DONALD EDWARD BECKETT
[1995] APO 44
•7 August 1995
official notice
decision of a delegate of the commissioner of patents
Application : No. 588326 in the name of DONALD EDWARD BECKETT
Title: LAMINATES FOR PACKAGES FOR MICROWAVE COOKING
Action: Bar to sealing.
Decision: Issued .
Abstract: 1. The Commissioner does not have an imperative
duty to grant this patent if it would be
invalid when granted.
2.Claims 1 to 5, 8 and 9 of the application lack novelty.
3.The applicant is given 60 days from the date of this decision to propose relevant amendments to overcome this lack of novelty. If appropriate amendments are not filed in this time the application will be refused.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 588326 by Donald Edward Beckett
background
Patent application 588326 by Donald Edward Beckett (Beckett) was filed on 5 June 1986. The application was advertised accepted on 14 September 1989. On 12 December 1989 Leigh-Mardon Pty Limited filed a Notice of Opposition under the provisions of Section 59 of the Patents Act 1952. The opposition was withdrawn on 17 September 1992 following the filing of evidence in support.
On 12 November 1992 a letter was sent to the applicant stating that the Commissioner considered that the claims were prima facie prior published and not novel in the light of the US patent specifications referred to in the opposition and that the scope of certain claims was unclear. An explanation of these objections was set out in the letter. The letter concluded with the advice that:
"The applicant is entitled to be heard before any determination is made. Should the applicant not wish to be heard, the applicant may file written submissions on the matter. If the Commissioner remains of the opinion that there is a bar to sealing a patent, then a hearing will be set down forthwith to allow the applicant to be heard.
Alternatively, if the applicant is of the opinion that the grounds of objection could be removed by amendment, the applicant may file a request under Section 104 of the Patents Act 1990 to amend the complete specification.
Consequently, you are requested to:
(i) request a hearing in this matter
(ii) file written submissions or,
(iii) file a request to amend under S.104,
within 60 days of the date of this letter."
Mr Malcolm Royal, patent attorney of Phillips Ormonde & Fitzpatrick responded for the applicant in a letter dated 11 January 1993. In the letter Mr Royal submitted that the "bar to sealing" action was not justified and also made submissions concerning the clarity and novelty objections.
At this stage it appears that the casefile was misplaced in the Patent Office and a substitute file created by obtaining copies of all correspondence from the applicant. This caused a delay in responding to Mr Royal's letter. On 21 September 1994 a letter was sent to Mr Royal in which it was stated that there was still a valid objection on the grounds of lack of novelty, that this objection would make a patent sealed on the application clearly invalid, and that the Commissioner had a duty not to seal the patent in its current form. The applicant was given a further opportunity to respond in the same words as set out above in the extract from the letter of 12 November 1992.
A further letter was sent to Mr Royal dated 18 January 1995 referring to the earlier letters and also to a telephone conversation of 16 January 1995. Again the applicant was given the same options with the further advice that if no response was received within the specified period the Commissioner would refuse to seal a patent on the application forthwith. In a letter dated 20 January 1995 Mr Royal requested to be heard on the matter.
A hearing to determine the matter took place in Canberra on
19 May 1995. Mr Royal appeared for the applicant by telephone.
my power to decide the matter
At the hearing Mr Royal enquired as to whether I had discussed the case with any other hearing officers. I stated that I had discussed it with a Deputy Commissioner prior to the hearing. He then requested that the hearing be abandoned forthwith and that the matter be heard by that Deputy Commissioner. He stated that for the hearing to be a just hearing he wanted to be sure that he was talking to the person who actually made the decision and that it was inappropriate for me to be guided by persons who were not actually at the hearing to hear his submissions.
I offered to adjourn so that the matter could be discussed with the Deputy Commissioner but stated that I had the delegation to hear the matter and that, although I might discuss the matter with other officers, I would be the person who actually made the decision. Mr Royal said that although I would have my name on the decision he questioned the extent to which I would be influenced by factors which he had not had the chance to rebut.
Mr Royal asked me to assure him that I would not subsequently seek the advice of a senior officer prior to making the decision. I informed Mr Royal that all decisions were reviewed by two other hearing officers who might, for example, point out relevant case law or flaws in the reasoning of the decision. I stated that it was not reasonable to expect me to undertake not to discuss the case with other officers and that I would not give him such an assurance. I repeated my assurance that, despite any discussions that might occur, I would be the person who made the decision.
At this point Mr Royal agreed that the hearing could proceed.
In view of Mr Royal's comments regarding how I might exercise my power in this matter, and in particular how I might be influenced by other officers I will briefly set out my understanding of the nature of this delegated power.
The Patents Act 1990 empowers the Commissioner to make certain decisions but in practice the Commissioner does not personally make these decisions. Subsection 209(1) allows for the Commissioner by instrument, signed by him or her, to delegate this decision making function.
In regard to this patent application the Acting Commissioner of Patents signed an Instrument of Delegation dated 25 April 1995 which delegated to me personally all the powers exercisable by him as Commissioner (other than to summon witnesses, and to require the production of documents) in relation to Patent Application 588326 in the name of Donald Edward Beckett.
I am aware of my responsibilities when exercising this power, in particular as set out in Section 34A of the Acts Interpretation Act 1901:
"34A. Where, under any Act, the exercise of a power or function by a person is dependent upon the opinion, belief or state of mind of that person in relation to a matter and that power or function has been delegated in pursuance of that or any other Act, that power or function may be exercised by the delegate upon the opinion, belief or state of mind of the delegate in relation to that matter."
I am also mindful of section 5 and 6 of the Administrative Decisions (Judicial Review) Act 1977 which apply to this decision. Section 5 allows for a person who is aggrieved by this decision to apply to the Court for an order of review on the grounds that the making of the decision was an improper exercise of the power conferred by the enactment in pursuance of which it was purported to be made including the exercise of my personal discretionary power at the direction or behest of another person. Similarly Section 6 of the same Act allows a person who is aggrieved by my conduct for the purpose of making this decision may apply for an order of review on similar grounds.
Irrespective of what review I might seek of the draft of the written reasons for my decision from other officers of the Commissioner, the decision I make and issue must be and is mine based on submissions put before me by the applicant in line with my delegated powers for this application. The purpose of the review process is to identify any weaknesses in the reasons for the decision, it does not provide an opportunity for other officers to make submissions to counter those of the parties involved.
Power of the commissioner to refuse to grant the patent.
Background
Section 61 of the Patents Act 1990 states:
"61.(1) The Commissioner must grant a standard patent, by sealing a standard patent in the approved form, if:
(a) there is no opposition to the grant; or
(b) in spite of opposition, the Commissioner's decision, or the decision on appeal, is that a standard patent should be granted."
As the opposition has been withdrawn in the present case this is equivalent to there being no opposition and section 61(1)(a) applies. It may appear from the language of this section that the Commissioner has no discretion in this matter and that this patent should be granted. The basis for the present proceeding, however, is the proposition that the Commissioner has a power to impose a bar to sealing a patent on an application if that patent when granted would be clearly invalid.
Before considering Mr Royal's submissions on this matter, I will briefly trace the development of this type of action in Australia.
In 1935 in Tate v Haskins (53 CLR 594) disconformity as a ground of refusal to seal a patent after acceptance was considered by the High Court. Section 66 of the Patents Act 1903-1933 provided that:
"66. If there is no opposition, or in case of opposition if the determination of the Commissioner is in favour of the grant of a patent and no notice of appeal has been given within the time limited in that behalf, or if in case of an appeal to the High Court or the Supreme Court the Court determines that the grant ought to be made, the Commissioner shall cause a patent to be sealed with the seal of the Patent Office."
It was observed in Tate v Haskins that these provisions would appear to give an applicant whose application and complete specification have been accepted a right to grant unless that right was intercepted by a successful opposition. It was also observed however that with the full approval of many law officers as expressed in their reported decisions a practice had developed in the United Kingdom under which the Comptroller acted upon matters which were brought to his notice during opposition proceedings falling outside any allowable ground of opposition.
Although in Tate v Haskins the ground of disconformity was found not to be justification for refusing a patent in this way because it was a matter that was no longer of concern after acceptance it was observed further:
"Notwithstanding that, under the procedure prescribed by the statute, an applicant has performed all the conditions upon which according to the terms of the statute the Comptroller's duty to seal arises, the very fact that the patent would be void when sealed means that the duty is only apparent and not real. The instrument would be inefficacious because contrary to law. It cannot be the imperative duty of any officer to issue such an instrument. Mandamus would not go to compel him to do so."
The Commissioner's power to refuse grant after acceptance was considered in a Patents Office decision in relation to the Patents Act 1952 in Re Gould Inc 13 IPR 644. In his decision the delegate of the Commissioner referred to the passage from Tate v Haskins above and stated:
"In giving effect to these comments of the court, the Commissioner undertakes what is known colloquially as a "bar to sealing" action. This involves investigation of the evidence on file to determine whether such evidence would result in clear invalidity of a patent if sealed on the application concerned. If a "bar to sealing" is found, the applicant is notified in writing accordingly."
The delegate then compared the provisions of the 1952 Act (section 62) with the section 66 of the Patents Act 1903-1933. He concluded that as the provisions were little different the law as set out in Tate v Haskins was unchanged and the Commissioner was still obliged not to seal a patent that would be clearly invalid.
Submissions
At the hearing Mr Royal's submissions concentrated on why a "bar to sealing" action went beyond the scheme of the 1990 Act when the Act was considered as a whole. I have summarised his main points:
This application was lodged under the Patents Act 1952. Section 234(2) of the 1990 Act applies as well as section 234(5), that is, objection cannot be taken under a ground that would not be available under the 1952 Act but the provisions of the 1990 Act apply in relation to procedures. Regulation 23.26(2) states that the 1952 Act would apply when the patent is granted in an action or proceeding in which the validity of the patent is disputed. The basis for the present proceeding is that the patent if granted would be invalid but the 1952 Act would regulate the procedures if the patent was actually granted although the 1990 Act procedures apply in the present proceeding. Mr Royal considered that this apparent conundrum demonstrated that the present proceeding was not contemplated by the 1990 Act.
Mr Royal submitted that there had been a lot of changes in the law in relation to statutory interpretation since 1935 and that the current wording in the Act did not allow the Commissioner to interfere. The words "must grant" are very strong. They may be compared to the words "shall cause ... to be sealed" used in section 62 of the 1952 Act. The plain English of the 1990 Act indicates that there is no discretion involved.
Re Gould is not an appropriate case to use as authority because it was in fact decided in favour of the applicant on the basis that the patent if granted would not be clearly invalid. There was thus no opportunity for the decision to be appealed and tested and no reliance should be placed on this decision.
Mr Royal referred to the statement in Tate v Haskins regarding the consequences of departing from the scheme of the Act. He said that in the present case there were no avenues of appeal prescribed by the Act by which to appeal the merits of the decision. A review could be sought under the Administrative Decisions (Judicial Review) Act but only on the grounds of a denial of natural justice.
He stated that if these objections were raised during examination of the application then there would be more options open to the applicant at that stage. The requirements for amendments were less stringent before acceptance in that section 102(2) did not apply and the requirements for the filing of divisional applications were less strict. He stated that the delegate in Re Gould did not place enough weight on these factors and did not appreciate that the scheme of the Act was such that dealings with the Patent Office (rather than with a third party during opposition) always took place before acceptance when more options are open. A "bar to sealing" action would occur after acceptance when the options were more limited. This goes beyond the scheme of the Act and might leave the Office open to accusations of improper behaviour if, for example, an objection was not taken at examination but rather after acceptance when the applicant's choices were limited.
Mr Royal pointed out that the scheme of the 1990 Act includes re-examination under Chapter 9. If the Commissioner becomes aware of relevant prior art the application may be re-examined. The patentee may then file amendments and there is an avenue of appeal to the Federal Court. While it may be said to be wrong to grant an invalid patent the 1990 Act provides a definite remedy. Although this procedure is not open in this case because Chapter 9 is excluded from applications lodged under the Patents Act 1952 this does not affect our understanding of the scheme of the 1990 Act and the interpretation of Section 61. The appropriate course of action under the 1990 Act would be grant followed by re-examination. Although such a course of action was not available for the present application the comments in Tate v Haskins are no longer appropriate when the 1990 Act is read as a whole.
Decision
Mr Royal's submissions that the word "must" implies a mandatory duty must be questioned. The problem of classifying provisions in statutes as mandatory or directory is discussed in the Pearce and Geddes text "Statutory Interpretation in Australia', third edition, Butterworths, 1988 at page 196:
"One of the most intractable problems encountered by the courts in the interpretation of legislation is the meaning to be placed on words such as "shall", "must", "is required", etc, which import some sort of an obligation in contradistinction to words such as "may", "it is lawful", "if he or she thinks fit", etc, which import a discretion in the person concerned. The approach that could, and perhaps should, have been adopted was to have held that the use of the words in the first category imposed an obligation that had to be complied with, while the use of the words in the second category gave a discretion or were directory only. This clear cut approach has not, however, been followed. The courts have chosen rather to probe the true effect of the legislation in an endeavour to determine whether a provision is to be regarded as mandatory or obligatory on the one hand or discretionary or directory on the other. The result of this has been to produce a multiplicity of irreconcilable decisions making it impossible to assert with any certainty that a provision will be held either mandatory or directory in a particular context. The courts have long recognised the problems to which this gives rise. They have equally conceded that no formula is available to resolve those difficulties. "I believe, as far as any rule is concerned, you cannot safely go further than that in each case you must look to the subject-matter; consider the importance of the provision that has been disregarded, and the relation of that provision to the general object to be secured by the Act; and upon a review of the case in that aspect decide whether the matter is what is called imperative or only directory": Howard v Bodington (1877) 2 PD 203 per Lord Penzance at 211."
and at page 213:
"Finally, it should be noted that the diversity of approaches evidenced by the foregoing cases does not seem to be affected to any marked extent by the inclusion, as in several jurisdictions, of a provision in the Acts Interpretation Act to the effect that the use of the word "may" imports a discretion and "shall" an obligation."
Thus it not sufficient to consider only the plain language meaning of the word "must" in sub-section 61(1); the consequences of that interpretation have also to be considered.
Although I agree with Mr Royal's submissions to the extent that this type of proceeding is not explicitly provided for by the 1990 Act I find that the comments of the High Court in Tate v Haskins are still highly persuasive in the present case. That the word "must" is used in the 1990 Act instead of "shall" is largely a result of the objective of modernising the language in the drafting of the legislation as stated in the explanatory memorandum to the Bill. Despite all of the changes to the overall scheme of the Act detailed by Mr Royal and the apparent inconsistencies that may result, the consequences of holding the provision to be imperative is precisely the same now as when stated in Tate v Haskins; the patent when granted would be invalid. Furthermore there would be no opportunity for re-examination in the present case. I cannot accept that the grant of an invalid patent is consistent with the intent of the 1990 Act. I therefore find that the Commissioner does not have an obligation to grant this patent if it is found to be clearly invalid.
the patent specification
The Patent Specification is entitled "Formation of Partially Demetallized Laminates". The specification indicates that the invention relates to the formation of laminates, in particular for use in packages for microwave cooking. It states that the microwave cooking of foods provided in bag-like enclosures is known but that it is sometimes desirable to provide a metallized region adjacent the food to increase the concentration of energy and provide a more rapid cooking cycle. It states that known bags currently lack any convenient manner of readily providing such structure.
The film strip of the invention is then described in the same terms as it is defined in claim 1. The specification then states that the discrete metallized area is located on the polymeric material sheet so as to be positioned in the localised region of the foodstuff, when the laminate is formed into an enclosure housing the same, but not elsewhere, for the purpose of cooking by the application of microwave energy.
The specification then states that the invention also provides a method of cooking by the application of microwave energy, which comprises enclosing a microwavable foodstuff in a package which is constructed at least in part of a flexible polymeric film having a discrete metallized region adjacent the foodstuff, and applying microwave energy to the package and the foodstuff therein while the metallized region is located on the opposite side of the foodstuff from the source of microwave energy.
It states further that in the invention there is employed a polymeric material film which has discrete metallized regions on one surface and that this film may be formed by selective demetallization of a metallized polymeric film. Demetallization may be achieved by a variety of methods including continuous procedures which enable the desired metallized regions to be provided on the polymeric material web rapidly and readily. The description then states that lamination of the selectively demetallized polymeric film is required in order to prevent distortion and deformation in the metallized region upon the application of microwave energy.
An embodiment of the invention is then described in which a web of metallized polymeric material is fed to a demetallizing station wherein the web is subjected to selected demetallization to remove the metal from desired regions of the metallized surface of the web and leave other discrete metallized regions unaffected. The web is then laminated and formed into packages.
The specification ends with 10 claims of which claim 1 is the only independent claim:
"1. A film strip for incorporation into a microwave cooking food package, comprising a polymer film layer having a first discrete portion thereof covered with a metallic layer of sufficiently small thickness to cause preferential heating of the first portion upon exposure to microwave radiation, and the polymer film having a second portion thereof lacking such a metallic layer."
Claims 2 to 9 are appended to claim 1 and define additional features. Claim 10 is an omnibus claim referring to the drawings.
novelty
Publication Dates of the Citations
The publication dates in Australia of the relevant two US Patents had not been provided to the applicant prior to the hearing by the Patents Office. Evidence of the publication dates had, however, been provided by the opponent in a declaration in the opposition proceedings. At the hearing Mr Royal drew my attention to the statement in the letter to the applicant dated 21 September 1994 stating that:
"Thus, in a case where the patent would be clearly invalid because of a lack of novelty in the light of published documents, a bar-to-sealing action is appropriate. A conclusion of "clear invalidity" can only be based on the prior documents themselves and there should be no reliance placed on declaratory matter."
This application was lodged under the Patents Act 1952. Without the relevant dates of publication in Australia a lack of novelty could not be established notwithstanding the fact that the citations were published in the United States on 28 October 1980 and 24 March 1981 which was over four years prior to the priority date of the present application. Mr Royal submitted that it would be inappropriate for me to obtain further information to be used in the decision. He referred me to an unreported case in which an order was made by the Federal Court (with the consent of the Registrar) to set aside a decision of the Registrar of Trade Marks and direct a rehearing with the stipulation that only evidence formally tendered be relied upon and that information obtained by the Registrar be excluded. This case was later referred to in Prosimmon Golf v Dunlop Australia 9 IPR 425 in which the Assistant Registrar of Trade Marks stated:
"The Registrar functions as a tribunal, and such a function becomes impossible if resources are denied to him. Thus, while the Registrar may act to obtain the comments of one or both parties where facts or information are likely to be contentious, that does not impede the Registrar's main concern, which is the protection of the public interest in ways consistent with natural justice."
After the present hearing a certificate was sent to Mr Royal certifying the dates on which the US patent specifications became open to public inspection in Australia. Mr Royal was then given 21 days to file comments concerning these publication dates. Mr Royal did not dispute the dates but submitted that insufficient consideration was being given to the rights of the applicant and that he was being denied natural justice. He contended that the matter should be considered on the basis of the evidence before me and on which the applicant was heard and that no account should be given to this new evidence.
In this case the date of publication was not truly contentious (being already available in evidence before the applicant in the opposition proceeding if not actually in this matter) and furthermore the applicant was given ample opportunity to consider the matter and make further submissions. I do not think that reliance on the evidence of the publication dates would result in a denial of natural justice.
The Disclosure of the Citations
US Patent Specification 4230924 in the name of Brastad et al was published in Australia on 5 December 1980. The specification discloses a food package which includes a flexible wrapping sheet of dielectric material, such as polyester or paperboard. The sheet has a flexible metallic coating thereon, such as aluminium, in the form of a relatively thin film (of the order of 1000 A or less) the coating being subdivided into a number of individual metallic islands or pads separated by crisscrossing non-metallic gaps provided by exposed dielectric strips on the wrapping sheet. The food package is to be used in a microwave oven. This document also discloses the lamination of the film to paperboard for support and the selective removal of metallic material by etching.
US Patent Specification 4258086 in the name of Beall was published in Australia on 8 May 1981. This specification discloses a method of a making a metallized film with a pattern, the film so produced being suitable for browning food in a microwave oven. The film is similar in structure to that described in US 4230924.
Submissions
At the hearing Mr Royal conceded that the structure of the film in the citations was similar to that defined by the present application. The difference resided in the fact that in the citations the wrapping was wrapped around the food and that there was no reference in the citation to a strip. The present application is directed to a strip to put in a package and not the wrapping itself. (The package might be a bag, for example.) The food is placed on the strip. The package of the prior art is placed right around the food and therefore is a potential for overlapping which could be dangerous. The disclosure of the citation does not solve the problem addressed by this particular application. The strip of the present invention as sold to the public is just put in a package or under the food when it is microwaved.
Mr Royal stated that if he had been able to put evidence forward, the evidence would have shown that in the relevant art the addressee would have been able to distinguish between a strip to be put in a package and wrapping material. (It is not clear why Mr Royal believed that he was prevented from putting such evidence forward.)
Mr Royal concluded that if the wrapping material was produced according to the citation it would not produce a strip and hence not infringe claim 1.
He also attempted to distinguish the method described in the present application from the prior art. The citations do not disclose the use of a piece of film in a package in such a way that the positioning of the metal portion relative to the food avoids conductive heating where it is not required.
Mr Royal submitted further that the fact that the film was a strip was an essential feature. He submitted that the prior art was silent as to the process by which the film could be produced in a strip.
Decision
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 Aiken 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). The first step therefore is to construe the specification in suit and determine the features of the claims in question.
Claim 1 of the application can be broken down into the following features:
- a film strip
- for incorporation into a microwave food package
comprising
- a polymer film layer having
- a first discrete portion thereof covered with a
metallic layer of sufficiently small thickness
to cause preferential heating of the first portion
by microwave radiation, and
- a second portion lacking such a metallic layer.
Some of these phrases require further clarification:
a)"a film strip" - the word "strip" is used in the description only in the consistory statement and in the preamble to the embodiment. The relevant part of the description is:
"In accordance with the present invention, there is provided a film strip for incorporation into a microwave cooking food package, comprising a polymer film layer having a first discrete portion thereof covered with a metallic layer of sufficiently small thickness to cause preferential heating of the first portion upon exposure to microwave radiation, and the polymer film having a second portion thereof lacking such a metallic layer.
The discrete metallized area is located on the polymeric material sheet so as to be positioned in the localized region of the foodstuff, when the laminate is formed into an enclosure housing the same, but not elsewhere, for the purpose of cooking by the application of microwave energy." (underlining added)
It seems to me that the word "sheet" is used in the same context as the word "strip" in the description. There does not seem to be any description of a separate strip that can be inserted into a package as asserted by Mr Royal. It is the sheet or strip itself that forms at least part of the package ("which comprises enclosing a microwavable foodstuff in a package which is constructed at least in part of a flexible polymeric film having a discrete metallized region adjacent the foodstuff").
b)"for incorporation into a microwave food package" - this phrase is construed so as to mean that shape of the film strip in question is at least suitable for the purpose of incorporating into a microwave food package even if it is not actually so incorporated. It may have the potential to form an integral part of, or the whole of, the package. As stated above, I can find no evidence from the specification that "incorporation" includes the placing of a separate strip within the package as suggested by Mr Royal.
c) "a first discrete portion" - it is not immediately apparent from the words of claim 1 whether this portion comprises only a single separate metallized region or whether there may be more than one region. Mr Royal's letter of 11 January 1993 states:
"... claim 1 has a discrete portion covered with a metallic layer and a second portion lacking such a metallic layer. A range of configurations are possible to define those discrete portions. Claim 6 indicates that the first discrete portion is continuous. Thus the discrete portion of claim 1 may be continuous or discontinuous."
and the description at page 4 indicates that:
"The amount of microwave energy which is converted into conduction heat by the utilization of a discrete metallized region or regions on the polymer film may be varied by varying the area of the metallized region through variation of the demetallization procedure."
Thus it appears that in claim 1 the "first discrete portion" may comprise a plurality of metallized regions or areas.
d)"of sufficiently small thickness" - at page 2 of the description it is stated that "The thickness of the metal film may vary widely within the range of about 10 to about 1000 A, preferably about 300 to about 600 A ...".
The citations individually disclose all of the features of claim 1 except for the fact that they disclose a sheet of material rather than a strip. If this feature that the film is a "strip" is an essential feature of the claim then this claim is novel over the cited prior art.
The issue of determining essential features was discussed in Catnic Components v Hill and Smith Ltd, [1982] RPC 183 at page 228:
"... I think that one can venture upon the following generalisations on the question of essentiality. (1) If that feature of the claim which is under consideration is in fact essential to the working of the claimed invention, then it must be an essential feature of the claim. (2) If the feature is not in fact essential to the working of the claimed invention, the applicant for a patent may nevertheless have made it an essential feature of the claim, that is to say, he may by the terms of the claim as properly construed have clearly limited his claim to a subject matter having that particular feature. If so, that feature will be an essential feature of the claim and anyone who makes a product or carries out a process which has all the features of the claim except that particular feature will not infringe the claim. But (3), all claims are not perfectly framed. Sometimes a draftsman may include some feature in a claim, either explicitly or by implication, which is not in fact essential to the working of the claimed invention and which the applicant has not by the terms of his specification and claim clearly indicated as a feature which he regards as an essential feature of his monopoly. In such a case an alleged infringer may be held to have infringed the claim notwithstanding that his product or process does not incorporate the feature in question or substitutes some equivalent for it. (4) The fact that a claim incorporates a particular feature does not alone suffice to make that feature an essential one. If this were not so, no feature of a claim could ever be inessential, but the speeches in Rodi and Wienenberger all assume that a claim may include an inessential feature"
In determining whether the shape of the piece of film is an essential feature of the invention I have considered the following factors:
As allowed by section 116 of the Patents Act 1990 I have referred to the specification without amendment. The specification as originally published describes and claims a laminate comprising a layer of flexible polymeric material with at least one metallized region, such a laminate formed into a foodstuff container for heating by the application of microwave energy, and a method of cooking which comprises enclosing a foodstuff capable of heating by microwave energy in a package which is constructed at least in part of a flexible polymeric film having a discrete metallized region adjacent the foodstuff. This specification does not describe a strip that can be inserted into a package in the manner described by Mr Royal. In fact the term "film strip" does not seem to be used at all in the specification as originally published.
Apart from the requirement that it be suitable for incorporation into a microwave food package, the specification as accepted does not indicate that the geometry of the film is in fact essential to the working of the claimed invention. The invention as described and claimed resides in the provision of film with separate metallized and demetallized regions which can be incorporated into a package. The actual shape of the film does not seem to be important. In fact the last paragraph of the description states
"In summary of this disclosure, the present invention provides novel laminates, novel laminating procedures and a novel microwave heating procedure based on selectively demetallized polymeric material webs."
I conclude that the shape of the piece of film to be incorporated into the package is not an essential feature and that claim 1 lacks novelty in the light of US Patent 4230924 and US 4258086 when taken individually. The additional features defined by claims 2 to 5, 8 and 9 are also disclosed in US 4230924.
In claims 6 and 7 the first discrete portion (i.e. the metallized portion) is defined as being continuous. I construe this as meaning that a piece of film would have only a single metallized region. In the citation the metallized portion comprises a large number of very small metallic islands. A piece of such a film containing only a single continuous metallized area would be too small for incorporation into a package. Thus the features of claims 6 and 7 are not disclosed and these claims do not lack novelty. Similarly the omnibus claim 10 is novel.
Mr Royal also attempted to distinguish the method of the present application from the method of the prior art. I agree that the US Patent does not disclose a single discrete metallized area which can be placed in a position adjacent to the location of a food product within the package. The difficulty with this argument, however, is that this feature is not defined in the claims of the present application. The claims define the film strip per se and do not define the positioning of the metal portion relative to the food in use.
Special Circumstances
Mr Royal submitted that even if I did find that a "bar to sealing" was justifiable I should consider the special circumstances that surround this case. The application was filed in 1986. The delay in sealing has been caused only in part by the opposition. He submitted that in the present circumstances it would be totally inappropriate to further hold up the grant of the patent and that even if the patent would be invalid the grant should not be delayed further.
I agree that it is regrettable that the fate of this application has not been finally determined, but I cannot accept that this delay should result in the sealing of a patent that would be invalid.
conclusions
The Commissioner does not have an imperative duty to grant this patent if it would be invalid when granted.
Claims 1 to 5, 8 and 9 of the application lack novelty for the reasons set out above.
I allow the applicant 60 days from the date of this decision to propose relevant amendments to overcome this lack of novelty. If appropriate amendments are not filed in this time the application will be refused.
Vivienne Thom
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Phillips Ormonde & Fitzpatrick
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