Envopak Limited v W.A. Deutsher Pty Ltd

[1990] APO 45

PATENTS ACT 1952

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 544390 by ENVOPAK LIMITED and Opposition by W.A. DEUTSHER PTY LTD under Section 59

Background
          Patent application 544390 by ENVOPAK LIMITED ("ENVOPAK") was advertised accepted on 23 May 1985.  W.A. DEUTSHER PTY LTD ("DEUTSHER") opposed the application under section 59.  In a decision dated 30 August 1989 I found the opposition successful for reasons concerning the failure of the specification to comply with section 40 of the Act.  In that decision I afforded the applicant an opportunity to request amendment of its specification to overcome the section 40 deficiencies.

ENVOPAK duly lodged, pursuant to section 77, a request to amend its specification with a statement of proposed amendments.  The request was advertised in the Official Journal on 2 November 1989 for opposition purposes.  In the absence of opposition the request was allowed and the specification amended in accordance with the proposed amendments.

The opponent indicated that it wished to be further heard on the amended specification before the section 59 opposition was finally determined.  Accordingly the parties attended a hearing in Canberra on 17 May 1990.  Mr R. Walton,

patent attorney of Griffith Hack & Co, Sydney appeared for ENVOPAK and Mr T. Collins, patent attorney of Phillips, Ormonde & Fitzpatrick, Melbourne, appeared for DEUTSHER.
The amended specification
          As amended, the specification differs from the accepted specification which I considered in my earlier decision in the following respects:

-a new claim 1 has been inserted;

-a general statement of the invention on page 3 has been amended to correspond to new claim 1;

-seven words have been added to the description on page 5;

-a word has been corrected in claim 8.

The most significant change is that resulting from the new claim 1 and submissions at the hearing primarily centred on the definition of the invention as in this claim.  Amended claim 1 reads as follows:

"1.A disposable one-piece security sealing device for enclosing an article comprising a strap having at one end an enclosure defining a passage through which the other end of the strap is irremovably insertable to an adjustable extent as a result of interaction of a plurality of teeth spaced in a row along the strap with a resiliently deformable member which is integral with the enclosure and situated at or adjacent a bend intermediate the ends of the passage; characterised in that an identity or pull-off tab is formed as an extension of the strap at said one end, in that the tab extends around and beyond the enclosure, and in that the enclosure is joined to the tab with a line of weakness therebetween, the line of weakness extending around the enclosure and terminating in a side edge of the strap whereby upon tearing along the line of weakness the tab and the strap at said one end are separated from the enclosure."

This claim essentially provides the characterisation definition in a revised form compared to the accepted claim 1.  For comparison, the relevant portion of accepted claim 1 reads as follows:

"characterised in that an identity or pull-off tab is formed as an extension of the strap around and beyond the enclosure, for tearing when required along a line of weakness which extends round the enclosure and terminates in a side edge of the strap such that after tearing along that line the end of the strap having the tab is separated from the enclosure."

Section 40
          Briefly stated, Mr Collins argued that the amendments to claim 1 did not satisfy the requirements set out in my earlier decision and in particular did not overcome the deficiency identified.  Apart from analysing amended claim 1 Mr Collins referred to the two paragraphs of the earlier decision where I had considered the section 40 matter in respect of accepted claim 1.  Those paragraphs read as follows:

"Under this ground of opposition the opponent alleged a lack of clear definition of the invention in claim 1 particularly in respect of the definition concerning the tab, the strap extension and the enclosure.  Mr Collins submitted that the definition failed to clearly specify the relationship between these elements and define the exact location of the tab.  He constrasted the claim definition with the description of the preferred embodiment on page 5 of the specification.  He argued that it was encumbent upon the applicant to provide a clear definition of this relationship since the invention was said to reside in the particular combination of these features.

I am inclined to agree with Mr Collins' submission.  The present definition in my interpretation requires that the tab encircles (see "around") and extends beyond the enclosure but given that construction, it is not entirely clear where the line of weakness is positioned and hence whether, if at all, the tab (or only part of it) separates from the enclosure on rupture of the line of weakness.  Whilst the claim includes the particular tab construction, etc. of the preferred embodiment the overall monopoly encompassed by the claim is indefinite due to the lack of clear definition of the features and their inter-

relationship.  Accordingly some amendment of the claim is necessary in this regard.  For the purposes of considering the novelty and obviousness grounds I will assume that claim 1 has been suitably amended to avoid

the above deficiency and defines a device the construction of which corresponds to the device described as the preferred embodiment."

In referring to these paragraphs of the decision, Mr Collins commented:

"The opponent took all of that to mean that there was going to be a substantial alteration to the claim to bring about the clarity of definition that was originally said to be absent and which was agreed to be absent by this decision, and we now say that that deficiency, or that need for clarity, has not been satisfied."

Mr Collins submitted that in order to overcome the lack of clarity, claim 1 needed to define the following elements:

(a)the enclosure be near one end of the strap,

(b)the strap be of enlarged width in the region of the enclosure,

(c)the strap terminate in a finger tab beyond the enclosure, and

(d)the line of weakness be a groove having a curved or serpentine path.

The abovementioned elements are found in the specification on accepted page 5 where a description is given of a "first preferred embodiment" of the invention.
          Arising from Mr Collins' submissions at the recent hearing, I make the following points.  Firstly, my agreement with Mr Collins' submission at the first hearing, as expressed in the passage of the decision quoted, was in respect of the submission that the definition of claim 1 failed to clearly specify the relationship between the tab, the strap extension and the enclosure.  The basis for that agreement I expressed in the second and third sentences of the second of the two paragraphs quoted.  I did not intend to imply, and I do not believe that the wording can reasonably be interpreted to imply, that I agreed with every argument or point raised by Mr Collins in support of the section 40 ground of opposition against claim 1.  Secondly, following from my conclusion of a lack of clear definition, I said "some amendment of the claim is necessary in this regard".  I did not direct nor suggest any form of amendment to the claim which may overcome the deficiency : it is not for the Commissioner to direct or suggest how an applicant ought to seek to amend its application and specification during opposition proceedings.  Thirdly, the last sentence of the second paragraph of the decision quoted was specifically referring to the approach I would take in considering the novelty and obviousness issues.  It was not intended to imply that the applicant would necessarily have to limit the claim by amendment to define as the invention the device specifically described as the preferred embodiment.  At the time I felt that it was a meaningful exercise to consider the novelty issue in respect of a construction of device for which, at the very least, the applicant would be entitled to seek protection, even if that be via an omnibus claim.
          I turn now to consider whether amended claim 1 adequately and clearly defines the invention.  However before doing so I must state that from my assessment of the specification, particularly the specification as was accepted, I see no support for the argument advanced by Mr Collins on behalf of the opponent that certain features described in relation to the preferred embodiment of the invention are essential to the invention, and are thus required to be included in claim 1.  The respective functions of the description and claims of a patent specification are well established, and an applicant is entitled to claim his invention in terms not limited to the preferred embodiment provided of course that the claims are fairly based on the matter described in the specification and do define the invention.
          The claim defines the sealing device as comprising "a strap having at one end an enclosure".  A point that arose at the hearing concerned whether this definition included arrangements where the enclosure was formed adjacent or near the one end of the strap as well as at its extremity.  In my view the wording is such as to limit the enclosure to be at the extremity of the strap.  I believe that support for that view comes from the tab definition in the claim which reads:

"an identity or pull-off tab is formed as an extension of the strap at said one end, in that the tab extends around and beyond the enclosure, and in that the enclosure is joined to the tab with a line of weakness therebetween."

It seems to me that for the tab to comprise an extension of the strap and to extend around and beyond the enclosure and, furthermore, for there to be a line of weakness as defined in the claim, then the strap must indeed have the enclosure at the extremity of its one end.
          Thus, on my interpretation, claim 1 requires the strap to have, at the extremity of its one end, an enclosure.  Furthermore, given the tab definition, I interpret the device to have a tab which extends from the one end of the strap, which at least partly encircles the enclosure, and which projects into a region away from the enclosure at a side of the enclosure approximately opposite the side which joins the one end of the strap.  I have said "at least partly encircles" (see "extends around" in the claim) because it is clear that if the strap and tab portions lie in the same plane, complete encirclement of the enclosure by the tab is not possible.  In my view the claim clearly distinguishes "the strap" from the "tab", the tab being "an extension of the strap".
          The remaining definition in the claim concerns "a line of weakness" and is defined by the result achieved when tearing occurs along the line of weakness.  In this regard the construction defined requires "the tab and the strap at said one end" to be separated from the enclosure, which in my interpretation requires that all of the tab and all of the said one end of the strap which join the enclosure to separate from the enclosure on tearing along the line of weakness.
          In my view the amended claim by its definition specifies in sufficient detail the relationship between the various integers of the device and defines all integers essential to the invention.  Consequently I consider that amended claim 1 provides a clear definition of the invention and overcomes the section 40 deficiency identified in my previous decision.
Novelty
          Mr Collins further argued on behalf of the opponent that amended claim 1 lacked novelty in the light of the Moberg patent specification (US Patent specification 4001919),  I discussed the seal device of the Moberg specification at pages 7 and 8 of the earlier decision.  Fig. 1 of the Moberg specification is reproduced below:

Equating elements of the Moberg device with the claimed device, Mr Collins submitted that:

(a)the thin portion 24 equated with the "strap",

(b)socket 20 equated with the "enclosure",

(c)flat portion 22, which extends from one end of portion 24 up to the socket 20, equated with the "tab", and that

(d)slot 30 equated with the "line of weakness".

Mr Collins argued that the claim lacked novelty because if one applied the reverse infringement test (see Meyers Taylor Pty Ltd v Vicarr Industries Ltd 13 ALR 605), the Moberg device would constitute an infringement of claim 1 if that claim were in a patent.
          Mr Walton submitted that the Moberg device did not exhibit a construction within the definition of amended claim 1, since it particularly lacked the strap, tab and enclosure arrangement as defined and did not have a line of weakness as required by the claim.  He rejected the argument that the Moberg device could constitute an infringement of claim 1.
          If one looks at the interpretation placed on Moberg by Mr Collins, differences between the claimed invention and Moberg are immediately evident.  Consistent with my interpretation of claim 1 as mentioned earlier, the portion 24 ("strap") of Moberg does not have the socket 20 ("enclosure") at its one end.  Furthermore, if the slot 30 constitutes the "line of weakness" between the tab and the enclosure, then the so-called "tab" of Moberg (flat portion 22) does not satisfy the requirement defined by the claim of extending "around and beyond the enclosure".  Also, the so-called "line of weakness" of Moberg (slot 30) does not terminate "in a side edge of the strap" (portion 24).  Finally, the strap at said one end does not separate from the enclosure.  These are significant differences between the claimed device and that of Moberg, differences which in my view can not be dismissed as being insignificant by adopting a purposive construction of claim 1 as Mr Collins suggested.
          There is an alternative way of looking at the Moberg device which is worth mentioning.  Portions 22 and 24 could be taken together to constitute a "strap" and then the socket 20 ("enclosure") would be at one end of that strap.  Furthermore, the finger pull 34 and other elements joining that component to the socket could be viewed as constituting a "tab" which extends around and beyond the enclosure from the strap.  However viewing Moberg in this way, the only possible "line of weakness" is the slot 20 but this slot falls far short of the requirements as to construction and function defined in the claim for the line of weakness.  Thus even with this interpretation of Moberg, significant differences exist between the disclosure of Moberg and the claimed invention.
          Given the above comments about the Moberg specification, I conclude that the invention defined by claim 1 does not lack novelty based on the disclosure of the Moberg patent.  Claims 2 to 8 are claims either directly or indirectly appended to claim 1 and thus do not lack novelty.  Claim 9 is an omnibus claim which refers to the description and drawings.  It is therefore restricted to the specific disclosure of the essential features of the sealing device as described in the preferred embodiments and as shown in the drawings.  Given my discussion under the novelty heading in the earlier decision and my comments above, I conclude that claim 9 does not lack novelty based on the Moberg disclosure.
Conclusion
          I have decided that the amended specification satisfies the requirements of section 40.  Furthermore the claims are in my opinion novel based on the material and evidence before me.  As no ground of opposition now applies to the application and complete specification as amended, I direct that the application proceed to sealing, subject of course to any appeal which may be made.
          On the question of costs, in the earlier decision I awarded costs up to that stage of the opposition proceedings.  It therefore remains for me to decide in this decision the costs since that time which, given the scale of costs, appear to be limited to matters associated with attendance at the hearing in May 1990.  The general rule is that costs should follow the event and as I see no reason to depart from that course in this case, I award costs against the unsuccessful party, the opponent DEUTSHER.

(T.R. BRUHN)

Supervising Examiner of Patents

Patent attorneys for the applicant: Griffith Hack & Co, Sydney
Patent attorneys for the opponent : Phillips, Ormonde and

Fitzpatrick, Melbourne