James Hardie and Coy Pty Limited v Hardboards Australia Limited

[1984] APO 25

In the Matter of the Patents Act 1952

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In the Matter of Application No. 515151 for a Patent by JAMES HARDIE AND COY. PTY. LIMITED

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In the matter of Section 59 Opposition thereto by HARDBOARDS AUSTRALIA LIMITED.

DECISION OF A SUPERVISING EXAMINER:
        Patent Application 515151 entitled "Fibre Reinforced Cementitious Articles" was lodged on 21 July, 1980 and this date is also the priority date. Acceptance of the application was notified in the Official Journal dated 19 March, 1981.
        On 17 September, 1981 Hardboards Australia Limited lodged notice of opposition under section 59 after being granted an extension of time to do so.
        A request to amend the specification under section 77 was allowed and advertised in the Official Journal on 4 November, 1982.  This request was not opposed.  The service of evidence was completed on 28 November, 1983 and the matter was heard in Sydney on 10 October, 1984.  Mr. J.G. Siely, patent attorney of Arthur S. Cave represented the opponent and Mr. R.G. Shelston, patent attorney of Shelston Waters, represented the applicant.  Although the notice of opposition specified grounds (c) to (i) of sub‑section 59(1) the only grounds argued at the hearing were that the invention, so far as claimed, in any claim, was obvious, lacked novelty and had been anticipated and that the complete specification does not comply with the requirements of section 40.

The Specification
        The specification, as amended after allowance of the section 77 request states that the invention relates to articles, such as building boards and pipes, mainly composed of cement, silica and fibrous reinforcement material.  The articles according to the invention are particularly akin to those commonly said to be made of asbestos cement or "fibro".
        Whilst existing asbestos cement articles are effective, the asbestos fibre reinforcement material is open to the objection that it is expensive and also that it is a health risk.  Asbestos cement articles commonly include cellulose pulp, in part replacement for asbestos since cellulose is cheaper than asbestos; the proportion of cellulose is a little less or equal to the proportion of asbestos.
        The object of the invention is to provide articles which are similar in appearance to asbestos cement articles but which contain no asbestos, which are cheaper to produce than the corresponding asbestos cement articles but which have equal or better impact resistance and flexibility than those articles as well as acceptable rupture strength characteristics.  The articles of the invention contain the same or only a marginally greater proportion of cellulose as employed in the production of asbestos cement articles.
        The specification goes on to discuss the nature of the cellulose fibres.  This discussion reads as follows:

"Experiment has shown that cellulose pulp used, as heretofore, in the condition in which it is received from producers of that commodity, will not serve the purposes of this invention. For example, the individual fibres do not sufficiently take hold upon the cement/silica matrix in which they are eventually embedded.  This is particularly objectionable in the case of building boards and other articles which are laminated to required thickness by the building up of a film‑layer only about 0.3 to 0.5 of a millimetre thick.  In this latter case the cellulose fibres not only fail to give adequate re‑inforce‑

ment strength, they also fail to provide sufficient inter‑

lamina bond between the superimposed film‑like layers."

Therefore to serve the purposes of the invention, the cellulose fibres have to be fibrillated so that the morphology of the fibres is changed.
        Then follows a description of the invention in identical terms to those of claim 1.  Whilst almost invariably the article will consist wholly of cellulose, cement and silica it may include other non‑essential ingredients such as colouring agents, impurities, non‑essential and unimportant trace materials and extra fillers for cheapness or to provide some required property such as nail‑acceptability.
        The formation of flat boards and tubes from an aqueous slurry of a typical asbestos cement composition is then described.  Articles of the invention are produced in the same way as the asbestos cement articles except that the cellulose is given a pre‑treatment fibrillation before making up the aqueous slurry.
        Cellulose is marketed as a substantially dry wood or vegetable fibre pulp in the form of compressed flock or sheets of lap.  Before cellulose is incorporated in asbestos cement articles it has to be fragmented.  However the fragmented cellulose has to be treated further before it can be included in articles of the present invention.  This further treatment or fibrillation is described as follows:

"This fibrillation consists in so beating, hammering or bruising the fibres that they are shredded or longitudinally split or frayed into a multiplicity of fine strands each sprouting short hair‑like fibrils or tendrils which have been found to be effective in forming a good physical anchorage between the fibres and the cement/silica matrix in which they are to be included; thus giving optimum utilisation of the tensile strength of the fibres.

In practice it is found that the fibrillation step may be readily performed, as is desirable, without substantial diminution of the fibre lengths."

A preferred method of fibrillation is wet slushing in a hydrapulper which is commonly used in the paper making industry.  The slush is then fed into a disc type refiner wherein the mutual spacing between the discs can be adjusted to fibrillate the fibres without shortening their length.  The refining is continued until the required degree of fibrillation is reached.  To know when the required degree of fibrillation has been reached samples of the refiner output are tested from time‑to‑time.  The specification continues:

"As far as we are aware there is no standard test for the direct measurement of the overall degree of fibrillation cellulose fibres in a batch thereof, it so happens however that the degree of fibrillation is the inverse of the "freeness" of such a batch, and therefore the testing for fibre morphology change may be easily and effectively carried out in terms of freeness.

Testing for freeness is well known and may be defined as providing an arbitrary measure of the water drainage properties of a fibrous pulp stock."

The freeness is measured either on the Schopper‑Riegler scale or in the present case on the Canadian Standard Freeness scale (Csf), in which the scale ranges from 0 to 800.  In the present invention the cellulose pulp is fibrillated until its freeness values lie in the range 450 Csf to 600 Csf with the optimum value being towards the 450 Csf end of the range.  The objects of the invention are not sufficiently realised if the Csf value lies outside this range.  Preferred compositions are then described along with the cement to silica ratio of a typical composition.
        The claims read as follows:

"1.An asbestos‑free article comprising:

(a) from 6% to 12% by weight of cellulose fibres whereof at least a proportion of the individual fibres are uniformly or variously fibrillated to such a degree that the mass of said fibres, as a whole, has a freeness value of from 450 Csf to 600 Csf; with,

(b) cement and silica as remainder to 100%, in selected proportions of each to the other.

2.An article according to claim 1 wherein the proportion of cellulose fibres is 8%.

3.An article according to claim 1 or claim 2 wherein the proportions of the ingredients are:

Cellulose fibres ....................... 8%

Cement ................................. 46%

Silica ................................. 46%

4.An article according to claim 1 or claim 2 wherein the proportions of the ingredients are:

Cellulose fibres ....................... 8%

Cement ................................. 28%

Silica ................................. 64%

5.An asbestos‑free, fibre‑reinforced article composed substantially as herein described."

I note that the specification prior to the allowance of the request under section 77 described and claimed freeness values in the range of 350Csf to 600 Csf with an optimum value of 450 Csf.  Moreover the specification stated that outside this range of Csf values the objects of the invention were not totally achieved and adjacent the limits of the range those objects are satisfied only marginally.
        Claim 1 claims an asbestos‑free article which comprises from 6% to 12% cellulose fibres with cement and silica as remainder to 100% whereas the description makes it clear that the article can contain other components.  Moreover the description states that the article is produced from an aqueous slurry of the components.  Thus the article itself does not contain cement because cement reacts with water and cement can also react with the silica during curing.  Therefore claim 1 is not fairly based on the description of the invention.
        Claim 1 also claims that the cement and silica are in "selected proportions of each to the other".  The only proportions disclosed in the specification are the proportions of a typical composition and the proportions used in the preferred embodiments.  Thus the description is deficient because it does not fully describe the invention and claim 1 is not clear because the scope of the term "selected proportions" is inadequately defined in the specification.  Mr. Shelston conceded that the specification required amendment in all of the above matters.
Evidence
        The opponent's evidence in support of its opposition consists of a statutory declaration made by Dr. David Ronald Moorehead with annexures "A" to "H" and a statutory declaration made by Mr. Hector John Cumming.
        Dr. Moorehead states that he joined C.S.R. Limited in 1958 and since 1965 has been engaged in research related to the asbestos cement industry.  He considers that he is fully aware of the problems associated with the use of asbestos fibres and the desirability of developing products which are comparable in strength and appearance to asbestos cement products but which do not include asbestos fibres.  Dr. Moorehead then compares the invention as defined in the present claims with the disclosures of UK Patent Applications Nos. 2,012,831 and 2,012,832 and the disclosures in a paper entitled "Possibilities of Replacing Asbestos in Asbestos Cement Sheets by Cellulose Pulp" published in the Indian concrete Journal (annexures "A" to "C").
        He points out that in both UK applications the cellulose fibres have a freeness value of 30 to 70 Schopper‑Reigler which is equivalent to approximately 425 Csf to 100 Csf.  He also asserts that from his experience an asbestos‑free cement containing building board, in which the fibres have a freeness value of 425 Csf is similar in appearance to and has strength characteristics substantially equivalent to an asbestos‑free cement containing building board in which the fibres have a freeness value of 450 Csf.  With respect to the paper published in the Indian Concrete Journal ("C") he draws particular attention to figure 10.
        Dr. Moorehead deposes that the specification does not comply with the requirements of section 40.  He makes the following points:

(1)There is nothing of substance in the description to show that the objective of providing articles of equal or better strength characteristics to asbestos cement articles has been achieved.

(2)There is no comparative test data to establish that articles which include cellulose fibres with freeness values claimed in the amended claim 1 are superior to articles, the cellulose fibres of which have a freeness value outside the claimed range.

(3)There is no data in the specification to justify the choice of the claimed percentage by weight of cellulose fibres.

(4)The description is misleading and erroneous if it implies that changes in fibrillation are straightforwardly reflected in changes in the freeness values.  This objection is supported with a reference to annexure "D" (volume III of "Pulp and Paper Manufacture" by R.G. MacDonald and J.N. Franklin).

(5)The description does not support the myriad of possible proportions of cement and silica claimed in claim 1, a problem to which I have referred previously.

In concluding Dr. Moorehead refers to the May 1981 edition of "CSIRO Industrial Research News" (annexure "E") and some advertising material produced by the applicant concerning the products "Hardiflex II" and "Hardiplank II" (annexure "F").  He also refers to two reports produced by the Research and Development Department of the opponent (annexures "G" and "H") which provide data on the properties of "Hardiplank", "Hardiflex II" and "Hardiplank II".  The products described in annexures "E" to "H" are produced from similar components to those claimed in claim 1.  However there is no evidence that any of them are produced according to the present invention.  Accordingly I will not consider annexures "E" to "H" further.
        Mr. Cumming, a solicitor employed by Arthur S. Cave, attempts to establish the publication dates of "C" and "D" in his declaration.
        The applicant's evidence in answer consists of a statutory declaration made by Mr. Anthony Michael Cooke.  He states that he has been engaged in the cement and building materials industry for fourteen years and that he has been the applicant's Development Manager for cement based building products for the past year.  Mr. Cooke states that there is no evidence that Dr. Moorehead's annexures "A" to "D" have been published in Australia and he discusses the difference between them and the claimed invention.  He also points out that Dr. Moorehead has not produced tests to demonstrate that a board with fibres of freeness value of 425 Csf is substantially equivalent to a board with fibres of freeness value of 450 Csf.
        Mr. Cooke answers the first three of Dr. Moorehead's objections under section 40 by pointing out that none of the objections are based on the requirements of that section.  I agree with Mr. Cooke and will say no more about them.  Similarly I agree with Mr. Cooke's denial that the specification was erroneous and misleading and accept his argument that the specification does not imply that fibrillation is straightforwardly reflected in changes in freeness measurements.
        The opponent's evidence in reply consists of a statutory declaration made by Mr. Cumming with three annexures ("A1", "C1" and "D1"), another statutory declaration made by Dr. Moorehead and a statutory declaration made by Mr. David Charles Lawrie.
        In his second declaration Mr. Cumming states that both annexures "C" and "D" in Dr. Moorehead's declaration were available in Australia before the present priority date.  The annexure "C1" is a letter from the Research Librarian at the University of Sydney confirming that 23 March, 1976 was the date on which "C" was received by the library.  Annexure "D1" is a letter from the librarian of Australian Paper Manufactures Ltd. which states that the book bears a date stamp of 31 August, 1970.
        Annexure "A1" is a letter from the Patent Office which states that UK patent specifications Nos. 2,012,831 and 2,012,832 were available for public inspection on 12 December, 1979.
        Dr. Moorehead commences his second declaration by referring to the publication dates of "A", "B", "C" and "D" as derived from Mr. Cumming's second declaration.  He continues by replying in detail to Mr. Cooke's arguments concerning the relevance of citations "A", "B" and "C".  He also states that he did not need experiments to show the substantial equivalence of boards containing fibres with freeness values of 425 Csf and 450 Csf because this was already known to him.  He also points out that experimental work in respect of comparative Csf values has been reported in annexure "C".
        Mr. Lawrie is the production superintendent of asbestos cement at Goliath Portland Cement Company Ltd. and he has had 19 years' experience in the cement and building materials industry.  He states that he was familiar with annexure "C" long before 1980 and he then discusses what this citation discloses.  In particular he points out that silica is a standard ingredient which is used in an article when it is rapidly cured.  He also regards a Csf value of 450 as substantially equivalent to a Csf value of 425.  He also agrees with the statement in Dr. Moorehead's declaration in reply that experimentation in respect of comparative Csf values was not necessary because the results of such experiments are described in annexure "C".
Section 40
        I have previously mentioned particular problems that I found whilst interpreting the specification which result in the specification not complying with section 40.
        Mr. Siely argued that the cellulose fibres used in the article claimed in claim 1 had not been adequately defined in the specification in view of the fact that the properties of cellulose fibres (e.g. fibre length and strength) varied with the source of the fibre and its prior treatment.  Mr.Shelston replied that the source and prior treatment of the cellulose fibres were irrelevant because the fibres were precisely and succinctly defined with reference to an international standard of freeness.  He continued that the invention lay in the use of these cellulose fibres in an otherwise conventional process.  I agree with Mr. Shelston's submissions.
        Mr. Siely then argued that the description did not support claim 1 because there was no disclosure that "a proportion of the individual fibres are uniformly ... fibrillated" and he directed my attention to the relevant part of the description.  He submitted that it would be impossible to produce a mass of fibres in which each fibre was uniformly fibrillated because each starting fibre is differently fibrillated.  Mr. Siely also referred to two cases wherein claims were found to be not fairly based on the description because the claims included matter which was not described or exemplified (Hercules Powder Company v. Montecatini Societa Generale Per L'Industria Mineraria & Chimica (1962) 32 AOJP 2901 and Proctor and Gamble Co. v. Colgate‑Palmolive Co. (1964) 34 AOJP 1041).  Mr. Shelston suggested that the applicant would be prepared to amend claim 1, if necessary, to remove the phrase to which Mr. Siely objected.
        The description referred to by Mr. Siely reads as follows:

"We have found that to serve the purposes of the invention, the cellulose fibres have to be fibrillated so that the morphology of the fibres is changed.  This is not to say that all the cellulose fibres in a batch thereof have to be fibrillated.  Some of them may not be fibrillated at all; others may be slightly fibrillated and others much more; the necessity being, we have discovered, that in the whole mass of cellulose fibres in a batch of starting composition, the overall degree of fibrillation to prevail within the batch as a whole should reach a certain value as hereinafter set forth."

In my opinion this description does not describe uniform fibrillation neither does the remainder of the description exemplify it.  Therefore I agree with Mr. Siely that claim 1 is not fairly based on the description.
        Mr. Siely continued by relying on the objections raised by Dr. Moorehead under this heading but I have previously stated that I would not consider these objections further.
Obviousness
Mr. Siely submitted that the invention defined by the present claims was obvious in the light of annexures "A", "B" and "C" to Dr. Moorehead's declaration. Mr. Shelston in response drew my attention to the law set out in Minnesota Mining and Manufacturing Co. and 3M Australia Pty. Ltd. v. Bieirsdorf Ltd. 29 ALR 29 at pages 57 and 58; i.e. that evidence in support of the objection of obviousness has to come from common general knowledge in the art in Australia. He pointed out that there was no evidence that any of the citations formed part of the common general knowledge.

        I agree entirely with Mr. Shelston's submissions on this matter.  I should also point out that only Mr. Lawrie deposed to having read any of the citations before the present priority date.
Anticipation
        Mr. Siely made submissions under this heading only with respect to novelty and I agree that none of the citations prior publish the invention defined by the present claims.
        Mr. Siely's argument was that United Kingdom specifications Nos. 2,012,831 and 2,012,832 describe an asbestos free building board containing 3 to 30% cellulose fibres with a Schopper‑Riegler freeness value of 30 to 70o, which is nearly equivalent to the freeness values claimed in claim 1.  Moreover he pointed out that prior to the allowance of the section 77 request the present specification described and claimed cellulose fibres with freeness values which overlapped those described in the citations.  Mr.Siely then submitted that the amendment of 350 Csf to 450 Csf was an arbitary limitation of the range of freeness values which were described and claimed in the accepted specification and he submitted that the amendment was of little significance.  He also suggested that annexure "D" to Dr. Moorehead's declaration taught that freeness values could not be determined with precision. He interpreted the present description as leading away from the idea that it was essential to accurately measure the freeness values.  Moreover he pointed out that in the opinion of Dr. Moorehead and Mr. Lawrie a freeness value of 425 Csf is substantially equivalent to a freeness value of 450 Csf.
        Mr. Shelston replied by arguing that the specification under consider‑ ation was the amended specification because the request under section 77 had been allowed without the opponent raising objections.  He considered the invention lay in the selection of the particular freeness values claimed in claim 1.
        Mr. Shelston submitted that UK patent application No. 2,012,831 discloses asbestos free building boards which contain cellulose but which require other reinforcement fibres to give the board sufficient strength.  He also said that a similar interpretation could be applied to UK patent application No. 2,012,832 because this application had been lodged by the same applicant at the same time.
        I agree that the specification which I have to consider is the specification as amended.  The opponent had an opportunity to oppose the allow‑
ability of these amendments but chose not to do so.  Therefore it has to accept the fact that the scope of the description and claims has been narrowed during the course of this opposition.
        In my opinion annexure "D" does not state that freeness values cannot be measured accurately but rather it points to the factors (e.g. temperature and presence of ions) which affect the measurement of freeness values.  The description in the specification which Mr. Siely relied on with respect to measurement of freeness values reads as follows:

"To know when the required degree of fibrillation has been reached, a sample of the refiner output is taken from time‑

to‑time and tested.  After a relatively short time of initial operation the number of slush recyclings, or the number of refiners required in a series thereof, will be easily determined and only occasional testing is then required."

This description is not concerned with the accuracy of measurement of freeness values, as suggested by Mr. Siely, but relates to how to determine when the required degree of fibrillation is reached.  Therefore there is nothing to support Mr. Siely's assertion that freeness values cannot be measured with precision.
        I now turn to the opinion that boards containing cellulose fibres with freeness values of 425 Csf and 450 Csf are substantially equivalent.
Dr. Moorehead and Mr. Lawrie relied on annexure "C" to support their view. However the disclosures of "C" cannot be read in combination with the disclosures of either of the UK patent applications unless "C" forms part of the common general knowledge. There is no evidence that "C" forms part of the common general knowledge. Dr. Moorehead and Mr. Lawrie have produced no other evidence to support the view of the substantial equivalence of 425 Csf and 450 Csf. Thus I will not take this opinion into account in my consideration of anticipation because it has been derived from a mosaic of the citations (Rose Holdings Pty. Ltd. v. Carlton Shuttlecocks Ltd. 98 CLR 444 at p.450).
        The specification of UK patent application No. 2,012,831 states that the invention relates to a raw board for an asbestos‑free cement based building board containing cellulose fibres and/or respectively waste paper as carrier fibres, cement as the bonding agent, reinforcement fibres and additives.  In the wet pulp from which the boards are made the carrier fibres keep the bonding agents and other additives evenly distributed.  If the boards are made by the take‑up method the carrier fibres must have a suitable density and maximal adherence to each other and the other constituents.  In this respect asbestos fibres are ideal carrier fibres.
        The specification continues that it is not possible to achieve a good strength for a completed building board if only a bonding agent and carrier fibres are used.  Good carrier capacity of the fibres in the wet pulp and good strength cannot be produced simultaneously.  Therefore in the take‑up method compromise fibres have been used which are good carriers but have an acceptable reinforcing effect.  Even in this respect asbestos has proven to be a most advantageous fibre.  Attempts to improve the strength of boards by including strong and heavy reinforcement fibres have not been successful due to the increased weight of the boards.
        According to the specification it is possible to use an increased proportion of inorganic reinforcement fibres to provide strong boards without increasing the weight of the board.  Thus by substituting cellulose fibres treated according to the invention for asbestos, the weight of the board is not increased because cellulose fibres have a lower density.  The reinforcement fibres can be made of metal or glass and can be added at several stages during the production process.  Experiments have shown that a board with very good properties is obtained if it contains 25‑95% cement, 3‑30% cellulose fibres ground according to the invention and 0.1‑5% heavy reinforcement fibres calculated on the dry weight of the board.
        There are four boards specifically described in the specification which all contain cement as the binder and the first contains asbestos as carrier fibre, the second contains cellulose fibres as carrier fibres but does not contain reinforcement fibres.  The other two contain cellulose fibres as carrier fibres and contain chromium steel or glass as reinforcement fibres.  The boards containing reinforcement fibres had reduced brittleness, the same or greater binding strength, greater elasticity and more or less unchanged weight compared to the boards without reinforcement fibre.
        Claim 1 from the specification reads as follows:

"1.A raw board to be manufactured by the take‑up method for an asbestos‑free, cement‑based building board, containing in its wet pulp cellulose fibers and/or respectively waste paper as carrier fibers, cement as the bonding agent, reinforcement fibers, and additives, characterized in that the cellulose fibers and/or waste paper are/is ground to a degree of 30‑70o SR (Schopper‑Riegler) before their batching into the other constituents of the wet pulp of the raw board, and that the raw board contains, calculated from the total weight of its dry matter:

cement25‑95%

treated cellulose fibers and/or respectively

waste paper   3‑30%

heavy metal reinforcement fibers, especially

steel fibers 0.1‑5%

additives such as perlite, vermiculite,

diatomite, quartz power and limestone powder       0‑50%

and, in addition, that amount of water required by the dry materials in order to form a raw board from wet pulp."

The specification of UK patent application No. 2,012,832 states that the invention relates to the production of asbestos‑free building board by the take‑up method.  This method of production sets rigid requirements on the constituents of the wet pulp from which the board is made.  The pulp must be homogeneous throughout the process and this is achieved by using carrier fibres which must be neither too heavy nor too light, must adhere to other similar fibres and must also have as great a reinforcing effect in the completed board as possible.  Asbestos fibre is an ideal carrier fibre.
        Cellulosic fibres have been used as substitutes for asbestos in the production of building boards by casting and compressing but cellulosic fibres have not been used in the take‑up method because of low adhesion.
        The specification continues that it has now been found that cellulosic fibres can have a carrier capacity equal to asbestos fibres provided the cellulosic fibres are beaten in a known mill to a degree of 30‑70oSR (Schopper‑Riegler).  The carrier effect of the cellulosic fibres can be fully regulated by this measurable quantity.  The invention is then described in identical terms to those of claim 1.  As in the known process, the wet pulp may contain, as necessary, additional inorganic or organic fibres and/or mineral additives.
        The reinforcement effect of the cellulosic fibres is less than that of asbestos fibres but because cellulosic fibres have a lower density it is possible to include in the wet pulp other fibres which have a reinforcement effect, without surpassing the maximum proportion of fibres compatible with optimal bonding.  The strength properties of a cellulose containing building board can be improved in comparison with an asbestos containing board because of the increased proportion of reinforcement fibres in the cellulosic board.
        Three examples illustrate the invention and contain 5 to 15% by weight of cellulosic fibres beaten to 50o Schopper‑Riegler, 95 to 85% Portland cement and none contains reinforcement fibres.
        The most relevant claims read as follows:

"1.A process for the production of an asbestos‑free build‑

ing board which comprises forming a wet pulp comprising, as carrier fibres, cellulosic fibres which have been beaten to a degree of 30‑70o Schopper‑Riegler, a hydraulic bonding agent, and water, the proportion of the cellulosic fibres being 3 to 30% of the total dry weight of the pulp, and then forming the said board from the said pulp by the take‑up method.

4.A process according to any of claims 1 to 3 in which the pulp also contains additional inorganic and/or organic fibres and/or mineral additives.

5.A process according to claim 4 in which the pulp contains one or more of diatomite, perlite, vermiculite, limestone powder, and quartz powder."

I agree with Mr. Shelston that the thrust of the invention described in No. 2,012,831 is away from the present invention because of the requirement for reinforcement fibres to strengthen the boards.  However I still have to consider the board described in the comparative example which does not contain reinforcement fibres.  The board contains 88% by weight of Portland cement and 10% by weight of cellulose fibres with a freeness value which corresponds to 100 Csf to 425 Csf.
        However I disagree with Mr. Shelston that the teaching of No. 2,012,831 can be read into UK patent application No. 2,012,832 to imply that boards described in the latter contain reinforcement fibres.  The preferred embodiments in UK patent application No. 2,012,832 do not contain reinforce‑
ment fibres or silica, however claim 5 discloses quartz powder.
        On the question of anticipation, Mr. Siely stated that the relevant test was that found in Griffin v. Isaacs ((1942) AOJP 739 at p.740) wherein Dixon J. said:

"Where variations from a device previously published consist in matters which make no substantial contribution to the working of the thing or involve no ingenuity or inventive step and the merit if any of the two things considered as inventions is the same, it is, I think, impossible to treat the differences as giving novelty."

In the present situation one of the variations between the claimed invention and the boards described in the citations is the freeness values of the cellulose fibres.  The citations only describe cellulose fibres with freeness values equivalent to 100 Csf to 425 Csf and they contain no teaching of what happens if freeness values outside this range are used.  There is also nothing to show what was the common general knowledge with respect to freeness values. The selection of freeness values of 450 Csf to 600 Csf in the light of these citations could well make a "substantial contribution" to the articles claimed in the present specification and there is no specific evidence to the contrary; as I have pointed out earlier in this decision.  Thus I am not satisfied that the invention defined in the present claims lacks novelty in relation to the asbestos‑free boards disclosed in UK patent applications Nos. 2,012,831 and 2,012,832.
        Mr. Siely stated that the general thrust of the description in annexure "C" was identical to the subject matter of the present specification. His interpretation of the teaching of the paper was that greater adhesion between cement and cellulose fibres can be achieved if the fibres are further disintegrated.  Thereby he submitted that the present specification described no more than a common sense application of this teaching.
        Mr. Shelston's reply was that the generalised experimental results described in "C" did not specifically disclose the range of freeness values claimed in the present specification.  He also pointed out that the freeness values reported in the two documents were not comparable.  This is because the freeness values described in the specification were measured on a standardised scale whereas it is not certain if those reported in "C" were measured on the same standardised scale.
        The paper published in "The Indian Concrete Journal" ("C") presents the results of an investigation which examines the possibilities of replacing chrysotile asbestos, used in the manufacture of asbestos cement products, by other fibrous material.  The use of cellulose fibre is studied in particular.
        The paper commences by comparing the properties of cellulose fibres and asbestos fibres.  Tests were carried out at two different levels : first in the laboratory and then large scale trials in existing asbestos‑cement factories.  In the laboratory experiments, the cellulose pulp was admixed with Portland cement and made into sheets by lamination.  The sheets were cured in water for seven days or twenty eight days and their strength determined by a Standard Indian procedure.  The variables studied were the nature of the pulp, pretreatment of the pulp, influence of freeness of the pulp, pulp cement ratios and other properties.  The results of these studies are mainly reported in graphical form in which the bending strength measured in kg/cm2 forms the ordinate.
        The study of the nature of the pulp demonstrates that boards containing cellulose fibres can meet the minimum strength specified in the Indian Standard although the strength varied with the source of the cellulose. Pretreatment of the cellulose pulp from the Central Pulp Mill increased the strength of the boards in comparison to boards made from untreated pulp.
        The cellulose fibres contribute to the strength of the sheet if they are beated to the right degree of freeness.  The changes in bending strength produced by varying the freeness values between 150cm3 and 700cm3 are described.  The maximum strength occurred at a freeness value of 500cm3.
        The changes in bending strength produced by varying the concentration of the pulp between 1% and 15% are described.  The maximum strength occurred when the sheet contained 10% pulp.  The concentration producing the maximum strength varied with the source of the pulp.
        Large scale trials were conducted at two asbestos cement factories in which plain and corrugated sheets were produced from cellulose pulp and cement.
        The investigators concluded that it was commercially feasible to produce cellulose pulp cement sheets for use in the manufacture of building boards, roofing sheets and pipes.  However more elaborate field trials would have to be carried out before it was widely adopted by the building industry.
        I agree that "C" and the specification have similar objectives but there are several variations between the claimed article and the building boards described in the paper.  One of these variations is the inclusion of silica in the claimed invention.  The boards described in the citation are produced from cellulose pulp and Portland cement only.
        The nature of the binder was a variable not studied in this citation.  However Mr. Lawrie declares that he would not have expected a standard ingredient like silica to be studied as a variable because the investigation concerned the replacement of asbestos with cellulose.  His declaration continues as follows:

"The presence of silica is dependent solely upon whether a normally cured or rapidly cured (autoclaved) article is required.  If the latter is required silica is present.  It is inconceivable to me that the presence of silica, in a cement‑based building material, could be regarded as representing a significant departure from what is known."

Mr. Lawrie has no experience with cement articles containing cellulose fibres therefore he has assumed that the combination of cellulose fibres, cement and silica is identical in all respects to the combination of asbestos fibres, cement and silica.  I do not think this assumption is justified in the light of the disclosures contained in "C".
        Although the purpose of the investigation reported in the paper was to specifically examine the possibility of replacing asbestos with cellulose this does not amount to an admission that the chemical and physical interactions between the fibres and the cement/silica matrix are the same.
        The citation states that asbestos fibres are inorganic fibres in which neighbouring polymer chains are held together by ionic bonding through metal atoms.  On the other hand cellulose fibres are organic fibres in which the neighbouring polymer chains are held together by a combination of hydrogen bonding and Van Der Waal's forces.  Consequently asbestos fibres fibrillate more readily than cellulose fibres.  The citation itself does not state that standard components known in the asbestos cement art were not investigated because they would not change the results.  Moreover the paper does not describe the effect of rapidly curing a cellulose cement article.  There is also nothing to show what was the common general knowledge with respect to the presence of silica in cellulose‑cement articles.  Therefore I am not satisfied that the presence of silica in the article claimed contributes no novelty in relation to the disclosures in the paper published in "The Indian Concrete Journal".
The question of the degree to which an opponent (appellant) has to establish the ground of want of novelty was considered in Montecatini Edison S.p.A. v. Eastman Kodak Company ((1971) 45 ALJR 593 at 595). On this question Gibb J. said:

"I ought not to find in favour of the appellant on the issue of want of novelty, or that of obviousness, unless I were satisfied that the appellant's case had been clearly made out; it was said that I should adopt a similar approach to that which must be followed in considering whether to accept an application and specification, namely, that the application should only be rejected in a clear case where it is obvious that a patent cannot be granted : see Commissioner of Patents v. Microcell Ltd. (1958‑59), 102 CLR 232, at pp.236, 244‑245."

In the present situation I am satisfied that the opponent has not discharged the onus laid upon it.
Conclusion
        In summary therefore I find that the opponents have not clearly established their case except insofar as the specification does not comply with the requirements of section 40.  I am satisfied that there is patentable subject matter disclosed in the specification and I allow the applicant 60 days from the date of this decision in which to lodge amendments to my satisfaction.  I award costs against the applicant James Hardie & Coy. Pty. Ltd.

(J.L. ROVETA)