CSR Limited v Renouf Industries Pty Ltd
[1999] APO 7
•28 January 1999
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application: No. 665445 in the name of CSR LIMITED
Title: Laminate Material
Action: S.59 opposition by RENOUF INDUSTRIES PTY LTD.
Application by CSR to serve further evidence.
Hearing.
Decision: Issued .
Abstract:Opposition unsuccessful.
Invention found to be a manner of manufacture, Phillips v Mirabella applied, "use of a known material" considered.
Re inventive step, invention found to be not "obvious to try", prior art in different field.
Earlier decision on related petty patent considered.
Application to serve further evidence refused.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Application No.665445 by CSR Limited and S.59 opposition by Renouf Industries Pty Ltd, and application by CSR to file further evidence.
BACKGROUND
Patent application 665445 (44376/93) was filed by CSR Limited (CSR) on 30 July 1993.
Priority is claimed from provisional specification PL 4048 filed on 11 August 1992. The application was advertised accepted on 4 January 1996 and opposed on 23 February 1996 by Renouf Industries Pty Ltd (Renouf). After the opponent served its evidence-in-support, the applicant requested on 14 November 1996 that the specification be amended under S.104, and on 26 May 1997 requested that the opposition be dismissed. The Commissioner's delegate decided on 16 June 1997 not to dismiss the opposition. The amendments were advertised on 9 October 1997 and allowed on 26 February 1998. Evidence-in-answer was completed by 25 September 1997, and evidence-in-reply by 23 April 1998.
The matter was heard in Canberra on 3 September 1998. The applicant was represented by Ms Katrina Howard of Counsel, Ms Caroline Bommer, patent attorney, and Mr Ken Bolton; and the opponent was represented by Mr Stephen Wilson, patent attorney.
On 31 August 1998 the applicant filed a request to file further evidence. This was only a few days before the hearing, so I allowed the opponent 21 days from the date of the hearing to make written representations concerning the application for further evidence; but in a letter dated 1 October 1998 the opponent indicated that it would rely on its submissions made at the hearing.
CSR followed application 665445 with a divisional application- No.655571 (66002/94) filed on 27 June 1994, which was sealed as a petty patent on 22 December 1994. On 16 November 1995 CSR filed an application for an extension of term of the petty patent which was published on 7 December 1995. On 22 November 1995 Renouf filed a notice under Section 28, together with evidence-in-support of the notice. On 6 February 1996 the patentee filed an application under section 104 to amend the petty patent specification, and these amendments were advertised allowed on 3 October 1996. The patentee’s evidence-in-response was filed on 17 October 1996.
The Commissioner's delegate, Ms Thom, heard the S.28 matter on 25 February 1997 and issued her decision on 13 May 1997 [1997] APO 16. Ms Thom decided that the informant failed to establish that the petty patent was not valid. I will refer to her decision in my decision because it is pertinent to the current matters and it was referred to at the hearing.
Upon a request from both parties, another delegate of the Commissioner decided that the declarations filed in relation to the S.28 notice on the petty patent would be treated as part of the evidence in the present opposition.
THE SPECIFICATION
The specification is entitled “Laminate Material”. The specification indicates that the invention relates to insulating flexible thin sheet laminate materials suitable for use in roofing construction. It is stated that the invention was developed primarily for use as a thermal insulator and sarking membrane that can withstand cyclonic weather conditions.
The prior art is described. The use of highly reflective foils as a thermal insulator is apparently well known and a wide variety of products is available. As foil is relatively expensive it is desirable to use a very thin layer attached to a substantially cheaper supporting substrate. In the past thin layers of aluminium foil had been adhered to paper backing sheets. A requirement of such roofing materials is that they act as a sarking membrane sealing out dust and wind driven rain, therefore the laminate must have a water resistant outer surface most commonly achieved either by some form of bituminous coating or by the attachment of another layer of foil once again laminated to a supporting paper substrate.
It is also necessary to provide a safety mesh in roofing constructions that will support a tiler, for example, should he lose his footing during construction of the roof. As insulating foil materials do not generally meet this strength requirement it is often necessary to use an additional safety mesh with additional expense.
Products which meet both strength and safety requirements are then described including “Supersisalation” made by ACI. It is stated that such products can be heavy and expensive. These products comprise multiple layers of foil, paper and reinforcing mesh. Apparently the layers of paper are known to fail after repeated folds which may affect the strength of the products.
Preferred embodiments of the invention are described including preferred forms of the backing sheet, density of the sheets, thickness of the foil and method of adhesion. A method of making the sheet is then described.
The specification, as amended, ends with 22 claims defining the invention. Some of the claims are as follows:
"1 . A paperless sarking membrane comprising an insulating flexible thin sheet laminate material including:
a reinforcing polymeric backing sheet adhesively bonded on one side to an outer layer of foil, said foil having a thickness of 50 microns or less,said reinforcing backing sheet having a water resistant coating on its outer side remote from said layer of foil that is selected from the group comprising polypropylene, polyethylene and PVC, and
wherein said laminate material is adapted for use as a roofing safety mesh and is capable of supporting the weight of a man.
2. A sarking membrane according to claim 1 wherein said reinforcing polymeric backing sheet is solely polymeric.
3. A sarking membrane according to claim 1 or claim 2 consisting solely in said reinforcing polymeric backing sheet adhesively bonded on one side to said outer layer of foil.
4. A sarking membrane according to claim 1 or claim 2 wherein said reinforcing backing sheet comprises a woven fabric of polymeric fibres.
5 . A sarking membrane according to claim 4 wherein the fibres are made of one or more polymeric materials selected from the group including polypropylene, polyethylene and polyester.
18. A method of making a paperless sarking membrane comprising a flexible thin sheet insulating laminate material adapted for use as a roofing safety mesh and capable of supporting the weight of a man, said method comprising the steps of:
adhesively bonding an outer layer of foil having a thickness of 50 microns or less to a reinforcing polymeric backing sheet that has a water resistant coating on its outer side remote from said layer of foil.19. A method of making a paperless sarking membrane comprising a flexible thin sheet insulating laminate material adapted for use as a roofing safety mesh and capable of supporting the weight of a man, said method comprising the steps of:
applying to a polymeric reinforcing backing sheet that has been pre-coated on one side with a water resistant coating a layer of adhesive on the surface remote from said coating;
feeding said backing sheet with layer of adhesive to a pair of nip rollers;
simultaneously feeding to said nip rollers a layer of foil having a thickness of 50 microns or less in an orientation so as to align directly adjacent the layer of adhesive on said backing sheet; and
laminating said foil to said backing sheet under heat and pressure applied to said nip rollers."
The petty patent specification ends with three claims:
“1. A paperless sarking membrane in the form of a flexible thin sheet insulating laminate material, said laminate material comprising:
a reinforcing solely polymeric backing sheet adhesively bonded on one side to an outer layer of aluminium foil, the foil having a thickness of 50 microns or less;
said reinforcing backing sheet having a water resistant coating on its outer side remote from said layer of aluminium foil; and
wherein said laminate material is also adapted for use as a roofing safety mesh.2. A paperless sarking membrane according to claim 1 wherein the aluminium foil has a thickness of about 6.35 microns.
3. An insulating laminate material according to claim 1 or claim 2 wherein the backing sheet is adhesively bonded to the outer layer of foil by a hot melt fire retardant adhesive.”
GROUNDS OF OPPOSITION
In the Statement of Grounds and Particulars Renouf asserts that the claims are not novel, do not comply with subsection 40(3) of the Patents Act 1990, and lack an inventive step; and that the alleged invention is not a manner of new manufacture. Various particulars under each of these grounds are set out.
THE EVIDENCE
The significant declarations in the opponent's evidence-in-support are summarized as follows:
A declaration dated 21-11-95 by Hilton Batt and Exhibits HB 1-14.
Mr Batt declares:
From 1966 to 1986 he was employed by Renhurst Industries who were a manufacturer of foil laminate materials for use in building insulation. Since that time he has worked as a consultant in the foil laminate industry.
A sarking membrane is a water impermeable membrane which is attached under tiled roofs, most commonly in windy areas, to catch any water which happens to infiltrate through the main roofing material, and to direct that water downwards into the gutters. Typically, the sarking material contains aluminium foil to additionally act as a heat insulation barrier. The sarking membrane is installed laterally across the rafters of the roof in overlapping layers, under the tiling battens.
Whether a material is “suitable for use as a sarking membrane” would depend solely on whether the material is capable of acting to direct water falling through a roof into the gutters. The phrase does not make any implied reference to building regulations, Australian Standards or the like which may contain certain requirements for sarking membranes. The material described in the patent would not have satisfied these codes and standards as they were on 11 August 1992.
Although the requirement for the installation of a wire safety mesh under brittle roofs such as corrugated fibre reinforced cement and plastic sheeting is well-known throughout Australia, the requirement to use safety mesh under tiled roofs is restricted to Queensland. The suitability of a material would depend on whether it would function to prevent a person who falls through or off the roof from injuring themselves. This would depend on the level of risk involved, the means by which the sarking is attached to the roof and the manner on which a person is considered to be likely to fall onto the material. The patent specification does not spell out any criteria by which the safety mesh should be tested or any fixing procedure.
The ACI product “Super Sisalation” is well known in the field and the subject of Australian patent No.570338 (HB-11). This product has nine layers of materials, including paper layers, but claim 1 of the petty patent is an "obvious variant of the material described in the ACI patent" because it would have been obvious to simplify the product by using only some of the layers. There were a number of reasons why ACI would have preferred a more complex product; the paper layers for example produce a relatively stiff membrane which has superior "wind flap" characteristics.
A declaration dated 21-11-95 by Michael Renouf and Exhibits MR 1-9.
Mr Renouf declares:
That for approximately the last five years he has been the manager of Renouf Industries Pty Ltd who have been actively involved in the sale or manufacture of aluminium laminates for building insulation purposes since 1983. He agrees with the comments of Hilton Batt.
In respect of the term “safety mesh”, if a tiler working on a roof were to fall in to the sarking membrane, the manner of the fall may be such as to penetrate the sarking membrane, even if that membrane was capable of supporting the person when standing on the suspended membrane, for example if the falling tiler was holding a sharp instrument that pierced the material.
The term “able to support the weight of a man” is indefinite as used in the specification because of the variation in weight of men. The specification is silent as to how the material is attached to the roof, or how or whether the overlapping layers are to be fixed between the rafters which would affect its supporting ability.
A declaration dated 21-11-95 by Hilton Edward Renouf .
Mr Hilton Renouf declares that he was a director of Renhurst Industries Pty Ltd involved in the manufacture and sale of foil insulation until 1986. In the mid 1950’s he was the Victorian Sales Manager of Australian Sisalkraft. He also declares that Australian Sisalkraft produced a single sided reinforced paper/bitumen/foil laminate with a polyethylene surface extruded onto the top paper side to provide a cheaper scuff-resistant and highly waterproof surface while avoiding the glare from the conventional upper foil surface.
A declaration dated 22-11-95 by Ian McDowall Martin.
Mr Martin is the manager of ACR Reconstruction Company Pty Ltd, engaged in the business of building construction. He had used a reinforced plastic material sold under the name Canvacon since about August 1991 in installations in the chicken industry to provide a barrier beneath roof sheeting in the same manner as a sarking membrane.
A declaration dated 16-8-96 by Hilton Batt and Exhibit HB-1.
This second declaration by Mr Batt specifically addresses the present specification, whereas his first declaration addresses the petty patent specification. He declares that his earlier comments are applicable to present claim 1, and he comments on each of the present appended claims, as filed.
HB-1 consists of copies of two US patents, US 3,844,878 and 4,936,938, both of which describe multi-layered strip roofing materials comprising aluminium foils, and fibrous bases, such as asphalt impregnated felt "paper", bonded by polymeric materials. Polymeric moisture-proof layers are also disclosed.
The significant declarations in the applicant's evidence-in-answer are summarized as follows:
A declaration dated 17-10-96 by Stan Goodacre and Exhibits SG 1-5.
Mr Goodacre was employed by ACI (formerly Australian Sisalkraft Pty Ltd) from 1955 to 1987 during which time he co-invented the first laminate material suitable for use in place of a safety mesh used in roofing which was to become the subject of Australian Patent 570338 (the ACI patent). Since retiring from ACI he has worked as a specialist consultant within the foil laminate industry. He declares:
One use of a sarking membrane is to catch driven water which infiltrates through the main roofing material, but it is also used as thermal insulation and to divert water which may penetrate the outer roof cladding.
The Building Code of Australia 1990 defines sarking materials as “a reflective foil or other flexible membrane of a type normally used for a purpose such as waterproofing, vapour proofing or thermal reflectance”. The Building Code also specifies that sarking for general building purposes must have a flammability index of not more than 5.
He strongly disagrees that “suitable for use as a sarking membrane” has no implied reference to building regulations and believes that a person skilled in this field would turn to these regulations to determine whether or not a material is “suitable for use” in this context. Mr Goodacre then addresses the relevant regulations and the degree to which the CSR material complies with the regulations.
ACI Supersisalation was approved in Queensland as an alternative to safety mesh in domestic roofing and this demonstrated that the relevant authorities had no difficulty in understanding the concept of a material “suitable for use as (or as an alternative to) a safety mesh”.
If there was any ambiguity in the meaning of “suitable for use as a safety mesh” then it is clear from the specification that the product of the patent must have the strength characteristics at least equal to that of the paper containing prior art products such as Supersisalation.
It was six years after Supersisalation entered the marketplace that the CSR product was proposed. Its simplicity supports the view that its success was very unexpected otherwise it would have been tried before.
Vacuum deposited layers of aluminium are extremely thin and hence subject to oxidative degradation over lengthy periods and are therefore unsuitable as insulating materials in buildings where the products must last at least 20 years. Also it is the low emissivity of foil surfaces that provides the thermal insulation benefit, vacuum deposited layers of metal require a protective coating which increases emissivity.
If the product of the present invention had been proposed to Mr Goodacre at any stage prior to the release of the CSR product he would have been reluctant to pursue it because of concerns about adhering the foil directly to a layer of plastic in terms of the wear and durability of the reflective surface.
A declaration dated 15-10-96 by Michael Smith and Exhibits MS 1-4.
Between 1975 and 1986 Mr Smith was employed by Renhurst Industries and since 1987 at CSR Foil. In his declaration Mr Smith generally agrees with the comments of Mr Goodacre.
A declaration dated 16-10-96 by Mario Peter Lattanzi and Exhibit MPL 1.
Mr Lattanzi is the Product Manager of Home Insulation Products of CSR Limited and has full access to the records of the Building Materials Division. He declares that the CSR product “THERMOTUFF” which is the product of the CSR petty patent 655571 was first launched on the market on or around January 1993.
From a diagram provided by Mr Lattanzi illustrating their best estimate of current market share in the relevant area of heavy weight foil sarking and roofing safety mesh materials it appears that the CSR share of the market is approximately 45% of the market and ACI holds a similar market share.
A declaration dated 24-9-97 by Stan Goodacre and Exhibits SG 1 and 2.
This declaration is directed to the present specification, whereas Mr Goodacre's first declaration is directed to the petty patent. He declares:
That none of the cited prior art discloses the features of present claim 1.
That although hot melt fire retardant adhesives were commonly used in sarking and insulation manufacture, they were not used in the manufacture of sarking laminates to adhere foil directly to a reinforcing polymeric backing sheet.
That the present invention is "extremely unconventional and it still surprises me that this construction was ever tried and indeed proved to be a commercial success."
That the 2 US patents cited in the second Batt declaration do not relate to sarking membranes of the kind presently under consideration.
The significant declarations in the opponent's evidence-in-reply are summarized as follows:
A declaration dated 25-3-98 by Dennis Fieldhouse and Exhibits DF 1-3.
Mr Fieldhouse is a manager at the Polymer Technology Centre, RMIT. He has extensive industrial experience in polymer technology including laminates and fabrics. Mr Fieldhouse suggests that present claim 1 "simply defines a laminate of a polymeric backing sheet and a layer of foil", and he declares that:
It is well known that sheets of aluminium foil have been bonded to polymeric backing sheets for use in industry.
The aluminium foil and the polymeric backing sheet simply provide known effects and that there is no synergistic effect in the laminate of the invention.
Since laminates of foil and polymer backing sheets are known, it is only a matter of routine testing to select a laminate which would be capable of use as a safety mesh and able to support the weight of a man, and there is nothing surprising in using such a laminate as a sarking membrane.
There is one reference in the exhibits to a polymeric laminate of aluminium foil laminated to PETP with an adhesive and then coated with LDPE by extrusion. This reference is from a book on packaging, and it is stated that this particular laminate "is good enough for the most sensitive freeze-dried foods and pharmaceutical preparations".
A declaration dated 21-4-98 by Greg Shah and Exhibit GS-1.
Mr Shah is also a manager at the Polymer Technology Centre, RMIT. He also has extensive industrial experience in polymer technology including laminates and fabrics; and he concurs with the comments made by Mr Fieldhouse.
A declaration dated 21-4-98 by Dennis Fieldhouse and Exhibit DF-4.
DF-4 comprises copies of magazine articles relating to laminates of aluminium foil and polymers used "for packaging electronic components and munitions".
APPLICATION TO FILE FURTHER EVIDENCE
The application by the applicant to file further evidence was accompanied by a declaration dated 31 August 1998 by Ms Bommer. She declares that:
The evidence-in-reply has not been fully considered by the applicant because initially there had been some hope of a settlement between the parties, but when it became clear that settlement could not be reached the hearing was imminent.
Much of the evidence-in-reply raises issues not previously raised by the opponent.
The further evidence seeks only to address the issue of whether the two new declarants in the evidence-in-reply are in fact persons skilled in the art.
The further evidence comprises further declarations from Messrs Goodacre and Smith.
DECISION
MANNER OF MANUFACTURE
At the hearing Mr Wilson submitted that his main thrust against the patentability of the present invention would be that it is not a manner of manufacture. He suggested that the invention comprises the mere gluing together of known foil and known plastic layers and that there is no synergistic effect of the laminated materials- each layer has its own known effects.
Mr Wilson's first submission on this ground was that the invention failed the threshold requirement for an alleged invention as set out by the High Court in Phillips v Mirabella (1995) 32 IPR 449. The requirement is that, on the face of the specification, it should be apparent that the invention is directed to a manner of manufacture; ie. a manner of new manufacture within the meaning of Section 6 of the statute of Monopolies.
Mr Wilson's reference to a lack of synergism in the invention seems to imply that the invention is a "mere collocation" of integers, but in my view the specification is directed to a laminated sarking membrane, which, prima facie, is a proper combination of known integers. Many patents have previously been granted for similar materials, including the opponent's own Supersisilation product (AU 570338), and the present invention has no less synergism than the prior art products. To me, the present invention satisfies the threshold requirement.
Mr Wilson made other submissions on this ground which alleged that the invention is a "mere use of a known material", and he referred me to some judgements on this area of the law. Ms Howard submitted that the law on mere use of a known material was not applicable in this case since the invention was a simple two-layered structure and was a simplification of the prior art.
Whilst I tend to agree generally with Ms Howard's submission (eg. it is not immediately obvious which layer is supposed to be the known material) I will nevertheless deal with the opponent's submission since it seemed to be the main thrust at the hearing.
"Use of a known material" is a traditional area of the law on manner of new manufacture, and according to the High Court in Phillips v Mirrabella, at 456, this traditional law is covered by S.18(1)(a) of the Patents Act. My understanding of this traditional law is that in assessing the subject matter of an invention one can "go outside the specification" in the sense that experts' opinions can be referred to but one cannot go so far as to allow mosaicing of prior art documents. In her decision on the petty patent. Ms Thom referred to the experts' declarations when considering this ground.
Ms Thom was also referred to the law on the new use of known materials. Eg. in Commissioner of Patents. v. Microcell Ltd., 102 CLR 232 at page 251, the High Court held that there was
"… in truth nothing but a claim for the use of a known material in the manufacture of known articles for the purpose of which its known properties make that material suitable. A claim for nothing more than that cannot be subject-matter for a patent, and the position cannot be affected either by the fact that nobody thought of doing the thing before, or by the fact that, when somebody did think of doing it, it was found to be a good thing to do".
Ms Thom decided that the petty patent is directed to a manner of manufacture, and that the evidence did not establish that it was known that the reinforced plastic material had properties that would make it suitable to be adhesively bonded to aluminium foil and used as a sarking membrane. She pointed out Goodacre's evidence, which indicates that it would be expected that the aluminium foil layer would crack because of different expansion properties.
Mr Wilson submitted that I should reconsider this matter because in the petty patent proceedings the opponent had no chance of reply and Goodacre's evidence was "untested". The evidence of Messrs Fieldhouse and Shah, in the evidence-in-reply, suggests that it is known to adhere aluminium foil to polymeric backing sheets, however, there is no evidence which shows that such laminates would be suitable as a sarking material, without the inclusion of paper layers. The examples referred to by Fieldhouse and Shah relate to the packaging field, and I imagine that this would be a field where there would be different environmental effects on the laminated materials to the environmental effects on sarking materials. Also, I note from their evidence that neither Fieldhouse or Shah could be considered as persons skilled in the art in the building industry, so Mr Fieldhouse's statement that there is "nothing surprising in the fact that [the laminate of the invention] could be used as a sarking membrane" does not have much probative value.
Mr Wilson submitted that
"… in consideration of the issue of manner of manufacture, it is not necessary to consider who or who is not the hypothetical skilled person in the relevant field. This issue may well be relevant to a consideration of inventive step, but for the purposes of manner of manufacture, we consider it as not relevant as the issue of manner of manufacture merely depends on what or what is not the known properties of the various materials used and whether the invention does no more than take advantage of those known properties or whether the invention results from some synergistic or new effect which is produced by the combination of the materials. This question is purely a matter of fact based on the evidence…."
I do not agree that the view of the person skilled in the art (PSA) is not relevant to a determination of manner of manufacture. The traditional issue of "mere use of a known material" whilst generally categorized under the heading of "manner of new manufacture", or "manner of manufacture", was nevertheless traditionally described as "subject matter" and does contain an element of "inventiveness" in the broad sense, and therefore it may be appropriate to sometimes refer to the PSA in dealing with this subject. I note also that Mr Wilson suggests that the question is purely a matter of fact based on the evidence, and in my view, if the evidence is referred to it has to be given appropriate weight, and that weight can be affected by whether the declarant is a PSA.
At the hearing the judgements of the Federal Court in Asahi v Grace (1991) 22 IPR 491 and in Grace v Asahi (1993) 25 IPR 481, were discussed. I note in this recent case that the same reasons were used to determine that the invention was obvious and that the invention was not a manner of manufacture. I think this demonstrates the overlap of these two patent law concepts.
Thus I conclude that the evidence does not show that the known polymer backing sheets had known properties which would make them suitable to be adhesively bonded to aluminium foil and used as a sarking membrane. The invention is therefore not a mere use of a known material.
NOVELTY
In her decision on the petty patent, Ms Thom decided as follows:
"No single piece of prior art discloses all of the features of claim 1. In particular;
The most relevant documentary evidence AU 570338, the ACI patent, discloses a product that contains paper.
Many of the products included as exhibits contain a metallised film rather than a layer of foil adhesively bonded.
Laminates disclosed or sold or offered for sale by Lamotite in Australia contain glass fibre in the backing which is therefore not “purely polymeric”. There is no evidence that this product would not have sufficient strength.
“Space blankets” referred to in the declaration of Mr Batt also contain a layer of aluminium produced by metal vapour deposition and not a layer of foil.
Mr Batt refers to a reinforced plastic sheet having aluminium foil on one side imported from Japan (variously call CLAF or CLAFF). He states that it was intended for the flexible ducting market rather than sarking, but all that would be needed to make it suitable as a safety mesh would be to provide a heavier grade of the same material. From these comments I can conclude that this material lacked the strength to be “adapted for use as a roofing safety mesh”.
The substance “Canvacon” does not contain a layer of foil.
I conclude that the informant has not established that the claims of the patent lack novelty."
I agree with these comments insofar as the evidence in the petty patent case relates to the present application.
The two US patents referred to in the second Batt declaration relate to bituminous roofing materials, not to sarking materials. Present claims 1 and 18 limit the present invention to a sarking material for use as a roofing safety mesh capable of supporting the weight of a man. The US citations do not disclose these features of the present claims therefore I find that the present claims are novel.
Mr Wilson's submissions refer to claim 1 not being novel in the light of one of the exhibits to the Fieldhouse declaration. He notes though that there is no disclosure of the cited laminate being suitable as sarking, but argues that the use of the present claimed membrane is not a feature which adds novelty to the claim. I disagree with this assessment; in my view the use aspect of claim 1 is an essential feature; the claim per se, the description of the invention and the evidence all indicate that the use of the membrane as a sarking material is in fact the crux of the invention.
INVENTIVE STEP
The part of Ms Thom's decision on inventive step relating to the petty patent is set out as follows. In my view her decision is also applicable to the present claims.
"A useful approach used by the courts to assess whether an alleged invention has an inventive step is the problem/solution approach. The problem that the claimed invention solves is set out in the specification. It is to provide a strong, lightweight and relatively inexpensive roofing insulation and sarking material that would also be suitable for use as a roofing safety mesh.
It is necessary to establish the common general knowledge in the relevant field at the priority date. The relevant field is the building industry, more particularly roofing products. In the section 28 notice the informant sets out the following as common general knowledge.
(a) The characteristics of the ACI Supersisalation product in Australia
The patentee does not dispute that this was common general knowledge.
(b) The common practice of laminating aluminium foil with layers of flame retardant adhesive and reinforcing material and to use this as sarking material and safety mesh.
This has only been established for reinforcing material containing paper as in the ACI product.
(c) The wide availability of reinforced sarking membranes with foil on one or both sides and with plastic coating on at least one side.
Mr Hilton Renouf refers to a single sided reinforced paper/bitumen/foil laminate with a polyethylene surface extruded onto the top paper side made in the 1950’s. There is no evidence that establishes this as being common general knowledge at the priority date of the claims.
Mr Michael Renouf refers to Australian Standard AS3999 which states in sub-section 1.6.4(a) concerned with flexible sarking membranes that “commonly used materials are reflective foil laminate and plastics film”. This does not mean that the film is used to coat the foil laminate.
He also refers to an ACI product “Sisalation 430WP” sold from 1984 which was two layers of an aluminium foil/polymeric adhesive/high density kraft paper laminate bonded together with a flame retardant adhesive, and reinforced with glass fibres with one surface extrusion coated with white polyethylene, and a CSR product “Thermoplast” comprising polypropylene, hotmelt flame retardant adhesive and fibreglass reinforcing mesh, paper adhesive and foil.
The substance “Claff” was intended for the flexible ducting market and was therefore outside of the relevant field.
(d) The wide availability of reinforced plastic materials in Australia, including those sold by Sarlon Industries, which on their own would be suitable as a sarking material and safety mesh, many of which have been used as tarpaulins or in roofing applications.
I accept from the evidence that a number of reinforced plastics materials of sufficient waterproofing and strength to be suitable to be used as a safety mesh were known and used in Australia. Although Mr Batt states that the Sarlon material would, on its own, have been obviously suitable as a sarking membrane and safety mesh this is with the benefit of hindsight and the evidence does not establish that it was common general knowledge at the priority date to use these materials as sarking membranes. Similarly I have no evidence to confirm that “Canvacon” in particular was common general knowledge.
Mr Goodacre also points out that tarpaulins would not have the property of flame retardancy which he believes is necessary for a membrane to be considered as a sarking membrane. As stated above, I do not accept that this is necessarily a requirement of sarking membranes.
(e) The sale of metallised and foil laminated plastic films for a wide variety for other applications.
I accept from the evidence that metallised and foil laminated plastic films were known for other applications, and that it was known to use foil for its insulating properties.
The informant also refers to four documents:
(a) Australian Patent 570444 in the name of ACI Limited.
(b) A product brochure published in May 1986 in relation to the ACI Supersisalation product.
(c) A product brochure published in Australia in July 1984 in relation to the ACI Sisalation 430 WP product.
(d) Product brochures published in 1990 and 1991 in relation to the CSR Thermofoil product:
All of these documents are in the field of sarking membranes and all are from companies known for their work in this field at the priority date. I am satisfied that the person skilled in the art could have been reasonably expected to have ascertained, understood and regarded as relevant each document when faced with the problem as set out in the specification. Thus I can consider each of these document separately in the light of the common general knowledge. The relationship between the documents is not such that I can consider any combination of them as a single source of information.
Mr Batt indicates that it was contemplated in the industry to revise the requirements of sarking membranes. In particular there was a meeting on 10 August 1992 at the Standards Australia headquarters in Sydney to discuss revision of the relevant standards. Amongst the items for discussion were:
1 The removal of product weight as a performance requirement
2. Removal of the reference to paper in the product construction
3. The allowance of reflective products having foil on one side only
4. Acknowledgment of the use of plastics in sarking material.
It was submitted that this meant that the day before the priority date it was contemplated by some people in the art that single sided foils with plastics but not paper could be suitable for sarking membranes. Although these items were on the agenda for discussion on this date it is not clear from the evidence how generally accepted these ideas were and I cannot conclude that this represented common general knowledge at the priority date.
Mr Batt stated that the simpler product of the CSR patent was a logical progression from the ACI Super Sisalation product, which would immediately occur to a person who, before 11 August 1992, was attempting to create a low-cost alternative product. The incentive to remove the layer of paper was to avoid infringement of the ACI patent. A polymeric backing sheet suitable to be used as a sarking membrane and strong enough for a safety membrane was known and available and since it was standard practice to create insulating materials with the use of foil, and to adhere them to surfaces with fire retardant adhesive, it would therefore have been obvious to glue foil on to one side of the backing sheet to make it behave as an insulating material.
Mr Wilson for the informant submitted that there was no inventive step in putting together the plastic sheeting of the prior art with a layer of foil.
Ms Bommer submitted for the patentee that there was no evidence that it would have been obvious or possible to remove both layers of paper from Super Sisalation or otherwise modify the product to result in a sarking membrane as claimed. The evidence of Goodacre and Smith suggests that it was widely considered within the industry that a paperless product using a paperless backing would not work due, for example, to the significantly different extension properties of the foil and the backing. Goodacre states that he would have been reluctant to pursue it on the grounds that he would, for example, have been concerned about adhering the foil directly to a layer of plastic in terms of the wear and durability of the reflective surface and cracking in the foil layer. It was assumed that a paperless product would lead to cracking and delamination in the intended application.
It was also argued that there were not insignificant difficulties to be overcome in developing the invention in that it had taken several years, involving a number of polymeric fabric manufacturers and required about 30 full factory trials and that the end result was a major commercial success.. I was referred to Tidy Tea v Unilever 32 IPR 405 in which the commercial success of a device fulfilling a long felt need not previously met was described as a strong indicator of inventiveness but I note from Allsop Inc v Bintang Ltd 15 IPR 686 that it is necessary to determine when that need began and to establish that attempts were being made to solve a problem. The Super Sisalation product had been on the market for about six years prior to the filing of the CSR patent and during this time research was carried out to provide a paperless alternative.
On balance I accept the submissions of the patentee that, if the product as claimed had been an obvious development from Super Sisalation, it would not have taken six years for this development to occur."
With regard to the additional evidence adduced for the present application, Mr Wilson submitted:
that the evidence of Fieldhouse and Shah establishes that it is common in Australia to laminate a reinforcing polymeric backing sheet with an aluminium foil for a variety of uses, and
that the mere choosing of a known laminate formed from a polymeric backing sheet and aluminium foil for use as a sarking membrane does not involve an inventive step.
In my view the evidence is insufficient to establish lack of inventive step. I have already indicated that Fieldhouse and Shah are not PSAs in the building industry, therefore their opinions on the inventiveness or otherwise of selecting a known type of laminate material for use as a sarking material are of low probative value. The packaging materials referred to by these declarants do not immediately stand out as also being possible sarking materials; it is not obvious for example that these materials could be adapted for use as a roofing safety mesh or would be capable of supporting the weight of a man. Furthermore, I think the evidence is insufficient to show that the combined features of polymeric backing sheet with aluminium foil on one side and water-resistant coating on the other side is a matter of common general knowledge.
At the hearing, the Asahi v Grace judgements, supra, were discussed in relation to inventive step. This seems to have been one of the few cases where the "Microcell principle" has been applied successfully. In the Asahi v Grace case claims were found to be obvious in the light of magazine articles which formed part of the common general knowledge. The invention related to a thermoplastic multi-layer packaging film. The patentee had taken a new component (VLDPE) and tried it out in place of an existing component (EVA). It was held that there was nothing inventive in this given that it was specifically promoted in the magazine articles. It was found that the invention was "obvious to try" and that it was merely a "result of a process of routine testing of commercially available new products".
Mr Wilson submitted that the circumstances of the present case are similar to those in Asahi v Grace. He drew parallels between the layer replacement in that case and the polymer layer replacing prior art paper layers in the present case. Ms Howard submitted that the Asahi v Grace case was not relevant precedent because the circumstances of that case do not relate to one group of materials being substituted for another group of materials, and there is no equivalent to advertising a replacement material with suitable properties.
I agree with the applicant's submissions in this matter. The present circumstances do not involve prior art which makes it obvious to try the present invention; an equivalent would have been an article suggesting that paper did not have to be used in sarking material. In my view the disclosure in the magazine articles in the Asahi v Grace case was much closer to that invention than the prior art in the present case. In the former case the magazine articles were in the field of the invention; whereas in the present case much of the prior art is in a different field of endeavour. Furthermore, I note that the full Federal Court in Asahi v Grace also found the patent to be not novel in the light of the magazine articles.
SECTION 40
The Statement of Grounds and Particulars referred to several grounds under S.40, but these grounds were not pursued at the hearing nor are they referred to in the opponent's written submissions. Some terms used in both the petty patent and the present specification were fully discussed by Ms Thom in her decision on the petty patent. The evidence generally suggests that the parties' experts had little difficulty with the construction of the claims and specification, and no S.40 issues arose from matters dealt with at the hearing.
Under these circumstances, I do not think it is necessary for me to further consider any matters under S.40, and I conclude that there are no valid S.40 objections to the specification.
FURTHER EVIDENCE
The applicant alleges that much of the evidence-in-reply raises issues not previously raised by the opponent; but the opponent submits that the evidence-in-reply is responding to Mr Goodacre's point that he would have serious doubts about the suitability of the laminate for the purpose of a sarking material as it would be expected that the aluminium foil layer would crack. In my view there is somewhat more emphasis on the issues of inventiveness and manner of manufacture than in the evidence-in-support, but I generally agree with the opponent that the evidence-in-reply is properly in response to the applicant's evidence alleging that the invention is simple, and surprising.
Also, I have found that, based on the evidence already adduced, that there is no objection to the present specification. Therefore it is not necessary to adduce further evidence for the applicant. However, I have an application to file further evidence before me and it is appropriate to decide whether to allow the application. So, taking into account the matters referred to above, I refuse the application to serve further evidence.
CONCLUSION
I have found that the opposition to the specification is not successful because the invention defined by the claims is novel and includes an inventive step, and there are no valid S.40 objections to the specification. I direct therefore that the application and complete specification proceed to sealing.
Also, I have refused the application to serve further evidence.
COSTS
In matters before the Commissioner costs usually follow the event. In this case I see no reason why I should not follow the usual practice, so I award costs associated with the opposition against the opponent, Renouf Industries, and I award costs associated with the application for further evidence against the applicant CSR Limited.
John Welsh
Delegate of the Commissioner of Patents
Patent attorneys for the patentee: Shelston Waters, Sydney
Patent attorneys for the informant : Griffith Hack, Melbourne
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