F.P. Licensing Co. Inc. v Blake & Hargreaves Pty Ltd

[1983] APO 16

In the Matter of the Patents Act 1952

‑ and ‑

In the Matter of Application No. 503504 in the Name of F.P. LICENSING CO. INC.

‑ and ‑

In the Matter of Opposition thereto by BLAKE & HARGREAVES PTY. LTD.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
         Acceptance of this application was advertised on 6 September, 1979 and Notice of Opposition to the grant was lodged by Blake & Hargreaves on 6 March, 1980 after the granting of an extension of time in which to do so.   After the completion of serving of evidence the matter was set down for a hearing and was heard in Canberra on 30 June and 1 July, 1982.   The applicant was represented by Dr. J.McL. Emmerson, instructed by Davies & Collison, patent attorneys and the opponent was represented by Mr. John Terry, patent attorney of Griffith, Hassel & Frazer.
         Mr. Terry indicated that the grounds on which the opponent intended to rely were those specified in paragraphs (e), (f), (g), (h) and (i) of sub‑
section (1) of section 59, that is, prior publication, obviousness, want of novelty, not a manner of manufacture and non‑compliance with section 40.   Locus standi of the opponent was not at issue.
         The application is a Convention application based on an application made in the United States of America on 18 December, 1974.   There was no argument that the claims are not entitled to that priority date.

The Evidence
         The evidence consists of a number of declarations lodged by both parties.   The declarants are as follows:

:

John Terry
              David Thomas Rich
              Michael John O'Connell
              Leonard William Galloway
              Ivor Kendall
              John Andrew Coote
              John Jarvis
              Peter Wayne O'Hanlon
              Ramon William Johnson

:

Thomas Kent Holland
              Rodney George Urquhart
              John Edgar Clear
              Charles Edmund Boyle

Bruce Earl Tory
              Ivor Kendall
              Frank Preucil.

The Invention
         The specification indicates that the invention relates to a method of textile printing, in particular, a process for producing multiple colour images or patterns on fabric.   The process is described as one in which Offset Lithography is used to produce a transfer medium which can then be used for printing a continuous tone image or pattern onto fabric, with the application of heat and pressure.   The process of the invention involves a number of steps which are conveniently set out by referring to claim 1, which reads:

"1.An offset process for multiple color printing in ink dyes of an original pattern to a true likeness comprising the steps of:

copying the pattern photographically through colour filter lenses to produce separate negatives in each of the respective colors desired,

regulating exposure and developing variables for the separate negatives to achieve selected film emulsion densities on the respective negatives, said densities being reduced from a standard balanced negative to define an out‑of‑balance negative,

projecting the out‑of‑balance negatives through a halftone screen for uniformly dividing the pattern into a plurality of dots corresponding in sizes to the intensity of light transmission through the film emulsion to form respective halftone positive dot patterns reduced in size in proportion to the respective ink transfer sublimation characteristics,

photoengraving each of the halftone positive dot patterns respectively on a corresponding lithographic plate,

printing the dot patterns respectively on a transfer medium corresponding to that on the lithograph plates by depositing ink dyes in the respective colors from each of the plates,

transferring the dot pattern from the transfer medium onto a fabric through the application of heat and pressure to form a continuous tone pattern.

A characteristic of the process of the invention is that so‑called sublimation inks are used instead of conventional lithographic inks ‑ thus the reference to "ink transfer sublimation characteristics" in claim 1.  According to the evidence, these inks sublime, that is, immediately vaporise from the solid form, on application of heat and pressure.   The thrust of the process of the invention is to provide a method by which the expansion characteristics of the dye on transfer are allowed for in the production of the transfer sheet.
SECTION 40
Clarity
         It is convenient to consider the section 40 ground of opposition whilst at the same time considering the detail of the specification as the opponent has objected to certain terms used in the specification to characterise essential features of the invention as well as terms used to describe the performance of the invention.
         The first step defined in the process of claim 1 is the copying of a pattern through colour filter lenses to produce separate negatives in each of the respective colours desired.  As claim 1 refers to "multiple color printing" I interpret the claimed process to be limited to one in which two or more colours are used in the printing process.   The specification explains that the initial step of the printing procedure involves photographically breaking down an original colour pattern or transparency, which may be for example, a painting, photograph or picture, into separation negatives.   This is accomplished through the use of a copying camera and colour lens filters which permit transmission of only the selected colour light.   The colour separations are described as "yellow, red, blue and black" in the preferred four colour process.   Mr. Terry, relying on Mr. Tory's declaration, argued that "red" and "blue" are not the correct technical terms to describe the colours of the separation negatives.   It would appear from the evidence that the technically "correct" terms are "magenta" and "cyan" respectively as they relate to the property of the printing inks used, which are subtractive colours.   "Red" and "Blue" appear to be the primary colours of light which are additive.   However, it would also appear from the evidence that "magenta" and "cyan" are alter‑
natively known in the art as "process red" and "process blue" respectively ("Pocket Pal" ‑ exhibit TKH‑1).   Indeed the second unidentified reference in exhibit JAC2 attached to the declaration of the opponent's witness, Mr. Coote, refers to the two separation negatives in question as 'cyan (blue)' and 'magenta ("red")'. Further, the exhibits attached to the declaration of opponent's Mr. Rich and Mr. Galloway include job cards describing the inks used as "yellow", "red", "blue" and "black".   I thus conclude that the skilled addressee(s) would find little difficulty in understanding the two terms.  
         Dr. Emmerson, in response to the general section 40 attack by the opponent, cited the approach to construction adopted by Lord Diplock, on behalf of the House of Lords, in Catnic Components Limited v. Hill and Smith Limited (1982 RPC 183 at pages 242 and 243) as the one to be followed. In that case Lord Diplock in relation to construction of a specification, said:

"My Lords, a patent specification is a unilateral statement by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his invention (i.e. "skilled in the art"), by which he informs them what he claims to be the essential features of the new product or process for which the letters patent grant him a monopoly.";

and

"A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge."

Mr. Terry did not challenge this approach but considered that the combination of small non‑compliances with section 40 argued by the opponent, which might singly be ignored, amounted to a substantial problem.
         With this in mind I proceed to consider the opponent's other objections under section 40.
         Claim 1 indicates that the separate negatives are produced by regulating exposure and developing variables for the negatives to achieve selected film emulsion densities on the respective negatives, said densities being reduced from a standard balanced negative to define an "out‑of‑balance negative".
         Mr. Terry, apparently relying on Mr. Tory's evidence, argued that the expression "out‑of‑balance" is not a term used in the art and has no clear meaning and as the specification does not contain a clear definition of the expression, claim 1 is unclear.
         It is clear from a reading of the description and claims that the expression "out‑of‑balance" is used in contrast to what the specification calls "a standard balanced negative".   Thus an understanding of "out‑of‑balance" is predicated on an understanding of "standard balanced".
         Mr. Terry conceded that the word "balance" has a meaning in the art. Mr. Tory's declaration in reply has something to say on this point.   I diverge here to note that Dr. Emmerson objected to the Tory declaration as not being proper evidence‑in‑reply.   Whilst I agree that some submissions put forward by Mr. Tory do not appear to be in response to the issues raised, I consider his comments on this particular issue to be relevant as they relate to something raised in evidence‑in‑support and evidence‑in‑answer.
         Mr. Tory, whilst indicating that the expression "out‑of‑balance" is not a term of the art, asserts that the word "balanced" does have established meanings in the field.   He provides two meanings depending on the context in which the term is used:

(a)the word "balance" can be used to define the relationship between various density values (whether continuous‑tone or half‑tone) point for point required to take into account the condition of the particular printing press used, the particular paper, the particular ink and other parameters to produce, when printed, acceptable tonal balance (in each of the four process inks);

(b)the word "balance" is also used in the context of the relationship between various negatives (or positives) of a set of separations point for point to reproduce correctly neutral tones.   This definition applies to every printing process.   In the case of four colour lithographic printing, a neutral tone is one made up of an overlay of dots of varying sizes of all four inks.

I think that this particular matter is readily resolved by referring to the description which has the following to say in relation to "balanced" negatives:

"Since the sensitivity of the film, as well as the light transmitting ability of the film emulsions varies with each of the colors, it is conventional to individually regulate the exposure time for each of the separations to obtain balanced separation negatives.   The separations can also be balanced by control of the developing time.   In order to determine the proper exposure time and/or developing time for balanced separations, density readings are taken in selected highlight, mid‑tone, and shadow areas on the transparency 10. The instrument used to obtain these readings is a densitometer, and accepted standards have been established for the values in these selected areas in desired color separations.   These balanced color separation negatives are then used for making a printing plate wherein the pattern as printed will be represented by dots closely approximating the colors and shades of the original transparency."

It will be noted that the last sentence of the quoted passage states that the balanced color separations are used for making a printing plate wherein the pattern printed closely approximates the colours and shades of the original transparency.
         This "balanced" negative is therefore one produced by conventional techniques where appropriate adjustments have been made to ensure that the "tonal balance" is acceptable, when compared with the original.   The conventional process is thus one which views the printed sheet as the final product and does not take into account the transfer of a printed image onto fabric as one of the parameters to be considered in making compensations in the separation negatives.   This understanding of "balanced" fits in with Mr. Tory's definition "(a)" given above.
         I agree with Dr. Emmerson's submission that "out‑of‑balance" simply means not "balanced" and that the specific manner in which the negative is "out‑of‑balance" can be understood by reading claim 1 as a whole.  Thus the negative is "out‑of‑balance" such that it produces a half‑tone positive in which the dot pattern is "reduced in size in proportion to the respective ink transfer sublimation characteristics".   This half‑tone positive, when used with the other half‑tone positives, yields lithographic plates which print a reproduction on a substrate of unacceptable tonal balance, however this reproduction when produced using sublimation inks, produces a "true likeness" when transferred to fabric.
         In any case, if further clarification is needed to define how the negative is "out‑of‑balance" then I consider that the description at pages 3 to 6 of the specification can be used as a dictionary to assist in the definition of this term, particularly the statement on page 4 which indicates:

"It has been found that an inherent characteristic of the chemical compositions of these dyes effects a rapid expansion and diffusion upon simultaneous application of heat and pressure during transference.   Consequently it has been determined that a compensation factor should be introduced into the printing process in anticipation of these conditions.   The out‑of‑balance separation 12 provides for increased separation between the dots as printed; this correction factor is tailored in accordance with the own [sic] characteristics of each color dye." (emphasis added)

In relation to the description's use of the terms "out‑of‑balance" and "corrected" as synonyms, Mr. Terry submitted that the synonymous relationship implies that "out‑of‑balance" merely means that conventional corrections are applied and account only taken of the usual parameters involved in lithographic printing.   Dr. Emmerson on the other hand submitted that pages 4 and 5 of the specification contrast the process of the invention with the conventional process and thus there is no basis for restricting the word "corrected" (and therefore "out‑of‑balance") to include only known corrections.   I agree with the applicant on this point as I do not consider that the skilled reader would arrive at the conclusion suggested by the opponent nor do I believe that any confusion is caused by the interchangeable use of the terms; I have already indicated what I understand "out‑of‑balance" to mean in the context of the specification.
         In discussing the issue of interpretation of the expression "out‑of‑
balance" I have not considered the meaning of "standard" in the expression "standard balanced negative".   At page 4, the specification indicates, in relation to "balanced separations", that "accepted standards have been established [in selected highlight mid‑tone, and shadow areas] in these selected areas in desired color separations".   It again refers to "standard densitometer readings" at page 5 and illustrates the invention in relation to a schedule "of the standard densitometer readings".   Some of the opponent's declarants criticise a perceived implication that there are standard values always used as "aim points" in the production of separation negatives.   For example Mr. Jarvis declares:

"There is no such thing as a standard negative or set of negatives and I say that the reference in the specific‑

ation to "standard negative" is unclear."

In relation to the standard densitometer readings given in the specification, Mr. Jarvis states:

"I say that these figures could certainly not be regarded as "standard" densitometer readings for a colour set and nor could they even be regarded as typical figures."

However, he does go on to say:

"For a long time prior to December 1974 in Australia it was common practice in any colour reproduction process to modify the densities of each negative of a set of colour separations to maintain a standard degree of "imbalance" between the respective separations to suit the characteristics of the particular printing process to be used."

Mr. Tory, on the same point, declares at paragraph 15:

"In page 4, lines 8 to 10, there is a reference to the use of densitometer readings and it is stated:

"accepted standards have been established for the values in these selected areas in desired colour separations".

This extract is totally misleading in suggesting there is an accepted standard.   It is true to say that for lithographic printing there is a range of densitometer values which would cover the vast majority of conventional printing in four colour process prior to December 1974 in Australia, but in every case the skill of the lithographer is involved in determining the appropriate corrections for a particular printing operation taking into account the normal variable parameters such as type of ink, type of paper, condition of printing press, and other variables (see Exhibit RGU1 ‑ Column 1 Page 7:6).   I should explain that densitometers were conventionally used and indeed are still conventionally used in Australia to aid the lithographer, and can be used to determine particular standards or norms which are useful in a particular printing shop (see e.g. Page 6:17 of Exhibit RGU‑1."

And in reference to the standard densitometer readings Mr. Tory comments:

"At page 5 line 7 I find a meaningless reference to "the standard densitometer readings".   There is no such thing as a standard densitometer reading and the only meaningful way one could comment on the data and the table commencing at page 5 line 10 is to say that the data may be typical for ordinary lithographic printing in four colour process."

It seems to me that the skilled addressee would understand that where the specification refers to a "standard balanced negative", it refers to one produced by conventional methods.   Indeed Mr. Jarvis has indicated that it was common practice before the priority date to modify the densities of each negative of a set of colour separations to maintain a standard degree of imbalance between the respective separations.   Also Mr. Tory admits that it is true to say that for lithographic printing there is a range of densitometer readings which could cover the vast majority of printing in conventional four colour process prior to December 1974.   As for the standard densitometer readings given in the specification, I see them as nothing more than "aim points" used by a print shop when seeking to produce an accurate facsimile on the printed sheet.   These "aim points" would be based on allowances made for the particular ink, paper etc., used by the print shop in question.  Thus I consider that the skilled reader would understand the specification as telling him to start with densitometer readings he normally uses when carrying out conventional lithographic printing.   I regard the actual "standard" figures given on page 5 as being presented only for the purpose of giving a clear indication of how the "standard balanced negatives" are to be corrected when allowing for the expansion characteristics of the heat transfer ink used.
         Mr. Terry, again relying on Mr. Tory's declaration, raised further objections relating to the clarity of the specification.   I have considered these submissions, however I agree with Dr. Emmerson that the further "problems" raised in Mr. Tory's evidence do not arise if the specification is read in a "practical" manner and given "purposive construction" instead of "minute verbal analysis".   It is also pertinent to point out that many of these further issues were not seen as "problems" by other witnesses who made declarations on behalf of the opponent.

         There is one further point referred to in Mr. Tory's declaration in respect of the clarity of the specification which deserves comment.   Mr. Tory declares that the corrections made to the standard densitometer readings go in the wrong direction and that the table commencing at page 5 line 24 is "nonsense".   I have already mentioned Dr. Emmerson's objection to Mr. Tory's evidence on the basis that it is not proper evidence‑in‑reply and that consequently no weight should be given to this evidence.
         I agree with Dr. Emmerson in this instance, as it is only in the evidence‑in‑reply stage that this issue is raised even though it appears to be of such a nature that it could have been raised in evidence‑in‑support.   Even if I were to give weight to the evidence, I do not consider that the applicant's case would be prejudiced.   Mr. Jarvis, Mr. O'Connell and Mr. O'Hanlon, all declarants on behalf of the opponent, all apparently qualified to comment on the matter of the adjustment of negative density taught in the specification, do not appear to have found fault with the "direction" of the corrections made.   Similarly, Mr. Clear and Mr. Urquhart on the applicant's side appear to be able to interpret, without difficulty, the figures given in the specification.
         Mr. O'Connell in paragraph 4 of his declaration indicates that one technique for controlling the respective separations to produce a desired appearance in the final printed work is to limit or extend the negative [density] range of each separation by control of one or both of the exposure or development conditions for each separation.   This appears to be the technique employed by the present specification, that is, the negative density range is decreased by the relevant amount.   The fact that the density range of the negative is the relevant parameter appears to be confirmed in Mr. Preucil's declaration. Although Mr. Preucil is an American witness and therefore cannot comment on common general knowledge in the art in Australia, his comments in relation to the technical effect of the corrections are helpful.   Mr. Preucil, in paragraph 13 of his declaration, implies that a decreased density range produces smaller dots in the printed work whereas an increased density range produces larger printed dots.   As the present specification teaches a reduction in density range I can see no inconsistency in the "direction" of the corrections.   Indeed Mr. Preucil seems to accept that the adjustments do produce the smaller dot size sought by the applicant and he did not seem to have encountered any confusion in interpreting the figures given in the specification.
         Returning to the process defined in claim 1, the halftone positive dot patterns produced are defined as being "reduced in size in proportion to the respective ink transfer sublimation characteristics" and I interpret the "ink transfer sublimation characteristics" to be related to the inherent expansion and diffusion characteristics of sublimation dyes, as referred to at page 4 lines 20 to 23 of the specification.
         The claim then indicates that the halftone positive dot patterns are made on corresponding lithographic plate by "photoengraving" the plate.   Mr. Terry submitted that the term "photoengraving" is wrongly applied to the production of lithographic plates which have a planographic surface.   The term is used to describe a procedure involved with the preparation of a lithographic plate from the halftone positive.   From the evidence it is clear that this step is normally carried out in the making of lithographic plates and was well known before the priority date.   It seems to me that the relevant skilled addressee, upon seeing the term "photoengraving" in the context of the claim, would immediately see it as an obvious misuse of the term.   Not only would it be seen as an obvious misuse but an understanding of what is intended would also be immediately obvious.   I do not believe that the evidence establishes that the term causes any difficulty in construing the claims. Consequently I do not believe that the use of the term affects the validity of the claims.
         The remaining steps defined in the claim appear to be self‑explanatory and need no further discussion.
Sufficiency
         Mr. Terry submitted that the specification did not fully describe the invention.   His submission was based on the comments made by Mr. Tory in paragraph 23 of his declaration, which reads:

"At page 5 line 15 a paragraph commenced in which drastic linear corrections are proposed for dot reduction and it is promised that this provided "optimum results".   For reasons discussed below I do not believe one could achieve results which would be in any sense acceptable results let alone optimum results and the inventors have tended [sic] no proof to the contrary and neither could they in my opinion.   The effects of the drastic linear reductions specified on page 5, line 15 is to produce lower density, i.e. thinner negatives, and in a sense, the same "balance" between the three tones has been maintained rather than changing the relative balances.  Furthermore, the data places shadow densities on the "toe" portion of the sensitometric curve of the photographic material and shadow details will therefore not be recorded.  This is because the straightline portion of the characteristic curve usually commences at a density of about 0.3. ...."

Mr. Terry argued that the specification failed to give an explanation of how the "problem" of recording the shadow portions could be overcome given that the characteristic curve of an emulsion usually starts at a density of 0.3.
         I do not agree with the opponent's submission on this point.   Mr. Tory does not say that he has tried to implement the process of the invention, and as a result of this attempt has found that the emulsion sensitivity has caused him problems, rather he has merely hypothesised that there is a problem. I do not consider that this is evidence that establishes the insufficiency of the specification ‑ the applicant's declarant (and one of the inventors of the instant specification) Mr. Holland asserts that the reductions taught in the specification do achieve the desired result.  
         Mr. Tory also mentions other alleged omissions in the specification whilst asserting that these omissions relate to common general knowledge.   I agree with Dr. Emmerson's submission that a specification is not insufficient because it omits matter that the skilled reader could supply himself (Blanco‑White 54‑504 4th Edition).
Fair Basis
         The opponent's attack on the fair basis of the claims revolves around the term "true likeness" as used in the claims and description and the term "optimum" as used in reference to the preferred embodiment.   Before considering the opponent's submissions on this point it is necessary to construe the two terms.  
         The opponent appears to understand "true likeness" as "an exact reproduction" of the original in terms of definition and hue, saturation and brightness of colour, of the original.   In other words the opponent sees "true likeness" in an absolute sense.   There is no evidence to establish that "true likeness" has an accepted meaning in the art.   It appears to me that the meaning of the term depends upon the context in which it is used.   For example, a food package having a representation of its prepared contents on the package would not, I believe, have to be an exact reproduction of the original; the reproduction would of course have to look natural to the purchaser of the goods ‑ a representation of green hamburgers could have a drastic effect on sales, however the representation only serves as an identification of the goods.   On the other hand, a high quality printed colour reproduction of an artistic work or reproduction in a text on Renaissance art would have to be  precise as the print acts as a "substitute" for the original.   One would therefore regard a representation on a food package as a "true likeness" if the representation looks real.   In contrast, a high quality artistic reproduction would be regarded as a "true likeness" if it were a precise copy of the original, that is, a comparison is involved.   Thus it will be seen that the "true likeness" of a reproduction on a food package would be judged on a different scale to the "true likeness" of an artistic reproduction.
         Turning to the present specifiction, the term "true likeness" is used in relation to the reproduction of multiple colour images and patterns on fabric.   Dr. Emmerson submitted that it is inherent in any colour reproduction system, which uses a limited number of colours to produce the whole range of colours, that a less than perfect reproduction will be obtained.   This submission appears to be borne out by the evidence, in particular the unidentified reference attached to Mr. Coote's declaration, which indicates:

"Color pictures frequently contain hundreds of small areas of distinctly different colors.   It would be impracticable or impossible to print each color separately.  Fortunately most colors can be reproduced by printing in their place some mixture of three selected colors, sometimes with the addition of black." (emphasis added).

Another apparent inherent limitation on the accuracy of printing relates to the substrate on which the ink is printed, as is discussed in the abovementioned unidentified reference (6:4):

"When we put a thin transparent ink film on paper, we are not adding any color to the paper.   The purest and brightest color hues that can be produced on that particular paper are already reflecting from the paper before we put any ink film over it.   Any thin reasonably transparent ink film transferred to paper can be no purer than the color already reflecting from the paper as part of white light.   This is very noticeable when the same ink is printed on a variety of papers ..." (emphasis added).

The use of fabric material as the substrate, with its relatively imperfect surface, thus appears to further limit the ability of the process to achieve accurate reproduction.
         I have come to the conclusion that "true likeness" is used in the specification akin to its use with say food packages, that is, one looks at the printed textile in isolation and subjectively decides whether the image or pattern looks real.   I consider its function to be essentially decorative in nature.   For example, one would regard a printed material produced via the "Raquel Welch" separations referred to in Mr. Holland's declaration as a "true likeness" if the skin tones, eye colouring etc., look natural and conform with the viewer's recollection of that person I do not believe that a tee‑shirt imprinted with a reproduction of the "Mona Lisa" or curtain material carrying a reproduction of "The Last Supper" would be regarded as not a "true likeness" merely because the reproduction's colour measurements do not match up exactly with the original.
         It seems to me that the comments by the opponent's Mr. O'Connell, whose business relates to acting as a fabric sales agent including representation of heat transfer printing of fabrics (albeit one who appears to have experience with fabrics after the priority date) support my understanding of "true likeness":

"Judging the appearance is of course a subjective matter and part of the skill which I acquired and practised was to introduce correction factors in the process in general to make the final result as true to the original artwork as desired or possible."

The opponent's argument on fair basis also turns on the meaning of "optimum results" as used in the description.   Collins English Dictionary gives the following meaning for "optimum":

"adj 2. most favourable or advantageous; best: optimum conditions."

I therefore understand the term "optimum results", as it is used in the specification,, to mean the best given the restraints that exist.   It is not unreasonable to assume that one restraint on printing on textile material is cost.   I have already indicated that I consider the purpose of the printed textile to be essentially decorative in nature; one would reasonably strike a balance between cost of preparing the negatives and the degree of accuracy of the transferred image.   It is in this context, I believe, that the linear reductions are given in the preferred embodiment ‑ they produce results which optimise the accuracy of the image under the constraint of cost.
         Mr. Terry argued that claim 1 was not fairly based because the method defined by the claim did not produce a "true likeness" nor were "optimum results" obtained by using the "drastic linear reduction" taught by the specification.   In support of this argument, he directed my attention to the judgement in AMP Inc. v. Utilux Pty. Ltd. ((1971) 45 ALJR 123 at page 131) where the following comments were made by Justice McTiernan:

"... if a claim is not limited by its terms to what the patentee has stated in the body of his specification to be the embodiment of the invention, then the requirement of s.40(2) has not been complied with.";

and

"... If as in this case the patentee chooses or is compelled to state advantages of the invention, failure of a claim to embody any of the advantages claimed must result in failure of the claim."

He further argued that the claims (particularly claim 1) were speculative and lacked fair basis because the specification gave no "consider‑
ation" for the wide scope of the claims but merely taught a "drastic linear reduction of dot patterns".   Mr. Terry went on to argue that the disclosures in the specifiction did not provide a reasonable basis for a "fair prediction" which would provide a basis for a wide claim.  
         I do not consider that the opponent has provided any evidence to establish that the process taught in the specification does not produce the "true likeness" (as I have already construed that term) called for by the claims.   The statements by Mr. Jarvis and Mr. O'Connell about the ability of the process to produce a "true likeness" are, to use the words of Dr. Emmerson, mere statements of disbelief that the invention would work and as such should be given little weight.   And then there are the assertions made by Mr. Pruecil.   Mr. Preucil's evidence relates to,  amongst other things, an example of transfer printing called "Wool Tree", which was "sworn to be made in accordance with the example" of the equivalent US patent.   Mr. Preucil states that measurements on this example "showed that the cloth transfer averaged 28% off in colour hue and purity" and that other examples supplied by the applicants in US litigation were "closer in color accuracy to the originals than the "Wool Tree" but these examples were not made using "the drastic linear reductions of dot pattern".   Mr. Preucil also asserts that he has taken measurements with other works by Mr. Holland and demonstrated that the "ink transfer sublimation characteristics" are non‑linear and are not "correctable by linear compensation".   I do not consider that this evidence establishes  lack of fair basis in the claims.   Mr. Preucil's evidence seems to me to be based on the assumption that "true likeness" means "exact reproduction" which, as I have already indicated, is not the case.   As for his comments regarding the "drastic linear reductions" I again emphasise that I consider that the specification gives a detailed example which provides "optimum results" ‑ that is, one that produces the most favourable results given the constraints that exist, for example, time and cost balanced against the purpose for which the printed image or pattern on the fabric serves.
         Mr. Tory similarly produces exhibits which he states demonstrate "the need for introducing appropriate compensations" but which indicate that the "ink transfer sublimation characteristics" are non‑linear.   I understand the examples of transfer printing produced by Mr. Tory to be ones not produced according to the present invention but ones he states: "would have been exactly those which I would have specified if I had been asked to investigate system‑
atically performance of heat transfer inks".   I fail to see the relevance of Mr. Tory's comments on this point.   I do not consider that the specification teaches reductions in dot sizes which are restricted to linear reductions, as I will explain in more detail later.   Mr. Tory's evidence establishes that the larger printed dots expand to a lesser extent than smaller printed dots.   However his evidence does not contradict the basis on which the specification provides "optimum results" which is that the smaller dots expand a substantial amount.   Mr. Tory's evidence, related as it is to a process which is not carried out according to the present invention, provides little assistance in determining the issue of fair basis.   As for Mr. Tory's assertion that the shadow areas could not be represented by using "drastic linear reduction of dot patterns", I again consider that it should be given no weight as the assertion is not arrived at on the basis of a serious attempt to carry out the process according to the present invention.
         The second leg of the opponent's argument is that the specification merely teaches "drastic linear reductions of dot patterns".   It appears to be based on the assumption that the "optimum results" referred to in the specification are a promise of the invention.   This argument is not supported by a reading of the specification as a whole.   At page 4 of the specification it is clearly indicated that the compensation factor should be introduced in anticipation of the rapid expansion and diffusion characteristics of the dye.   It then indicates that the out‑of‑balance separation provides for increased spacing between the dots (which I take to mean increased blank space between the dots, not space between dot centres) to compensate for dot expansion on the printed fabric.   The correction is thus based on the expansion of the dots and not on any fixed linear correction as suggested by the opponent.   Claim 1 is clearly consistent with this as it specifies that "the respective halftone dot patterns [are] reduced in size in proportion to the respective ink transfer sublimation characteristics.".   The term "optimum results" is used in the context of something given in the specification "by way of example" and I understand the term to apply to the preferred embodiment and thus not a "promise" of the invention.   I note Dr. Emmerson's assertion that the "drastic linear reduction of dot patterns" represents an averaged figure for each colour of ink dye and is an approximation for the actual "ink transfer character‑ istics" of each ink dye irrespective of dot size.   His submission that it is not practical to adjust for the "ink transfer sublimation characteristics" for each dye to allow for the non‑linearity referred to by Messrs. Tory and Preucil fits in with my understanding of the nature and purpose of the printed pattern or image on fabric.
         In the end I am not satisfied that the opponent has provided evidence to establish that the claims go beyond the consideration provided by the disclosure of the specification.
Prior Use
         In his submissions in support of the ground of prior use Mr. Terry argued that the standard of proof required was one based on "a balance of probabilities" (Blanco‑White 4th Ed. S.4‑119).   He also directed my attention to Bristol‑Myers Company Application ((1975) RPC 127) to define secret use and inadvertent use. I would also add Dunlop Holdings Limited's Application ((1979) RPC 523).
         Dr. Emmerson assumed in his arguments that the standard of proof required was that given In the Matter of Applications by Robert Burgess Junior (1956) RPC 163 and that the opponent had to show that all the steps of the claimed process had been performed.

         Turning to evidence, Mr. Terry asserted that the statements by Mr. Kendall concerning prior use were corroborated by Mr. Galloway in his declaration and that this evidence shows that before the priority date, Selex Decal had lithographically printed a heat transfer paper which was then supplied to a customer.   Mr. Terry further asserted that the only details lacking were the colour separations and the numerical data as to the degree of corrections made ‑ investigations by the opponent had shown that this inform‑
ation was not available.   In response, Dr. Emmerson argued that both Mr. Galloway and Mr. Kendall were vague about when the events took place and were also vague about exactly what was done.   He further asserted that if there had been a clear example of prior use then it should have been easy for the witnesses to say so by stating that the steps in claim 1 had been carried out before the priority date.
         Mr. Galloway in paragraph 4 of his declaration refers to work tickets (Exhibit LWG3) for five jobs his company had taken orders for prior to December 1974.   He declares that all of the jobs were four colour process heat transfer papers printed lithographically.   He does not give an exact date for the delivery of these jobs but "assumes" that they would have been delivered "on or about the date required by the customer or within a few days thereafter".    In relation to one of these jobs, "the two parrots" Mr. Galloway says in paragraph 6:

"The colour separation work from the original artwork was effected using specialist colour separators namely the firm Litho Colour which at the time was another division of Wilke & Co. Ltd.   Litho Colour no longer exists.   At the time I was directly involved in the operation and was involved in liaison both with Litho Colour and our customer to ensure that a good reproduction of the original artwork to the customer's satisfaction was supplied.   I have a very clear recollection of this job concerning the two parrots for John Brown Industries Ltd. since it was one of the first demanding four colour process jobs that we did.   I recall considerable trial and testing and corrections were introduced by the colour separators to change the degrees of compensation on the colour separations to compensate for the various factors influencing the appearance of the final job.   This trial and testing operation was carried out as a conventional routine using well established principles in gaining experience with the heat transfer inks which had only become recently available.   At no time did any person with whom I was associated ever suggest that anything was being done other than to apply known techniques and principles to the job in hand.   I was well aware as were others at the time that heat transfer inks expanded in the heat transfer step and appropriate compensation factors were required in order to produce a satisfactory result and the compensation factors were introduced into the colour separation stage."

It will be noted that Mr. Galloway indicates that he recalls consider‑
able trial and testing and that corrections were introduced by the colour separators to change the degrees of compensation to compensate for the various factors influencing the appearance of the final job.   However Mr. Galloway does not indicate the nature and degree of compensations made on the colour separations nor does he indicate which "factors" were considered in arriving at these compensations.   Thus an analysis of Mr. Galloway's declaration reveals that it fails to establish that the steps:

"regulating exposure and developing variables for the separate negatives to achieve selected film emulsion densities on the respective negatives, said densitities being reduced from a standard balanced negative to define an out‑

of‑balance negative,

projecting the out‑of‑balance negatives through a halftone screen for uniformly dividing the pattern into a plurality of dots corresponding in size to the intensity of light trans‑

mission through the film emulsion to form respective halftone positive dot patterns reduced in size in proportion to the respective ink transfer sublimation characteristics."

as defined in claim 1, were carried out prior to 18 December, 1974 in the alleged instance of prior use.
         Mr. Kendall indicates in his first declaration that heat transfer inks were supplied to Selex Decal of Melbourne "in the middle and late part of 1974 and certainly well before 18 December, 1974".   In the next paragraph of the same declaration he states that:

"It is my belief that Selex Decal was supplied with four colour process heat transfer inks well before December 1974".  

He then goes on to state in paragraph 5:

"During the period of time both prior to and after the supply of heat transfer inks to Selex Decal, I maintained a close liaison with that company and a regular exchange of inform‑

ation took place as experience was gained with the heat transfer inks.   In my laboratory I had a small heat transfer press suitable for testing samples of patterns transferred onto fabric and I as well as Selex Decal, was well aware of the need to introduce appropriate compensation in the plate making process to take account of the sublimation character‑

istics of the heat transfer inks.   We rapidly became aware of the heat sublimation characteristics of the inks and it was plain to us and our customers that the colour separations required compensation for growth of the ink area in relation to the ink dot size on the transfer paper.   In general a weakening of the ink on the transfer paper is required as using normal screen values would cause an oversaturation."

I consider Mr. Kendall's statements about the date at which he became aware of certain matters to be vague.   He is also vague about the nature of compensations introduced in the plate making process.   This is understandable to an extent, because Mr. Kendall's expertise appears to relate to the technical aspects of printing inks and not colour separation.   In Mr. Kendall's declaration in reply he states that prior to 1974 he "had become familiar with the characteristics of heat transfer inks"" and he believes "those characteristics were taken into account in the preparation of printing plates".   He further states that he "inspected samples of the final heat transfer jobs prepared by Selex Decal" and believes that "the product was of commercially acceptable quality".   These statements do not specify the nature  of the "characteristics" considered.   There is also no statement as to what stage in the preparation of printing plates, account was taken of these "characteristics".   Also, even if the testing of the "transfer jobs" byprinting onto fabric indicated that the product was of a "commercially acceptable quality", at that date, it is not certain that this would be true after the present invention was made.
         It will be seen that the opponent's evidence put forward to establish prior use contains many omissions and is vague in many of the assertions it does make.   On the admission of Mr. Terry, the evidence does not establish that the steps previously referred to, were carried out in the alleged instances of prior use ‑ features I consider to be essential to the invention.  Not only this, the evidence does not categorically establish the dates at which the alleged prior use occurred.
         Mr. Terry has put the question to be answered in this case as : on the balance of probabilities has prior use occurred?   The reference to this balance of probabilities in Blanco‑White relies on, inter alia, the statements made in E.I. Dupont de Nemours and Company (Holland's) Application [1971] RPC 7 at 21 where Mr. Justice Graham said:

"The matter is, in my view, sometimes different if the question to be resolved is one of pure fact such as may, for example, arise in cases of prior user.   Then if satisfied that the evidence has dealt with the matter comprehensively, so that the Tribunal feels it is in a position to come to a correct answer on the question of fact, there seems no reason why it should not resolve the conflict and, in my judgment, is in a proper case under the duty of doing so, and in so doing should act upon the normal principles of proof in civil actions."

On this issue of the degree of proof required Buckley, L.J. in Dunlop Holdings Ltd. (supra) at page 544 said:

"It is a peculiar feature of opposition proceedings that, if opposition fails, the opponents are not at the end of the road; they still have an opportunity, at a later date, to defeat the objective of the applicants in a revocation action under section 32 of the Act in High Court proceedings, with all the features of pleadings, discovery, oral evidence including cross‑examination, appertaining to a High Court action.   It has been frequently said that opposition proceedings are a device for weeding out patent applications which obviously could not survive a revocation action.   This peculiar feature of opposition proceedings may, it seems to me, have a bearing upon the degree of certitude which the Comptroller should feel in opposition proceedings, but it remains true that the standard of proof is the civil standard and not the criminal standard.

If Lloyd‑Jacob, J. meant more than this when he said, in Toyo Tsushinki K.K.'s Application [1962] RPC 9, 15 at line 48: "It is, in my judgment, essential that an allegation of prior public user if relied upon should be strictly proved", he was in my judgment mistaken.

On the other hand, I would not dissent from what Graham, J. said in Seiller's Application [1970] RPC 103, where he said that it was necessary that proof of prior user in opposition cases should be very clear; nor with what he said in Laguerre's patent [1970] RPC 587, 594 at line 31, where he said that it was right that in the early stages of the life of a patent the court should be very careful in refusing or revoking a grant."

After considering these precedents, I must say that I am not satisfied that the opponent's evidence deals with the instances of alleged prior use comprehensively; there are too many "gaps" to be filled in ‑ these "gaps" do not relate to minor issues rather they relate to the "essence" of the present invention.   I consider that the evidential burden on the issue of prior use remains with the opponent as it appears that the relevant facts of the alleged prior use are more likely to be within the knowledge, or more readily available to, the opponent.   I am of the opinion that the opponent has failed to provide convincing evidence of prior use of the invention.
         Consequently, I am of the opinion that the opponent's evidence fails to establish prior use of the invention defined by the present claims.
Prior Publication
         I have considered all the documents referred to by the opponent's declarants which have been published before the priority date of the present claims.   I am satisfied that no one document prior publishes the invention defined by the present claims.   I do not believe that the opponent has seriously argued otherwise.
Novelty
         Mr. Terry argued that the invention defined in the present claims is not novel in the light of the "test" specified in Griffin v. Isaacs ((1942) AOJP 739) because there was a lack of ingenuity.   Relying on Gum v. Stevens (33 CLR 267) he submitted that any differences over the prior art are "mere newness".   He argued that the differences from the common general knowledge of compensation to suit the medium on to which the printing is to be made do not contribute to the working of the process.   Mr. Terry also stated that he relied on the principles expressed in the case Commissioner of Patents v. Microcell Limited (102 CLR 232).   In response, Dr. Emmerson submitted that the opponent had not produced a single document which prior published or rendered not novel the present invention, rather it was a case of "obviousness being dressed up in a party hat called novelty".   Mr. Terry replied that his arguments on lack of novelty and obviousness were not based on a reading of a document in the light of common general knowledge, rather the common general knowledge itself demonstrated that the present invention lacked novelty and was obvious.
         Mr. Terry conceded that, although sublimable inks used for heat transfer printing onto fabric were available in Australia before the priority date, they were not discussed in standard reference books before that date.   I am not satisfied, from a reading of the evidence, that the characteristics of heat transfer inks formed part of common general knowledge in Australia before the priority date (a point I will discuss in more detail later in this decision).   The invention of the present claims relates to the use of heat transfer inks and relies on attendant adjustments made in the production of separation negatives to allow for the heat transfer characteristics of the ink.
         It is clear from Gum v. Stevens (supra) that a consideration of "invention" is not excluded in a consideration of novelty.   I understand it to be Mr. Terry's submission that there was no invention in going from the methods of conventional lithographic printing using inks other than sublimable inks (which methods formed part of common general knowledge) to the process defined in the present claims ‑ the only difference involved the substitution of sublimation inks for known inks, such substitution only involving the implementation of methods and practices which formed part of common general knowledge.   Having considered Gum v. Stevens I do not believe that the opponent has established that the present claims define an invention which does not involve "ingenuity".   It appears to me that the mere fact that the properties of sublimation inks bear no relation to those used in conventional lithography, suggests that "invention" may have been involved.   Thus the substitution of the conventional ink with sublimation inks did not involve the use of a mere alternative having properties similar to those previously known but involved completely new heat transfer characteristics which could have required an exercise of mind in the implementation of a process using the "new" ink.   Indeed, there seems to me to be "invention" in the discovery of the inherent characteristics of heat transfer inks upon which the present process relies.
         Dr. Emmerson stated that it would be difficult to get any one person who was expert in the whole range of factors embodied in the invention and that it would be wrong to assume that any one witness could be expert in all the relevant art.   A perusal of the experience and qualifications of the expert witnesses as well as consideration of the steps involved in the present invention indicates the truth of Dr. Emmerson's submission.   It appears to me that the process of the invention is directed to four areas of expertise ‑ printing ink technology, colour separation, lithographic printing, and fabric printing.
         I consider that it is clear that the essence of the invention revolves around the use of heat transfer inks.   I note that there is very little detail in the opponent's evidence dealing with the use of the conventional inks for fabric printing prior to the event of sublimation inks; the evidence appears to be more concerned with lithographic printing on paper.   It seems to me that the skilled persons, at the priority date, would have made corrections on the basis of the physical and chemical properties of the liquid inks generally known at the time.   The evidence tells me that the use of heat transfer ink involves an understanding of chemical and physical properties which cannot be regarded as analogous to those of "conventional" inks.   Sublimation inks sublime on the application of heat and pressure, that is the solid dye enters the gaseous phase without an intermediate liquid transition.   With the conventional liquid inks used in lithographic printing, skilled persons were concerned with the properties of a liquid.  Mr. Holland, an inventor of the present invention, asserts that a single dot, when printed onto fabric, expands, but rather than becoming paler it becomes stronger.   Mr. Tory disputes this in paragraph 53 of his declaration where he states:

"Holland is totally wrong in his comments.   When conventional dots spread (as they do even in lithography) the resultant image does not become paler (weaker is the more usual term).   The image becomes darker because the ink spreads over what would otherwise be white substrate areas. Printers know how to control a printing press to ensure that a proper thickness of opaque printing ink is applied so that when the dot spreads one still obtains an opaque dot and Holland's assertion that the ink becomes "washed out" is totally wrong and just does not happen in conventional inks. ..."

I am not convinced that Mr. Tory has rebutted Mr. Holland's assertion. Indeed I believe Mr. Tory supports my contention when he refers to the control of a printing press to ensure that a proper thickness of conventional printing ink is applied.   This control is not available with sublimation inks as there appears to be not way of controlling the ink once it has vaporised.   I consider that the skilled addressees, with their knowledge of conventional inks, would believe that if a dot were to expand by say five times the dot on the printed substrate would be spread too thinly (in the absence of correcting action on the printing press) whereas in fact, with sublimation inks the effect of expansion does not reduce the brilliance of the individual dot.   Thus I conclude that the use of heat transfer inks does not involve the mere substitution of known inks with a material which has predictable properties.   Consequently I find that the opponent has failed to establish want of novelty.
Obviousness
         In deciding the question of obviousness it is first necessary to determine the common general knowledge in Australia at the priority date, that is 18 December, 1974.
         I believe that it is accepted by both parties that heat transfer inks were available in Australia before the priority date albeit only shortly before that date.   However there is no suggestion in the evidence that these inks or their heat transfer characteristics formed part of common general knowledge before the priority date.   Mr. O'Hanlon does say in paragraph 16 of his declaration that it is his belief that the inherent characteristics of heat transfer inks were known before the priority date in Australia.   However I find it difficult to reconcile this assertion with his statement at paragraph 7 that he "was not personally aware of the characteristics of sublistatic inks" as at 18 December, 1974.   Similar criticism applies to the assertions of Mr. Kendall and Mr. O'Connel, neither of whom provide evidence to back up their assertions.
         It is clear from the decision in Minnesota Mining and Manufacturing Company and Another v. Beiersdorf (Australia) Limited 144 CLR 253 that the question of obviousness cannot be decided on evidence which does not form part of common general knowledge.   Thus I have to decide the question of obvious‑
ness in the present matter on the basis that the skilled persons, to whom the specification is directed, were unaware of heat transfer inks (i.e. sublimation inks) or their heat transfer characteristics at the priority date.
         As the invention of the present claims is directly concerned with the use of these heat transfer characteristics and has applied appropriate corrections to account for these characteristics I fail to see how I can conclude that the invention, without a doubt, is obvious, no matter which test on obviousness I may apply.   The opponent appears to have applied a great deal of "ex post facto" analysis in its evidence, for example  Mr. Tory, asserts that he considers that had he known the ink sublimation characteristics at the priority date, it would have been easy for him to apply the appropriate compensations.  

         Accordingly, I find that the evidence does not establish that the invention is obvious.
Working Directions
         Mr. Terry also argued that the process defined in claim 1 was not a manner of manufacture and relied on the case of Commissioner of Patents v. Lee (16 CLR 138 at page 147) which affirmed that "no‑one has a right to prevent a workman from using his tools in the most efficient manner".   Mr. Terry made the alternative submission that the process represented an analogous use (Willman v. Petersen 2 CLR 1 at page 17).   Dr. Emmerson stated that the process of the invention produced a new and vendible product and thus could not be considered a working direction wherein nothing new is produced.   He also argued that because the process was new it was not relevant that the process could be performed with apparatus already existing in Australia.
         I am of the view that the invention claimed is clearly patentable.   The process of the invention makes use of the properties of transfer inks which properties, on the evidence, have not been established to have been public knowledge, let alone common general knowledge before the priority date.  Those steps in the process of the invention, involved in the making of the separation negatives and the screen positives could not have been well known before the priority date as they rely on these heat transfer properties.   I certainly believe that the product of the process is such that it belongs to the useful arts and is economic in nature.
CONCLUSION
         I find that the opponent has failed to establish any of the grounds of opposition upon which it relied.   I am also satisfied that there is no lawful ground of objection to the application and complete specification.  Consequently I direct that the application and complete specification may proceed to sealing, subject to any appeal.   I award costs against the opponent.

(P.A. KILBORN)