GKN Technology Limited v Comalco Limited

[1995] APO 2

official notice

decision of a delegate of the commissioner of patents

Application        :    No.605384 in the name of GKN Technology Limited

Title:    Aluminium-Silicon Alloy Article and Method for its Production

Action: Opposition under section 59 (Patents Act 1952) by COMALCO LIMITED

Decision:    Issued            .

Abstract:    Novelty, obviousness and section 40 matters considered.

Grounds of opposition not established.

Opposition dismissed.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 605384 by GKN TECHNOLOGY LIMITED and opposition thereto under Section 59 of the Patents Act 1952 by COMALCO LIMITED.

background

Patent Application No 605384 by GKN TECHNOLOGY LIMITED (GKN) was lodged on 17 October 1988 as PCT Application PCT/GB88/00875 and is based on a British basic application GB 8724469 filed on 19 October 1987.

Acceptance of the application was advertised on 10 January 1991. COMALCO LIMITED (COMALCO) filed a notice of opposition on 9 April 1991. Evidence-in-Support was completed on 10 March 1992, Evidence-in-Answer on 10 November 1992 and Evidence-in-Reply on 2 March 1993.

The opposition came to hearing in Canberra on 31 August 1994. Mr. Raymond Hind, Patent attorney of Davies Collison Cave appeared by telephone on behalf of the applicant. The opponent represented by Mr. Robert Cross, Patent attorney of Phillips Ormonde Fitzpatrick chose to rely on written submissions and did not appear at the hearing. As these written submissions were somewhat lengthy and not filed until the day of the hearing the applicant was allowed a period of seven days within which to file a reply to those submissions. This reply has been received and will be considered along with the other submissions.

As the application was lodged and advertised accepted prior to the commencement of the Patents Act 1990, the opposition is in substance determined, in accordance with the provisions of section 234(3) of the 1990 Act, under Part V of the Patents Act 1952 and with the procedures of the opposition governed by Division 1 of Part XIV and regulations 82 and 83A of the 1952 Patents Regulations.

The opponent's notice of opposition referred to paragraphs (a) and (c) to (i) of sub-section 59(1) of the 1952 Act. The grounds of lack of novelty, obviousness and non-compliance with section 40 were pursued in the written submissions.

SPECIFICATION

The specification commences with an introduction which states "This invention relates to an aluminium-silicon alloy article produced by a squeeze forming process and particularly, but not essentially, relates to a squeeze formed aluminium-silicon alloy cylinder liner for an internal combustion engine." It then discusses the prior art where it identifies an alloy called 3HA. Following on it states " We have discovered that articles of an aluminium-silicon alloy having similar desirable characteristics to those of the 3HA alloy can be produced from an alloy melt of a different composition to that of 3HA and with different solidification parameters." This is followed by a consistory statement; which is essentially the same as claim 1. The specification continues with further description and two examples. It ends with six claims. The claims are as follows:

1. A squeeze formed aluminium-silicon alloy article produced from a melt consisting of the following composition by weight:-

Silicon              14%   to   16%
  Copper               1.9%  to  2.2%
  Nickel                1.0%  to  1.4%
  Magnesium            0.4%  to 0.55%
  Iron                 0.6%  to  1.0%
  Manganese            0.3%  to  0.6%
  Silicon Modifier     0.02% to  0.1%

with the balance being aluminium and any unavoidable impurities, the as-formed article having an essentially eutectic microstructure containing not more than 10% of primary alpha-aluminium dendrites and being substantially free from intermetallic particles exceeding 10µ in diameter, wherein, during the squeeze forming operation, the melt is solidified under conditions of sustained temperature and pressure such that the growth rate R of the solid phase during solidification is from 1,000 to 2,500 µ/s and the temperature gradient G at the solid/liquid interface, expressed in oC/cm is such that the ratio G/R is from 100 to 1,000 oCs/cm2.

2. A squeeze formed article as claimed in claim 1, wherein the weight of silicon modifier in the melt is within the range 0.02% to 0.08%.

3. A squeeze formed article as claimed in either one of claims 1 or 2, wherein the silicon modifier is strontium.

4. A squeeze formed article as claimed in any one of claims 1 to 3 comprising a cylinder liner for an internal combustion engine.

5. A squeeze formed article according to any one of claims 1 to 4, wherein the as-formed article is subjected to a full heat treatment process being a solution treatment including heating and holding the article at a first temperature, water quenching the article and reheating and holding the article at a second temperature which is lower than said first temperature.

6. A cylinder liner for an internal combustion engine substantially as herein described with reference to the Examples.

EVIDENCE

Evidence-in-support comprises of declarations by:

Christopher John Heathcock, Market Development Manager of Comalco Foundry Products, together with exhibits CJH-I to XXIII, dated 7 February 1992; and

Charles Bradley Cowley, Executive Engineer, Advanced Materials of Brake and Clutch Industries (AUST) Pty Ltd, together with exhibits CBC(1) to (3), dated 10 March 1992.

Evidence-in-answer comprises of declarations by:

John Francis Cleave, Research Manager, casting and computer modelling division of BNF-Fulmer, England, dated 8 August 1992;and

John Campbell, visiting Professor and designated Baxi Professor of casting technology in the University of Birmingham, England, dated 8 August 1992.

Evidence-in-reply comprises of a declaration by Christopher John Heathcock, together with exhibits CJH-XXIV to XXX, dated 26 February 1993.

DECISION

Section 40

The opponent's written submissions raised issues numbered (i) to (v) below in relation to Section 40:

(i) The opponent submitted that the amended specification does not fully describe the invention. The paragraph commencing at page 2, line 10 refers to the applicant having "discovered that articles of an aluminium-silicon alloy having similar desirable characteristics to the 3HA alloy can be produced from an alloy melt of different composition to that of 3HA and with different solidification parameters". However, the amended specification is devoid of any clear indication of the characteristics of 3HA (hereinafter referred to as "the 3HA characteristics") to which reference is made, which of the 3HA characteristics are desirable, the extent to which the "articles" referred to are "similar" in their characteristic to the 3HA characteristics, or the extent to which those articles are dissimilar in their characteristics to the 3HA characteristics. The applicant did not make any submissions in this regard.

Though the description does not specify the desirable characteristics of the 3HA alloy it has made clear reference to  a British patent GB-A-2085920 (at page 1, line 13 onwards) and to SAE Technical Paper Series 840123 and 860558. The British patent makes a clear disclosure of the characterizing properties of the 3HA alloys. I consider therefore that this disclosure is incorporated by reference into the specification under attack. Hence the specification fully describes the invention

(ii)The opponent submitted that claim 1 is unclear at line 16 due to the wording "during the squeeze forming operation". The opponent also identified similar occurrences elsewhere in the specification. The opponent states that the lack of clarity is such that claim 1 does not define the invention and the specification does not fully describe the invention.

Claim 1 begins by defining " A squeeze formed aluminium-silicon alloy article...". I consider that even though there is no clear antecedent for "the squeeze forming operation", it would be clear that reference is being made to the method of production of the article defined in claim 1. The first line of claim 1 clearly states "A squeeze formed..article". Further the description at the first paragraph on page 1 refers to "...article produced by a squeeze forming process..." and at page 4, line 2 onwards discloses "As will be known to those skilled in the art, the technique of squeeze forming essentially comprises..". The opponent has submitted in its novelty and inventive step arguments that the technique of squeeze forming is well known in the art. Thus I conclude that with regard to the issues raised, claim 1 is clear.

(iii) The opponent submitted that claim 1 is unclear at lines 16 to 18, while page 2 is unclear at lines 35 to 37, due to the wording in each case of "the melt is solidified under conditions of sustained temperature and pressure". The lack of clarity is such that claim 1 does not define the invention, and the complete specification does not fully describe the invention. The thrust of the opponent's submission focuses on the use of the term sustained temperature and argues that this could not refer to the temperature of the melt as the melt is solidifying and hence has a falling temperature.

The question that arises then is, what ordinary meaning can be placed on the term "under conditions of sustained temperature...such that the growth rate R of the solid phase during solidification is...". The temperature referred to has direct relevance to the squeeze forming process. Thus the construction of this part of the claim may be carried out in light of what is known with respect to squeeze forming. The applicant at page 4 of the specification indicates that the technique of squeeze forming is well known to those skilled in the art. The declarant for the opponent Christopher John Heathcock also states in paragraph 27 of his first declaration that squeeze forming was well known to those skilled in the art in Australia before the priority date. The prior art documents relating to squeeze forming filed by the opponent; and available to the public in Australia before the relevant priority date; disclose that it is necessary to control the temperature of the mold/die during the squeeze forming process within a certain range. By way of example the exhibits numbered CJH-XVII and CJH-XIX, filed with the declaration by Christopher John Heathcock are quoted in this regard. CJH-XVII on the second page in the right hand column states "The squeeze forming process uses rigid metal dies, which are kept at a controlled temperature". CJH-XIX in the fourth paragraph on page 5 states "The dies are kept at a controlled temperature". I consider that the above-mentioned documents formed part of the common general knowledge of the skilled addressee in Australia and that therefore the skilled addressee would clearly understand that the condition of sustained temperature does not apply to the solidifying melt but has direct relevance to the temperature of the mold/die during the squeeze forming process. I therefore consider that claim 1 is not deficient in this respect and neither is the specification.

(iv) The opponent submitted that claim 1 is inadequate at lines 16 to 21 in the wording "...wherein, during...from 100 to 1,000oCs/cm2."; while the description from page 2, lines 35 to page 3 line 3 also is inadequate in use of the same wording. The inadequacy in each case is such that claim 1 does not define the invention and the description does not fully describe the invention. In each case, there is no indication, beyond an unclear reference to "conditions of sustained temperature and pressure" as to how the growth rate R of the solid phase and the temperature gradient G at the solid/liquid interface are to be controlled so as to achieve values for R and G/R within the respective ranges.

I have to decide whether the skilled addressee would be able to determine the temperature and pressure conditions such that R and G/R may be achieved within the specified ranges. Both the applicant and opponent agree that squeeze forming was known in the art before the earliest possible priority date of the specification in question. In fact Christopher John Heathcock in his first declaration at paragraph 27 clearly indicates that the skilled addressee would be able to resolve this issue without any difficulty. I therefore conclude that claim 1 does not lack clarity by use of the term "the melt is solidified under conditions of sustained temperature..".

(v) The opponent submitted that claim 6 is unclear and fails to define the invention, because when claim 6 defines "A cylinder liner.. substantially as herein described with reference to the Examples." there is no clear indication of which example is being referred to. The examples are also unclear as (i) each one discloses a range for each alloy component and a range for solidification parameters, and (ii) at page 6, line 24 reference is made to average mechanical properties whereas ranges of values have been disclosed. As a result the scope of claim 6 is indeterminate. Further if claim 6 encompasses a cylinder liner as embodied in each example then claim 6 is redundant on claim 4 as appended directly to claim 2 in the case of example 1, or as appended directly to claim 1 in the case of example 2. The opponent also submitted that claim 6 when read with the examples was inconsistent with claim 1. This is because the examples refer to the presence of incidental impurities whereas claim 1 refers to unavoidable impurities.

Regarding the clarity of claim 6 I have to decide if there is ambiguity present. In Sonotone Corp. v. Multitone Electric Co. Ltd., (1955) 72 RPC 133, the omnibus claim under consideration read:

"A portable hearing-inducing bone vibrator device
     substantially as described with reference to and as
     shown in the accompanying drawings."

The claim was held to be a clear claim to the two hearing-aids illustrated in the drawings even though the two were different embodiments of the invention. Importance was placed on the word "A" at the beginning of the claim. I therefore conclude that claim 6 is a clear claim to the two examples of the invention in example 1 and example 2.

The examples have not given specific values to each component of the alloy and also do not give specific values to the parameters R and G/R. There is no requirement that examples confine themselves to a single value. The strict requirement is that there be a description of the invention and a best method of performance known to the applicant. The examples in this case have not introduced any ambiguity or prevented any clear understanding of the working of the invention. The applicant at page 6 line 24 of the description uses the term "average mechanical properties" to refer to a range of values. I consider that a skilled addressee would be able to construe this as a range of values for the examples. Hence I do not find that the examples and related description are lacking in clarity and that claim 6 is indeterminate in scope.

The alloy compositions of the two examples are as follows: 

Example 1

Silicon              14%   to   16%
  Copper               1.9%  to  2.2%
  Nickel               1.0%  to  1.4%
  Magnesium            0.4%  to 0.55%
  Iron                 0.6%  to  1.0%
  Manganese            0.3%  to  0.6%
  Strontium            0.02% to 0.08%

with the balance being aluminium and incidental impurities,

Example 2

Silicon              14%   to   16%
  Copper               1.9%  to  2.2%
  Nickel               1.0%  to  1.4%
  Magnesium            0.4%  to 0.55%
  Iron                 0.6%  to  1.0%
  Manganese            0.3%  to  0.6%
  Strontium            0.02% to  0.1%

with the balance being aluminium and incidental impurities,

On comparing claim 6, when attached to example 1, with claim 4 when appended to claim 2 I find that the scope is not the same as example 1 has specified strontium as the silicon modifier. Similarly when I compare claim 6, when attached to example 2, with claim 4 when appended to claim 1 I find that the scope is not the same. Hence I find that claim 6 is not redundant on claim 4.

The specification under attack does not identify the incidental/unavoidable impurities as being essential to the working of the invention. Hence I do not consider that the use of the terms incidental impurities and unavoidable impurities in the examples and claim 1 respectively creates an inconsistency.

Novelty

The grounds of opposition refer to prior publication and lack of novelty. The written submissions principally refer to a British patent GB-A-2085920 and its Australian equivalent AU-B 75005/81 when arguing novelty.

Australian patent 536976 (75005/81) describes aluminium casting alloys (termed the 3HA alloys) possessing a range of properties which make the alloys suitable for a wide variety of applications, such as brake callipers and drums, piston/bore applications in internal combustion engines and a number of other components in engines, compressors and electric motors. The alloy composition by weight is :-

Si  12-15%
         Cu  1.5-5.5%
         Ni  1.0-3.0%
         Mg  0.1-1.0%
         Fe  0.1-1.0%
         Mn  0.1-0.8%
         Zr  0.01-0.1%
         Modifier,preferably Sr 0.001-0.1%
         Ti  0.01-0.1%
         Al                  Remainder, apart from impurities.

The patent also discloses that the alloys have an essentially eutectic microstructure with up to 10% of primary alpha-aluminium dendrites and are substantially free from intermetallic particles exceeding 10µ in diameter. Growth rates (R), during solidification after casting must not be less than 150 microns per second or more than 1000 microns per second. Temperature gradients (G) must be controlled such that the G/R ratio is within the range of 500-8000 Cos/cm2. The claims either disclose all these feature simultaneously in a single claim or claim the alloy composition individually and add the remaining features in appended claims.

The test for novelty is the "reverse infringement test" as set out by Aickin J. in Meyers Taylor Pty Ltd v. Vicarr Industries Ltd.(1977) 137 CLR 228 at p.235:

"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."

Regarding infringement Lord Upjohn in Rodi & Wienenberger A.G. v. Henry Showell Ltd. [1969] RPC 367 at p. 391 stated:

"To constitute an infringement the article must take each and every one of the essential integers of the claim. Non-essential integers may be omitted or replaced by mechanical equivalents; there will still be infringement."

Determining the relevance of the opponent's citation is clearly a matter of construction. An alleged citation must:

"be interpreted as at the date of its publication, having regard to the relevant surrounding circumstances which then existed, and without regard to subsequent events. The patentee's claim must similarly be construed as at its own date of publication having regard to the relevant surrounding circumstances then existing. If the earlier publication, so construed, discloses the same device as the device which the patentee by his claim, so construed, asserts that he has invented, the patentee's claim has been anticipated but not otherwise."

General Tire & Rubber Co. v. Firestone Tyre & Rubber Co. Ltd.(1972) RPC 457 at 485.

From a fair reading of the applicant's specification I have identified the essential features of the invention as being the same as the features disclosed in claim 1 of the specification. On comparing the invention of the application with the citation, I find that there are a number of differences. These are (i) the absence of zirconium and titanium from the applicant's article composition, (ii) the use of squeeze forming to produce the applicant's article, (iii) the value of R is from 1,000 to 2,500 for the applicant and is from 150 to 1,000 in the citation, and (iv) the value of G/R is from 100 to 1,000 for the applicant and is from 500 to 8,000 in the citation.

On applying the test for novelty I find that the opponent has not proven a lack of novelty as the citation has not disclosed each and every one of the essential integers.

I therefore find that the invention as defined in claims 1 to 5 is novel.

Inventive Step/Obviousness

The High Court of Australia in the case of Minnesota Mining and Manufacturing Company and Another v. Beiersdorf (Australia) Limited, 144 CLR 253, has required that for obviousness to be proven under the 1952 Patents Act it must be established that the information relied upon had become part of the common general knowledge, at the priority date of the application in suit, of those skilled in the art of the invention under attack.

The definition of common general knowledge was provide by Aickin J. in the 3M case(supra), at page 292:

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

Regarding obviousness Aickin J. in the 3M case(supra), at page 293 stated:

"It is rather whether it would have been obvious to a non-inventive skilled worker in the field to select from a possibly very large range of publications the particular combination subsequently chosen by the opponent in the glare of hindsight and also whether it would have been obvious to that worker to select the particular combination of integers from those selected publications."

For a clear case of obviousness to be established the opponent must establish that the following features were part of the common general knowledge in the art of the application in Australia and that it would have been obvious to combine them:

(i) Squeeze casting of aluminium alloys.
 (ii) 3HA alloy compositions.
(iii) 3HA alloy compositions without titanium and zirconium.
 (iv) Selection of the combination of values of R and G/R
     for the squeeze forming process disclosed in the
     application under attack.

There are two declarants for the opponent and both of them are skilled workmen in the relevant art in Australia. The two declarants for the applicant are from the United Kingdom and no evidence has been provided that they have knowledge of the art in Australia. Hence I consider their evidence to have minimal weight. For the purposes of obviousness I shall consider the evidence relating to the state of the art in Australia.

The specification under attack at page 4 states "As will be known to those skilled in the art, the technique of squeeze forming essentially comprises...". The declarants for the opponent are in agreement that feature (i) formed part of the common general knowledge in Australia. Christopher John Heathcock has filed a number of papers published before the relevant priority in Australia which disclosed squeeze casting as being well known in the art of casting. These papers also disclose the application of squeeze casting to aluminium alloys. Some of the relevant papers are:

CJH-XIII   Shaw et al, "Squeeze Casting: A Potential Foundry
          Process",Foundry, October 1969, pp166 to 171;

CJH-XIV    Chatterjee et al (I), "Effects of Pressure on the
          Solidification of Some Commercial Aluminium-Base
          Casting Alloys", The British Foundryman, 1972 65,
          pp 420 to 429;
CJH-XVII   Williams et al, "Squeeze Forming of Aluminium-Alloy
          Components", Metal Technology, 1981, 8, pp 263 to 267;

CJH-XVIII  Franklin et al, "Squeeze Casting - A Review of the
          Status". The British Foundryman, 1984, 77, pp 150 to
          158.

I conclude therefore that squeeze casting was part of the common general knowledge in the relevant art in Australia.

Regarding feature (ii) the declarants for the opponent state that the 3HA alloy was well known in Australia before the relevant priority date. Publication of the alloy composition occurred through GB-A-2085920; SAE Technical Paper Series 840123 and 860558F; and a brochure published by COMALCO.

I consider that feature (ii) formed part of the common general knowledge of the relevant art in Australia.

For feature (iii) the opponents have put forward evidence in the form of documents suggesting reduced need for the addition of grain refining elements when aluminium alloys are squeeze cast. These alloys are not 3HA alloys and there is no clear and unmistakable direction that titanium and zirconium are to be excluded when squeeze casting 3HA alloys. One of the opponents (Charles Bradley Cowley) refers to actual use of squeeze forming for casting 3HA alloys (in his organisation) but only on an experimental basis. He does not state that titanium and zirconium were excluded during these experiments.

Hence I find that it has not been proven that feature (iii) forms part of the common general knowledge of the relevant art in Australia.

On considering feature (iv) I find that only one of the declarants for the opponent has made submissions in this regard. Mr. Heathcock in his declaration dated 7 February 1992 has made a submission at paragraph 40 regarding values of R and G/R. He has made a comparison between the values used in gravity casting of 3HA alloys and the application under attack. Mr. Heathcock however has not stated that it was common general knowledge in Australia to select the above-mentioned range of values of R and G/R during the squeeze forming process.

I therefore conclude that it has not been proven that feature (iv) forms part of the common general knowledge of the relevant art in Australia

I therefore find that features (i) and (ii) did form part of the common general knowledge of the relevant art in Australia but it has not been proven that features (iii) and (iv) formed part of the common general knowledge in Australia. Further neither of the declarants stated that it would be obvious to a person skilled in  the art in Australia to combine all four of the above-mentioned features.

Consequently, I find that the opponent has not established that the invention under attack lacks an inventive step.

Conclusion

I find that the opponent has not succeeded on any of the grounds relied upon. Accordingly, I dismiss the opposition and, subject to any appeal being filed, direct that the application proceed to sealing.

Costs

In accordance with the principle that costs normally follow the event, I award costs against COMALCO LIMITED.

Alan Moore
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Davies Collison Cave, Melbourne

Patent attorneys for the opponent   :  Phillips Ormonde & Fitzpatrick, Melbourne