ISG Technologies Inc v Bluescope Steel Limited

Case •

[2007] APO 28

•

24 August 2007

ABSTRACTS OF DECISIONS

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 768442 in the name of ISG TECHNOLOGIES INC.

Title:          A Coating Composition for Steel Product, A Coated Steel Product, and A Steel Product Coating Method

Action:          Opposition by BLUESCOPE STEEL LIMITED under section 59 of the Patents Act 1990

Decision:          Issued     24 August 2007       .

Abstract

The opponent raised grounds of novelty, inventive step, manner of manufacture and section 40/lack of clarity.  At the hearing the opponent pursued the grounds of novelty, inventive step, lack of entitlement and section 40/lack of clarity.

The opponent raised three citations against novelty.  Claims 1 to 23 were found to be novel in light of the citations.   The opponent further raised prior use as a novelty consideration.  The prior use did not establish lack of novelty of the opposed invention.  The opponent asserted that common general knowledge in the form of published patents, published papers and confidential papers rendered the opposed invention as being obvious.  None of the material provided showed the opposed invention as being obvious.  It is noted that the confidential papers which were asserted as being in the public domain was not established as being publicly available.  The opponent also submitted that the invention was obvious in the light of three patent documents when combined on an individual basis with the established common general knowledge.  One of the patent documents was shown as being not available to the public at the relevant date and hence was not considered for the purposes of inventive step.  None of the combinations established the opposed invention as being obvious.  The opponent was unsuccessful in establishing lack of entitlement based on teachings of the ZAC conferences as these taught away from the invention. Clarity matters were raised by the opponent against claims 6, 7, 11, 12, 17 and 18.  There was no evidence from the opponent and the declarants which supported this contention.  The claims were found to be clear.  Thus the opponent has been unsuccessful on the grounds of novelty, inventive step and section 40/lack of clarity.

I direct that the application be sealed after twenty-eight (28) days from the date of this decision.  If the Commissioner of Patents is served with a notice of appeal from this decision before that time, I direct that sealing not occur until the appeal has been decided or discontinued.

As the opponent has been unsuccessful, I award costs (as per Schedule 8) against the opponent BlueScope Steel Limited and in favour of the applicants ISG Technologies Inc.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 768442 by ISG TECHNOLOGIES INC. and an opposition under section 59 of the Patents Act 1990 by BLUESCOPE STEEL LIMITED.

BACKGROUND

  1. ISG Technologies Inc. filed patent application No 768442 on 24 August 2000 under the provisions of the Patent Cooperation Treaty (PCT).  The application claims priority from a US basic application 09/414766 filed on 7 October 1999.  The application was examined and advertised accepted on 11 December 2003.

  2. BlueScope Steel Limited filed a notice of opposition on 9 Mar 2004.  A statement of grounds and particulars was filed on 9 June 2004.  The statement of grounds and particulars was subsequently amended and the amendment was allowed on 9 January 2006. The filing of evidence in support, evidence in answer and evidence in reply was completed on 10 October 2006.

  3. A hearing to deal with the substantive opposition was held in Sydney on 5 and 6 June 2007.  Katrina Howard of counsel instructed by Alison McMillan, patent attorney, Pizzeys, Brisbane, represented the applicant.  David Yates, Senior counsel, instructed by David Hughes and Gennaro Simonetta, patent attorneys of Griffith Hack, Sydney, represented the opponent. 

    EVIDENCE

  4. Evidence in support consists of declarations made by:

    ·Michael Salon, dated 19 January 2005 and 1 March 2005 respectively with annexures A to C and D to G respectively. He states that he was employed by Bluescope Steel Limited (or its predecessors from January 1963 to February 2002 and that during this period he acquired extensive experience in continuous galvanizing processes. He further states that this experience together with his academic qualifications has provided him with a fundamental understanding of the metallurgy of zinc and aluminium alloys and significant production experience with molten alloys and metal alloy coating processes.

    ·Dr Qiyang Liu, dated 9 February 2005 with annexures QL-1 to QL-4 (QL-2 has 44 documents).  He states that he is currently a Senior Research Scientist at Bluescope Steel Limited having been employed in the steel research group since 1994. He further states that through his experience of research and development in the field of metallic coatings, he has established extensive specialised knowledge in solidification microstructure assessment and corrosion performance of Al-Zn coatings.

    ·Marisa Bendeich and Sharon Karasmanis, both dated 7 February 2005 and both being librarians, attesting to public availability of certain documents.

    ·Kathy Engels, dated 2 July 2005 with annexures KE-1 to KE-12. She states that she is currently the Manager, Administration of BIEC International, Inc, and the Secretary-Treasurer of Zinc Aluminium Coaters Association (ZAC).

  5. Evidence in answer consists of declarations made by:

    ·Peter G. Cheplick, dated 29 November 2005 with annexure PGC-1. He states that he is currently the Manager of Intellectual Property for Mittal Steel USA ISG Inc. (formerly named International Steel Group Inc.) (“ISG”), of which ISG Technologies Inc. is a wholly owned subsidiary, and which acquired substantially all the assets of Bethlehem Steel in 2003. He further states that ISG is a member of the Zinc Aluminium Coaters Association (ZAC), and Bethlehem Steel Corporation was a member at the time of the InterZAC 86 conference until its acquisition by ISG. He also states that membership of ZAC is open to licensees of the GALVALUME technology and that BIEC (formerly a wholly owned subsidiary of Bethlehem Steel Corporation and sold in 1986 to a predecessor of Bluescope Steel Limited) is the Licensor of this technology.

    ·Erin McDevitt, dated 1 December 2005 with annexures EM-1 to EM-4 (EM-4 has 8 documents). He states that he is an inventor of the patent application under opposition, possesses a PhD in Materials Science and Engineering and has over 10 years experience in the area of hot dip steel coatings. He further states that at the time the invention was made he was a research engineer with Bethlehem Steel Corporation (licensee of the technology associated with steel coatings available under the trade name GALVALUME).

    ·Alan Gibson, dated 2 March 2006 with annexures AG-1 to AG-5 (AG-5 has 9 documents). He states that he is currently the President of Palmate Technologies, an independent consulting company offering consulting services to metals producers and users with one area of expertise being the hot-dip coating process. He further states that as a result of his academic, employment and consulting background, he believes that he has a sound knowledge of metallurgy including the metallurgy of aluminium castings and hot-dip coatings. 

  6. Evidence in reply consists of declarations made by:

    ·David J Willis, dated 4 September 2006 with annexures A to C (annexure B has 14 documents and annexure C has 5 documents). He states that he possesses a PhD in Physical Metallurgy from the University of New South Wales and has been employed by Bluescope Steel Limited (or its predecessors) from 1976 to the present. He further states that he has had extensive research experience in the steel industry and that this experience together with his academic qualifications has provided him with a fundamental understanding of the metallurgy of zinc and aluminium alloys as they apply to metallic coatings on steel.

    ·Phillip Austen, dated 1 September 2006 with annexures A and B. He states that he is currently employed as a metallurgist with Comalco Aluminium having commenced employment with them since 1967. He further states that his experience at working with Comalco together with his academic qualifications (not specified) has provided him with a fundamental understanding of the metallurgy of aluminium alloys.

    ·Udo Bucher, dated 9 October 2006 with annexure A. He states that he possesses a Bachelor of Science degree in Materials Science and is currently employed as Manager of Intellectual Property by Bluescope Steel Limited. He further states that he has been employed by Bluescope Steel Limited (or its predecessors) since 1973 (except for a brief period in 1988) and held various positions in research and management and in particular being manager of Metallic Coatings Process and Product R&D from 1995 to 1999.

    ·Michael Salon, dated 28 September 2006 with annexures H to J (annexure I has 4 documents).

    THE SPECIFICATION

  7. The specification under opposition was advertised accepted on 11 December 2003.  It commences by stating that “The present invention is directed to a coating composition, a coated steel product, and a method of making, and in particular, to an aluminum-zinc coating composition employing effective amounts of a particulate compound constituent to enhance tension bend rust stain performance and the appearance of the sheet when painted and reduce spangle facet size.”  Then it describes some prior art processes and their defects such as, “…when the coated steel product is to be painted, a temper rolling is required to flatten the product in preparation for painting.  Another problem is cracking when the product is a sheet and is bent.  When this sheet product is bent, the coating can crack, the crack exposing the steel to the environment and premature corrosion.  With presently available coated steel sheets, large cracks can form, thereby compromising the corrosion resistance of the sheet product.”

  8. It continues by stating, “…a need has developed to provide an aluminum-zinc coated steel product with improved bending performance, reduced spangle facet size, and improved painted surface appearance.  The present invention solves this need by providing a method of coating a steel product, a coating composition and a coated steel article which, when experiencing surface cracking during bending, is still corrosion resistant and does not require temper rolling when the coated steel product is painted.  The coating composition is modified with one or more particulate compound constituents such as titanium boride, aluminum boride and the like.”  This is followed by a consistory statement of the invention, detailed description of the invention accompanied by several drawings, and some embodiments of the invention.  The specification concludes with independent claims 1, 8 and 14 (which are similar to the consistory statement), several appended claims and three omnibus claims.  Claim 1 and appended claims 2 to 7, 19 are process claims.  Claim 8 and appended claims 9 to 13, 20 are claims to a coated article.   Claim 14 and appended claims 15 to 18 are directed to a coating composition.  Claims 21, 22 and 23 are omnibus claims.  Main claims 1, 8, 14 and omnibus claims 21, 22 and 23, read as follows:

    1.   In a method of coating a steel product using a molten aluminum-zinc alloy bath, the improvement comprising modifying the composition of the aluminum-zinc alloy by adding an effective amount of one or more of a particulate compound constituent selected from the group consisting of boride compounds having one of titanium and aluminum, aluminide compounds containing titanium and iron, and carbide compounds containing titanium, vanadium, iron, and tungsten.

    8.   In a coated steel article comprising a steel substrate; and an aluminum-zinc coating thereon, the improvement comprising the aluminum-zinc coating being modified with an effective amount of one or more of a particulate compound constituent selected from the group consisting of boride compounds having one of titanium and aluminum, aluminide compounds containing titanium and iron, and carbide compounds containing titanium, vanadium, iron, and tungsten.

    14.   In an aluminum-zinc steel product coating composition, the improvement comprising

    the aluminum-zinc alloy including an effective amount of one or more of a particulate compound constituent selected from the group consisting of boride compounds having one of titanium and aluminum, aluminide compounds containing titanium and iron, and carbide compounds containing titanium, vanadium, iron, and tungsten.

    21.A method of coating a steel product using a molten aluminum-zinc alloy bath,

    substantially as hereinbefore described with reference to the accompanying drawings
          and/or examples.

    22.A coated steel article comprising a steel substrate and an aluminum-zinc alloy coating, thereon, substantially as hereinbefore described with reference to the accompanying drawings and/or examples.

    23.An aluminum-zinc steel product coating composition, substantially as hereinbefore described with reference to the accompanying drawings and/or examples.

    STATEMENT OF GROUNDS AND PARTICULARS

  9. The opponent raised grounds of novelty, inventive step, manner of manufacture and section 40/fair basis/lack of clarity. At the hearing the opponent pursued the grounds of novelty, inventive step, lack of entitlement and section 40/fair basis/lack of clarity.

    DECISION

  10. Both parties made oral submissions at the hearing as well as filing written submissions. I shall refer to these as well as any earlier filed evidence wherever relevant in my decision.

    Novelty

  11. The opponent had listed seven documents and an allegation of prior use for the ground of novelty in the statement of grounds and particulars. At the hearing the opponent raised only three documents and the allegations of prior use against the ground of novelty. I shall first consider the matter of novelty by prior publication followed by the matter of novelty by prior use

    Novelty – Prior Publication   

  12. The reverse infringement test from Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at 235 sets out the basic test for anticipation or want of novelty:

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

  13. 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 v Martin Engineering 16 IPR 545 and Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183).

  14. Before considering the documents raised by the opponent against novelty, I shall proceed to determine the features of the invention set out in claim 1 of the specification. A reading of claim 1 shows that the art in question is that of coating a steel product. The coating material used is an aluminium-zinc alloy. The improvement is stated to lie in the modification of the composition of the aluminium-zinc alloy. This modification is carried out by the addition of an ‘effective amount’ of one or more of a particulate compound selected from a group consisting of boride, aluminide and carbide compounds of the specified composition.

  15. The first issue in construing the claim arose from the aluminium-zinc alloy. The issue contested by both parties related to the particular aluminium-zinc alloy referred to in the claims and specification. The opponent submitted that it covered all aluminium-zinc alloys whereas the applicant contended that it only referred to the 55% Al-Zn alloys.  The claims do not specify any particular aluminium-zinc composition. Following the Rules of Construction (see Decor Corp v Dart Industries 13 IPR 385 at page 400) and referring back to the description there are several references to the GALVALUME product and the related coating bath. A statement at page 8 says, “Generally this bath comprises about 55% aluminium, a level of silicon, generally about 1.6% by weight, and the balance zinc. Other variations in the composition are within the scope of the invention as would be conventionally known to those of ordinary skill in the art.” Looking at the statements of the various declarants, who say they are experts in the field, there is nothing to indicate that they considered the opposed application was relevant to aluminium coating baths other than the conventional bath (as used for the GALVALUME product) of 55% aluminium and the rest zinc with minor additions of other alloying elements. In such cases, the Courts have taught that the context of the specification may imply a limitation on the scope of the claims. See International Business Machines Corp v Commissioner of Patents (1991) 22 IPR 417. The specification related to computer graphics, but the claim made no specific reference to a computer environment and Burchett J found that:

    "When the present specification is read, the whole of the context rises up to insist that claim one is talking about the operation of computers. Almost the first words of the specification inform the reader that the invention 'relates to computer graphics and more specifically to a method and apparatus for generating curves on computer graphic displays'. The recital of the prior art reinforces the clear impression thus conveyed from the beginning of the document."

  16. The second issue of construction relates to the independent claims use of the term “an effective amount of one or more of a particulate compound constituent”. The opponent asserted that the claims did not refer to the features of overcoming tension bend rust staining and obviating the need for temper rolling prior to painting. Once again, applying the Rules of Construction (Decor Corp v Dart Industries supra), I note that the description bridging pages 5 and 6 states,

    “The effective amount of the constituent is considered to be that amount which reduces the spangle facet size of the coated product, causes an increase in the number of cracks while maintaining a smaller crack size than conventional aluminum-zinc coated products, and does not require temper rolling when painting. An overall weight percentage range of the constituent, boride, carbide, or aluminide, based on the alloy bath is believed to be between about 0.0005 and 3.5%.”

  17. Thus for novelty purposes I shall be looking for a disclosure which includes all the features set out in claim 1 wherein the aluminium-zinc alloy refers to a 55% Al-Zn alloy (GALVALUME) and the term “effective amount” is to be read in light of the description bridging pages 5 and 6. I will now address the documents raised by the opponent for the purpose of lack of novelty by prior publication. 

    AU-B-18604/83 (annexure QL-2, document 15)

  18. The opponent stated that this document was open to public inspection on 29 March 1984 and that claims 1 to 4, 5, 8 to 10, 13, 14 to 16, 19 and 20 and 21 to 23 are thereby anticipated.

  19. The applicant challenged the opponent’s assertions regarding lack of novelty stating the following:

    ·    This patent (AU-B-18604/83) is directed to the problem of painting a coating that is very different to the coatings referred to in the opposed patent application. In his first report (page 8), Mr. Salon said “GALVALUME contrasts to the case of coatings made from relatively pure zinc. Depending on manufacturing conditions, relatively pure zinc coatings can have quite large spangles and they may not be “flat” as mentioned above for the GALVALUME coating.” See also first report, page 5, paragraph (iv), where Mr Salon says that such a coating resembles neither zinc metal nor aluminium metal. In his third report (page 12), Mr Salon acknowledges that “it is true that the two coatings are very different in some respects.”

    ·    Mr McDevitt discusses this patent application at paragraph 30. He also notes that this patent relates to a completely different coating (called GALFAN), being predominantly zinc (see page 2, lines 14 to 18).

    ·    Importantly Mr Salon acknowledges that spangle relief is a particular problem with zinc coatings. As Mr Salon states in his second report at page 8, paragraph (e) (iv): spangle boundary “depressions” or “grooving” is a common problem in GALFAN (the zinc coating).

    ·    The opposed patent application is not concerned with such zinc coatings. In the context of the opposed patent application, it is clear that the reference to aluminium-zinc alloy in the claims is a reference to the GALVALUME-type materials (55% aluminium): see, for example, page 1, page 8 and page 10. Mr Salon clearly recognises this.

    ·    Although this patent does refer to spangle size, this highlights the fact that although the idea of reducing spangle size in zinc coatings was discussed at John Lysaght, it was not thought that this was desirable in relation to 55% Al-Zn alloys. Indeed, the spangle crash of 1984 was seen as a serious problem. Further, the patent does not recognise that addition of TiB2 might achieve benefits in terms of tension bend rust staining.

    ·    This patent does not teach the use of TiB2 in 55% Al-Zn alloys. Thus, this patent does not anticipate the opposed patent application. 

  1. The document in question discloses a ferrous strand coating composition consisting of from 3 to 10% by weight of aluminium, from 0.00257 to 0.064% by weight of titanium boride, and the remainder zinc. The opposed patent application discloses, “…bath comprises about 55% aluminium, a level of silicon, generally about 1.6% by weight, and the balance zinc.” Titanium diboride presence is disclosed as ranging between 0.007 to 3.5 weight% of particle in the melt. Though the percentage composition of the coating is not specifically set out in the claims of the opposed application, applying the rules of construction reveals that the composition disclosed lies outside the scope of the claims of the citation. Comparing the disclosure of the citation with the opposed application we find a fundamental difference in the aluminium-zinc alloy being claimed. There is some overlap in the weight percentage of titanium diboride (0.007 to 0.064%).  However applying the basic test for anticipation we find that the anticipation does not disclose all the features of the opposed invention. To begin with the alloy composition is different and some of the requirements arising out of the use of an effective amount of the particulate compound, such as crack size, and non-requirement of temper rolling when painting, have not been disclosed. I find that claim 1 of the opposed application has not been shown to lack novelty in light of the disclosure of the citation. Consequently I find that claims 1 to 4, 5, 8 to 10, 13, 14 to 16, 19 and 20 and 21 to 23 of the opposed application do not lack novelty in light of AU-B-18604/83.

    Mercer et al (annexure B, Tab 9, David J Willis declaration)

  2. The opponent submitted that claims 1 to 4, 8 to 10, 14 to 16, and 21 to 23 are anticipated in light of the following paper:

    “Some applications of electron microscopy in the sheet metal industry” Mercer et al: Willis “B” Tab 9 (publication at:- ANSTO 8 September 1986, La Trobe university Library 3 June 1992)

  3. The applicant put forward the following counter arguments:

    ·First, the authors (of the paper) did not prove that the particle was TiB2

    ·Secondly, it was present in negligible quantities in the aluminium stock.

    ·Thirdly, there is nothing to suggest that addition of TiB2 (let alone 2 ppm) would achieve the advantages of the invention. The authors do not suggest that this was at all desirable – it is simply an analysis of a particular coating.

    ·The authors of the Mercer paper did not recognise the potential advantages. They do not give “clear and unmistakable directions” to produce the invention.

  4. The Mercer paper clearly discloses analysis of a 55% Al-Zn coating and this is not disputed by the applicant. The paper refers to the discovery of a particle and an auger analysis showing that the analysis was consistent with the particle being a titanium/vanadium boride, a known grain refiner. The typical particle size was determined as being 2 microns and the presence was calculated at 2 ppm. In the opposed specification we have a 55% Al-Zn coating where an effective amount of one or more of a compound particulate constituent has been added. The description refers to a particle size range of 0.01 to 25 microns and particle weight percentages of 0.0025 to 5. I find that there is disclosure of the presence of titanium boride (2 microns) in the coating within the size range of 0.01 to 25 microns. In terms of presence of the particle in ppm the opposed specification discloses

    a range of 25 to 50,000 ppm. The Mercer paper discloses the presence of titanium/vanadium boride in the 55% Al-Zn coating with the boride being traced to aluminium stock. There is no teaching that the borides must be added to the coating bath (or via a master alloy of aluminium and particulate compound) and neither is there any indication that the amount to be added must fall within the effective amount of 25 to 50,000 ppm. I find that the Mercer paper has not shown the invention of opposed application, as defined in claims 1 to 4, 8 to 10, 14 to 16, and 21 to 2 to be lacking in novelty.

    InterZAC 86 conference paper (annexure KE-6, Kathy Engel declaration)

  5. The opponent submitted that claims 1 to 4, 8 to 10, 14 to 16, and 21 to 23 are anticipated in light of the following paper:

    “Spangle Size Control” Mercer at the InterZAC 86 conference: Engel “KE6”

    The opponent also stated that:

    ·The paper was distributed to all licensees of BIEC International Inc. and attendees at the InterZAC 86 conference. It was also supplied to any new member of ZAC which joined after 1992.

    ·Although originally disclosed subject to confidentiality, that obligation was subject to a “sunset clause” embodied in the contract between ZAC members to the effect that the obligation was removed on the expiration of ten years from the time of disclosure (unless earlier removed). Thus, after 31 January 1996 (at the latest) the information disclosed in this paper had been communicated to the public without fetter of confidentiality.

  6. The applicant disputed the assertion that the InterZAC 86 paper was published. They stated that the paper in question was clearly marked confidential and was only available to licensees of BIEC International Inc. There was nothing to indicate that the licensees were free to practice the teachings of the paper as they saw fit and further there was no evidence to show that the disclosure was open to access by any member of the public to do with as they saw fit. They also stated that the opposed invention was not disclosed by the paper as the effective amounts of the particulate constituents had not been disclosed and nor had there been any disclosure of the benefits of adding particulate constituents to the 55% Al-Zn coating.

  7. I have no clear evidence before me that the document in question was available to a member of the public, other than the licensees of BIEC, who could freely use the disclosures therein. Even if I do assume such a paper was available to the public I do not find that the paper has disclosed the opposed invention. This paper has made disclosures similar to those of the Mercer et al paper. There is nothing to indicate that the particulate constituents could be present in the quantities outlined in the opposed application (25 to 50,000 ppm). There is disclosure of the possible presence of titanium/vanadium boride particles of 2 micron size. However there is no teaching that these particles should be added to the 55% Al-Zn coating either directly or via a master alloy of aluminium and particulate compound. The citation indicates that the particulate constituent is present in the aluminium (as a grain refiner for aluminium) prior to being added to the coating. I find that the InterZAC 86 conference paper does not render claims 1 to 4, 8 to 10, 14 to 16, and 21 to 23 of the opposed application as lacking in novelty.

    Novelty- Prior Use

  8. The opponent submitted that claims 1 to 4, 8 to 10, 13, 14 to 16, 19 and 20 and 21 to 23 are anticipated in light of prior use of the opposed invention constituted by the commercial sale of product produced by the opponent at the time of the 1984 “spangle crash”. The opponent further stated that, “The available contemporaneous records allow a conservative calculation to be made that the material with a spangle facet size in the range of <0.3mm to 0.63mm was supplied to the public in substantial quantities (see Salon “J” pp 2-6), including in a form which would allow it to be investigated.”

  9. The applicant submitted that adequate proof was essential where prior use was relied upon. The applicant quoted from several court and office decisions setting out the factors which help to establish prior use:

    ·In order to be invalidating under the Patents Act, prior use must be “informative” in the sense that the necessary information (disclosing all the essential features of the invention) is “made available to the public”: see Hope v Heggies BulkHaul Ltd (1996) 34 IPR 584.

    ·“However the opponent has not shown that the information regarding the formulation was freely available to the public.” (R&C Products Pty Ltd v The Clorox Company [1999] APO 51

    ·“…the use relied upon must be a use in public which discloses to a person skilled in the relevant art all the essential features or integers of the invention the subject of the challenged patent. The information must enable the notional skilled addressee at once to perceive and understand, and be able to practically apply the discovery, without the necessity of making further experiments.” (von Doussa J, Old Digger Pty Ltd v Azuko Pty Ltd (2000) 51 IPR 43 at [152]

    The applicant then continued stating that:-

    ·“…in the present case, there was no informative prior use since there is no evidence that the public was provided with the information provided in the patent application – that is, that the steel contained TiB2, let alone that this was a desirable thing to do.”

    ·“In addition, it is noted that Mr Willis accepts (pages 6-7) that it was not “scientifically proved” that the spangle crash was due to TiB2 contamination, although it was the most probable explanation.

    ·The third report of Mr Salon does not take the matter any further. He was provided with and asked to comment on certain documents relating to the “spangle crash” at Port Kembla in 1984. First, there is no evidence that these documents were publicly available. To the contrary, the nature of the documents indicates that they were internal. Secondly, there is nothing in the Ti or B values in the documents that would lead one to expect that there is a significant difference in spangle size due to the use of one supplier over the other (McDevitt, para 24). Thirdly, in any event, these documents do not teach or suggest the invention, namely, that the use of particular additives (and a decreased spangle size) was desirable and conferred beneficial properties on coated steel. Mr Salon’s report (Annexure G to the third declaration) refers to the fact that the “spangle crash” was not acceptable.

    ·Finally, it is noted that in Mr Salon’s third report (page 7), he acknowledges that, to the extent that the claim refers to the addition of a particular constituent to a master alloy and then adding that to an aluminium zinc coating bath, it may be novel.

  10. The opponent has raised prior use of the opposed invention as constituted by the commercial sale of product produced by the opponent at the time of the 1984 “spangle crash”. The issue is therefore whether this activity constituted a disclosure which rendered the opposed application as lacking in novelty. The opponent’s declarant Mr Salon has provided information regarding production of coated steel sheet with a 55% Al-Zn coating by BHP Steel (now BlueScope Steel). He indicates that the coated steel sheet was referred to as GALVALUME worldwide, but was manufactured in Australia using the trade name of ZINCALUME. Mr Salon indicates there were two instances during the 1980s when commercial quantities of ZINCALUME with much smaller (microscopic) spangles were accidentally manufactured. Mr Salon provides an explanation of what a spangle is and how it grows in the coating applied to the steel sheet. He states:

    ·    When metals are “cast” (caused to solidify), they form grains by a process of nucleation and growth. Depending on numerous conditions, these grains may grow to be of various sizes.

    ·    The solidification of a hot dipped metal or alloy coating is really a specific and rather unique process of casting. The resulting cast coating is very thinly spread on the steel substrate (typically 20 micrometres thick): therefore the opportunity for the grain to grow in the direction perpendicular to the substrate surface is very constrained, but the opportunity to grow parallel to the surface is quite unconstrained. Accordingly, hot dipped metal coating grains on steel strip can be much, much wider and longer than they are deep. The solidified grains of such a coating are often visible to the naked eye.

    ·    Grains in hot dipped coatings are usually referred to as “spangles”. Sometimes, individual spangles have identifiable “facets” which highlight the atomic structure of the spangle. Sometimes the terms “facet” and “spangle” are used interchangeably.

  11. Mr Salon also stated that when commercial quantities of ZINCALUME with much smaller (microscopic) spangles were accidentally manufactured most of the affected material was coil coated and converted to COLORBOND where the spangle facet size is basically invisible.  He also stated that some spangle free product would have been sold without painting, and (to his recollection) without any customer complaint. I have to determine if the purchase and subsequent possession of spangle free ZINCALUME product by a member of the public constituted a prior publication of the opposed invention. Further there is the issue of possible accidental use of the invention. In Monsanto Co (Brignac’s) Application [1971] RPC 153 the court taught:-

    “It is clear that accidental, experimental or deminimus use will not deprive an invention of novelty. Where experimental use produces a product which is rejected as useless before its true potential is revealed that experimental use may not constitute a prior use of the invention.”

  12. The opponent has not shown that the spangle free coated sheets taught the public skilled addressee the invention claimed in the opposed application. There is nothing to indicate that either the opponent or any member of the public practised the invention. In particular the quantity of particulate substance to be added was not disclosed in the product sold as being in the range of 25 to 50,000 ppm. Also no indication was given that the particulate substance was to be added to the aluminium-zinc alloy and not to the aluminium. At no stage did the opponent disclose features of the product, arising out of the use of an effective amount of the particulate compound, such as crack size, and non-requirement of temper rolling when painting. I have no evidence before me that a skilled addressee when in possession of spangle free product sold by the opponent would at once perceive and understand, and be able to practically apply the discovery, without the necessity of making further experiments. I find that the invention defined in claims 1 to 4, 8 to 10, 13, 14 to 16, 19 and 20 and 21 to 23 are not anticipated in light of prior use of the opposed invention constituted by the manufacture and commercial sale of product produced by the opponent at the time of the 1984 “spangle crash”.

    Inventive Step

  13. The opponent submitted that:

    ·Claims 1 to 4, 8 to 10, 13, 14 to 16 and 21 to 23 would have been obvious to a person skilled in the relevant art in light of common general knowledge as it existed in Australia before the priority date;

    ·Claim 5, similarly, would have been obvious, the use of master alloy baths being commonly known in the metals coating industry for many decades;

    ·Claims 19 and 20, similarly, would have been obvious, because all that is involved is the trivial step of painting.

    The opponent also provided submissions on who constituted the skilled addressee, the common general knowledge and referred to the following prior art information,

    ·AU-B-18064/83

    ·The Cho paper: “KE9”.

    ·US patent no. 5,571,566 (Cho)

    which could be combined with common general knowledge on an individual basis to render the opposed invention obvious.

  14. The applicant challenged the submissions of the opponent and I shall address all relevant matters in my consideration of inventive step. 

  15. 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.

    Aickin J set out the following test for obviousness in Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 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 this test in light of Subsections 7(2) and 7(3) of the Patents Act 1990, would require:

    ·a determination of the problem sought to be solved by the opposed patent specification

    ·a determination of the non-inventive worker in the field (or the person of ordinary skill in the relevant art) in Australia

    ·a determination of the common general knowledge in Australia at the priority date (7 October 1999)

  16. The opponent stated that the relevant question setting out the problem would read as:

    “In seeking to minimise spangle facet size in an Al-Zn coating for a steel product as at 7 October 1999, would the persons skilled in the art in Australia have taken as a matter of routine the step of adding a particulate compound, such as TiB2 to the Al-Zn alloy?”

    The opponent declared that the answer to the question would be “yes” in light of the knowledge gained by the opponent through the 1984 “spangle crash” and subsequent research by the opponent involving the addition of TiB2 to Al-Zn coatings.

  17. The applicant submitted that the opponent did not recognise that reduced spangle size would solve the problem of tension bend rust staining. Further the applicant noted that Mr Willis recognised the problem but did not come up with the solution and that the patent of Salon and Willis in EM-4 showed they came up with a different solution. The applicant also indicated that the question to be asked was not whether it was obvious how to reduce spangle facet size, but whether by reducing spangle facet size you would improve the properties of Al-Zn coated steel. This was not obvious to the opponent’s declarants.

  18. In order to determine the problem that the invention sought to solve I shall have regard to the specification. The specification outlines the disadvantages of the prior art at page 3, line 4 onwards, where it states:

    “Notwithstanding the improvements suggested by Cho, presently used coated steel product still have (sic) disadvantages. One disadvantage is that, when the coated steel product is to be painted, a temper rolling is required to flatten the product in preparation for painting. Another problem is cracking when the product is a sheet and is bent. When this sheet product is bent, the coating can crack, the crack exposing the steel to the environment and premature corrosion. With presently available coated steel sheets, large cracks can form, thereby compromising the corrosion resistance of the sheet product.”

    The specification (page 3, line 12 onwards) then identifies the problem to be solved and the proposed solution as:

    “In light of the deficiencies of the prior art, a need has developed to provide an aluminum-zinc coated steel product with improved bending performance, reduced spangle facet size, and improved painted surface appearance. The present invention solves this need by providing a method of coating a steel product, a coating composition and a coated steel article which, when experiencing surface cracking during bending, is still corrosion resistant and does not require temper rolling when the coated steel product is painted. The coating composition is modified with one or more particulate compound constituents such as titanium boride, aluminum boride and the like."

    Thus the problem of the prior art identified in the opposed specification does not relate solely to minimising spangle facet size but also to overcoming the defects of (a) the coated sheet needing temper rolling prior to painting and (b) corrosion due to surface cracking when the coated sheet is bent.

  1. The hypothetical non-inventive skilled worker in the field would be a metallurgist/engineer or materials scientist working in the field of manufacture/application of Al-Zn coatings for sheet metal.

  2. The common general knowledge (henceforth referred to as cgk) 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."

  3. In order to determine the cgk in Australia I shall have regard to the submissions of the various declarants in this matter.  I shall also have to consider their experience in the relevant art in Australia and whether that would provide them with the relevant cgk. The applicant made the following statement regarding the opponent’s declarants:

    “ISG accepts that each of these declarants has relevant knowledge and is a person able to give evidence in relation to the proposed application. However none of these witnesses can be considered independent. There is also evidence from one independent witness Mr Philip Austen, who is employed by Comalco.”

    The applicant also stated that their declarant Mr Gibson was an independent witness. The opponent was of the view that all their declarants who currently worked for or had previously worked for BlueScope steel were skilled addressees who possessed the relevant common general knowledge.

  4. I shall now assess the submissions of the various declarants to determine what constituted the relevant cgk in Australia at the relevant date. Most of the opponent’s declarants referred to patent specifications, published papers and confidential documents as setting out the cgk in Australia. The applicant did not accept that material from these documents had been proven as forming part of the cgk. I shall address these three groups of documents on an individual basis for determining cgk in Australia.

    Patent Specifications

  5. I shall apply the tests set out by the courts to determine if the patents cited form part of the common general knowledge in the art.  The Courts (see General Tire & Rubber Company v Firestone Tyre and Rubber Company Ltd (1972) RPC 457 at page 482) have stated that in general:

    "... it is clear that individual patent specifications and their contents do not normally form part of the relevant common general knowledge  ..."

    However, as was stated in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at page 294:

    "There may be some fields of endeavour in which those who work therein study and make themselves familiar with all patent specifications as they become available for inspection in one or in many countries so that what was contained therein becomes common general knowledge in that particular trade or field of manufacture in the country in question.”

    Examples are provided by Vidal Dyes Syndicate Ltd v Levinstein Ltd. (1912) 29 RPC 245 at pages 279-280 and British Celanese Ltd v Courtaulds Ltd. (1933) 50 RPC 259 at page 280. Thus where multiple specifications refer to a piece of knowledge, this may be indicative of that knowledge being common general knowledge, especially when the applications are by different applicants.

  6. The patents cited are US 5571566, AU-B-18604/83 and AU-B-83288/82. The US patent discloses an alloy coating composition (weight percentages) that is Al 55%, Zn 43.4%, Si 1.6% and Ti 0.0001-0.5%. AU-B-18604/83 discloses an alloy coating composition (weight percentages) that is Al 3-10%, TiB2 0.00257-0.64% and the rest Zn. AU-B-83288/82 discloses an alloy coating composition (weight percentages) that is Al 25.0% to 70.0%, Si 0.05 to 5.0%, Ti or B either singly, or two together in any proportions to the other 0.005% to 2.0% and Zn remainder to 100%.

    Thus I do not find any common teaching or disclosure that is clearly and consistently disclosed across the three patent specifications. Though some of the components of the coating compositions are common across the patents, the coating compositions disclosed are not the same. Thus the patents referred to by the declarants have not established any cgk in the relevant art.

    Published Papers

  7. Several published papers have been cited by the opponent, who claims that the use of grain refiners for reducing spangle size in aluminium alloys, castings and metal coating compositions is taught therein and hence this teaching forms part of the cgk in Australia. I have reviewed the papers referred to and have found that the disclosures variously refer to the use of grain refiners such as Titanium, Boron, Niobium, Zirconium, Molybdenum, Cobalt, Carbon, Tungsten, Chromium, Vanadium, Titanium Boride, Titanium Carbide, Vanadium Boride for cast aluminium alloys/products (my emphasis). There is no disclosure of the addition of the specified boride, aluminide and carbide compounds to a 55% Al-Zn coating composition (or to a master alloy bath of aluminium for subsequent addition to an aluminium-zinc coating bath) in the specific amounts disclosed in the opposed patent specification. The opponent contends that since the spangle size reduction was known with regard to the use of grain refiners in cast aluminium the skilled addressee would apply the teaching to aluminium alloy coating products. The issue is if such a teaching were applied would it overcome the problems of (a) the coated sheet needing temper rolling prior to painting and (b) corrosion due to surface cracking when the coated sheet is bent. Further the teaching does not establish the quantities of particulate compound specified in the opposed specification necessary to overcome the problems it set out to solve. If as the opponent states this was so obvious the question arises as to why this teaching was not applied to the ZINCALUME product produced by the opponent even after they suspected that the “spangle crash” they witnessed occurred as result of addition of grain refiner via aluminium metal. In fact the evidence provided by the opponent shows that the opponent pursued a course of action to ensure that addition of such a grain refiner did not recur in their 55% Al-Zn coating. This is clearly a case of hindsight and the courts have cautioned strongly against the use of hindsight in establishing obviousness (see Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Limited (1980) 144 CLR 253 at page 293). Thus the common teaching of these papers, that is, the use of grain refiners to reduce spangle size in cast aluminium alloys/products, does not teach towards the opposed invention but teaches away from the opposed invention. Thus the common general knowledge of the published documents does not render the opposed invention as lacking in novelty.

    Confidential Papers

  8. These papers are those directly produced by the opponent (or its predecessors) and through the licensors association (ZAC, PacZAC, InterZAC, etc.) of the GALVALUME/ZINCALUME technology. As such these documents are not available to the general public and no evidence has been provided to establish that these documents were at any stage made available to the public. One document was published at the LaTrobe University Library and at the ANSTO Library and I have assessed this document under the heading of “Published Papers”. Even if I were to assume that these documents were published, I have not found any disclosures therein which practised the opposed invention or suggested or taught towards the use of grain refiners defined in the opposed invention in a 55% Al-Zn coating composition. The papers disclose that the opponent when provided with some strong suspicions of the presence of grain refiners in their ZINCALUME coating, strove vigorously to ensure that aluminium they used in the coating did not contain the suspected grain refiners. They also informed their aluminium suppliers of the same and clearly indicated that any aluminium supplied to them should not contain any grain refiner. Thus there is clearly no strong teaching towards the usage of grain refiners in the quantities specified in 55% Al-Zn coatings of the opposed application. I find that the disclosures of the confidential papers disclose common knowledge which teaches away from the opposed invention.

  9. Most of the opponent’s declarants indicated that the invention would have been obvious to them in light of the teaching of prior art published patents and documents and also confidential papers of ZAC. I note that they have defined the problem as one of spangle size reduction rather than one of size reduction in conjunction with overcoming the problems of (a) the coated sheet needing temper rolling prior to painting and (b) corrosion due to surface cracking when the coated sheet is bent. Thus they simplified the problem to be solved and consequentially the cgk they have provided is inadequate to deal with the actual problem at hand. The prior art does not indicate if the opposed grain refiners are suitable for addition to a 55% Al-Zn coating and it does not specify the relevant quantities in which it may be added to overcome the defects of the prior art. Further, if as the opponent’s declarants state that it would have been obvious to add grain refiners to a 55%Al-Zn coating the question arises as to why this was not done by the opponent when filing their AU-B-18604/83 patent application. Also the Cho patent US 5571566 only refers to the addition of titanium to the 55% Al-Zn alloy coating bath. Also the Cho paper referred to (exhibit KE-9) does not disclose or teach towards the addition of the opposed grain refiners to a 55% Al-Zn coating bath. Thus I do not find that the invention would have been obvious to the skilled addressee in light of the cgk available at the priority date of the opposed application.

  10. I shall now assess if the opposed invention would have been rendered obvious in light of the cgk when combined with the following documents on an individual basis. Before proceeding with the assessment I have to determine if the cited documents 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. I consider that AU-B-18604/83 and US 5,571,566 which relate to Al-Zn alloy coatings would have received due consideration by the skilled addressee. Regarding the Cho paper (exhibit KE-9) there is no evidence to show that this document was publicly available before the relevant priority date. Hence this document could not have been ascertained by the skilled addressee at the relevant date. I shall now assess AU-B-18604/83 and US 5,571,566 for the purposes of inventive step.

    AU-B-18604/83 (annexure QL-2, document 15)

  11. I had assessed this document for the purposes of novelty and found that it did not disclose the opposed invention. The cgk referred to by the opponent’s declarants relates to the addition of grain refiners to aluminium alloys/castings. There is no teaching of addition of grain refiners to aluminium-zinc coating alloys. The document discloses a ferrous strand coating composition consisting in from 3 to 10% by weight of aluminium, from 0.00257 to 0.064% by weight of titanium boride, and the remainder zinc. The problem facing the skilled addressee is to minimise spangle facet size and to overcome the defects of (a) the coated sheet needing temper rolling prior to painting and (b) corrosion due to surface cracking when the coated sheet is bent. The document refers to a result wherein a smoother surface is obtained and consequently smoother appearance when a paint coating is applied. Combining the teaching of this document with the cgk (which refers to the use of grain refiners in aluminium alloys/castings) there is no indication of why the skilled addressee would be persuaded to change the titanium boride content to between 0.007 to 3.5 weight% of particle in the melt and apply it to a 55% Al-Zn alloy coating. There is no teaching in the cgk or prior art suggesting that use of titanium boride in a 55% Al-Zn alloy coating would overcome the defects of  (a) the coated sheet needing temper rolling prior to painting and (b) corrosion due to surface cracking when the coated sheet is bent. I find that the combination of the teaching of AU-B-18604/83 when combined with the cgk would not show the opposed invention as being obvious.

    US 5,571,566 (Willis, Annexure B, Tab 11)

  12. This document teaches the addition of titanium (0.0001 to 0.5% by weight) to a 55% Al-Zn coating alloy (for steel plate) with a view to reducing spangle size and improving corrosive resistance, durability and ease of handling of the coated steel product. The cgk teaches the addition of grain refiners to aluminium alloys/castings. Facing the problem of minimising spangle facet size and overcoming the defects of (a) the coated sheet needing temper rolling prior to painting and (b) corrosion due to surface cracking when the coated sheet is bent, I do not find any teaching which would persuade the skilled addressee to try the addition of titanium boride (between 0.007 to 3.5 weight%) in the melt of a 55% Al-Zn alloy. The document does not address the issues of temper rolling prior to painting nor does it talk of tension bend rust staining. There is no teaching which would persuade the skilled addressee to change the titanium addition to titanium boride. I find that the combination of the cgk with the teaching of US 5571566 does not render the opposed invention as obvious.

    Lack of Entitlement

  13. The opponent asserted that,

    “The effects of grain refiners such as TiB2 in Al-Zn coatings for steel had been disclosed at InterZAC conferences (and related PacZAC conferences) before the claimed priority date of the claims. Bethlehem Steel Corporation was a member of InterZAC at all relevant times and technical persons at Bethlehem Steel Corporation were in a position to avail themselves of these disclosures. The clear inference is that they did so. Indeed, having regard to the nature of the organisation as the prime distributor of technical information to members, it would be incredible to think that Bethlehem Steel Corporation did not do so, in the absence of some convincing explanation to the contrary.”  

  14. The applicant countered that:

    The statement of grounds and particulars had not raised the ground of obtaining and this was not in the pleading. If there was a serious allegation the applicant was entitled to see the evidence supporting that allegation. The statement of grounds and particulars at page 2, paragraph 1 makes an allegation of lack of entitlement based on a lack of novelty and lack of inventive step. There is no allegation of obtaining by Bethlehem Steel in that paragraph and no one has gone on oath to say that Bethlehem Steel obtained the invention from another source. Obtaining should have been pleaded in the statement of grounds and particulars and cannot be introduced at this late stage as a ground of opposition.

  15. I agree with the applicant that the ground of obtaining had not been raised in the statement of grounds and particulars. The onus is on the opponent to prove their case with supporting evidence (see Montecatini v. Eastman Kodak (1971) 45 ALJR 593, McGlashan v. Rabett 16 ALR 43 and Stamp v. Powell (1918) 24 CLR 339 wherein it was considered that the onus is on the opponent to show that the patent if granted would be clearly bad on the ground alleged). As a general rule the consideration of grounds not raised in the statement of grounds and particulars is not permissible. However I note that in this case it relates to the disclosures of confidential papers filed by the declarants. As I have already assessed this documentation, which was raised by the opponent for the purposes of inventive step, and the issue relates to disclosures of the opposed invention, I can address the issue promptly. The opponent has claimed that the opposed invention was obtained from material issued at Inter ZAC conferences (and related PacZAC conferences). The material referred to has been previously assessed for disclosure of the invention and common general knowledge under Inventive Step. The finding was that:

    “The papers disclose that the opponent when provided with some strong suspicions of the presence of grain refiners in their ZINCALUME coating, strove vigorously to ensure that aluminium they used in the coating did not contain the suspected grain refiners. They also informed their aluminium suppliers of the same and clearly indicated that any aluminium supplied to them should not contain any grain refiner. Thus there is clearly no strong teaching towards the usage of grain refiners in the quantities specified in 55% Al-Zn coatings of the opposed application.”  

  16. The opponent placed a strong reliance on a paper entitled “Research Progress on Zincalume Spangle Size” allegedly published at PacZAC ’99. The evidence provided shows the conference was held in October 1999 in Malaysia and even though Bethlehem Steel (ISG Technologies Inc’s predecessor) did not attend the paper would have been made available to them in mid-September 1999. Looking at the disclosure of the paper it studies possible causes of spangle size reduction in 55% Al-Zn coating. One of the causes is identified as grain refiners for aluminium and it identifies TiB2 and TiC as additives to aluminium which would result in spangle size reduction. The paper refers to them as contaminant particles in the melt and not as something which should be deliberately added for benefit. Further the paper clearly states that, “…there is no evidence that the fine spangles affect the corrosion performance of the product,”  There is no indication that there would be reduction in tension bend rust staining or that temper rolling prior to painting would not be required for Al-Zn coated steel sheet. Further the teaching is for addition of the particulate grain refiner to aluminium metal and not to the Al-Zn alloy. The document further teaches that reduced spangle size is not desirable for Al-Zn coated steel sheet. I conclude that the disclosure is teaching away from the opposed invention and would not persuade the skilled addressee to try the opposed invention. I find that the opposed invention has not been obtained from the disclosures of the Inter ZAC conferences (and related PacZAC conferences). The opponent has failed to establish lack of entitlement to a patent for the invention by the applicant on the basis of the confidential disclosures at ZAC conferences.

    Section 40/Lack of Clarity

  17. The opponent submitted that, “Claims 6, 7, 11, 12, 17 and 18 are unintelligible. They apparently require the weight of the particulate compound to be a fraction of one of its constituents”.

  18. The applicant countered that the claims were clear and that none of the declarants from either side had expressed any difficulty in understanding these claims. I shall examine claims 6 and 7 as the remaining claims are similar to either claim 6 or claim 7. The claims read as follows:

    6.The method of claim 1, wherein the particulate compound constituent is the carbide compound and the amount of the particulate compound constituent in the alloy bath ranges between about 0.0005 and about 0.01% by weight of carbon.

    7.The method of claim 1, wherein the particulate compound constituent is the boride compound and the amount of the particulate compound constituent in the alloy bath ranges between about 0.001 and about 0.5% by weight of boron.

    From the above claims it is apparent that the presence of the particulate compound (boride, carbide, aluminide) is defined in terms of only one member of the compound. For instance, if we considered titanium carbide the presence of this compound is defined in terms of the carbon content of the carbide compound. There is no indication that the skilled addressee would be unable to determine the percentage of the carbide compound given the percentage of carbon and the chemical formula of the compound in question. As noted by the applicant none of the declarants have expressed any difficulty with determining the scope of these claims. I find that claims 6, 7, 11, 12, 17 and 18 are clear and define the monopoly sought without any ambiguity or lack of clarity.

    CONCLUSION

  1. The opponent pursued grounds of novelty (prior publication and prior use), inventive step, lack of entitlement and section 40/lack of clarity. I had found that none of the claims were shown to be lacking novelty in light of the documents raised by the opponent. Further I found that the opponent was unable to establish lack of novelty via prior use. Based on the established common general knowledge either taken alone or when combined individually with a relevant document, I found that the claimed invention did not lack an inventive step. I found that the lack of entitlement had not been established. The claims raised by the opponent regarding lack of clarity were found to be clear and defined the monopoly sought without any ambiguity or lack of clarity. The opponent has been unsuccessful on all grounds.

  2. I direct that the application be sealed after twenty-eight (28) days from the date of this decision.  If the Commissioner of Patents is served with a notice of appeal from this decision before that time, I direct that sealing not occur until the appeal has been decided or discontinued.

    COSTS

  3. The applicant submitted that the onus was on the opponent to prove their case and that his had not been satisfied. Accordingly they submitted that the Hearing Officer ought to find in their favour and award them costs.

  4. The opponent submitted that in their opinion the opposition had been successful and that in such circumstances the applicant should pay the opponent’s costs.

  5. The power of the Commissioner to award costs is based on section 210 and regulation 22.8. The opponent has been unsuccessful on all grounds. Accordingly I award costs in accordance with Schedule 8, of the Patents Regulations 1991, against the opponent BlueScope Steel Limited and in favour of the applicant ISG Technologies Inc.

    Jacob Elijah
    Delegate of the Commissioner of Patents

    Patent attorneys for the applicant   :  Pizzeys, Brisbane

    Patent attorneys for the opponent   :  Griffith Hack, Sydney

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