed claims.  In addressing this question it must of course be borne in mind that as a matter of ordinary language the term “about” allows for minor variations both above and below 33 pcf.  This much has been reflected by CSR’s own expert evidence which, for example, has deemed the expression “about 33 pcf” to include a density of 33.6 pcf.  Furthermore, it is true that the specification has not at any stage explicitly identified the upper end of the range of board densities as being about 33 pcf.  However, what must be in substance disclosed are densities across the range, not the values forming the limits of the range.  As Lord Denning MR said in Ethyl Corporation’s Patent [1972] RPC 169 at 194-195:

    "The amendment is 'in substance disclosed in the specification before the amendment' because the original specification contains examples of compositions within the new range of 20 to 80.  It is I think unnecessary for the original specification to use words or figures describing the limits of the range (e.g. words saying that a useful application is in the range from 20 to 80).  It is sufficient if the original specification discloses instances of application within that range ... The range is sufficiently disclosed by the marker posts.  It is not necessary to draw a line around them."

30. As alluded to above, the range of board densities exemplified by the specification as filed does not differ from that disclosed by the accepted specification.  The evidence leaves me in no doubt that some of these densities fall within feature 1.  I therefore do not accept CSR’s submission that a board density of “about 33 pcf or less” was not in substance disclosed by either version of the specification.  

31. However, in taking its case further, CSR submits that the specification as filed does not disclose a gypsum board having this density in combination with other features of proposed claims 1, 4, 6, 8 and 39 such as pore size distribution and compliance with ASTM standards.  The following is representative of CSR’s expanded case:

    “Professor Liu asserts (at [28]) that features such as ASTM standards are disclosed in the Examples in Tables 3, 5 and 6.  This is not in dispute.  The issue is that, as a result of the amendment, amended claims 1, 4, 6, 8 and 39 claim matter that is not in substance disclosed in the specification as filed.  The specification as filed must in substance disclose the amended claim in its entirety, not merely the portion of the claim that has been amended.  There is no disclosure in the specification of a board with ‘a density of about 33 pcf or less’ in combination with the above ASTM requirements for each of [the proposed claims in issue]” (original emphasis).[5]  

    [5] CSR written submissions at [44]

1. Before proceeding further, I note at this point that proposed claims 1, 4, 6 and 39 are independent claims.  Proposed claim 8 is appended to any one of independent claims 2, 3, 5 and 7.

2. The Full Court in RGC said that section 102(1) “focuses on the amendment proposed and it must be that amendment which has the result of pushing the claimed matter over the line defined by the expression ‘matter not in substance disclosed in the specification as filed’” (original emphasis). 

   However, I do not understand this to mean that for the purposes of section 102(1) the test of real and reasonably clear disclosure need only take account of the amended portion of a claim, thereby in effect ignoring the totality of the claim to which the amendment is directed.  After considering the test of real and reasonably clear disclosure in the context of external fair basis, the Full Court in Multigate Medical Devices Pty Ltd v B Braun Melsungen AG [2016] FCAFC 21 at [190] said that the test “requires attention … on whether … in the earlier specification there had been a real and reasonably clear disclosure of the invention that is claimed” (emphasis added).  To my mind this directly applies by analogy to an inquiry under section 102(1).  Indeed, on my understanding this is the approach followed in Gambro at [24]-[35]) where the Full Court seems to have taken account of the proposed claims in their entirety.

3. USG has rejected CSR’s submission chiefly for the reason that it discounts the claims of the “unamended Application”.[6]   It is of course permissible to have regard to the claims when construing the specification as a whole.  In this respect the High Court has determined that “the claims are as much a part of the complete specification as the preceding matter, which usually is identified as the ‘body ‘ of the specification” (Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; 207 CLR 1 (Kimberly-Clark) at [14]).  However, it has become evident that by “unamended” USG means the specification as it stood at acceptance.  Thus the comparisons it has drawn between the claims before and after amendment may be relevant to the inquiry under section 102(2)(b), but they have no relevance to section 102(1) which requires the proposed claims to be compared with the specification as filed. 

   [6] For example, USG written submissions at [61]-[62], [70], [73]

4. It is also important to appreciate that the specification is not to be read in a vacuum, but rather as it would have been understood by the skilled addressee (Lockwood at [72], Kimberly-Clark at [24]). The relevant question that therefore arises is what the skilled addressee would have been taught overall by the specification as filed.

5. This brings me to the expert evidence.  Prof Liu has generally submitted that as the examples are merely illustrative of the invention, they would not be read by the skilled addressee in isolation from other parts of the specification.  He more particularly submits:

   “… for example, Example 6, paragraph [0067] describes trials that were being performed using Formulation B (Example 1) as in Example 2, in which the formulation was modified.  Table 6 then provides physical characteristics of the lightweight boards made in Example 6.  The next example, Example 7, describes at paragraph [0070] that trials were performed as in Example 2, again using Formulation B of Example 1 with modifications based on those in Example 6.  Table 7 provides void characteristics of the lightweight boards made in Example 7.

   It is, therefore, clear that Examples 6 and 7 would not be read in isolation.  They would be read in the broader context of the application by one of ordinary skill.  Based on this, one of ordinary skill would consider the physical characteristics of Table 6 and the void characteristics of Table 7 as achievable in a single lightweight board.  Also, one of ordinary skill would not stop at Examples 1, 2, 6 and 7 and isolate them from the rest of the application”.[7] 

   [7] Liu at [14]-[16]

6. With regard to the claimed feature of pore size distribution, Prof Liu further submits:

   “The application also discloses the board with these densities can be made with the claimed void sizes and distributions, when read in its entirety.  For instance, one of ordinary skill would recognise that Table 7 shows board with a variety of void characteristics, such as foam void volume (i.e. air void volume), foam pore size distribution (i.e. air void size distribution), evaporative void volume (i.e. water void volume), evaporative pore size distribution (i.e. water void distribution), and total core volume.  In addition, the application in paragraphs [0025] and [0026] discuss [sic] specific void sizes and distributions as included in the claims.  One of ordinary skill would understand that the samples as shown in Tables 6 and 7 should be read in light of the teaching as in paragraphs [0025] and [0026], which is consistent with the claims.”[8]

   [8] Liu at [27]

7. Prof Liu has given similar evidence in relation to the other disputed features of the proposed claims:

   “… features such as ASTM standards and other features of the claims are disclosed in the Examples such as Table 6, as well as, for instance Tables 3 and 5, such as core hardness and nail pull resistance, which one of ordinary skill would understand are variations on the teachings of the application.  The same is true for other claimed features such as pregelatinised starch in amounts from about 0.5% to about 10% by weight, based on the weight of the stucco which is found, for instance, in paragraphs [0038]-[0040].”[9]

   [9] Liu at [28]

8. USG argues that as shown by this evidence the specification would be understood by the skilled addressee as providing a real and reasonably clear disclosure of a board having a density of about 33 pcf or less in combination with each of the claimed features in dispute.  

9. CSR did not tender any evidence in reply which unfortunately means that I do not have the benefit of evidence that specifically responds to Prof Liu’s claims of what the specification would disclose to the skilled addressee when construed as a whole.

10. Dr Bruce has made no mention of the features claimed by proposed claims 1, 4, 6, 8 and 39 other than board density.  Mr Neil for his part states with reference to the claimed feature of void size distribution:

    “I could not find any disclosure in the specification of a board with ‘a density of about 33 pcf or less’ in combination with the [claimed] distribution of core void sizes.  Tables 3 and 6 do not refer to void sizes at all.  Table 7, as far as void sizes are concerned, differentiates the voids based on two void sizes only, being voids that are less than 5 microns (referred to as water voids under Table 7) and voids that are greater than 10 microns (referred to as air (bubble) voids underneath Table 7)” (original emphasis).[10]                

    [10] Neil at [13]

11. The next claimed feature in dispute concerns the requirement that the gypsum board meet certain ASTM standards.  Mr Neil notes in this regard that:

    “… a feature of claims 1, 6, 8 (when referring to claim 2 or 7) and 39 of the Amended Claims requires the set gypsum core to have an average core hardness of at least about 11 pounds … Another feature of claims 4 and 8 (when referring to claim 5) of the Amended Claims requires the gypsum board, when at a thickness of about ½ inch (about 1.3 cm), to have a nail pull resistance to average core hardness ratio from about 4 to about 8 … Another feature of claim 8 (when referring to claim 3) requires the set gypsum core to have a ratio of density (pcf) to average core hardness (lb) of less than about 3.2 …”

12. Mr Neil submits that on reviewing the specification he “could not find any disclosure” of a board with a density of about 33 pcf or less in combination with the above ASTM requirements.[11]  He makes a like submission with respect to claim 8 as it relates to the reference in claims 2, 5 and 7 to the formation of the set gypsum core from a slurry comprising “pregelatinised starch in an amount from about 0.5% to about 10% by weight based on the weight of the stucco”.[12]

    [11] Neil at [14]-[15]

    [12] Neil at [16]-[17]

13. Prof Liu is critical of CSR’s expert evidence which he contends has wrongly treated the examples as discrete disclosures:

    “Mr Neil’s and Dr Bruce’s comments on claims 1, 4, 6, 8-12, and 39 focus only on individual examples because they do not consider all the Examples and what they teach one of ordinary skill and do not consider the entire teaching of the application.  For instance, in paragraphs 11-21 of his declaration, Mr Neil focuses on specific board samples with the claimed densities because he does not consider the variations on those samples that are available to one of ordinary skill by following the other Examples and the teaching of the application in its entirety.  Dr Bruce also did not consider the application teachings in its entirety in his tables of his exhibits and his declaration.”[13]  

    [13] Liu at [29]

14. I consider this criticism to be justified to the extent that when taken at face value Mr Neil’s evidence in the main suggests that he has not looked beyond the examples.  What I think is more relevant is that Mr Neil has limited his analysis to those examples which disclose a board density of about 33 pcf and in so doing has overlooked other examples in which the board density is less, yet still falls within the range of board densities claimed by the proposed claims in issue.  However, Mr Neil is quite correct in saying that the only disclosure of void characteristics by the examples is to be found in Table 7, and even here these characteristics are not related to the claimed distribution of core void sizes. 

15. CSR accordingly argues that Prof Liu’s proposition that the samples of Table 7 would somehow inform the skilled addressee of the claimed distribution is “purely speculative”.[14]  In attempting to justify this proposition, Prof Liu submits that as would be understood by the skilled addressee, Tables 6 and 7 are to be read together with the disclosure of the specification at paragraphs [0025] and [0026].  Paragraph [0025] relevantly reads:

    “In one embodiment, the void/pore size distribution within the set gypsum core should range from about 10–30% of voids less than about 5 microns and from about 70–90% of voids greater than about 10 microns, as a percentage of total voids measured … In a preferred embodiment, the void/pore size distribution within the set gypsum core should range from about 30– 35% of voids less than about 5 microns and from about 65–70% of voids greater than about 10 microns, as a percentage of total voids measured”.       

    [14] CSR submissions at [43]

16. It is to be noted that the void characteristics set out in Table 7 are also based on void sizes that are either less than 5 microns or greater than 10 microns.  I also note that all but one of the trial boards listed in Table 7 has a density of about 33 pcf or less. 

17. Paragraph [0026] of the specification reads:

    “It is preferred that the average air (bubble) void size be less than about 100 microns in diameter.  In a preferred embodiment, the void/pore size distribution within the set gypsum core is: greater than about 100 microns (20%), from about 50 microns to about 100 microns (30%), and less than about 50 microns (50%).”

18. This in essence repeats the claimed distribution of core void sizes.    

19. Prof Liu has submitted that it would be apparent to the skilled addressee to read Tables 6 and 7 in the context of paragraphs [0025] and [0026]. I do not find this submission convincing. As pointed out by Mr Neil, there is no disclosure whatsoever in Table 6 of core void sizes or distribution. As concerns Table 7, Prof Liu does not go so far as contending that the void characteristics it sets out can be correlated with either of the void/pore size distributions disclosed in paragraph [0025]. Nevertheless, as both disclosures are based on the same core void sizes, I am prepared to accept in the absence of direct evidence in rebuttal that this may be sufficient reason for the skilled addressee to read them collectively. Even when viewed in this favourable light, however, the remaining difficulty with Prof Liu’s submission is that the specification does not convey any suggestion that paragraphs [0025] and [0026] are to be regarded as jointly related to a single embodiment of the invention. In saying this I am conscious of the fact that both paragraphs refer to void/pore size distribution, but the distributions respectively disclosed by them are based on entirely different core void sizes. In these circumstances I have difficulty in believing that either paragraph would be readily understood by the skilled addressee to qualify or otherwise supplement the other.

20. I am accordingly of the view that the specification in both its original and accepted forms does not provide a real and reasonably clear disclosure of a board having a density of about 33 pcf or less in combination with the presently claimed pore size distribution.  It seems to me that in endeavouring to establish support for this combination, Prof Liu has impermissibly sought to selectively assemble or “mosaic” features relating to board density and void size distribution that have been independently disclosed by the specification.    

21. The issue of whether the specification provides a real and reasonably clear disclosure of the claimed ASTM requirements, as well as the amount of pregelatinised starch, is perhaps now a moot point.  Nevertheless, for the sale of completeness, I note from footnote b to Table 6 that a core hardness of 11 pounds is the minimum industry standard for a commercial gypsum panel.  Table 2, Formulation B, and Table 6, Trial Boards 3 and 4 (both of which are based on Formulation B), disclose boards having a density of about 33 pcf or less and a core hardness which exceeds the ASTM standard, thus satisfying this aspect of the proposed claims.  Tables 2, 3, 5 and 6 (in which the density of most of the test boards is again 33 pcf or less) provide examples of nail pull resistance.  It would be a simple matter to calculate the presently claimed ratios from the physical properties disclosed in the examples, such as by dividing nail pull resistance by average core hardness.               

22. So far as the amount of pregelatinised starch is concerned, the proposed claims are wholly consistent with both versions of the specification which on a number of occasions (see, for example, paragraphs [0007], [0029] and [0039]) explicitly disclose the presence of pregelatinised starch in an amount from about 0.5% by weight to about 10% by weight based on the weight of stucco.  CSR has not suggested that the relative amounts of pregelatinised starch and stucco disclosed in the examples lie outside this range.          

23. Thus the most that could be said here is that the specification discloses a board having a density of about 33 pcf or less which exhibits the claimed ASTM requirements and includes the claimed amount of pregelatinised starch.  For the reasons I have already discussed, the specification does not, however, disclose a board which includes these features in combination with the claimed void size distribution.

24. I consequently find that CSR has made out its objections under sections 102(1) and 102(2)(b) with respect to feature 1.

    Features 5 and 6 (proposed claims 9 and 10)

25. Feature 5 is “the board has a density of about 32 pcf or less”, and feature 6 is “the board has a density of about 31 pcf or less”.  These features are respectively claimed in proposed claims 9 and 10 which are in turn appended to any one of the preceding claims.

26. As with feature 1, Dr Bruce and Mr Neil both acknowledge that the densities according to features 5 and 6 are encompassed by some of the examples disclosed in Tables 3, 6 and 7.[15]  However, Mr Neil has again submitted that the specification does not disclose a gypsum board having either of these densities in combination with other features of proposed claims 9 and 10, namely, those in respect of:

    • the distribution of core void sizes;
    • ASTM requirements; and
    • the amount of pregelatinised starch.[16]

    [15] Neil at [19]; Bruce BB-12 points 5 and 6

    [16] Neil at [20]

27. It quickly emerges that the issues in contention with regard to features 5 and 6 are essentially identical to those I have dealt with in relation to feature 1.  Consequently, and for the same reasons set out earlier regarding feature 1, I find that CSR has made out its objections under sections 102(1) and 102(2)(b) to features 5 and 6.

    Features 7 and 8 (proposed claims 11 and 12)

28. Feature 7 is “the board has a density of greater than about 10 pcf”, and feature 8 is “the board has a density of about 10 pcf to about 30 pcf”.  These features are respectively claimed in proposed claims 11 and 12 which are in turn appended to any one of the preceding claims.

29. Mr Neil submits that:

    “Whilst similar densities to those claimed in claims 11 and 12 appear to be disclosed in the description at Table 7, paragraphs [0001], [0008], [0071 and in the Abstract, the densities disclosed are actually the density of the set gypsum core, not of the gypsum board as a whole.”[17]

    [17] Neil at [23]

30. This submission is inconsistent with the conclusions Mr Neil has expressed as to board density in relation to features 1, 5 and 6.  As stated by USG:

    “… if Trial Board No 6 in Table 7 discloses, as Mr Neil has accepted, a board having a density of 33.6 pcf, then he must also accept that at least Trial Board Nos [5 to 13] in Table 7 disclose boards having a density greater than about 10 pcf and that at least Trial Board Nos [8 to 13] in Table 7 disclose boards having a density of about 10 pcf to about 30 pcf.  That being so, the attempt by Mr Neil and CSR to assert that features 7 and 8 were not disclosed because Table 7 concerned density of the set gypsum core, and not of the gypsum board as a whole, must be rejected.”[18]

    [18] USG written submissions at [100]

31. I agree.  Nevertheless, Mr Neil’s main point of contention is once again that the specification does not disclose a gypsum board having either of these densities in combination with the other features of proposed claims 11 and 12 that relate to:

    • the distribution of core void sizes;
    • ASTM requirements; and
    • the amount of pregelatinised starch.

32. It is therefore suffice to say that for the reasons already discussed with reference to features 1, 5 and 6, I find that CSR has made out its objections under sections 102(1) and 102(2)(b) to features 7 and 8.

    E.2 Void Size

    Features 2, 3 and 4 (proposed claims 2, 5, 7, 24, 27, 28 and 40)
    Features 9 and 10 (proposed claims 25 and 26 respectively)
    Features 11 and 12 (proposed claims 29 and 30 respectively)
    Feature 13 (proposed claim 32)
    Feature 14 (proposed claim 33)
    Feature 15 (proposed claim 34)
    Features 16 and 17 (proposed claims 35 and 36 respectively)
    Feature 18 (proposed claim 37)

33. As will become apparent, these features can be dealt with collectively.  For now, I should explain that they are as follows:

    • feature 2: “the average air void size is less than about 100 microns in diameter”;
    • feature 3: “the majority of air voids have a diameter of about 100 microns or less”;
    • feature 4: “the air void size having greatest frequency is a diameter of about 100 microns or less”;
    • feature 9: “the average air void size is between about 10 microns in diameter and about 100 microns in diameter”;
    • feature 10: “the average air void size is between about 20 microns in diameter and about 100 microns in diameter”;
    • feature 11: “the set gypsum core has a total void volume from about 75% to about 95%”;
    • feature 12: “the set gypsum core has a total void volume from about 80% to about 92%”;
    • feature 13: “the voids having a pore size greater than about 100 microns in diameter comprise at least about 20% and less than about 40% of the total void volume of the set gypsum core, wherein the voids are measured using scanning electron photomicrograph imaging”;
    • feature 14: “wherein voids having a pore size of more than about 10 microns and voids having a void size of less than about 5 microns are in a ratio from about 2.3:1 to about 9:1”;
    • feature 15: “wherein about 10% to about 35% of the voids are less than about 5 microns in diameter”;
    • feature 16: “wherein the set gypsum core has about 20% to about 40% of the voids having a pore size in the range of about 10 to about 50 microns”;
    • feature 17: “wherein the set gypsum core has about 30% to about 50% of the voids in the range of about 10 to about 100 microns”; and
    • feature 18: “wherein about 70% to about 90% of the voids have a pore size of more than about 10 microns”.

1. It is not in dispute that features 2, 9 to 12, 15 and 18 are individually disclosed in the specification.  However, CSR asserts that there is no disclosure at all of the balance of the features listed above.  Regarding feature 3, for example, Mr Neil has submitted that:

   “… I note that while paragraphs [0008] and [0011] disclose that ‘at least 60% of the total void volume comprises air voids having an average diameter less than about 100 microns’ (emphasis added), that is quite a different limit to a majority of air voids having a diameter of about 100 microns or less.  Similarly I note that paragraph [0026] states that ‘in a preferred embodiment, the void/pore size distribution within the set gypsum core is greater than about 100 microns (20%)’.  Whilst the inverse of this statement is that 80% of the voids within the set gypsum core have a diameter of about 100 microns or less, this is not a disclosure that the invention will work if ‘the majority of air voids have a diameter of about 100 microns or less’ as:

   a)a limit of 80% is a far more stringent limit than a majority of air voids having a diameter of about 100 microns or less; and

   b)the statement in paragraph [0026] does not distinguish between air and water voids.”[19]

   [19] Neil at [32]

2. Dr Bruce likewise argues that the proposed claims are broader than the disclosure in the body of the specification, and adds that “no supporting air void diameter measurement data is disclosed in any of the application examples or anywhere else in the application”.[20]  The relevance of this additional statement has not been made apparent to me.

   [20] Bruce BB-12 at point 3

3. As regards Mr Neil’s submission, it is true that paragraphs [0008] and [0011] of the specification appear at first to relate to a measure which is separate to that of feature 3.  Prof Liu has given evidence that a relationship between the two measures can nevertheless be inferred.[21]  I am not entirely convinced of this.  USG has put the alternative proposition that “if at least 60% of the total void volume comprises air voids having an average diameter of less than about 100 microns … then a majority of the air voids must have a diameter of about 100 microns or less”.  It says that this information “would be implied by a PSA”.[22]  Furthermore, Prof Liu points out that Mr Neil’s analysis of paragraph [0026] overlooks the fact that it commences with the sentence “It is preferred that the average air (bubble) void size be less than about 100 microns in diameter”.  The clear suggestion here is that the remainder of paragraph [0026] relates to air voids alone.  To me, this is the only way in which paragraph [0026] can be sensibly read. 

   [21] Liu at [34]

   [22] USG written submissions at [121]

4. As another example, CSR submits that although the specification discloses a feature similar to feature 14, there are some discrepancies:

   “Professor Liu asserts (at [47]) that [0025] and [0021] of the Application in combination provide support for this feature and that ‘the claim defines for that claim the size voids to measure’.  As Mr Neil notes, paragraph [0025] of the Application discloses that the ‘ratio of air voids (greater than about 10 microns) to water voids (less than about 5 microns) within the set gypsum core can range from about 1.8:1 to about 9:1’.  This is, quite simply, not the same as any void-type (be it a water void or an air void) of a certain void size being present in the same ratios as identified for air voids greater than 10 microns and water voids less than 5 microns.  Presumably air voids less than 10 microns and water voids greater than 5 microns are disregarded for the purposes of determining the ratio of air voids to water voids in paragraph [0025] of the Application, which is not what amended claim 33 says.”[23]

   [23] CSR written submissions at [85]

5. I note in this regard that Prof Liu has agreed that air voids can be smaller than 10 microns and water voids can be larger than 5 microns.[24]  USG nevertheless argues that the skilled addressee would understand from paragraph [0021] that in the present context voids having a pore size of more than 10 microns are air voids, while voids having a pore size of less than 5 microns are water voids.

   [24] Liu at [47]

6. However, as it turns out it is not necessary for me to determine whether or not the specification has individually disclosed the features in dispute, that is, features 3 to 8, 13, 14, 16 and 17 listed above.  This is because ultimately CSR’s primary objection to these features is once more grounded on the contention that the specification does not disclose them in combination with:

   • the claimed board density;
   • the claimed distribution of core void sizes;
   • the claimed ASTM requirements; and
   • the claimed amount of pregelatinised starch.

7. I have previously expressed the view that at best the specification discloses a board having the claimed density which exhibits the claimed ASTM requirements and includes the claimed amount of pregelatinised starch, but did not disclose a board in which these features are combined with the claimed void size distribution.  As also said earlier, Table 7 sets out a number of void characteristics.  There is, however, no evidence to show that these void characteristics are interconnected with the features presently in issue. 

8. I therefore find that CSR has made out its objections under sections 102(1) and 102(2)(b) with respect to each of the above-listed features relating to void size.

   CONSIDERATION: SECOND SECTION 102(2)(B) OBJECTION

9. CSR submits that the specification as proposed to be amended does not satisfy the requirement of section 40(2)(a) that it describe the invention fully including the best method known to USG of performing the invention. 

   Legal principles

10. The first limb of that requirement, namely, that the invention be described “fully”, imports the requirement of sufficiency of description.  The test for assessing sufficiency was expressed by the High Court in Kimberly-Clark at [25] as:

    “... will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?”

11. However, as explained in SNF (Australia) Pty Ltd v Ciba Speciality Chemicals Water Treatments Ltd [2011] FCA 452; 92 IPR 46 at [234]:

    “A specification is not insufficient merely because some experiment of a routine character (as distinct from prolonged study of matters presenting initial difficulty) is necessary in the particular case ... Nor is a specification insufficient because it fails to give detailed instructions as to matters which a ‘practical person ... would naturally settle, and expect to have to settle ... himself’, provided he ‘would find no difficulty in so doing’”.

12. Furthermore, there is no obligation that a claim has to be enabled over its full scope, nor for every possible application of the invention to work or to have been demonstrated to work (PhotoCure ASA v Queen’s University at Kingston [2005] FCA 344; 64 IPR 314 at [107] and [149], Bristol-MyersSquibb Co v F H Faulding & Co Ltd [2000] FCA 316 at [77]).

13. In addition to fully describing the invention, the specification must include the best method of performing the invention known to the applicant.  In American Cyanamid Company v EthiconLimited [1979] RPC 215 at 269, it was said in relation to a corresponding requirement:

    “The Act is intending to protect the public against a patentee who deliberately keeps to himself something novel and not previously published which he knows of or has found out gives the best results, with a view to getting the benefit of a monopoly without giving to the public the corresponding consideration of knowledge of the best method of performing the invention.”

    F.1 Density

    Features 1 and 5 to 8 (proposed claims 1, 4, 6, 8, 9, 10, 11, 12 and 39)

14. Each of the above features concerns board density.  I note as a preliminary point that the statement of grounds and particulars does not foreshadow an assertion that the specification fails to provide the skilled addressee with sufficient directions to produce a gypsum board having a density which accords with any of these features.  As stated by the delegate in Pacific Enterprises (Aust) Pty Ltd v Assa Abloy Australia Pty Limited [2012] APO 73 at [18], “The opponent is required to provide the material facts of their case in the Statement, and cannot simply wait until the service of evidence to make the case apparent.”

15. In any event, it is important to recall that the body of the specification has not been the subject of substantive amendment since filing.  I have already found on the evidence that the board densities according to features 1 and 5 to 8 were disclosed by the specification both as filed and as accepted.  Furthermore, the only difference between claim 1 at acceptance and as now proposed to be amended is that the board density of “about 35 pcf or less” in the former has been replaced by a density of “about 33 pcf or less” in the latter.  The board densities claimed by proposed claims 8 to 12 clearly fall within this range.  Proposed claims 3, 4, 6 and 39 effectively repeat accepted claims 4, 6, 7 and 16 with the only difference again residing in a maximum board density of about 33 pcf as opposed to about 35 pcf.  Thus, even if CSR’s assertion as to lack of sufficiency is accepted, this deficiency cannot be said to have resulted from the proposed amendments. 

16. Mr Neil has submitted that “There is no teaching in the description of how to produce a gypsum board with the densities described above, let alone in combination with the other features of those claims”.[25]  Mr Neil does not clarify what he means by the “other features of those claims”, but presumably has the features relating to ASTM requirements, pregelatinised starch and void size distribution in mind.  To reiterate, the accepted specification in my opinion disclosed a board having a density of about 33 pcf or less in combination with the first and second of these features, but not the third.  It is therefore again the case that any failure by the specification to teach how to produce a gypsum board comprised of this combination of features existed before amendment.  

    F.2 Void Size

    [25] Neil at [75]

    Features 2, 3 and 4 (proposed claims 2, 5, 7, 24, 27, 28 and 40)

17. CSR submits that nowhere in the specification is it taught how to produce a gypsum board with one or more of the following features present:

    • the average air void size is less than about 100 microns in diameter;
    • the majority of air voids have a diameter of about 100 microns or less; and
    • the air void size having greatest frequency is a diameter of about 100 microns or less.[26]    

    [26] CSR written submissions at [96]

18. None of these features were present in the claims as accepted.

19. The evidence of Dr Bruce, repeated almost verbatim in respect of each feature, is that:

    “No ‘best method’ of performing the invention to result in a board core with a majority of air void diameters of about 100 microns or less is described in the specification.  While it is well-known that the addition of soap foam to a gypsum board core slurry is used to control the density of a set gypsum board core, nowhere in the specification is it taught how to use the soap foam addition to achieve and consistently control the set gypsum board air void diameters.  In my experience it can be very difficult to precisely control the void distribution in the set gypsum core.  Without very explicit instructions on the foam used, how it is generated and how it is mixed into the slurry, the resulting void distribution is like a lottery.”[27]

    [27] Bruce BB-13 at point 3

20. Mr Neil’s evidence is to like effect:

    “Controlling the production of voids within a gypsum core to achieve a certain size and distribution is very difficult, particularly with respect to water voids.  It requires achieving the right balance of a number of factors which must then be made repeatable so that every board produced contains the desired void size and distribution.  This would involve, at the very least, considerations as to the stucco properties, slurry formulation, foam blend, foaming agent and conditions for generating that foam, all of which must then be made repeatable.  The claimed void size and distributions cannot be consistently replicated without being taught how to achieve it. 

    No such teaching of such factors and how to control them to achieve the highly specific parameters required is present in the specification …”[28]

    [28] Neil at [66]-[67]

21. CSR consequently submits that “USG has applied a certain method of controlling water and air voids, including through the use of a specific formulation used for forming the slurry, determined the relevant void size and distributions using SEM or XMT analysis and captured this as part of the Amended Claims, but failed to provide any teaching in the specification as to how to achieve it.”[29]

    [29] CSR written submissions at [102]

22. USG’s submits in response that the term “void size” has been consistently used in the claims before and after amendment, and therefore “cannot be impugned within the meaning of section 102(2)(b)”.[30]   I am not persuaded by this submission since it is clear from a comparison of accepted claim 1 and proposed claim 2, for example, that the term “void/pore size” has been used in both claims to designate properties of the gypsum board that are not necessarily interrelated.

    [30] USG written submissions at [197]

23. USG next relies on Prof Liu’s explanation of why the specification fulfils the requirements of section 40(2)(a).  Amongst other things, Prof Liu explains that:

    • It is commonly known in the field that the “density of a gypsum board can be varied by the amount of foam added to the core”;
    • The skilled addressee would be able to use “routine methods of soap foam generation” and the teaching of the specification, including paragraphs [0027] and [0028] and Examples 7 and 8, to “produce the void characteristics as claimed”; and
    • He requested a skilled addressee to follow the teachings of the specification to make board samples and that they “made a lightweight board with a density of about 33 pcf or less, a core hardness greater than about 11 lbs, and a void distribution as in claim 1”, thereby confirming that a skilled addressee could “make the claimed lightweight gypsum boards following the teachings of the patent application”.  The procedures followed and results obtained are set out at [26]-[46] of Prof Liu’s evidence in answer in the substantive opposition.[31]

    [31] Liu at [50], [52], [56]

24. This evidence stands uncontroverted.  More notably, Dr Bruce and Mr Neil have both criticised the specification as lacking any instructions on how to address the practical difficulties in precisely controlling the void distribution in the set gypsum core.  But this is not really to the point.  Neither witness has attempted to establish that in following the teachings of the proposed specification these difficulties could not be resolved by “some experiment of a routine character”. Furthermore, the question of whether the specification provides the best method of performing the invention is one of fact.  CSR has simply not provided any hard evidence that the specification falls short of meeting this requirement.

    Features 9, 10 and 13 to 18 (proposed claims 25, 26 and 32)

1. The issues arising here are the same as those discussed above[32] and hence can be similarly dispensed with.

   [32] CSR written submissions at [110]

2. I therefore find that CSR has not made out that the specification would, as a result of the proposed amendments, be non-compliant with the requirements of section 40(2)(a).  For the reasons I have given CSR has not discharged the onus it carries in showing that on the balance of probabilities the specification as proposed to be amended does not meet these requirements in respect of features 1 to 5, 8 to 10, and 13 to 18.

   CONCLUSION

100. The proposed amendments are not allowable in that they contravene section 102(1) and section 102(2)(b) to the extent that as a result of the amendments the specification would not comply with section 40(3).  I therefore refuse the amendments.

COSTS

101. CSR has been successful in relation to the majority of grounds relied on.  I see no reason to depart from the usual practice that costs follow the event.  I therefore award costs against USG. 

O L Haggar
Delegate of the Commissioner of Patents