Ici Australia Operations Pty Ltd v Commercial Polymers Pty Ltd
[1996] APO 24
•11 April 1996
official notice
decision of a delegate of the commissioner of patents
Application : No. 606285 in the name of ICI AUSTRALIA OPERATIONS PTY LTD
Title: Cable
Action: Opposition under section 59 by COMMERCIAL POLYMERS PTY LTD.
Decision: Issued .
Abstract: Opposition under section 59 successful in part
All of the claims are prior published or lack novelty with respect to one of the references supplied.
The opponent has not established that any of the claims are obvious.
The specification has section 40 deficiencies. Invention not fully described, claims not fairly based. Applicant given time to amend.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 606285 by ICI AUSTRALIA OPERATIONS PTY LTD and opposition thereto under section 59 of the Patents Act 1952 by COMMERCIAL POLYMERS PTY LTD
background
Application 606285 was filed on 15 June 1989 by ICI Operations Ltd (hereafter referred to as “ICI) and opposed by Commercial Polymers Pty Ltd (hereafter referred to as “COMPOL”). The evidence stages were completed on 16 December 1994 and a hearing set down for 20 March 1995. However on 3 February 1995 ICI sought leave to serve further evidence. COMPOL objected and a delegate of the Commissioner issued a decision in which special leave was refused. The opposition has therefore proceeded only on the basis of evidence filed prior to 16 December 1994.
As the acceptance of the application was advertised accepted before the commencement of the Patents Act 1990, the opposition falls under section 59 of the Patents Act 1952.
The grounds of opposition are those specified in paragraphs (c) through (i) of Section 59 of the Patents Act 1952.
The substantive opposition was heard on 26 and 27 September 1995 in Melbourne. The applicant was represented by Mr J McCormack, patent attorney for Griffith Hack & Co, and the opponent was represented by Mr G Chambers, patent attorney accompanied by Mr C Schlicht, patent attorney, both of Phillips Ormonde and Fitzpatrick.
THE EVIDENCE
The evidence-in-support of the opposition consisted of statutory declarations by: Kim Elizabeth Parker, Hayden Lomas, Glenn Dawes, Quentin Cooke, Gregory Morris Chambers, Gordon Angus Wishart and Dr Ezzelino Leonardi.
The evidence-in-answer consisted of statutory declarations by: John McCormack, Maria Ann Styzinski and Ian Johnson.
The evidence in reply consisted of statutory declarations by: Dr Ezzelino Leonardi, Quentin Cooke and Kathleen Boys.
I will consider the submissions made at the hearing, on behalf of ICI and COMPOL, in relation to specific issues as they arise.
The matters that have to be decided in this opposition are the following
section 40 matters
prior publication
obviousness
THE SPECIFICATION
The specification states that:
“The invention relates to cables and particularly those which are to be laid underground”.
The specification then goes on to describe how such cables are usually coated with a protective sheath or jacket commonly of plastics material, typically polyethylene, which is easily applied by extrusion. It then states how this prior art coating is susceptible to termite attack and lacks abrasion resistance. It then goes on to state how these problems are overcome in the prior art by further coating the polyethylene with nylon, in an additional extrusion process.
This additional process is expensive and also, since the cable is bent during installation, the nylon layer must be relatively thick to prevent buckling.
The specification then goes on to state how the present invention overcomes these problems by providing a single step extrusion process to co-extrude modified polyolefin and nylon over the cable. This results in a thinner nylon layer and a cheaper one step process while retaining termite resistance and anti buckling properties.
The independent claims are:
1. A process of manufacture of a cable comprising at least one elongate functional element which is coated with at least two concentric layers of polymeric material, the exterior layer comprising at least one polyamide of high surface gloss, hardness and resistance to formic acid, and the inner layer immediately adjacent to the exterior layer comprising essentially olefin polymer which comprises from 0.001% to 30.0% by weight of polar monomer selected from unsaturated acids and acid anhydrides, the layers being applied in a single operation wherein at least one of the polymeric materials is in a fluid state when the two polymeric materials are contacted.
14. A cable which comprises at least one elongate functional element which is coated with at least two concentric layers of polymeric material, the outer layer comprising at least one polyamide of high surface gloss, hardness and resistance to formic acid, and the inner layer adjacent to that outer layer comprising essentially olefin polymer which comprise from 0.001% to 30.0% by weight of polar monomer selected from unsaturated acids and anhydrides, the outer layer being less than 2mm thick.
DECISION
Section 40 matters
The section 40 matters to be decided are the clarity and fair basis of the claims, and the sufficiency of the description.
Clarity of the Claims
The opponent argued that the independent claims are ambiguous as a result of the phrase “which is coated” since it is not at all clear whether this relates to the “at least one functional element” or the cable as a whole. I disagree, I believe the phrase is correctly applied to the ‘at least one functional element”.
Thus the narrowest scope of the claims is that they are directed to a process of making cable having just one functional element overlaid by only two layers of polymeric material the inner one being the modified polyethylene and the outer one the polyamide.
The broadest scope of the claims is that the cable of the invention comprises a multiplicity of functional elements with at least one of these elements independently coated with at least the modified polyethylene and polyamide of the invention; the term “external” then applying to the outermost layer of any one or all of these elements. This then leads to the possibility of the claims defining one or more functional elements each coated with two or more polymer layers, twisted together with none or one or more other uncoated functional elements to form a cable.
The breadth of the claims is quite extensive but nonetheless clear. Thus the essential features of the claims are:
a cable with at least one elongate functional element
which is covered with at least two concentric layers of polymeric material
the outer layer being the specified polyamide
the inner layer [immediately adjacent the outer layer] being the specified olefin polymer
and in the case of the method claims 1 to 13 the additional essential feature of
the layers [two or more] being applied in a single operation with one of the polymers being fluid when the two polymers are contacted.
Sufficiency of Description
The first issue of sufficiency of description relates to the process used to coat the functional element(s). This process is limited in the claims and at page 3 of the description as being carried out “in a single operation”.
Much of the discussion about the process indicated by this phrase centred around co-extrusion, in which the polymeric layers are simultaneously applied. But the text at page 6, line 30 to page 7, line 12, indicates that a consecutive process was also envisaged:
“In the process according to the present invention, the outer layer and the inner layer adjacent thereto are applied in a single operation. [emphasis added]The subject of the coating operation may be a functional element or functional elements in simple form or covered in metallic foil or polymeric material. The two layers are then simultaneously or consecutively [emphasis added] applied by any convenient manner such that at least one of them is fluid when they contact. This may be achieved, for example, by co-extrusion, wherein the layers of polymer are brought together within a die while both are still in a fluid state. It may also be achieved by using two separate extrusion dies with the functional element or elements being initially coated with the olefin polymer, then with the polyamide layer, prior to quenching and complete solidification of the inner layer.”
The phrase “consecutively applied” thus explicitly encompasses a process in which each layer is applied using a separate extrusion die with quenching and complete solidification only occurring after all the layers had been applied. This process, known as tandem extrusion is described in paragraph 9 of Dr Leonardi’s first declaration:
“With tandem extrusion, two separate extruders are placed in line only a matter of two or three metres apart. A first polymeric material is applied to the cable from the first extruder and whilst this material is still soft and warm, the second polymeric material is extruded over the top. This is a continuous process wherein the elongate member or cable is continuously drawn through both extrusion dies. Tandem extrusion of two or more polymeric materials onto cables has been well practised in Australia for a number of years.”
Dr Leonardi in his second declaration comments:
“In co-extrusion, both polymeric materials are in a fluid state when the materials contact. In my opinion this expression in claim 1 encompasses tandem extrusion in which one of the polymeric materials will not be in a fluid state when the two materials are contacted.”
It is not clear to me from the description whether the phrase “consecutively applied” is intended also to include double extrusion, referred to at page 3 of the description, as a less preferred option, however I shall assume that it is, since it is not explicitly excluded. In any case, it appears from the text of the description referred to above that both tandem and co-extrusion are merely examples of the processes intended to be encompassed by the phrase “in a single operation”.
Given the use of tandem extrusion in this art, and the use of the phrase “ consecutively applied” in the description, I construe the phrase “in a single operation” to include both simultaneous and consecutive coating techniques, particularly coextrusion and tandem processes.
However Ms Styzinski, in paragraph 11 of her declaration, states:
“In paragraph 12 of his declaration Mr Cooke in mentioning extrusion is referring to separate extrusion of materials and is not referring to co-extrusion which is an essential feature of the invention of the application.” (Emphasis added)
Ms Styzinski also states at paragraph 26 of her declaration that:
“The advance of the invention of the application is to be able to coextrude two dissimilar materials yet achieve good bonding between the layers.” (Emphasis added)
The overall thrust of Ms Styzinski’s argument is that achievement of the promise of the invention lay in the provision of good bonding between dissimilar polymers and that this bonding was effected using a coextrusion process. Indeed Ms Styzinski implies that this is the “trick” of the invention in paragraph 26 of her declaration. It is therefore evident that Ms Styzinski saw what she referred to as a “co-extrusion” process as essential to the performance of the invention.
I note that nowhere in her evidence does Ms Styzinski explicitly refer to tandem extrusion nor does she describe consecutive extrusion techniques. She merely refers only to what she describes as “double step mono-extrusion” and “single step co-extrusion”.
Dr Leonardi, who has extensive experience in the extrusion coating in cable manufacturing, differentiates between coextrusion and tandem extrusion and at no point suggests that the term co-extrusion could be used to imply consecutive extrusion.
I also note that in none of the evidence filed is there any suggestion that the term “coextrusion” would be understood by a person skilled in the art as encompassing consecutive or tandem extrusion.
The term coextrusion is defined in the “ Plastics Mold Engineering Handbook” 4th edition edited by duBois and Pribble as
“ Coextrusion is a modified extrusion process in which two or more [emphasis added] plastic materials are extruded simultaneously and immediately combined to make the final product in one pass through the extrusion die.”
Overall, the applicant’s evidence suggests to me that the applicant considers it is essential to the invention that the polymer layers be applied simultaneously by coextrusion.
As presently drafted the specification clearly indicates that consecutive or simultaneous extrusion is included in the term “in a single operation”. Insofar as simultaneous coextrusion is essential to the invention the specification does not fully describe the invention.
Claims 14 to 24 contain no limitation with regard to the process of applying of the polymer layers to the cable. Thus they do not define the invention.
The opponent has also argued that the phrase “at least two concentric layers of polymeric material”, used in the description at page 2 lines 30 to 31 and in the independent claims 1 and 14, should be interpreted according to its plain meaning and thus includes the presence of third and higher unspecified polymeric layers in addition to the polyamide and modified polyolefin layers specifically defined.
In the light of this argument the opponent asserts that the specification as drafted includes the possibility of a so called tie layer when there are more than two polymer layers. The tie layer suggested by the opponent and discussed at some length in the evidence of Mr Cooke, consists in a modified polyolefin resin which functions as an adhesive to bond together the polyamide layer of the invention and the additional polymeric layers referred to above. The examples of these tie layer resins discussed in Mr Cooke’s evidence, have polar monomer contents which fall within the range specified for the modified polyolefins of the invention. He further asserts that commercial resins used as tie layers in packaging films are also used in the examples of the ICI specification as the modified polyolefin.
I find the opponent’s argument persuasive. The modified polyolefin resins referred to by the opponent for use as tie layers in packaging films clearly have the same chemical constituents as the modified polyolefins of the invention. They could be used in the coating process of the type encompassed by the description. Furthermore as the specification contains no bar to the presence of additional polymeric layers to which the modified polyolefin may bond, it may therefore act as a tie layer when there are more than two polymeric layers present.
Ms Styzinski states at paragraph 17 of her declaration, however, that the selection of these materials [ that is the modified polyolefins] as tie layers is “not possible, nor is there any intention” for them to be used in the invention. She indicates that the use of these materials as tie layers would actually prevent the formation of a good bond necessary for the success of the invention. This is not discussed in the description.
She then goes on at paragraph 26 of her declaration to talk about co-extruding two dissimilar materials. Clearly in the case where there are only two layers the modified polyolefin cannot possibly act as a tie layer. I note that all the examples in the specification relate to only two layers covering the cable. So although Ms Styzinski seems to dwell on the fact that only two polymer layers are present in the cable coating, she does not by her own evidence actually preclude the possibility of more than two layers.
Thus I must agree with the opponent that the specification and claims include both the possibility of more than two polymeric layers and thus by implication the further possibility that the modified polyolefin acts as a tie layer. The possible presence of a tie layer seems to be contradicted by part of Ms Styzinski’s evidence as to what the invention is although, she herself does not exclude the possibility of more than two layers. I therefore conclude that the invention is not fully described
Fair Basis
In deciding the issue of fair basis, I have asked the question formulated in (CCOM Pty Ltd v Jeijing Pty Ltd [1994]AIPC 91-079), that is: “the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification”.
The opponent submitted that the specification indicates a requirement for “a high proportion (at least 70% by weight) of C2 - C4 monomer units” in the composition of the inner layer. The inner layer is described at page 4, line 31ff as comprising :
“essentially an olefin polymer, that is polymer wherein at least 70% by weight of the polymer is provided by olefin monomeric units. These can be selected from any olefin monomers known to the art, bearing in mind the desired properties of the cable and fabrication requirements of the process. This dictates a high proportion (at least 70% by weight) of C2 - C4 monomer units, preferably with a predominance of ethylene units.”
The opponent submitted that due to the use of the word “dictates” this requirement is an essential feature and its omission from the claims renders them not fairly based. The applicant responded that the word “dictates” makes reference to the preceding sentence wherein the restriction on the selection of monomers is based upon the “desired properties of the cable and fabrication requirements of the process” and is therefore merely a preferred feature going to the optimum working of the invention. I find this argument persuasive. I conclude that the feature is preferred and the claims do not have to include it.
I also note that applicant has indicated, both at the hearing and in the evidence of Ms Styzinski, that the invention lay in the achievement of “good bonding” between the layers of the polymer coatings. As I have already stated I believe that Ms Styzinski’s declaration clearly indicates that this can only be achieved by simultaneous coextrusion. Clearly then simultaneous coextrusion is an essential feature of the invention. It results in the cable fulfilling the promise of the invention, the characteristics of which are outlined at page 2 of the description; ie. that it is abrasion-resistant, insect-proof and does not require the thick polyamide coating of the prior art cables. None of the claims, however, are limited to these characteristics or the process of the invention which leads to them [simultaneous coextrusion]. As a result the claims are not fairly based on the matter described in the specification and do not define the invention.
As I have already stated in my interpretation of the claims, the broadest scope includes the possibility of the cable being formed from both coated and uncoated functional elements. I can find no support in the description for this except for a consistory statement mirroring the claims. All the rest of the description only supports a cable formed of one or more functional elements, said functional elements as a whole being coated with at least two concentric polymeric layers.
I therefore find that none of the claims are fairly based on the description.
Manner of Manufacture
The opponent argued that the use of the combination of polyamide and modified polyethylene to coat a cable is merely analogous use of a known material. He then referred to Morgan and Co. V Windover and Co. 1890 7 RPC 131 at 134 which established that “the application of well known-things to a new analogous use is not properly the subject of a patent”.
The legal basis for establishing analogous use is conveniently summarised at paragraph 8.1.20.4 of the Patent Examiners Manual of Practice and Procedure - Volume 2 - National. They are:
1. user must be proved or admitted
(Pope Appliance Corporation v. Spanish River Pulp Paper Mills Ltd.,
46 RPC 23 at 56)2. the device must be used for its ordinary purpose
(Morgan v Windover, supra.)3. the circumstances of the use must be truly analogous
(British Liquid Air Co. Ltd. v British Oxygen Co. Ltd., 26 RPC 509).
Although the requirements to prove prior use are quite strict I believe they are easily met in this case as plastic packaging wraps are in common use and well known to us all.
Quentin Cooke, Hayden Lomas and Gordon Angus Wishart in declarations on behalf of the opponent, have attested to knowledge of the use of a modified polyethylene according to the claim with polyamide in coextrusion processes to produce plastic composite films. I thus believe that prior use may be taken as established.
But even with prior use established, I am not convinced that the production of a flat plastic film a matter of a few microns thick by coextrusion of the modified polyethylene and nylon is truly analogous to the coating of the core of a non-flat elongate cable with an insect resistant sheath by coextrusion of modified polyethylene and nylon.
I therefore conclude that the evidence provided by the opponent is not sufficient to establish analogous use and hence to prove that the claimed invention is not a manner of manufacture.
Anticipation
The role of the person skilled in the art is twofold in determinations of novelty and obviousness. In the case of novelty the first task is to identify the relevant common general knowledge in Australia at the date of publication of the alleged citation. The other task is to be able to read or understand what is conveyed by the patent specification in the light of the common general knowledge at the priority date of the claim in dispute. In the case of obviousness it is to determine whether a given advance or modification would have been a “matter of routine” to a person skilled in the relevant art. (see The Welcome Foundation Limited v V.R. Laboratories (Aust.) Pty Ltd, (1980-1981)148 CLR 262 at 286).
The common general knowledge must be that known to non-inventive skilled worker in the appropriate field. It seems to me that this invention lies at the junction of three arts - the cable manufacturing art, the extrusion art and the plastics coating compositions and processing art.
The applicant has submitted that two of the declarants for the opponent, Dr Leonardi and Mr Cooke, cannot be considered to be persons skilled in the art due to their being overqualified. It also submitted that the remainder of the declarants for the opponent are skilled in the manufacture of plastics rather than cables and therefore cannot be considered to be persons skilled in the cable making art with respect to the invention.
I will discuss the situation for Mr Cooke, Dr Leonardi and Mr Wishart, whose evidence I will refer to in deciding the issues of obviousness and anticipation.
In considering this matter I note that the level of qualification of the person skilled in the art is not, per se, the issue as I understand it. It is rather a matter of the inventiveness which that person has displayed. Such inventiveness is not necessarily indicated by the qualifications which he holds but may well be reflected in the position which he occupies.
The requirement for non-inventiveness is clearly well supported in Australian law. In Intellectual Property in Australia, by Lahore, Garnsey and Dwyer, Service 20 July 1987, the authors refer to this in paragraph [1.5.041] where they quote from British Celanese Ltd. v. Courtaulds Ltd., (1933) 50 RPC 63 at 90:
“It is equally important that the evidence should be directed to showing what the ‘notional skilled worker’ would have known, not what a leading expert in the field would have known. There are numerous decisions in which evidence has been discounted because the expert witness called knew too much. An expert witness should have no ‘excess of any peculiar or special knowledge’ he should not be over-qualified and perhaps most importantly, he should be able to depose the state of the common general knowledge in Australia at the priority date.”
While this requirement is clearly Australian law, I also agree with the view that while declarants may be too highly qualified to be regarded as non-inventive workers in the art for the purposes of commenting on obviousness, this does not disqualify them from commenting on the question of what is the state of the common general knowledge in the art. This view was held in Clafton Pty Ltd v Forbes Engineering Holdings Pty Ltd (1990) 19 IPR 29 at 40, British Celanese Ltd. v. Courtaulds Ltd., House of Lords, (1935) 52 RPC 171 at 196 and followed more recently by Franki J. in the Federal Court of Australia in the case of Dennison Manufacturing Company v. Monarch Marking Systems Inc. (1 IPR 43).
Dr Leonardi is highly experienced in the field of cable manufacture with many years in both the research and management of cable production including the period from 1977 to 1993 as Chief Engineer and Engineering Manager for Pirelli Cables Australia Limited. He is in my view qualified to comment on the state of the common general knowledge in all three arts.
Mr Cooke on the other hand has some small knowledge of the cable manufacturing field by virtue of his experience in the preparation of plastics used for this purpose. I am therefore satisfied that Mr Cooke is only qualified to comment on what was the common general knowledge in the art of plastics coating compositions and extrusion art with respect to the invention in Australia at the relevant dates.
On the issue of Quentin Cooke’s capacity to comment on obviousness, I do not agree with the applicant’s submission. Mr Cooke is a process engineer who is directly involved with the solving of practical problems in the production of polyethylene for a range of industries. I find no evidence to support the contention that he was responsible for inventive research into new products. In view of this I do not find Mr Cooke overqualified to comment on obviousness.
I do note , however, that while his knowledge includes the common general knowledge in the areas of cable technology and the production of materials for use in extrusion processes, his responsibilities and expertise lie in the preparation of plastics base stock, rather than end use applications in the coating of cables. As a result I am not convinced that what Mr Cooke sees as obvious would be obvious to the person skilled in the cable making art of the invention. I will therefore give his comments with regard to obviousness reduced weight.
In respect of Dr Leonardi, I agree that the positions which he has held would normally be regarded as involving an inventive faculty in the occupant. A bench worker in a research area might only make routine decisions with inventive decisions being directed from more senior staff. Dr Leonardi’s positions, however, were at such a level that he was responsible for choosing the direction of research and making decisions which I can only refer to as inventive. On the other hand, I have seen no specific evidence of Dr Leonardi’s inventive activity, either in the form of patent documents or new products which were clearly resulting from the activity of his research team.
In deciding the acceptability of Dr Leonardi’s evidence on obviousness, I am guided by the view reached by the delegate in Braas & Co GmbH v Humes Limited, 26 IPR 273 at page 289 where he states that:
“It is the weight to be given to such evidence of ‘overqualified’ persons which is the issue, and this will depend on the facts of the matter. It is not the case that such evidence is automatically shut out of contention.”
I agree with this contention and therefore accept the evidence of Dr Leonardi as relevant, but will give it reduced weight in my consideration of obviousness. I also conclude that due to his high level of expertise, Dr Leonardi’s comments are of less weight when he refers to his own work practices or conclusions which he would draw based on information before him.
Gordon Angus Wishart makes comments with regard to common general knowledge and obviousness. Like Mr Cooke, Mr Wishart as an employee of Commercial Polymers Pty. Ltd. is not directly involved in the cable manufacturing industry, but as National Sales Manager, has substantial dealings with representatives of that industry. Unlike Mr Cooke, however, it appears Mr Wishart is not directly involved in process engineering or the manufacture of plastics feedstock for specific needs in the cable manufacture industry. I will therefore accord his evidence less weight than that of Mr Cooke.
The test for anticipation is the reverse infringement test as outlined by Aicken J in Meyers Taylor v Vicarr Industries Ltd [1977] 137 CLR 228 at 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.”
Infringement occurs when “each and every one of the essential integers” of the claim under consideration has been taken (Rodi and Wienenberger AG v Henry Showell Ltd, [1969] RPC 367 at 391).
The level of disclosure required has been well stated by the Court of Appeal in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 485 to 486 recapitulating the law indicated in Flour Oxidising Company Ltd v Carr Co Ltd (1908) 16 IPR 545 at 549:
“If the prior inventor’s publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee’s claim if carried out after the grant of the patentee’s patent, the patentee’s claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. ... To anticipate the patentee’s claim the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented.”
Disclosure of the essential features of the claim are all that is required however, there being no requirement that a citation reveal any of the inessential features (Nicarro Holdings Pty Ltd v Martin Engineering Co (1990) 6 IPR 545).
The opponent asserts that three documents prior publish the claims:
United States Patent Specification 4,460,745 entitled “Adhesive Three-Component Blends Containing Grafted HDPE” by Ashok M. Adur et al. and assigned to Chemplex Company, published 17 July 1984,
United States Patent Specification 4,675,471 entitled “Electrical Cables” by Mitsuzo Shida et al. and assigned to Norchem Inc, published 23 June 1987, and
“PLEXAR* - NOVEL EXTRUDABLE ADHESIVE RESINS” an article by M. Shida, J. Machonis Jnr., S. Schmukler & R. J. Zeitlin, published in the 36th SPE Annual Conference - 24 - 27 April, 1978.
I will consider each of these documents in turn.
US 4,460,745
Broadly this specification is directed to polymer blends comprising:
(A) polyethylene of medium density (MDPE),
(B) linear low density polyethylene (LLDPE), and
(C)high density polyethylene (HDPE) grafted with or containing in its main chain unsaturated or saturated carboxylic acids or derivatives such as anhydrides, esters, amides and the like.
These are blends which exhibit improved adhesion to substrates and especially polar substrates such as metals, glass, paper, wood and various polar polymers including specifically polyamides. They are furthermore envisaged for the manufacture of both two- and three- layer structures with specific mention made of “adhesive of the invention/nylon” and “aluminium/adhesive/nylon”. The specific examples of appropriate processes include coextrusion and extrusion coating, however there is no specific disclosure in the document of the use of the resins in the manufacture or coating of cables.
From my reading of the citation I believe that the citation encompasses the use of the compositions of the ICI specification as part of both two and three layer composites with nylon and aluminium. There is no clear and unmistakable disclosure in the citation, however, of the use of these composites in the manufacture of cables which is an essential feature of the claims.
In Mr Cooke’s first declaration he argues that the disclosures of coextrusion in the citation are intended to encompass coextrusion around a circular aluminium cable and that he would have understood it to “embrace and direct the use of the modified polyolefin described in co-extrusion with a nylon polymer onto and around a metal or a polar cable.”
I do not agree. As previously noted, Mr Cooke’s field of expertise lies in the preparation of polymer compositions for a variety of industrial uses and he is not a workman in the art of cable manufacture. I see no reason to conclude that what he would have understood would be necessarily understood by a non-inventive person skilled in the cable manufacturing art.
I conclude that this document does not disclose all the essential features recited in the claims of the ICI specification. The claims are therefore not anticipated by this document.
US 4,675,471
This document is directed to electrical and communication cables and more particularly to multilayer coatings on metal screens whose function is to separate the conductive elements within the cable.
The invention comprises a metallic screen which is coated with a coextruded [emphasis added] film comprising two layers - “a polyamide, copolyamide or copolyester”, and an adhesive layer composed of a “copolymer of an olefin and at least one comonomer which is a polymerisable ethylenically unsaturated carboxylic acid or acid anhydride or derivative thereof, or alternatively the adhesive comprises an adhesive blend of the copolymer and a polyolefin”.
Although the precise cross-sectional shape of the coated screen is not specified by the invention the relevant issue with respect to this citation is not the location of the coated screen of the citation within the cable of the citation, but whether the composition of the polymer coatings falls within the definition of the invention provided in the claims of the ICI specification.
The polymers of US4,675,471 are the same as those of claim 1 of the ICI specification. There is at least one elongate functional element coated with these polymers and the US specification clearly states that the polymers are applied by coextrusion with the polyamide outermost. I also do not consider that any of the features in dependant claims 2 to 13 are sufficient to confer novelty. In the light of this I find that the citation provides clear and unmistakable directions to do what the applicant has claimed in claims 1 to 13.
I therefore find that the claims 1 to 13 are anticipated by this document.
I note that claim 14 and following are only distinguished from claims 1 to 13 by being directed to the composition only, and having the outer layer less than 2mm thick. I do not think that this feature is enough to confer novelty. Also I note that the coextrusion process was said by the applicants to be the way that it was possible to get both the strong bond and the thin outer layer of polyamide.
I therefore find that claims 14 to 24 are also anticipated by US Patent specification 4,675,471.
“PLEXAR* - NOVEL EXTRUDABLE ADHESIVE RESINS” - identified as exhibit QC8 and EL-7.
This document discloses a family of chemically-modified extrudable adhesive resins marketed under the trademark PLEXARä by the Chemplex Company. These resins are produced from High Density Polyethylene (HDPE) and Low Density Polyethylene (LDPE), rubber-modified HDPE, and ethylene-vinyl acetate copolymers.
The document is directed toward the features and uses of PLEXARä resins rather than its method of preparation. Although they are referred to as “chemically-modified polyolefins”, I can find no disclosure of the nature of this modification, of precisely how these resins are manufactured, or their exact constituents. There is furthermore no evidence before me that this information would have been common general knowledge in the art of the invention before the priority date. The citation thus does not contain “clear and unmistakable directions” to prepare the modified polyolefin as recited in the claims of the ICI specification.
I therefore conclude that this document does not anticipate the claims of the ICI specification.
Obviousness
The question of obviousness under the 1952 Act involves an investigation of whether the claimed invention would have been obvious to a non-inventive skilled worker in the field equipped with the common general knowledge as at the relevant priority date. In considering this issue I refer to the law as discussed in Minnesota Mining and Manufacturing Co. v Biersdorf (Aust) Ltd. (1980) 144 CLR 253 and summarised by Aicken J. in The Welcome Foundation Limited v V.R. Laboratories (Aust.) Pty Ltd (supra), at pages 270 and 286.
“It is as well to bear in mind that the question of obviousness involves asking the question whether the invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that particular field as at the priority date, without regard to documents in existence but not part of such common general knowledge. ... The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention.”
In considering the question of obviousness in the present case I will focus on what was known at the priority date to the non-inventive skilled worker at the junction of three arts at which junction I believe the invention lies: - the cable manufacturing art, the extrusion art and the plastics coating compositions and processing art.
In the present application the difficulty was the provision of a high strength bond between the underlying polyethylene and the nylon jacket of cables. In Ms Styzinski’s declaration I have already noted that she regarded this as the “trick of the invention”. The difficulty existed because, in order to provide this bond, adhesion between dissimilar materials had to be achieved; specifically between polyolefins and polar polymers such as polyamides. The solution offered by claims 1 to 13 of the specification in suit indicates that it is achieved by the combination of using a modified polyolefin composition as one of the layers of the coating and using a consecutive or co-extrusion process to carry out the coating. Claims 14 to 24 carry no restriction on the process, but require that the polyamide layer be less than 2mm. The initial question is thus whether, as a “matter of routine”, a non-inventive skilled workman with knowledge of the cable making art of the invention, would have used the modified polyolefin claimed in conjunction with a polyamide.
The bulk of the discussion on this point turned on the opponent’s submission that the modified polyolefins claimed were well known in the art of the invention, at the priority date of the application as “tie layer resins”. These resins function as adhesives and serve to bind together materials which, due to their dissimilarity, would not naturally adhere. But all the opponent has convinced me is that these tie layers were well known in the packaging art. In this art the total multilayer film is but a few microns thick. Yet in the cable making field we are told that reducing the outer polyamide layer below 2 millimeters is a breakthrough. In my view the film making art and the cable making art are far removed from each other.
The opponent sought to establish that knowledge of the characteristics and uses of tie layer resins was held both by employees of ICI and people working in the cable making art of the invention on the basis of a number of publications. In assessing whether these publications are common general knowledge I refer to the comments of Luxmoore J. in British Acoustic Films as reiterated in General Tire & Rubber v Firestone Tyre & Rubber Company, supra, at 482, 483:
“In my judgement it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or a series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less because it is widely circulated. Such a piece of knowledge only becomes general knowledge when it is generally known and accepted ... by the bulk of those who are engaged in the particular art; in other words, when it becomes part of the common stock of knowledge relating to the art.” (Emphasis added).
In the light of this I find that none of the information in these publications was shown to be common general knowledge in the cable making art of the invention. In terms of their applicability in considerations of obviousness I am guided by the words of Aickin J. in Minnesota Mining and Manufacturing Co. vs Beiersdorf (Australia) Ltd, supra, at 295:
“The respondent relied upon a number of prior specifications which had been available in Australia for public inspection before the priority date as providing a basis for the argument that the invention claimed was obvious. For the reasons which I have set out above I do not regard such specifications as capable of sustaining that argument without evidence that they were part of the common general knowledge at that time. There was no such evidence and accordingly it is not necessary for me to examine those specifications. I turn therefore to the question of obviousness without reference to the prior publications.”
I believe a similar situation exists in the present matter and therefore I will limit my considerations to the specification and the comments of the declarants, without reference to the exhibits.
Turning to the evidence of the declarants, I reiterate that the expertise of both Mr Cooke and Mr Wishart, who comment directly on this issue, lie in the field of plastics coating compositions and extrusion and outside the field of cable manufacture. I therefore am not convinced, by their declarations, as to what they consider would be obvious to persons working in the cable manufacturing field.
The other declarant who comments on this issue is Dr Leonardi, whose qualifications I have already discussed at some length. In the light of those comments I am not convinced that his opinion in this matter would be that of a non-inventive person skilled in the art. I furthermore do not consider that Dr Leonardi’s normal work practices, to which he refers in his evidence, can be regarded as indicative of what a non-inventive person skilled in the art might be expected to do. In addition I note that Dr Leonardi, in describing the transfer of technology from the film and packaging arts, in which tie layers are apparently well known, to the cable arts, comments that the incorporation of materials from other technologies frequently required “modifications”. It seems to me that he is a person highly qualified in all three arts. I am not convinced that the modifications he describes would have been of a type routinely carried out by a non-inventive person skilled in the art. Due to the position that he holds I must therefore conclude that Dr Leonardi is highly skilled but not non-inventive and thus accord his evidence less weight.
Accordingly I find that there is insufficient evidence before me to establish that the use of tie layer resins was common general knowledge in the cable making art of the invention. Therefore, the opponent has failed to prove that the claimed invention is obvious.
CONCLUSION
The opposition succeeds on the grounds of; failure to comply with Section 40; prior publication and want of novelty. It does not succeed on the grounds of an obviousness.
I believe that the specification is capable of being amended to overcome the problems identified and I give the applicant 60 days in which to propose amendments
COSTS
In line with convention that costs follow the event I award costs against the applicant ICI AUSTRALIA OPERATIONS PTY LTD.
R.A. Melvin
Delegate of the Commissioner of Patents
Patent attorneys for the applicant: Griffith Hack & Co, Melbourne
Patent Attorneys for the opponent: Phillips Ormonde and Fitzpatrick, Melbourne
0
1
0