G & J Koutsoukos Holdings Pty Ltd v Capral Aluminium Limited
[2003] APO 39
•16 September 2003
OFFICIAL NOTICE
DECISION OF A DEPUTY COMMISSIONER OF PATENTS
Application : No. 754829 in the name of G & J Koutsoukos Holdings Pty Ltd
Title: A security closure
Action: An application under regulation 5.5 for dismissal of the opposition by Capral Aluminium Limited
Decision: Issued 16 September 2003
Abstract
Opposed application was a divisional application. The independent claim of the parent application was directed to a different invention. The Statement of Grounds and Particulars served was essentially identical to the Statement served in the opposition on the parent application.
· Several grounds of opposition dismissed, on the basis that there was no real particularisation of the ground;
· There was a real question of relevance of the Statement to the present opposition. Accordingly it was appropriate to give some consideration to the technical content of the alleged anticipatory documents. Ground of novelty dismissed, as there was no apparent prospect of finding a lack of novelty on the basis of the documents particularised. Ground of obviousness was not dismissed, but further and better particulars were ordered;
· The particulars relating to clarity issues were clearly directed to the claims of the parent application. However the terms referred to were used in the present application, and could be readily identified. Further and better particulars ordered;
· If the opposition is not a serious opposition, this should be ascertained and dealt with as soon as possible. There is no public interest in allowing a non-serious opposition to proceed before the Patent Office, or indeed in any other forum. On the other hand, if the opposition is a serious opposition but suffers from a serious lapse in preparation and prosecution, those matters should be rectified as soon as possible such that all concerned understand the basis of this opposition.
PATENTS ACT 1990
DECISION OF A DEPUTY COMMISSIONER OF PATENTS
Re:Patent Application No. 754829 in the name of G & J Koutsoukos Holdings Pty Ltd, opposition by Capral Aluminium Limited, and a request for dismissal of the opposition.
BACKGROUND
Patent Application 754829 (91328/01) is proceeding in the name of G & J Koutsoukos Holdings Pty Ltd (Koutsoukus). It was filed on 13 November 2001 as a divisional application of 742820 (37825/00). That parent application was opposed by the present opponent, Capral Aluminium Limited (Capral) – and presently is awaiting service of evidence in answer.
The present divisional application was advertised accepted on 28 November 2002. A notice of opposition was filed twelve days late, on 12 March 2003 – together with request under s.223 to extend the time for filing that notice. Following objection by the applicant and a subsequent hearing, a delegate of the Commissioner granted the extension of time to file the notice of opposition. [See (2003) APO 23, issued on 17 June 2003.]
The time for filing the Statement of Grounds and Particulars is prescribed by regulation 5.4(a) as being “within 3 months of filing the notice of opposition” – that is, by 12 June 2003. The opponent did not serve the Statement by that date, in then apparent belief that they would have 3 months from the date of the decision to grant an extension of time to file the notice of opposition. An extension of time under s.223 to serve that Statement was filed on 17 June 2003, and objected to by Koutsoukos. The Statement was served on 11 July 2003. In my decision of 6 August [(2003) APO 28], I granted the requested extension of time to serve that Statement.
Consequent upon the above two decisions, three applications for review by the Administrative Appeals Tribunal (AAT) have been filed – two in the Western Australian registry, and one in the Queensland registry:
·the applicant has sought review of the decision to grant the extension of time to file the notice of opposition;
·the opponent has sought review of the decision to grant the extension of time to file the notice of opposition; and
·the applicant has sought review of my decision to grant the extension of time to serve the Statement of Grounds and Particulars.
On 29 July the applicant applied for dismissal of the opposition. I heard the parties on the request for dismissal on 1 September 2003, by telephone. The patent applicant (Koutsoukos ) was represented by Mr R.J.L. McCormack of counsel, instructed by Mr E Harwood of Wray & Associates, Perth. The opponent (Capral) was represented by their patent attorney, Mr Michael Angliss of Cullen & Co, Brisbane. Both parties provided helpful written submissions prior to the hearing.
On the morning of the hearing, Mr Angliss faxed proposed amendments to the statement of grounds and particulars. Prima facie, this would appear to have been as a result of the applicant's summary submissions for the hearing, which the applicant faxed on the previous Friday.
As further background relevant to the dismissal proceedings:
· In the examination of the parent application (742820), the examiner objected (in the first report) to there being more than one invention. This was maintained in a subsequent examination report, following which the present application was filed as a divisional application. In simple terms, the independent claim of the parent application was directed to an arrangement for holding a screen element in the frame of a security door – and the present divisional application is directed to a screen element per se for a security door.
· A PCT application was also filed for essentially the same subject matter (PCT/AU00/00943). This application was filed after application 742820 had been filed. In International Preliminary Examination, the examiner issued an adverse opinion on 13 Feb 2002 raising lack of unity, and alleged lack of novelty and lack of inventive step. Three further adverse opinions were issued. Ultimately the International Preliminary Examination Report was established on 17 Sept 2002. That report assessed the claims as amended as complying with the requirements for novelty and inventive step, but reported that there was lack of unity. These actions essentially occurred in parallel with the examination of the parent application.
SUBMISSIONS
The submissions of Mr McCormack, for the opponent, may be summarised as:
· The Statement served in this opposition is almost identical to the Statement served in the opposition to the parent application. However the independent claims of the two applications are directed to different inventions;
· The only difference between the two Statements is 3 instances of a 2-line phrase in a 10-page document. Spelling mistakes in the previous Statement are present in the latter. There is no explanation provided with the particulars that show relevance to the current set of claims;
· Most of the particulars are a formulaic recitation of the grounds of opposition eliciting no particulars of substance;
· The opposition is vexatious, and is not serious – and should be dismissed in its entirety. If it is not entirely dismissed, the opposition should be constrained to matters identified in the Statement.
The submissions of Mr Angliss, for the opponent, may be summarised as:
· An opposition should be dismissed only if the Commissioner is satisfied the opposition cannot possibly succeed;
· While an opposition may be dismissed in part, a ground of opposition should not be dismissed merely because it is not supported by some of the particulars;
· The Statement refers, with respect to the prior art base, to nine references identified by the opponent as well as the references cited in the International Search Report (of the PCT application). This is sufficient to establish that a case exists such that the grounds relating to novelty and obviousness cannot be dismissed;
· While the particulars relating to s.40 issues are inconsistent with the present claims, the terms objected to are used in the claims, and provide the basis for a case
· Where discretion exists, it should not be exercised so as to shut out a serious opponent.
DISCUSSION
The Statement of Grounds and Particulars filed in this application is, for all material purposes, identical to the statement filed in respect of the opposition to the parent application. Apart from the identification of the application, the only difference is the inclusion in the introductory clauses of three paragraphs, of the additional phrase:
“in Australian Patent Application No 200037825 or in the alternative the complete specification of the opposed divisional application”.
As noted in the paragraph 7, the inventions claimed in the parent and divisional applications are fundamentally different. One would therefore expect significant material differences between the two Statements. At the hearing I raised this issue, indicating a concern that the copying of the Statement raises questions about whether there is a serious opposition. Mr Angliss advised that there was commonality between the applications at the level of the dependent claims. [That is, the parent application claims A and A+B, while the divisional application claims B and B+A.] Prima facie I accept that this is so. Mr Angliss also explained that there was a need to oppose this application, as failure to do so would compromise the opposition to the parent application – presumably by creating an inference that the claim to A+B was accepted by the opponent as being valid.
In L’Air Liquide v CIG Limited 24 IPR 77, and following from General Steel Industries Inc v Commissioner for Railways (NSW) (1964) 112 CLR 125, I noted that an action for dismissal is not intended to be a de facto hearing of the substantive opposition. Rather it is intended to provide a mechanism to dispose, at an early stage of the proceedings, those oppositions that are “obviously” or “manifestly” “groundless” or “untenable” – such that the case cannot possibly succeed. I also noted:
· If an opponent cannot provide particulars in support of an alleged ground of opposition, the opponent has no basis to oppose on that ground; and
· It may be appropriate to dismiss an opposition if one could readily conclude from the technical divergence of the citation and the opposed specification that an opposition could not possibly succeed (for example, a safety pin cited against an airplane).
Accordingly I need to consider the particulars provided against each ground of opposition against this standard
Ground 1 – Manner of manufacture
The particulars for the ground of manner of manufacture refer generally to the prior art base referred to for novelty and inventive step, and to common general knowledge – without any indication of what is alleged to be common general knowledge. The particulars refer to the “threshold test” for invention – which I take to be a reference to the kind of considerations in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd, 32 IPR 449 [which was confirmed by Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd, (1998) 152 ALR 604]. However it is not prima facie evident to me that the situation applies to this application. Indeed, at the hearing, Mr Angliss indicated that this ground was dependent upon the novelty and inventive step grounds – in that if the invention claimed was not novel, or did not involve an inventive step, it could not be for a manner of manufacture. If this is the basis of this ground of objection, the comments of Black CJ and Lehane J (Finkelstein J concurring) in Bristol Meyers v FH Faulding 46 IPR 553 at paragraph 45, are apposite:
Indeed, there is in our view an element of unreality, in a case such as the present, even in posing the question in that form. Although Philips suggests that there may be such cases (it does not decide the question, because obviousness was not pressed), it is not easy to envisage circumstances in which a claimed invention may lack the threshold requirement of inventiveness, but yet involve (for the purposes of s 18(1)(b)(ii)) an inventive step. This is not a case, like Philips, where there was no attack on the patents on the ground of obviousness. It was, instead, a case where expert evidence, including evidence as to common general knowledge, was available (and was given). Where the Court has evidence on the basis of which it can make a finding about common general knowledge, and the other information referred to in s 7(2) and s 7(3), and about what would or would not have been obvious to persons skilled in the relevant art, it must be only rarely that it will be appropriate to find (by resort to a "threshold test") lack of inventiveness on the face of a specification. In our opinion this is not a case where such a finding is justified.
If this ground is consequential upon a finding of want of novelty or inventive step, it is fully encompassed by those other grounds – and a finding of lack of inventiveness on the face of the specification would not be justified. If, however, the allegation is based on some other issue, it has not been particularised. This ground has no prospect of success, and should be dismissed.
Grounds 2 and 3 – Novelty, and Inventive Step
The present situation is unusual in that:
· The present application was filed as a divisional application consequential upon an objection of plural inventions during prosecution of the parent application. This is not a situation where the divisional application is to a ‘different form’ of the invention of the parent application; rather it is to a truly different thing.
· Despite this, the Statement of Grounds and Particulars is effectively identical to that of the parent application.
The fact that prima facie the Statement of Grounds and Particulars has not been drafted in the context of the claims of this application necessarily raises the question of the relevance of the Statement to the present application. Prima facie a Statement of Grounds and Particulars prepared for a different matter must be open to dismissal for lack of relevance. In these unusual circumstances I think it is appropriate that some consideration be given to the technical content of the alleged anticipatory documents.
For the objection of want of novelty to be successful, a citation must disclose each of the essential features of the invention claimed. At the hearing I noted that claim 1 required the use of a perforated non-expanded stainless steel sheet. Such disclosure is not readily evident in any of the citations. I invited Mr Angliss to identify the particularised citations that disclosed such a sheet. [In this respect, the fact that the opponent's evidence in support was complete on the parent application is of some assistance. If the parent application was to A, and A+B, then (and noting the effective identity of the Statements in the two oppositions) the basis for the opposition to B per se is presumably readily ascertainable.] Mr Angliss identified the existence of only one such citation – GB2309044, which was cited in the International Search Report of the related PCT application. This citation discloses the use of a perforated sheet, as well as a mesh. The material used for the sheet is unspecified. In the course of the hearing Mr Angliss noted that stainless steel is notoriously difficult to deal with. If such is the case, it cannot readily be inferred that stainless steel would automatically be read as being a material to be used in the context of this citation. Mr Angliss also referred me to the declaration by Edlin filed in the opposition to the parent application, as a basis for establishing what was common general knowledge. That declaration makes several references to the use of stainless steel – but almost always in the context of a mesh. The most relevant reference is in paragraphs 83 and 84, which refer to the disclosures in AU 69068/98. But even in this document the only disclosure of a sheet is of an expanded mesh (page 8). There is no disclosure of the use of a perforated non-expanded stainless steel sheet. This, combined with the apparent fact that the Statement was not prepared in the context of the claims of this application, leads me to conclude that there is no prospect of finding lack of novelty of the invention claimed in the present application, on the basis of the citation identified by Mr Angliss.
It cannot be the case that a ground of opposition can be particularised by merely identifying documents that are in the same general field of technology, with an expectation that the ‘real’ ground of objection will be ascertained at a later date. It may be the case that documents identified by the opponent, when fully considered, do not establish a lack of novelty. But usually there would be an inference that the opponent was proceeding in good faith, and the applicant could rely upon the statement to ascertain the case that has to be answered. In the circumstances of the present situation, I am satisfied that the applicant cannot reasonably ascertain from the Statement the case to be answered with regard to the alleged lack of novelty of the claims. I am also satisfied that the opponent has not made any serious effort to establish a case of lack of novelty against claim 1 (and therefore any of the remaining, dependant claims). At the hearing Mr Angliss failed to plausibly identify any document amongst the particularised documents that disclosed the essential features of the invention of claim 1 – either alone or when read in the light of the identified common general knowledge. This leads me to the necessary conclusion that this ground of opposition is untenable, and should be dismissed.
While the circumstances are such that I consider it appropriate to look at the citations vis-à-vis novelty, I do not believe that I can similarly dismiss the ground of obviousness (lack of inventive step). Obviousness is a test that goes beyond the mere disclosure of a citation. Despite having serious reservations about whether the opponent has made any serious effort to establish a case of obviousness against claim 1, the nature of the citations are not such that I can readily conclude that this ground of opposition is clearly untenable. Accordingly I do not believe there is basis to dismiss the opposition with regard to obviousness. However, the basis of the allegation of obviousness is not apparent from the particulars. Further and better particulars are clearly required to set out the actual basis of this ground of opposition.
Ground 4A – Doesn’t fully describe the invention, including the best method of performance.
In support of this ground it is asserted that
“The specification is silent or insufficiently precise as to the advantage or the advantage over the prior art. It is not clear as to the problem to be overcome by the invention or the advantages conferred by the invention”.
However there is no indication as to why this is so. Furthermore, apart from the situations discussed in May v. Higgins, (1915-16) 21 CLR 119, and Sami S. Svendsen Inc. v. Independent Products Canada Ltd., (1969) AOJP 647, [that is, where the invention lies in an improvement which does not alter the essential character of the thing improved and the invention is described as the improved thing without disclosing the nature of the improvement made] there is no requirement for the applicant to describe the advantages of their invention over the prior art, or indeed the problems overcome by the invention. The invention described in the present application is not akin to the situations in May v. Higgins or Sami Svendsen. Furthermore, this particular is merely repeated from the statement for the parent application, with there being no evident effort to identify issues in the present application. The particulars in support of this ground can properly be characterised as being no more than a recitation of the ground of objection, without any material substance. This ground should be dismissed.
Ground 4B – Lack of clarity
Under this ground are enumerated 17 paragraphs, relating to claims 1 through to 24. But there are only 21 claims in the present application. Furthermore, for most of the paragraphs, the alleged offending phrases or words do not occur in the identified claim. These paragraphs are identical to the particulars in respect of the parent application. It is manifestly apparent that these particulars, as drafted, do not relate to this application.
On the morning of the hearing Mr Angliss filed a request to amend the Statement. Under Regulation 5.9(2)(a), the Commissioner must not allow an amendment if an application for dismissal of opposition is being considered. Accordingly, and as a general proposition, if a ground of opposition should be dismissed the existence of proposed amendments to the Statement cannot avoid that situation. Consequently I do not believe that it is appropriate to consider the proposed amendments when considering whether or not this ground of opposition should be dismissed – save as to noting that the request is explicit recognition by the opponent that the particulars in support of this ground are deficient in some manner.
It is manifestly clear that the particulars for this ground have not been drafted in the context of this application. Prima facie this ground is open to dismissal on the basis of lack of relevance of the particulars. However, the particulars do identify phrases and words that are in fact used in the claims of the present application. Furthermore, the existence of those phrases and words can be readily identified in the claims. In that sense, it cannot be said that these particulars are totally irrelevant to the present application. Nor can it be said that the interpretation of these phrases and words is such that the issue of lack of clarity is untenable. Therefore, and despite the fact that these particulars were not drafted for the present claims, I do not believe there is good basis to dismiss this ground of objection. However, further and better particulars are clearly required.
In addition to these issues, particulars are alleged relating to insufficient parameters in the claims to clearly set their boundaries, and an allegation that the applicant has deliberately chosen to use language that lacks clarity. But no instances are identified. These seem to be but ambit assertions without substance. If they are to be maintained, further and better particulars are required.
4C – Lack of fair basis
The particulars for this ground merely assert that the claims are not fairly based. The particulars are no more than a recitation of the ground of objection, without material substance. There are no material particulars in support of this ground, and it should be dismissed.
5 – Entitlement
Again, the particulars in support of this ground are no more than a recitation of the ground of objection, without material substance. At the hearing Mr Angliss stated that this ground was a consequence of the novelty and inventive step issues – in that if the invention was not novel or did not involve an inventive step, the named inventor could not be an entitled person. This basis for the ground of objection is not evident from the particulars. In any event the issues intended to be dealt with under this ground are fully encompassed within the grounds of novelty and inventive step, such that there is no separate issue under this ground. Finally, given that the dictionary defines an invention as “… and includes an alleged invention”, I do not believe that absence of novelty or inventive step can in any event give rise to a consequential objection of lack of entitlement. This ground should be dismissed.
CONCLUSION ON DISMISSAL
I consider that all the grounds of opposition should be dismissed – except for the grounds of want of inventive step, and s.40(3) – lack of clarity. I so dismiss.
FURTHER CONDUCT OF THE OPPOSITION
As noted in paragraph 4, there are currently 3 pending applications for review by the Administrative Appeals Tribunal, relating to two earlier decisions. Having regard to the conduct of the parties, it would seem quite possible that this decision will lead to at least one further application for review. In these circumstances I consider it important to deal with the future conduct of the opposition.
In my previous decision I foreshadowed an intention to make directions about when evidence in support should be served. That direction was predicated on a belief that this was a serious opposition. However the present matter arose before I had made those directions – and indeed I have not yet made them, on the basis that the present matter might identify issues relevant to those directions. I have now come to the view that the directions I previously proposed should not be made.
The history of this opposition has been rather less than satisfactory. The notice of opposition was filed late, with an extension of time being required. The Statement of Grounds and Particulars was also served late, with an extension of time being required. The request for an extension of time to serve the Statement was filed on 17 June. The Statement was served on 11 July – which is 24 days after the request for an extension of time was filed. Despite this period of time, the Statement that was served was in all material respects identical to that served in the parent opposition. There was no evident attempt to address the different substance of the claims of the present invention. Indeed, the fact that the particulars relating to lack of clarity clearly relate to the claims of the parent rather than the present application demonstrates a complete absence of any effort to prepare a Statement of Grounds and Particulars appropriate to the application being opposed.
In Ferocem v Commissioner of Patents 28 IPR 243, Burchett J stated (in considering the balancing exercise in the application of discretion) that:
There are the interests of the persons directly concerned in the application and opposition in question. There are also the public interests, which are not necessarily all ranged on the same side. They include the expeditious disposal of matters in the Patents Office, and questions of cost, of efficiency, and of insistence upon proper professional standards being maintained by those who deal with the office.
The issues surrounding the Statement of Grounds and Particulars are material to how this opposition should proceed. The manifestly obvious fact that the Statement was not drafted in the context of the claims of the present invention raises a real question about whether this is a serious opposition. Prima facie either the opposition is not serious, or there has been a serious lapse in its preparation and prosecution.
If the opposition is not a serious opposition, this should be ascertained and dealt with as soon as possible. There is no public interest in allowing a non-serious opposition to proceed before the Patent Office, or indeed in any other forum. On the other hand, if the opposition is a serious opposition but suffers from a serious lapse in preparation and prosecution, those matters should be rectified as soon as possible such that all concerned understand the basis of this opposition. Accordingly I now do not believe it is appropriate to defer the serving of evidence in support of this opposition on the basis that there are several applications for review pending before the Administrative Appeals Tribunal [including, potentially, an application for review of this decision in so far as it relates to regulation 5.5].
Also of relevance, the patent applicant has vigorously pursued their right to object to every procedural deficiency that has arisen in this opposition. I think that it is pertinent to note my comments in ExxonMobil Chemical Patents Inc. v The Associated Octel Company Limited (2003) APO 3:
14. Parties have every right to expect evidence to be provided in a diligent manner, and objections to extensions of time are an important part of that process. A consequence of refusing to grant extensions of time must be that evidence is not included in the opposition proceedings - although as demonstrated by the decision of Ferocem (supra), A Goninan & Co Ltd v Commissioner of Patents (1997) 38 IPR 213 and National Starch & Chemical Company v Commissioner of Patents (2001) 50 IPR 398, this is very much a remedy of last resort. Many procedural disputes properly arise from the less than ideal conduct of one or other of the parties - and in appropriate circumstances the exclusion of evidence is quite proper. However some disputes can be better characterised as being based upon a perception that the other party 'has gotten away with' something, and/or a desire to have evidence excluded by reason of a procedural technicality (forgetting that the Commissioner functions as a tribunal, not a court of law). When this arises there is a real risk of the proceedings degenerating into a series of continuing procedural disputes - with the ultimate objective of a proper determination of the opposition being lost. I think the Commissioner has an obligation to ensure that this does not occur.
In my view, if there is a serious opposition it should be identified and dealt with on its merits as soon as is practicable – consistent with the often cited comments of Kitto J in Kaiser Aluminium & Chemical Corporation v The Reynolds Metal Co (1969) 120 CLR 136 at 143. On the other hand, if there is no serious opposition it should be exposed as such and disposed of as soon as possible.
PROPOSED DIRECTIONS
To this end, I propose to make the following directions:
1. The opponent shall serve further and better particulars in respect of :
·The ground of opposition that the invention claimed does not involve an inventive step; and
·The ground of opposition that the claims are not clear
noting that all other grounds of opposition are dismissed. These further and better particulars, to be in the form of a replacement Statement of Grounds and Particulars, are to be served on the opponent no later than Friday, 17 October 2003 – and filed with the Commissioner as soon as practicable thereafter.
2. With regard to the request to amend the Statement that was filed on the morning of the hearing: The opponent will need to include such of those amendments that are to be pursued as part of the further and better particulars referred to in paragraph 1. Apart from this, no action to amend the Statement will occur on the basis of the request filed on the morning of the hearing.
3. In the absence of further and better particulars being served by 17 October 2003, the related grounds of objection will not be available for argument at the hearing. That is, the opposition will effectively be dismissed in its entirety.
4. The time for serving evidence in support of the opposition will expire on Friday, 19 December 2003.
I allow the parties until Friday 26 September 2003 to make representations on these proposed directions.
In proposing these directions, I am conscious of the fact that I cannot pre-empt the determination of any request for an extension of time [reg. 5.10(2)] by the opponent to serve its evidence in support. However a material consideration relevant to any such request will be whether or not there is a serious opposition. As I have noted above, there is prima facie good reason to conclude that the present opposition may not be serious opposition. The mere filing of a request to extend the time to serve the evidence in support of the opposition has the potential to reinforce the perception that the opposition is not serious – and the opponent will need to convince the Commissioner otherwise if they seek an extension of time to serve evidence in support.
COSTS
Both parties indicated that costs should follow the event. I see no reason to depart from this in the present case. The Statement of Grounds and Particulars is manifestly deficient in relation to a number of grounds, and has no material particulars with respect to the remainder. I award costs against the opponent – Capral Aluminium Limited.
D Herald
Deputy Commissioner of Patents16 September 2003
Patent attorneys for the patent applicant : Wray & Associates, Perth
Patent attorneys for the opponent : Cullen & Co, Brisbane
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