Insul-Box (NZ) Limited v Amcor Packaging (Australia) Pty Ltd
[2000] APO 55
•10 August 2000
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 700323 in the name of INSUL-BOX (NZ) LIMITED
Title: Improvements in or Relating to Containers
Action: Application under Section 69 for an extension of term of the petty patent; notice by AMCOR PACKAGING (AUSTRALIA) PTY LTD under Section 28
Decision: Issued .
Abstract
Petty patent found not to comply with section 40, section 18(1)(b)(i) and (ii) of the Patents
Act 1990.
Claim 1 does not define the invention described in that it fails to define the feature of the use
of a pre-made liner, which is a laminate of a polyester metallised film and a paper backing.
Claim 1 lacks fair basis because it fails to define the essential feature of the use of a pre-made
liner material, which is a laminate of polyester metallised film and a paper backing.
Claims 1 and 2 lack novelty in light of US 4544597 (when read with US 4254173) and GB 2153296.
Claims 1 and 2 lack an inventive step in light of US 4544597 (when read with US 4254173) and GB 2153296.
Patentee granted 60 days from the date of this decision to file suitable amendments.
Costs awarded in favour of the informant Amcor Packaging (Australia) Pty Ltd.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Petty Patent No. 700323 in the name of INSUL-BOX (NZ) LIMITED, application under Section 69 for an extension of term of the petty patent and notice by AMCOR PACKAGING (AUSTRALIA) PTY LTD under Section 28.
BACKGROUND
Petty Patent application 56435/98 was filed by Insul-Box (NZ) Limited (Insul) on 3 March 1998 as a divisional of Australian patent application 23518/97. The parent application claims priority from a New Zealand provisional application 314427 filed on 17 March 1997. The patent was accepted on 13 November 1998 and accorded No. 700323. The petty patent was sealed on 24 December 1998. Amcor Packaging (Australia) Pty Ltd (Amcor) filed a notice under Section 28 of the Patents Act 1990 on 26 October 1999 giving notice of matters affecting the validity of patent 700323. Insul-Box (NZ) Limited filed for an extension of term of its petty patent on 15 November 1999.
The matter was heard in Canberra on 16 June 2000. Both parties appeared by telephone. Mr. Tony Smeeton, patent attorney Davies Collison Cave, Sydney, represented the patentee accompanied by Mr. Tony Sims, patent attorney James & Wells, New Zealand. Mr. Helmut Eichberger, patent attorney Cullen & Co., Brisbane, represented the informant Amcor.
THE SPECIFICATION
The specification indicates that the invention relates to containers and in particular containers used for transportation and storing chilled or frozen foods. The specification proceeds to identify defects in the prior art relating to the use of expanded foam insulation and metal foils. The specification then states:
"It is an object of the present invention to provide a method and apparatus for producing insulated containers with corrugated board as a core material.
According to one aspect of the present invention there is provided a method of forming a laminated sheet material comprising the steps of corrugating a paper laminar while applying a plastics metallised liner to one or both sides of the corrugated laminar.
A number of preferences are than set out as follows:
· The plastics metallised liner is a pre-made laminate of a paper backing with metallised polyester film.
· The liner includes a bi-axially orientated polyester film, which is metallised on one side and corona treated on the other side.
· The liner is preheated prior to its application to the paper laminar.
· The liner is heated by heating rollers and adhered to the laminar using a PVA adhesive with the metallised film of the liner innermost/outermost.
The specification proceeds to describe a laminating apparatus and some preferential features of such an apparatus. The specification then provides a brief description of the drawings and embodiment(s) of the invention. The specification concludes with three claims as follows:
1. A method of forming a laminated sheet material including the steps of corrugating a paper laminar while applying a plastics metallised liner to one or both sides of the corrugated laminar.
2. The method of claim 1 wherein the plastic metallised liner is a pre-made laminate of a paper backing with metallised polyester film.
3. The method of claim 1 or claim 2 wherein the liner includes a bi-axially orientated polyester film which is metallised on one side and corona treated on the other side.
NOTICE UNDER S.28
In its notice Amcor asserted that:
(a) the invention so far as claimed in any claim is not a patentable invention because:
it does not comply with paragraph 18(1)(a) of the Patents Act 1990, namely it is not a manner of manufacture within the meaning of Section 6 of the Statute of Monopolies; and
it does not comply with paragraph 18(1)(b) of the Patents Act 1990, namely when compared with the prior art base as it existed before the priority date of the claim (it) is not novel and does not involve an inventive step; and
(b)the specification does not comply with sub-section 40(2) or 40(3) of the Patents Act 1990.
In support of the matters raised under (a) and (b) it attached the following declarations:
Helmut Albert Eichberger dated 16 April 1999 (Eichberger-1) with exhibits HAE-1 to 12. He states that he is a registered patent attorney with Cullen & Co. and is authorised by Amcor Packaging (Australia) Pty Ltd and its parent company Amcor Limited to make this declaration.
Ian Kenneth Williams dated 29 September 1999. He states that he is currently employed by Amcor Packaging (Australia) Pty Ltd as their National Market Development Manager.
Helmut Albert Eichberger dated 26 October 1999 (Eichberger-2) with exhibits HAE-1 to 3.
The patentee provided evidence in response consisting of declarations made by:
Wayne John Harrison dated 22 February 2000 with exhibit WJH-001. He states that he has been involved extensively in the development, and marketing of Insul-Box products and processes.
Niven Andrew Todd dated 23 February 2000 with exhibit NT-001. He states that since 1997 he has been employed by Insul-Box (NZ) Limited in the position of Northern Regional Manager.
Jonathan Wade Braxton dated 7 March 2000 with exhibit JWB001. He states that he is currently self employed but has been involved in the packaging industry for approximately 27 years.
SUBMISSIONS
At the hearing Amcor pursued the grounds of Section 40/Fair Basis, Novelty and Inventive Step. Both parties provided written summaries of their submissions prior to the hearing. I shall make reference to submissions from both parties wherever necessary in my decision.
DECISION
The Commissioner must consider the material filed by the informant with the Section 28 Notice. If the Commissioner is satisfied that a ground specified in subsection 28(1) is made out, the extension of term of the petty patent may be refused. If not satisfied, the Commissioner must grant an extension of term under Section 69 and regulation 6.6.
Section 40/Fair Basis
The informant made a number of submissions. I shall address these on an individual basis. I have summarised these submissions and the first one is as follows:
1. Section 40(2)(a), (c): The language appearing at page 5 lines 5 to 9 of the specification clearly states that a key factor of the patented process is the use of a pre-made liner material of metallised polyester film and a light paper backing. This is at odds with the description at page 2 lines 4 to 6 which requires no such limitations. The description at page 5 makes it essential that the plastic metallised liner be a metallised polyester film whereas the description at page 2 states "preferably, the plastics metallised liner is a pre-made laminate of a paper backing with metallised polyester film".
Looking at the specification I note that the invention in its broadest form refers to the application of a plastics metallised liner to a corrugated paper laminar. Further the description indicates that a preferred form of the plastics metallised liner is a pre-made laminate of a paper backing with metallised polyester film. The description at page 5 states:
"Whilst it has been know (sic) to laminate sheet material such as cardboard with plastics film in the past, this has never been done using a corrugator. Despite advice to the contrary our process has made this possible, the key factor we believe being the pre-made liner material, a laminate of polyester metallised film and a light paper backing."
The patentee submitted that there were two stages in the development of their invention:
The first was the fundamental one step process of corrugation and lamination
The second was the particular material and particular treatment of the same for commercial success
The patentee's submission is consistent with the description at page 5. The first part of the disclosure at page 5 of the specification refers to the laminating step being carried out in a corrugator. The following part of the disclosure sets out that the key factor in success lay in the use of a pre-made liner material. The description has made a clear statement that the key factor (my emphasis) in enabling the laminating process of corrugated card to be carried out in a corrugator lay in the use of a pre-made liner material (a laminate of polyester metallised film and a light paper backing). Thus I am led to the conclusion that the use of a pre-made laminate is necessary for the working of the invention or that this feature is essential to the working of the invention. Looking at the description as a whole, I consider that reference to the key factor implies an essential feature. I find that the specification offends against section 40(2)(a), (c) with regard to this feature of the invention, that is, claim 1 does not define the invention described.
The informant's second submission on section 40 stated:
2. Section 40(2)(a), (c): The specification at page 2 lines 4 to 6 states that, "according to one aspect of the invention, a paper laminar is corrugated while applying a plastics metallised liner to one or both sides of the corrugated laminar". Page 2 lines 21 to 25 of the specification contradicts the language at page 2 lines 4 to 6 by stating "…the apparatus uniting the laminate and the liner subsequent to the corrugation of the paper laminar."
The informant then refers to various statements of the inventor (Wayne John Harrison) in his declaration which refer to this aspect of the invention.
I have noted the inventor's comments in this matter. In section 40 construction matters the courts have indicated that the specification is addressed to a person skilled in the relevant art of the specification. For instance, Lord Shaw in B.T.H. v Corona Lamps, 39 RPC 49 stated:
"A specification must take its rank among all ordinary documents which are submitted to a reader for his guidance or instruction, and a reader ordinarily intelligent and versed in the subject matter. Such a reader must be supposed to bring his stock of intelligence and knowledge to bear upon the document, not unduly to struggle with it, but anyhow to make the best of it."
Thus, while I have noted the informant's reference to the inventor's statements regarding certain aspects of the invention, the specification has to be construed as it would be by the ordinary person skilled in the relevant art at the relevant date. The inventor does not constitute the ordinary workman skilled in the art.
Having regard to the specification, the statement at page 2 lines 4 to 6 refers to "…the steps of corrugating a paper laminar while applying a plastics metallised liner to one or both sides of the corrugated laminar." The drawing shows the freshly corrugated paper laminar emerging from the corrugating rollers and immediately having the plastics liner applied to one side of the corrugated laminate. The action of lamination is thus subsequent to the step of corrugation. This step of lamination is referred to as being subsequent to the step of corrugation in the description (see page 2, lines 24-25).
The Macquarie Dictionary, Third Edition, published 1997, defines the terms 'subsequent' and 'while' as follows:
subsequent: 1. occurring or coming later or after: subsequent events. 2. Following in order or succession: a subsequent section in a treaty.
while: 1. A space of time: a long while, a while ago. 2. during or in the time that. 3. throughout the time that, or as long as. 4. at the same time that (implying opposition or contrast): while she appreciated the honour she could not accept the position.
The patentee has referred to the "while" having the meaning "during or in the time that" (as per the Macquarie Dictionary). Accepting this meaning of the word 'while', claim 1 defines a lamination step during or in the time that the paper laminar is being corrugated. Looking at the description and drawing one can see that the lamination process occurs during/in the time that the paper laminar is being corrugated. Thus while corrugation is occurring at some point in the corrugator as long as lamination is occurring even at some distant point downstream in the corrugator (but in/during the same time) the requirement of claim 1 is satisfied. Claim 1 will not be satisfied if corrugation has ceased but the previously corrugated material is carried on further downstream for lamination. Further as lamination has not been shown to occur prior to corrugation the use of the term subsequent is not inconsistent with the description and drawing. However if the term subsequent were used in the claim, this could include the situation in which the subsequent step of lamination could occur when corrugation has ceased. The description and drawing show the lamination step as taking place immediately subsequent to the corrugation step.
In conclusion I do not find that use of the terms while and subsequent result in an inconsistency which cannot be resolved by reading the specification as a whole. I do not find the description and claims lacking under section 40(2)(a), (c).
The informant's third submission on Section 40 stated that:
3. Section 40(2)(c): The claims do not appear to define the invention described as various aspects of the invention, which appear to be key features both in the description as well as in the Wayne declaration, are not defined in the claims.
In this regard, as long as the claims define the invention described including the essential features there is no need to define all the embodiments of the invention. As I have previously indicated under item 1 above, the feature of a pre-made laminate (from a fair reading of the specification) constitutes an essential feature of the invention. I conclude that claim 1 in its present form fails to define the invention described.
The informant's fourth submission on Section 40 stated:
4. Section 40(3): Page 5 lines 5 to 9 of the specification state that a key factor of the invention is the use of a pre-made liner material of metallised polyester film and a light backing paper with the paper backing resisting stretching and minimising the distribution of heat during the laminating process. Claim 1 in the patent specification is considered not fairly based since it fails to mention that the metallised film is polyester, omits to mention that the liner is pre-made and fails to require the presence of paper.
Based on a consideration of the description I had noted that the feature of a pre-made liner material of metallised polyester film and a light backing paper had been identified as the key factor of the process of the invention. I had previously indicated that on considering the specification as a whole I had concluded that the feature referred to by the informant constituted an essential feature of the invention. Applying the Mond Nickel Rules (in Mond Nickel Company Ltd.'s Application, (1956) RPC 189 at page 194) I find that claim 1 lacks fair basis because it fails to define the essential feature of a pre-made liner material which is a laminate of polyester metallised film and a paper backing.
Novelty
The test for anticipation is the reverse infringement test as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228, at page 235 where Aickin J stated:
"The basic test for anticipation or want of novelty is the same as for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
It follows from the reverse infringement test that if a citation discloses all the features of the claim, the claim will lack novelty. If the citation does not disclose all the features of the claim, the claim will still lack novelty provided the citation discloses all the essential features of the claim; but if the essential features are not disclosed in the citation, the claim is novel (Nicaro Holdings Pty Ltd v Martin Engineering Co, 16 IPR 545 and Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183).
I shall begin by assuming that all features of the independent claim are essential (Catnic Components Ltd v Hill and Smith Ltd (supra). Claim 1 has the following features:
1. A method of forming a laminated sheet material including the steps of
2. Corrugating a paper laminar
3. While applying a plastics metallised liner to one or both sides of the corrugated laminar.
The informant raised an issue regarding the meaning of the term 'while' and I have indicated under Section 40 that the term had the plain meaning 'during or in the time that'. I had also indicated that this particular meaning had an impact on the interpretation of claim 1. In particular I stated that:
"Thus while corrugation is occurring at some point in the corrugator as long as lamination is occurring even at some distant point downstream in the corrugator (but in/during the same time) the requirement of claim 1 is satisfied. Claim 1 will not be satisfied if corrugation has ceased but the previously corrugated material is carried on further downstream for lamination."
In regard to novelty matters the patentee had raised an issue regarding the field in which the invention lay. The patentee submitted that the specification clearly stated that:
"This invention relates to containers and in particular containers used for transportation and storing chilled or frozen foods."
The patentee stated that even though this aspect was not defined in claim 1, the specification as a whole shows that it is related to insulation and packaging. The patentee is thus referring to a rule of construction. In Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69, Lord Evershed MR said:
"It is clearly…legitimate and appropriate in approaching the construction of claims to read the specification as a whole. Thereby the necessary background is obtained and in some cases the meaning of the words used in the claims may be affected or defined by what is said in the body of the specification"
The teaching from Décor Corp v Dart Industries 13 IPR 385 at 400 which impacts on the above rule indicates that:
"It is not legitimate to confine the scope of the claims by reference to limitations which may be found in the body of the specification but are not expressly or by proper inference reproduced in the claims themselves. To put it another way, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification."
Keeping the above teaching in mind I cannot find that the claims in their present form show a clear relationship with insulation and packaging materials for foodstuffs. On their own the claims read clearly and there are no terms which require reference to the specification to determine that the materials relate to foodstuff insulation and packaging.
The informant raised a number of citations relating to lack of novelty. I have read and considered all those citations. A number of them did not disclose some of the essential features of claim 1 of the petty patent. Accordingly, I shall discuss only those of closest relevance to the claims of the petty patent.
US Patent 4,765,855 (Exhibit HAE-2, first Eichberger declaration)
This document discloses the following features
1. A method of forming a laminated sheet material including the steps of
2. Corrugating a paper laminar
3. While applying a plastics liner to one or both sides of the corrugated laminar.
Referring to column 2, lines 48 to 51 "The sandwich material according to the invention is remarkable in that a flat film of thermoplastic material is bonded to the corrugations, thereby covering at least one side of the sheet of corrugated paper." And at lines 64 to 68, "…the sandwich material which is proposed can be produced at a very low cost and in very large quantities on the equipment presently used for producing corrugated paperboard." Figure 5 and the related part of the description shows the steps of corrugating a paper laminar while applying a flat film of a thermoplastic material to one side of the corrugated laminar.
Thus only the feature of a plastics metallised liner has not been disclosed. The informant submitted that there was a general disclosure of the use of a plastics liner, as materials such as polyethylene, polypropylene, polyester were generally used and referred to as plastics in the art. The patentee did not challenge this submission. However, the informant has not proven that the use of a plastics metallised liner is not essential to the working of the invention, nor have they shown that such a liner falls within the scope of plastics liners in general. The description and claims have indicated the use of a plastics metallised liner in the broadest form of the invention. There is nothing in the specification which shows that use of a plastics metallised liner is a non-essential feature and that the invention may function without it. Accordingly I cannot conclude that claim 1 of the petty patent is lacking in novelty as all the essential features of claim 1 have not been disclosed in the citation. Accordingly claims 2 and 3 of the petty patent also do not lack novelty.
WO 90/06222 (Exhibit HAE-4, first Eichberger declaration)
This document makes a number of disclosures. The plastics liner is a composite of paper (preferably kraft paper) and plastic film (preferably bioriented polyethylene (a particularly preferred film is bioriented polyester) which has been corona treated). The description at page 4, lines 15-18 states "…the composite…can be passed through the double-backer portion of a conventional corrugating machine to form the outside liner of a double-faced corrugated paperboard (my emphasis)". Figure 1 of the specification supports this disclosure. However the disclosure does not make clear if the corrugation is carried out while applying the plastic film. Further the citation also shows the application of the plastic film to a corrugated laminar which has already been faced with one liner material. The description and drawing (Fig. 1) disclose corona treatment of the plastic film both before and after formation of the composite of paper and plastic. Further at page 17, lines 11 to 15 the description states:
"The film (reference to the plastics film) so printed then could be extrusion mounted on metallized film, which then would be combined with paperboard to form a composite as previously described. The metallized surface of the metallized film should be toward the paperboard."
I consider that all the essential features of claim 1 have not been disclosed. The feature of applying the plastics metallised liner while corrugating a paper laminar is not revealed in the citation. In regard to the aspect of applying a liner while corrugating a paper laminar I had discussed the meaning of this feature under the informant's second submission under Section 40/Fair Basis. I had concluded that this feature clearly excludes those instances where lamination is occurring of precorrugated material or lamination is occurring of corrugated material where the act of corrugation has ceased. I find that claim 1 of the petty patent has not been shown to lack novelty in light of WO 90/06222. Consequently claims 2 and 3 of the petty patent do not lack novelty in light of WO 90/06222.
EP 319252 (Exhibit HAE-5, first Eichberger declaration)
One embodiment of this invention discloses the lamination of a plastics metallized film to previously prepared corrugated card stock. Another embodiment at page 4, line 56 to page 5, line 5 discloses the following:
" as an alternative to the above-described laminating technique, laminated corrugated card may be produced by modifying the equipment which produces the corrugated cardboard itself, to produce the laminated corrugated card in a single in-line process (my emphasis) in which the metallized plastics film is laminated to one of the webs of heavy paper (for forming one face of the corrugated card), and this lamination is then combined with the central layer of corrugated cardboard and the other layer of heavy paper which forms the other face of the corrugated card, to form the laminated corrugated card. If any other layers are required (for example, a second metallized plastics layer or an outer layer of plasticised sheet) these also are incorporated in the process."
The patentee had submitted variously:
· "…is directed to a product in which a metallised plastics film has been post laminated over an existing corrugated core."
· "…a process which uses corrugated cardboard, but does not represent a process which manufactures corrugated cardboard."
Looking at the alternative embodiment there is a clear disclosure of some of the features of claim 1 of the petty patent. There is no specific statement that the paper laminar is corrugated while (my emphasis) applying a plastics metallized liner to one or both sides of the corrugated laminar. However the disclosure clearly asserts the use of modified equipment (no details of the equipment and usage have been provided) which produces the corrugated cardboard itself. Apart form this single passage referring to a single in-line process there is no illustration or further detail of how the invention works. Thus clear and unmistakable directions have not been provided which lead to the invention of claim 1 of the petty patent. I consider that claim 1 of the petty patent does not lack novelty in light of EP 319252. Accordingly I find that claims 2 and 3 of the petty patent do not lack novelty in light of EP 319252.
GB 2153296 (Exhibit HAE-6, first Eichberger declaration)
The consistory statement describing the method of the invention states:
"…a method of producing a preprinted corrugated paper product…comprising the steps of:
(1) preparing a paper facing sheet for use in the preparation of a corrugated paper product, said facing sheet containing two sides, at least one of said sides having adhesively bonded thereto a transparent, reverse printed, plastic film, wherein the printing is visible through the plastic film when the film is adhered to first side of said facing sheet;
(2) preparing a fluted corrugated medium having two sides;
(3) adhesively attaching the tips of the flutes on one side of the fluted corrugating medium to the second of the sides of the facing sheet, so as to form a preprinted corrugated product."
The patentee indicated the following differences between their invention and the citation:
· The nature of the plastic film differs. There appears to be no reference to metallised foil forming part of the applied plastic laminate being laminated.
· A pre-formed web of corrugated material is relied upon. There is no corrugation of the core material immediately prior to the application of the metallised foil laminate. There is an absence of corrugating rollers.
The citation makes the following disclosures:
· "..both oriented and unoriented films will fulfil the function of the plastic films as the carrier of a decorative print and/or metallized surface." (page 4, lines 7-9).
· "The corrugated medium 20 is also pulled by driven rolls 23, 24, 25 and 29, through the steam shower at 22 and the preconditioner roll 21 which adds moisture and heat to the medium in a predetermined conventional manner to enable the two corrugator rolls 24 and 25 to impart the characteristic flutes to the medium by positioning of the fluted rolls in registry with sufficient clearance therebetween to press the softened medium into the proper corrugated configuration." (page 6, lines 19-24)
When this disclosure is read in light of Fig. 1 there is no doubt that the medium 20 is being corrugated just prior to applying the plastics metallised liner. I find claim 1 of the petty patent lacks novelty in light of GB 2153296.
The citation reveals the following in respect of claim 2 of the petty patent:
· "It has been found that the tear strength of the composite facing sheet is in excess of that expected from an addition of the tear strengths of the plastic film and the paper." (page 6, lines 1-2).
· "Thus films of polyethylene terephthalate (which is a polyester), polyethylene, polyvinyl chloride, polypropylene and cellophane have been evaluated and found satisfactory in some applications." (page 3, lines 57-58).
These disclosures when read with the previous disclosures reveal that the plastics metallised liner could be "A pre-made laminate of a paper backing with metallised polyester film." Thus claim 2 of the petty patent lacks novelty in light of GB 2153296.
The citation does not reveal the liner as a bi-axially orientated (my emphasis) polyester film, which is metallised on one side, and corona treated (my emphasis) on the other side. The features, which I have emphasised, do not appear in the citation. I consider that claim 3 does not lack novelty in light of GB 2153296.
US 4871406 (Exhibit HAE-8, first Eichberger declaration)
The patentee submitted that the citation:
"…discloses a manufacturing process for corrugated paper board in which a plastics liner is over laminated onto pre-formed single lined corrugated paper board. This is best illustrated in Figures 3 and 4 where the plastics film (32) is applied onto the existing liner (10) of a single lined corrugated board."
The citation does not show that the paper laminar is corrugated while applying a plastics metallised liner. It reveals a pre-corrugated paper laminar being united with a plastics liner. I do not find that US 4871406 challenges the novelty of any of the claims of the petty patent.
Exhibits HAE-9, 10, 11, (first Eichberger declaration)
These three exhibits are conference papers which reveal various individual aspects of extrusion coatings (plastics), polymers, laminations, coatings, co-extrusion, paper and/or foil structures, aluminium foils employing corona or flame treating. These documents do not disclose the invention of the petty patent on an individual basis and I do not consider that they render the claims of the petty patent as lacking in novelty.
US 4254173 and US 4544597 (Exhibits HAE-1, HAE-2, respectively, second Eichberger declaration)
The informant submitted that these documents should be read together for the following reasons:
US 4544597 contains a cross reference to US specification 4254173 at column 2 line 20, which states that the fabrication of the laminate used in the specification can become an integral part of the corrugating method utilising the process described in specification 4254173.
The invention of US 4544597 is substantially identical to the one disclosed in GB 2153296. My conclusions on novelty based on GB 2153296 hold for US 4544597, that is claims 1 and 2 of the petty patent are found to be lacking in novelty.
I shall now consider the issue of mosaicing raised by the informant. Section 7(1)(b) provides that for novelty (other than for "whole of contents"), prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts can be used - if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information.
Some guidance of when two or more documents constitute a single source of information is obtained from Nicaro Holdings Pty Ltd v Martin Engineering Co, 16 IPR 545 at page 570 where Gummow J stated:
"What degree of lack of connection between two or more documents will make them 'independent' and so forbid the making of a mosaic to destroy novelty, will be very much a question in the particular case. Much will depend upon the nature of the art in which the skilled addressee is to be treated as versed at the priority date; this appears to have been important in the Sharpe & Dohme case ((1927) 44 RPC 367, (1928) 45 RPC 153). Plainly, the degree of connection which is stated to exist in the documents themselves will be important. It is difficult to see how mere identification of prior patents as related or prior art would bring them sufficiently closely together for the purpose under consideration here. Again, even where there is a further description of the prior publication, it may nevertheless be that the purpose of the reference is to direct the reader away from it, as disclosing something outmoded or defective. On the other end of the scale, the terms of the specification of the patent in suit in the Sharpe & Dohme case (supra) indicated that the patentees themselves had been relying upon the prior publications in question; and the publications themselves formed what Astbury J called 'one consistent whole'."
The informant submitted:
It is clearly established law however that the fact that an earlier patent describes some of the integers of a combination, and refers to other patents which describe the remainder of the integers, does not destroy the novelty of the combination unless there is a real link between the various earlier patents, as opposed to a mere reference (Martin Engineering Co v Trison Holdings, (1989) 14 IPR 330).
The relevant passage in US 4544597 states
"The present invention utilizes a plastic and paper laminate, such as described in the patent to A. Dean Peer, Jr., U.S. Pat. No. 4,254,173, issued Mar. 3, 1981; as at least one of the facing sheets of a corrugated paper-board product."
The passage continues to describe other preferred features of such a laminate. The above passage does not make a mere reference to the earlier US patent. It specifically indicates that the present patent "utilizes a plastic and paper laminate, such as described in the (earlier) patent." Thus it is not referring to various integers across a wide range of patents as the patentee has suggested. I consider that due reference can be made to US 4254173 to determine the features of the plastic and paper laminate which constitutes the facing sheet of the corrugated paperboard of US 4544597.
US 4254173 discloses the paper laminate having plastic films selected from polyethylene terephthalate (which is a polyester), polyethylene, polyvinyl chloride, polypropylene and cellophane. The patent further discloses metallizing and radiation treatments to be applied to the laminate. Reading the disclosures of US 4254173 and 4544597 I consider that claims 1 and 2 of the petty patent lack novelty. The informant further submitted that the radiation treatment or ionisation was an alternative to corona discharge. The patentee submitted that the radiation treatment was for the purpose of promoting crosslinking in the polymer of the plastic whereas corona treatment was done to alter a surface property (for example to promote adhesion). The material provided by the patentee's declarants supported this assertion. US 4254173 clearly indicated that radiation treatment was for the purpose of promoting crosslinking in the polymer of the plastic. Consequently I consider that claim 3 of the petty patent does not lack novelty in light of the joint disclosure of US 4254173 and 4544597.
The patentee made submissions on US 4254173 and 4544597 to the effect that:
· the plastic film maybe metallised but this is considered only for decorative purposes and no mention is made of the use of such films for conferring thermal properties.
· The radiation treatment is not approved for food packaging (Todd declaration, para 5), hence this document can be disregarded by those working in the food packaging industry.
· Thermal insulation is not discussed as an object, problem, nor consideration and hence this document would be, and was, overlooked by the industry in attempting to provide an improved thermally insulating packaging material.
The claims of the petty patent as currently framed do not have the limitations referred to above. The claims are not restricted to thermal insulation/packaging/foodstuff applications. Hence the patentee's submissions do not make any impact on my findings with regard to novelty of the claims in light of US 4254173 and 4544597.
Inventive Step/Obviousness
Subsections 7(2) and 7(3) of the Patents Act 1990 indicate that a claimed invention will lack an inventive step if it is obvious to a person skilled in the relevant art in the light of:
(a) common general knowledge in the art; or
(b) common general knowledge considered together with information publicly available in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
Assessment of inventive step may be carried out using any one of a variety of tests. Aickin J. set out the following tests in Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at page 270:
"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."
and at page 286:
"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, whether they be the steps of the inventor or not."
Application of these tests would require:
a determination of the non-inventive worker in the field (or the person skilled in the relevant art ) in Australia.
a determination of the common general knowledge in Australia at the priority date.
The common general knowledge relevant to the question of obviousness was described by Aickin J. in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Limited, (1980) 144 CLR 253 at 292 as:
"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."
The informant submitted that:
"If any of the claims in the petty patent are found to be novel in light of the earlier patent specifications…then it is submitted that those claims are obvious in the light of the earlier specifications (HAE 2 to 8) when combined with the disclosure contained in exhibits HAE 9 through to HAE 11 of the first Eichberger declaration."
The informant asserted that the disclosures of HAE 9 to 11 formed part of the CGK in Australia. These disclosures were published papers of conferences held overseas. These papers were made available to Amcor employees and their customers via a library. However the material disclosed in such publications does not necessarily constitute common general knowledge in the art. I shall have regard to the teaching from British Acoustic Films Ld v Nettlefold Productions, (1936) 53 RPC 221 at page 250, which states:
"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 merely because it is widely circulated. Such a piece of knowledge only becomes common general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art."
and
"It is certainly difficult to appreciate how the use of something which has in fact never been used in a particular art can ever be held to be common general knowledge in the art."
This was affirmed in General Tire & Rubber Company v Firestone Tyre and Rubber Company Ltd, (1972) RPC 457 at page 482 with the qualification that "without question" should read "generally regarded as a good basis for further action".
I have no evidence before me relating to the exhibits HAE-9 to 11 which shows that they satisfy the requirements set out above. The exhibits refer to practices set out in the United States of America and no statement has been made in the exhibits that these practices were common in Australia, neither is there any supporting evidence from persons skilled in the relevant art in Australia. I do not consider that the material in exhibits HAE-9 to 11 has been shown to form part of the CGK in the art in Australia.
I shall now determine which declarants had skills relevant to the art of laminating sheet material including corrugating paper laminars at the priority date of 17 March 1997.
From the informant's side:
· Mr. Eichberger is a patent attorney and has not established by the evidence provided that he is a person skilled in the relevant art.
· Mr. Williams has had varied experience in the packaging field but there is no evidence to show that he had direct experience in the corrugating and laminating field. I do not consider him a person skilled in the relevant art.
From the patentee's side:
· Mr. Harrison is the inventor and even though he is not the ordinary person skilled in the art, he can provide relevant background information on the state of the prior art.
· Mr. Todd has worked for the patentee but there is no evidence to show that he had direct experience in the corrugating and laminating field. I do not consider him a person skilled in the relevant art.
· Mr. Braxton has worked in the relevant field in New Zealand and I consider him to be the person skilled in the relevant art.
Having looked at the declarations of Mr. Harrison and Mr. Braxton I did not find any material which clearly established the state of the CGK in the art. For the purpose of establishing lack of inventive step the relevant documents must be read in light of the CGK. As no CGK has been established I must read the relevant citations individually. The problem sought to be addressed by the invention of the petty patent related to devising a method and apparatus for producing:
A packaging material suitable for a container, which was not bulky, but strong and provided insulating properties similar to metal foil.
I consider that the person skilled in the relevant art would have ascertained understood and regarded as relevant the citations listed under Novelty. These citations deal with packaging materials as well as laminates. I consider that the arts of packaging and lamination would be relevant to the defined problem.
Having considered all the citations raised by the informant I shall deal only with those that challenge the inventiveness of the claimed invention.
GB 2153296 (Exhibit HAE-6, first Eichberger declaration)
This specification is directed to method of producing corrugated paperboard that is used for packaging. The specification also indicates that these materials are characterized by their low cost, light weight and strength. Given the problem to be solved the skilled addressee would have regard to the method of this citation. The citation discloses in essence:
A method of forming a laminated sheet material including the steps of corrugating a paper laminar while applying a plastics metallised liner to one or both sides of the corrugated laminar, wherein the plastic metallised liner is a pre-made laminate of a paper backing with metallised polyester film.
Hence I consider that claims 1 and 2 of the petty patent would lack an inventive step in light of this citation. This citation discloses the use of both oriented and unoriented plastic films. It does not disclose the corona treatment of the plastics laminate and there is nothing in the citation which would lead the skilled addressee in that direction. The citation refers to possible use of radiation-induced crosslinking which can improve the adhesion of dyes and metal film. I have not been provided with evidence which shows that corona treatment of plastic film was part of the CGK in the art and that the skilled addressee would corona treat the plastic film on one side while metallising the other side as a matter of routine. Thus I conclude that claim 3 of the petty patent is inventive over this citation.
US 4254173 and US 4544597 (Exhibits HAE-1, HAE-2, respectively, second Eichberger declaration)
As I have shown previously (under Novelty) these two documents can be read together. In particular US 4544597 makes reference to US 4254173 as follows:
"The present invention utilizes a plastic and paper laminate, such as described in the patent to A. Dean Peer, Jr., U.S. Pat. No. 4,254,173, issued Mar. 3, 1981; as at least one of the facing sheets of a corrugated paper-board product."
US 4544597 is directed to method of producing corrugated paperboard that is used for packaging. The specification also indicates that these materials are characterized by their low cost, light weight and strength. Given the problem to be solved the skilled addressee would have regard to the method of this citation and the laminates additionally disclosed in US 4254173. In essence the combined disclosure reveals:
A method of forming a laminated sheet material including the steps of corrugating a paper laminar while applying a plastics metallised liner to one or both sides of the corrugated laminar, wherein the plastic metallised liner is a pre-made laminate of a paper backing with metallised polyester film.
Hence I consider that claims 1 and 2 of the petty patent would lack an inventive step in light of these citations. These citations do not disclose the corona treatment of the plastics laminate and there is nothing in the citations which would lead the skilled addressee in that direction. Further there is no established CGK to show that the skilled addressee would corona treat the plastic film on one side while metallising the other side as a matter of routine. Thus I conclude that claim 3 of the petty patent is inventive over these citations.
CONCLUSION
I have found the following defects in the petty patent specification in respect of Section 40 and paragraphs 18(1)(b)(i), 18(1)(b)(ii) of the Patents Act 1990:
1. Claim 1 does not define the invention described in that it fails to define the feature of the use of a pre-made liner, which is a laminate of a polyester metallised film and a paper backing.
2. Claim 1 lacks fair basis because it fails to define the essential feature of the use of a pre-made liner material, which is a laminate of polyester metallised film and a paper backing.
3. Claims 1 and 2 lack novelty in light of US 4544597 (when read with US 4254173) and GB 2153296.
4. Claims 1 and 2 lack an inventive step in light of US 4544597 (when read with US 4254173) and GB 2153296.
There is still some patentable subject matter that could allow the above deficiencies to be overcome by suitable amendments. Given the provisions of section 69(4), I allow the patentee 60 days from the date of this decision to request an amendment to the specification of the petty patent for the purpose of removing the ground of invalidity. If a request to amend is not made within the period allowed I will formally refuse to grant an extension of term of the petty patent.
COSTS
Section 210 and regulation 22.8 gives the Commissioner power to award costs against a party to proceedings before the Commissioner.
The informant sought costs in the matter. They indicated that if I found that any of the grounds raised in the Section 28 Notice had been established, then costs should be awarded against the patentee.
The patentee also sought costs in the matter. They submitted that the informant had not made a case and hence costs should be awarded in the patentee's favour.
In this matter I have found against the patentee. I see no reason why costs should not follow the event. I award costs in favour of the informant Amcor Packaging (Australia) Pty Ltd.
Jacob Elijah
Delegate of the Commissioner of Patents
Patent attorneys for the patentee : Davies Collison Cave, Sydney
Patent attorneys for the informant : Cullen & Co., Brisbane
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