Envopak Limited v W.A. Deutsher Pty Ltd

[1989] APO 21

In the Matter of the Patents Act 1952

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In the Matter of Application No. 544930 for Letters Patent by ENVOPAK LIMITED

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In the Matter of Opposition thereto under Section 59 by W.A. DEUTSHER PTY. LTD.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
        ENVOPAK LIMITED (ENVOPAK) lodged patent application 544390 entitled "Disposable One‑Piece Security Sealing Device" on 24 August 1982.  The application is a Convention application claiming priority from two United Kingdom applications namely Nos. 8126121 and 8211382 lodged on 27 August 1981 and 20 April 1982, respectively.  Acceptance of the application and complete specification was notified in the Official Journal on 23 May 1985.  W.A. DEUTSHER PTY. LTD. (DEUTSHER) lodged a notice of opposition under section 59 on 22 August 1985.
        The service of evidence was completed by 15 February 1988 and the matter was heard in Canberra on 20 January 1989.  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 notice of opposition specified all the available grounds under sub‑section 59(1).  At the hearing, the opponent relied only on the grounds concerning prior claiming, obviousness,

lack of novelty and non‑compliance with section 40, i.e. the grounds specified in paragraphs (d), (g), (h) and (i) of sub‑section 59(1) of the Act.
The Specification
        The specification commences thus:

"This invention relates to a disposable security sealing device which is made in one piece and primarily intended to encompass the neck of a bag or like package for the purpose of preventing or signifying unauthorised interference with the contents of the package."

The device described is of the general kind comprising a strap having at one end an enclosure with a passage, the strap and passage having features which, on insertion of the free end of the strap through the passage interact to prevent withdrawal of the strap and thus form a secure closure loop.  Then follows reference to the general object of the invention which is to provide "a device of this kind which affords at least as high a degree of security protection than its predecessors and yet is capable of being rapidly removed when required".
        The specification then refers to specific features of the device of the invention followed by a description of several embodiments of the device with reference to drawings.
        There are 9 claims in the specification.  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 housing 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 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."

Claims 2 to 8 are claims appended either directly or indirectly to claim 1 and claim 9 is an omnibus claim.
        As the specification indicates, the sealing device of the invention can be used as a strap‑like closure element for the neck of a bag or like package.  Since the device is constructed in a manner whereby removal of it from an item would only be possible by breakage of the strap either by cutting or by virtue of the pull‑off tab and line of weakness, any tamperage with the item and device will either be deterred or be clearly evident.
Section 40
        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 contrasted 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 interrelationship.  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.
        There are two other minor deficiencies in the claims.  Claim 1 uses the word "housing" when elsewhere "enclosure" has been used for the same feature.  In appended claim 8, the reference to "the cranked passage" is unclear since the earlier claims do not define such a feature.
Prior Claiming
        Mr Collins submitted that the invention as claimed was the subject of a claim of earlier priority date in a complete specification of a patent, namely AU Patent 562947.  This patent was granted on 1 December 1987 to ITW Limited and its claims have at the earliest a priority date of 30 September 1981.  As the claims of the opposed application have an earliest possible priority date of 27 August 1981, I need first to establish whether the present claims are entitled to such priority.
        The present application was filed as an application pursuant to Part XVI of the Act based on two earlier applications filed in the United Kingdom. The earliest UK applicaton No. 8211382 was lodged on 27 August 1981.  The drawings of that basic application are identical to Figures 1 to 6 of the opposed specification and a full description thereof is provided.
        In order for a claim of the opposed application to have a priority date of 27 August 1981, such claim must be fairly based on matter claimed or disclosed in the earliest basic application (see s.142 and 145).  Guidance in determining whether present claim 1 is fairly based in this regard can be gained from the questions posed in the Mond Nickel Company Ltd.'s Application (1956) RPC 189 at 194, which questions can be expressed as follows in this case:

(1)Is the alleged invention as claimed broadly described in the basic application?

(2)Is there anything in the basic application which is inconsistent with the alleged invention as claimed?

(3)Does the claim include as a characteristic of the invention a feature as to which the basic application is wholly silent?

I see no need to discuss these questions in any detail in the present case.  In my view, when the invention claimed in claim 1 of the present application is considered, the above questions are answered as yes, no and no, thus suggesting fair basing from the basic application.
        Mr Collins submitted that the basic application disclosed an invention including the feature of undercut teeth on the strap for engaging an element within the housing and as claim 1 did not include this feature, it was not entitled to early priority from the basic application.  I do not agree with that submission.  For the purposes of priority considerations, it is not a requirement that an invention described in the basic application must be claimed in the Convention application.  Under Part XVI of the Act the requirement to be satisfied for entitlement to early priority is whether the claim is "fairly based on matter disclosed in one or more of the basic applications", and with the assistance of the Mond Nickel questions as earlier mentioned, I am satisfied claim 1 satisfies that fair basis requirement.
        Accordingly I conclude that claim 1 has a priority date of 27 August 1981.  As this predates the earliest possible priority date of the alledged prior claim, there can be no valid prior claim based on AU Patent 562947, and therefor I need not consider the question further.
The Evidence
        The following material comprises the evidence adduced by the parties in this opposition:

(a)

‑Statutory Declaration by Mark Andrew Lance including Exhibits A to R.  Mr Lance is a Sales Engineer in the employ of DEUTSHER in Australia.

‑Statutory Declaration by Robert Speedie with Exhibits RS1, RS2.  Mr Speedie was employed by DEUTSHER between 1962 and 1983 in later years as Product Development Manager.

‑Statutory Declaration by Terrence J Collins, patent attorney, with Exhibits TC1, JTC2.

(b)

‑Statutory Declaration by Donald Adamson with Exhibit DA1.  Mr Adamson, a mechanical engineer, has been employed by ENVOPAK or a related company in England since 1965 and at the time of swearing his declaration was Technical Director of Envopak Engineering Limited.

‑Statutory Declaration by Alan Robert Jolly with Exhibits ARJ1 to 6.  Mr Jolly of New South Wales is the Managing Director of an Australian company which markets a range of security sealing systems in Australia and New Zealand on behalf of a number of major manufacturers including ENVOPAK.

(c)

‑a second Statutory Declaration by Terrence J Collins with Exhibits TC1 to 3.

‑a second Statutory Declaration by Robert Speedie.

The exhibits to these declarations comprise a variety of documents or devices included in which are brochures relating to fasteners, patent specifications, and various fastener or security sealing devices by different manufacturers.  I will refer to those particular parts of these declarations and exhibits as considered relevant later under the novelty and obviousness headings.
Novelty
        At the hearing, the opponent relied on the disclosure of three exhibits to the Lance declaration to support its ground of opposition that the invention lacked novelty.
(a)  Exhibit F
        Exhibit F comprises a copy of US Patent specification 4001919 to Moberg which was available at the Australian Patent Office on 26 July 1977.  This specification discloses a seal device primarily intended to be used with a staple and hasp closure.  In general terms the seal device consists of a strap‑like part having at one end a reduced portion with raised transverse shoulders, while at the other end is formed an apertured socket element and beyond that a finger loop.  The strap‑like part possesses a transverse slot closely adjacent the socket and on the opposite side of the socket to the finger loop.  The device can be formed into a loop by passing the reduced portion through the apertured socket, the shoulders cooperating with fingers in the socket to prevent removal.  The portion of the strap at the transverse slot is designed as a rupture point so that when the device is formed as a loop, tension applied by way of the finger loop can cause the band to rupture and so destroy the formed loop.
        Mr Walton submitted that the seal device of Moberg was not a "one‑piece security sealing device for enclosing an article" as recited in claim 1.  However I agree with Mr Collins that while it may not be described as having itself the character of enclosing an article it does, like the invention, have that capability and that is all claim 1 defines.
        Mr Collins submitted that Moberg disclosed all features of the claimed sealing device, and to the extent that there were any differences in the claimed device, these were of no substance from a novelty point of view.  There is one difference of note between the claimed device and that of Moberg: Moberg discloses a line of weakness (rupture point) created by the transverse slot in the band however the device claimed requires a line of weakness "which extends round the enclosure ... separated from the enclosure".  This to me is a substantial difference in location and nature of the line of weakness and although basically a similar result will be achieved on rupture (i.e. breakage of the closed loop) those parts that separate are different.  It seems to me that this difference in construction of the line of weakness of the claimed device is not of the nature of a mere mechanical equivalent or workshop variation: certainly there is no evidence to establish otherwise.  Consequently, mindful of the findings of the Full Bench of the Federal Court concerning novelty in R.D. Werner & Co. Inc. v. Bailey Aluminium Products Pty. Ltd. (1989) AIPC 90‑568, I conclude that the claimed invention does not lack novelty based on the disclosure of the Moberg patent.
(b)  Exhibit H
        Exhibit H comprises a copy of US Patent Specification 3717906 to Wells which was available at the Australian Patent Office on 21 December 1973.  This specification discloses a one piece seal device which can be formed into a closed loop which according to Figures 6 and 7 bears some resemblance to the device shown in the embodiments of the present invention.  However there is no line of weakness specifically disclosed, and even were one to agree that the undercut formed by the teeth of the strap constituted a line of weakness as suggested by Mr Collins, such line of weakness is significantly different to that required by the invention defined by claim 1.  Thus for similar reasons as expressed regarding the Moberg specification, the Wells specification does not in my opinion deprive the claimed invention of novelty.
(c)  Exhibit L
        Exhibit L is a sample of a one‑piece plastic strap‑type seal device manufactured by Deutsher since 1978/1979 (see Lance's declaration at para 27).  I will call this the Deutsher device.  Exhibits RS1 and RS2 to the Speedie declaration are engineering drawings of the Deutsher device, and it appears that the drawing of RS2 more closely equates with the actual sample of Exhibit L.  The sample device bears some resemblance to the device shown in the embodiments of the present invention but there are differences.  Firstly it is arguable whether the sample device has a pull‑off tab as defined by claim 1.  Secondly, and in my view more significantly, there is no disclosure of a line of weakness of the nature claimed.  The Deutsher device does have a hole in the strap adjacent the portion corresponding to the enclosure of the present invention which, it was submitted by Mr Collins, constituted a line of weakness or rupture zone but that is quite unlike the line of weakness required by the present invention.  Hence I also reject the novelty allegation regarding the claims based on this Deutsher device exhibit.
Obviousness
        The question of obviousness involves asking the question whether the invention would have been obvious to a non‑inventive worker in the field equipped with the common general knowledge as at the priority date (see Wellcome Foundation Limited v. VR Laboratories (Aust.) Pty. Ltd. (1982) RPC 343). Thus a consideration of the question of obviousness must be made against the background of the common general knowledge in the art in Australia. Guidance as to what constitutes such knowledge is found in Minnesota Mining and Manufacturing Co. v. Beiersdorf (Aust.) Ltd. (1980) 144 CLR 253, the remarks of Aickin J. at 292 being apposite:

"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade.  It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."

It is also important to note at this point that as the invention claimed comprises a particular combination of features, it is necessary to consider for obviousness purposes whether the non‑
inventive skilled worker in the field would have arrived at the combination claimed.
        The opponent's submission in support of its allegation that the claimed invention was obvious was made against the background of two basic assertions concerning the common general knowledge.  The two points were these:

(i)one‑piece sealing devices as defined in the first part of the claim prior to the word "characterised" were known and were matters of common general knowledge in Australia prior to the priority date, and

(ii)the use of a line of weakness to enable joined items to be easily separated was widely known in various arts and was also a matter of common general knowledge prior to the priority date.

In support of point (i) Mr Collins referred me to the evidence of Lance where he identifies sales of the so‑called "Telecom strap" since 1979 (see para 12 and Exhibit E), the use in Australia "for many years prior to August 1981" of the so‑called "Brooks seal" (see para 20 and Exhibit J), and the use and sales of the "Deutsher device" from 1979 (see para 27 and Exhibit L).  As to point (ii) my attention was directed to Lance at para 31 where he deposes:

"I am personally aware that a tear‑off facility was used in Australia prior to August 1981 in respect of the following plastics products.

Strap‑type Security Seals

Plastic Rivets

Cream Bottle Caps

Bread Bag Clips

Can Carriers."

Lance does not identify the "Strap‑type Security Seals" to which he refers in para 31 although Mr Collins submitted that he believed this was a reference to the Deutsher device (Exhibit L to Lance's declaration).  In paragraphs 32 to 39, Lance elaborates on the type and use of the other items identified in para 31.
        With regard to point (i) submitted on behalf of the opponent, I note that at no point in his declaration does Lance specifically identify any matter which he considered constituted common general knowledge prior to the priority date.  Certainly he refers to the fact that various devices had been known or sold prior to August 1981 but mere existence of an item or even sales of such an item does not of itself establish that the item has become a matter of common general knowledge to those in the relevant trade.  It was submitted that the applicant's declarants Adamson and Jolly lent support to the proposition that certain sealing devices were common general knowledge, however to that submission I make two comments.  Firstly, Adamson who lives in England and appears to have worked there all his life is hardly well placed to identify matters of common general knowledge in Australia : in any event, Adamson at para 5 merely indicates certain items of which he was aware at the time of developing the present invention.  Secondly, Jolly merely indicates that certain security sealing devices were available "prior to 1982" without claiming that they were part of the common general knowledge at August 1981.  Thus while the evidence definitely suggests that certain security sealing devices were known and sold prior to the priority date and thus constituted public knowledge, whether the knowledge developed by their availability constituted common general knowledge prior to that date has not been established.
        Regarding point (ii), similar observations to those for point (i) apply.  The evidence merely indicates that the use and effect of lines of weakness was known.  However the evidence before me does not establish that in the particular art in question concerning security sealing devices, the provision of a line of weakness to provide a tear‑off or rupture facility was a matter of common general knowledge at the priority date.

        The onus is on the party alleging that an invention is obvious to establish the common general knowledge in the art, and in this case in my view the opponent has failed to do so.  In the absence of clear evidence of the common general knowledge in the art, I am not in a position to decide against the invention on the opposition ground of obviousness.
Conclusion
        I have found that the specification offends against section 40.  Accordingly the opposition has been successful on the ground specified in paragraph 59(1)(i) of the Act.  I allow the applicant 60 days from the date of this decision to request amendment of the specification to overcome the section 40 deficiencies.
        On the question of costs, I have found the opposition successful on a ground of opposition argued by the opponent.  Accordingly, in line with the general rule that costs follow the event, I award costs against the applicant ENVOPAK LIMITED.

(T.R. BRUHN)

Patent attorneys for the applicant: Griffith Hack & Co., Sydney
Patent attorneys for the opponent : Phillips, Ormonde & Fitzpatrick,
  Melbourne

OFFICIAL NOTICES

DECISION OF THE COMMISSIONER OF PATENTS

Application                No. 544930, ENVOPAK LIMITED

TitleDisposable One‑Piece Security Sealing Device

ActionS.59 Opposition by W.A. DEUTSHER PTY. LTD.; hearing

DecisionIssued               ; opposition upheld on grounds of non‑compliance with section 40; time allowed to propose amendments.