Csr Limited v Renouf Industries Pty Ltd
[1997] APO 16
•13 May 1997
official notice
decision of a delegate of the commissioner of patents
Petty Patent : No. 655571 in the name of CSR LIMITED
Title: Laminate Material
Action: Section 28 notice by Renouf Industries Pty Ltd
Decision: Issued .
Abstract
The priority date is the date of filing of the provisional application. The informant fails to establish that the petty patent is not valid and the extension of term of the petty patent is granted. The further evidence is not allowed.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Petty Patent No.655571 by CSR Limited and notice under section 28 by Renouf Industries Pty Ltd.
background
Patent application 66002/94 was filed by CSR Limited (CSR) on 27 June 1994 as a divisional application of 44376/93 filed on 30 July 1993 and claiming priority from provisional specification PL 4048 filed on 11 August 1992. Following an examiner’s report a request to amend was filed on 14 October 1994. The amendments were allowed and the patent accepted on 26 October 1994. The petty patent was sealed on 22 December 1994.
On 16 November 1995 the patentee filed an application for an extension of term of the petty patent which was published on 7 December 1995. On 22 November 1995 Renouf Industries Pty Ltd (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. These amendments were advertised allowed on 3 October 1996. The patentee’s evidence in response was filed on 17 October 1996.
A hearing was set down in Canberra for 25 February 1997. The patentee was represented by Ms Caroline Bommer, patent attorney, assisted by Mr Jeff Sweetman, both of Shelston Waters, Sydney. The informant was represented by Mr Stephen Wilson, patent attorney of Griffith Hack, Melbourne.
The specification
The petty patent specification is entitled “Laminate Material”. The specification indicates that the invention relates to insulating laminate materials and in particular to 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. The invention is then described in the same terms as claim 1.
Preferred embodiments 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 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.”
The section 28 notice
In the section 28 notice Renouf asserts that the claims are not novel, do not comply with subsection 40(3) of the Patents Act 1990, lack an inventive step and that the alleged invention is not a manner of manufacture. It is also asserted that the priority date of the claims is 14 October 1994. Various particulars under each of these grounds are set out.
At the hearing Ms Bommer pointed out that certain prior art that was referred to in the declarations was not particularised in the notice. She submitted that this art was not admissible under the heading of novelty.
In Section 28 proceedings the purpose of the notice is to notify the Commissioner that there are matters that affect the validity of the patent and to give reasons for the invalidity. I do not think that the word “reasons” requires the same level of detail as “particulars”. As the relevant documents including declarations are filed together with the section 28 notice there is no strict requirement for the notice to give the applicant prior notice of the case to be met by setting out the particulars under each ground as is required in a statement of particulars under section 59 opposition proceedings. I will therefore be considering all relevant prior art referred to in the evidence.
Evidence
A number of declarations were filed as evidence of which I have summarised the most relevant.
Evidence in support
Hilton Batt
From 1966 to 1986 Mr Batt 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 so as to in addition 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 was “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 an Australian patent.
Various prior art products are described which I refer to under “Novelty” below.
Michael Renouf
In his declaration dated 21 November 1995 Mr Michael Renouf states 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” Mr Michael Renouf comments that 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.
This declaration also contains references to prior art products which I consider further below.
Hilton Edward Renouf
Mr Hilton Renouf 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
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.
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.
Evidence in Response
Stan Goodacre
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.
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 as an alternative 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 CRS 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 as claimed 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.
Michael Smith
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.
Mario Peter Lattanzi
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.
The CSR product “THERMOTUFF” which is the product of the CRS 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 that the CSR share of the market is approximately 45% of the market and ACI holds a similar market share.
Decision
Priority date
The informant submitted that the priority date of claims 1, 2 and 3 is not the claimed priority date of 11 August 1992, since the claims claim matter not in substance disclosed in the specification as filed, in respect of the feature “less than 50 microns” appearing in claim 1 and the consistory clauses in an amendment requested on 14 October 1994; and that as a result since the amendment was not allowable by section 102, the priority date of claims 1,2 and 3 pursuant to section 114(1) and Regulation 3.14(a) is 14 October 1994. If this is the case then it is asserted that the claims would not be novel in the light of the publication of the petty patent specification itself, the parent specification, application 44376/93, as well as the product “Thermotuff”.
The patentee submitted firstly that the priority date of claims 2 and claim 3 (when dependent from claim 2) could not be disputed as the foil thickness of 6.35 microns was disclosed in the provisional specification as filed. They submitted further that the 50 micron foil thickness was in substance disclosed and that the relevant test was whether or not there was a “real and reasonably clear” disclosure” in the body of the specification and that no additional inventive step is apparent between the original application as filed and the amended claim (CCOM V Jiejing 28 IPR 481 and Leonardis v Sartis 35 IPR 23). Ms Bommer also submitted that I should be guided by the evidence of the skilled addressee on this point.
In the complete specification as filed the main reference to the foil thickness is in the following passage (the same words are also used in the provisional specification):
“The use of highly reflective foils as a thermal insulator is well known and there are a wide variety of products on the market.
The nature and construction of these foil products varies. As foil is relatively expensive, it has been and still is desirable to use a very thin foil layer. However, in order to make this viable it has been necessary to attach the foil to a substantially cheaper supporting substrate.
In the past, it has been common practice to adhere thin layers of aluminium foil (under 50 microns) to paper backing sheets which are relatively inexpensive and which provide added strength to the foil.”
When describing the invention the only thickness given is 6.35 microns for the preferred embodiment.
There is, however , no suggestion in the specification that the foil used in the invention is in any way different to that used in the prior art. It is stated that it is still desirable to use a very thin foil layer. The declarants for the patentee state that it is clear that the layer of foil used in the laminate of the invention is intended to be the same as that previously used. Although Mr Batt for the informant states that he does not understand the significance of the term “50 microns or less” as it relates to the alleged invention and that this thickness has not been disclosed as an essential or preferred feature of the current invention, I can find no basis for the suggestion that the skilled addressee would consider that anything other than the typical thickness of foil should be used. There is also no suggestion that there is any invention in selecting this particular thickness of foil or that it was a departure from the idea of the invention as described in the provisional specification. As it appears that the only effect of this amendment was to more clearly define the invention as originally described, I conclude that the amendment was allowable and that the claims are entitled to the priority date of 11 August 1992.
Novelty
The generally accepted test for anticipation is the "reverse infringement" test as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at 235 where Aickin J stated:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
Infringement of a claim occurs when each and every one of the essential integers of the claim have been taken (Rodi and Wienenberger AG v Henry Showell Ltd [1969] RPC 367).
I need therefore to construe claim 1 of the patent to determine the essential features of the claim. The basic structure of the claim is clear but there are a number of features of the claim that require examination.
The term “sarking membrane”
The Macquarie Dictionary defines “sarking” as “2. sheet material laid under tiles, shingles or slates for reflective insulation or additional waterproofing”. There is agreement between the parties that the membrane should have at least the limitation that it be water impermeable and suitable to be attached under tiled roofs to catch any water and direct it downward to the gutters. The laminate also contains foil for reflective insulation.
The declarants for the patentee referred to relevant building codes to further limit this term in respect of thermal reflectance and flammability. Although building regulations set out requirements that a material can have before it is approved for use, these regulations change with time and vary from state to state. I do not accept that the skilled addressee would rely on these regulations to further construe a term such as “sarking membrane” if he or she could understand the term as it is used in the claim. I do not agree that these restrictions should be read into the term and consider that the Macquarie definition is adequate.
The word “comprising”
In Mr Batt’s declaration he states that he is informed that the term “comprising” is to be understood as equivalent to “including” whereas Mr Goodacre states that his understanding of the term is that it means “made up of” or “consisting of” notwithstanding that he had been informed that it could be interpreted as “including”. Ms Bommer referred me to the decision of Asahi v WR Grace 22 IPR 491 in which it was held that in the circumstances of that case “comprise” was being used exhaustively.
The word “comprise” has no single meaning and must be given an interpretation appropriate to the context of its use. The claim defines not only the layers but also the relative positioning of the layers. The backing sheet is adhesively bonded to the foil which would exclude any other layers in between. From the described function of the foil it must be the outer layer. The backing sheet also has a water resistant coating on its outer side which excludes the possibility or additional layers on the side remote from the foil. I conclude that, when taken in context, the word “comprising” in claim 1 means “consisting of” and does not include the possibility of further layers.
The outer layer of aluminium foil
The claim defines the sheet as having an outer layer of aluminium foil. At the hearing Mr Wilson submitted that if the difference between the claimed sheet and the prior art was a difference of a layer of foil or a metallised layer, then such a difference could not make the sheet novel in the light of the prior art. He referred me to the discussion of mechanical equivalents in Nicaro Holdings v Martin Engineering (1990) AIPC 90-670.
I do not accept that it would be proper to apply the test for novelty in this case using as an integer of the claim a metallised layer of aluminium rather than a layer of foil adhesively bonded. Both from the drafting of the specification and from the working of the invention it is clear that the layer of foil must be an essential feature and as such it is not appropriate to substitute a mechanical equivalent. I note further that, even if I considered it appropriate to use a mechanical equivalent, the evidence is not conclusive as to whether a metallised layer is in fact equivalent to a layer of foil.
The phrase “adapted for use as a roofing safety mesh”
I construe this term as referring to the capability of the sheet itself and not including any limitations as to how it is installed. As with “sarking membrane” I do not find it appropriate to refer to building regulations to construe this term. I also do not accept the patentee’s submission that the requirement can be established by a comparison with the prior art materials.
The specification states that the purpose of the safety mesh is to support a tiler, for example, should he lose his footing during construction of the roof. On the basis of this statement I would think that a reasonable interpretation would mean that the sheet should be able to support the weight of a man when he is falling from a standing position. This does not necessarily mean that the sheet would be able to withstand puncture by a sharp instrument or that it would be accepted for use by the relevant building authorities. I conclude that the skilled addressee would have little difficulty in understanding the limitation imposed by this term.
I note in this regard that the prior art patent specification AU 570338 referred to in the evidence (the ACI patent) uses the term “suitable for use in place of a safety mesh ...” in claim 1. In the description of this patent the only further explanation of this term is that “where it would otherwise be necessary to install a steel safety mesh for the safety of tilers, the strength of the laminate of the present invention is such that its use as roofing insulation and/or sarking, in place of conventional reflective foil laminate, enables such safety mesh to be dispensed with”. That is, the most relevant piece of prior art also uses very similar terms to define the invention which adds support to the argument that they would be understood in the relevant art.
Applying the test for novelty
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 strenght.
“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.
inventive step
Subsection 7(2) of the Act sets out the requirements for inventive step;
“(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with either of the kinds of information mentioned in subsection (3), each of which must be considered separately.
(3) For the purposes of subsection (2), the kinds of information are:
(a) prior art information made publicly available in a single document or through doing a single act; and
(b) prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area.
The dictionary on Schedule 1 defines the prior art base;
“"prior art base" means:
(a) in relation to deciding whether an invention does or does not involve an inventive step:(i) information in a document, being a document publicly available anywhere in the patent area; and
(ii) information made publicly available through doing an act anywhere in the patent area; and
(iii) where the invention is the subject of a standard patent or an application for a standard patent - information in a document publicly available outside the patent area;”
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 informants 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:
The removal of product weight as a performance requirement
Removal of the reference to paper in the product construction
The allowance of reflective products having foil on one side only
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.
manner of manufacture
The informant submitted that the alleged invention is not a manner of manufacture within the meaning of Section 6 of the statute of Monopolies for the following reasons
(a)the reinforced plastic material which is used in the preferred embodiment was already known and had known properties on 11 August 1992 and this is admitted in the specification;
(b)the known plastic material referred to in (a ) above was known for use in products such as tarpaulins, which is analogous to use as a sarking material; and on its own, that material would be suitable as a sarking material and safety mesh;
(c)the only purpose of gluing foil to one side of the material with fire retardant adhesive is to provide a fire retardant foil insulation sarking, and it was already known before 11 August 1992 to produce a foil insulation product with reinforcing for use as a sarking material and safety mesh, which is admitted in the specification.
Mr Wilson referred me to the law on the new use of known materials. 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". In Grace v Asahi, 25 IPR 481, it was found that there was no invention in the routine testing of commercially available new products.
It is not disputed by the patentee that backing sheets of the type used in the invention were known, it is submitted however that this use of such a backing sheet went beyond routine testing and that the use of this material was new and unexpected.
The evidence does 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. From the evidence of Goodacre there would have been serious doubts about the suitability of the material for this purpose as it would be expected that the aluminium foil layer would crack.
The informant has therefore failed to establish that the invention as claimed is not a manner of manufacture.
section 40
The informant raised a number of issues relating to the clarity of claim 1. As I have been able to resolve all relevant issues when construing the claim above, I find that the claims do comply with the requirement of Section 40.
the further evidence
On 10 December 1996 the informant filed a further declaration by Hilton Batt which was described as evidence in answer to the evidence filed by CSR. The patentee made written submissions to the effect that the evidence should not be allowed. In a letter dated 23 December 1996 the informant was informed that, in the absence of an application under S.223 to extend the time limit under Reg 2.6, this evidence could not constitute evidence in support of the S28 notice. There are no provisions in S28 proceedings for evidence in reply by the informant.
At the hearing Mr Wilson requested that I use the provisions of reg 22.24 to allow for this further evidence. In support of this he submitted that the nature of the amendments filed on 6 February 1996 and advertised allowed on 3 October 1996 were such that further evidence was warranted in that the amendments substantially altered the case to be addressed. I allowed the patentee 14 days from the date of the hearing to make submissions on this request. In a letter dated 5 March 1997 the patentee submitted that the amendments did not alter the case to be addressed, that the further evidence was not, in any event, directed to new issues or materials which were alleged to have been introduced as a result of the amendments, and that the further evidence merely elaborated upon the original evidence and is not of a nature that would alter the outcome of the case.
At acceptance claim 1 read;
“A flexible thin sheet insulating material for use as a sarking membrane and roofing safety mesh, said laminate comprising:
a reinforcing polymeric backing sheet adhesively bonded on one side to an outer layer of 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.
The substantial effect of the amendment was the introduction of the features that the sarking membrane be “paperless” and that the backing sheet be “solely polymeric”.
The further evidence addresses the following issues:
The interpretation of the phrase “suitable for use as a sarking membrane” rebutting the Goodacre declaration.
Further comments on the composition of TYVEK Radiant Barrier in the light of the Goodacre declaration.
The suitability of the CSR product as a safety mesh.
Further comments on the material “Claf”.
The equivalence of aluminium layers, either deposited or as an adhesively layer of foil.
The evidence seems largely to be evidence in reply to the patentees evidence and not evidence that would have been relevant only after the specification was amended.
I need also to consider whether this evidence would have an important influence on the outcome of the case. I have no difficulty in finding that Batt’s comments on the first four issues would not cause me to reconsider my conclusions as to the validity of the patent. If I had not found that the layer of adhesively bonded layer of foil was an essential feature of the claim then the comments on the equivalence of the layers may have had an important influence on the outcome of the case, but having found that there was no basis to consider mechanical equivalents, this evidence need not be considered further.
I conclude on this point that I will not allow this evidence to be considered under the provisions of section 28(1) and need not consider it further under the provisions of 28(3).
conclusion
The priority date is the date of filing of the provisional application. The informant fails to establish that the petty patent is not valid. The further evidence is not allowed.
I therefore grant the extension of term of the petty patent.
costs
In matters before the Commissioner costs usually follow the event. In this case there was amendment of the specification after the filing of the section 28 notice. The patentee has submitted that the amendments were not necessary in response to the evidence-in-support and are therefore not relevant to the determination as to costs. I note however that the amendments resulted in a substantial narrowing of the claims and that the timing of the amendments was such that they occurred some 13 months after the patent was sealed but only a little over two months after the section 28 notice was filed. I also observe that the patentee requested that the clock be stopped in respect of the filing of the evidence in response until the amendments were allowed.
Without making any conclusions as to the validity of the claims prior to this amendment I find that the amendment can reasonably be seen to have been made as a result of the section 28 notice. I therefore consider it appropriate that I make no award of costs.
Vivienne Thom
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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