James Hardie Technology Limited v Etex Services NV
[2023] APO 66
•19 December 2023
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
James Hardie Technology Limited v Etex Services NV [2023] APO 66
Patent Application: 2018382935
Title:Colored fiber cement products and methods for the production thereof
Patent Applicant: Etex Services NV
Opponent:James Hardie Technology Limited
Delegate:Dr S. J. Smith
Decision Date: 19 December 2023
Hearing Date: Written submissions completed on 5 September 2022
Catchwords: PATENTS – section 59 – opposition to the grant of a patent – grounds of manner of manufacture, inventive step, utility, sufficiency, support and best method – some claims lack inventive step – grounds of manner of manufacture, utility, sufficiency, support and best method not made out – costs awarded against applicant
Representation: Patent attorney for the applicant: Phillips Ormonde Fitzpatrick
Solicitor/patent attorney for the opponent: Spruson & Ferguson
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2018382935
Title:Colored fiber cement products and methods for the production thereof
Patent Applicant: Etex Services NV
Date of Decision: 19 December 2023
DECISION
Claims 1, 2 and 5-15 lack inventive step.
Etex Services NV is allowed a period of two months from the date of this decision to propose amendments to overcome this deficiency.
I award costs according to Schedule 8 against Etex Services NV.
REASONS FOR DECISION
Background
Patent application 2018382935 (the application) in the name of Etex Services NV (the applicant) was filed on 12 December 2018 under the provisions of the Patent Cooperation Treaty. The application claims priority from EP 17207105.2 filed on 13 December 2017. The application was advertised as accepted on 3 December 2020.
A notice of opposition to grant was filed on 3 March 2021 by James Hardie Technology Limited (the opponent). The statement of grounds and particulars was filed on 3 June 2021 and, following a request for further and better particulars by the applicant, amended on 3 September 2021 alongside the filing of the evidence in support. The amended statement identifies manner of manufacture, novelty, inventive step, utility, clear enough and complete enough disclosure (sufficiency), support and best method as grounds of opposition. All grounds other than novelty are pressed.
Evidence in support consists of declarations by Peter Pagones (Pagones) with Exhibits PP-01 to PP-13 and Frazer Donald McLennan with exhibits FDM-01 to FDM-14.[1] No evidence in answer was filed.
[1] Mr McLellan is a patent information professional and provides evidence concerning the publications dates of prior art documents annexed to his declaration.
The matter was set for hearing by written submissions. After the completion of the submissions as directed, the applicant filed further submissions. On 20 September 2022, a delegate advised the parties that the submissions for the hearing by written submissions were completed with the filing of the opponent’s submissions in reply and that the filing of further submissions by the applicant was undesirable. Accordingly, the delegate advised the parties that in the event the opponent’s reply submissions and applicant’s further submissions raised issues material to the decision such that any additional submissions were required, provision for further submissions would be made. This has not been necessary.
Onus
The substantive amendments to the Patent Act 1990 (Cth) (the Act) brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act) apply to the present case. This includes section 60(3A), which provides that the Commissioner may refuse an application if satisfied, on the balance of probabilities, that a ground of opposition exists. It is the opponent who carries the onus of proof.
The specification
The specification is directed to coloured fibre cement products and methods for their production, and ends with 15 claims.
Before construing the specification, I note the comments of Middleton J in Eli Lilly and Company Limited v Apotex Pty Ltd:
“It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”[2]
The person skilled in the art
[2] [2013] FCA 214; 100 IPR 451 at [139].
The person skilled in the art is a hypothetical non-inventive person or team likely to have a practical interest in the subject matter of the invention.[3] It is well established that the task of construing the specification is undertaken from the viewpoint of a person skilled in the art and the prevailing common general knowledge at the priority date, and many of the issues in an opposition are answered by reference to that person:
“He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious.”[4]
[3] Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 at [70]-[72]
[4] Ibid at [70].
The parties were largely in agreement as to the characterisation of the person skilled in the art as a person with experience in the development, formulation and production of fibre cement products.[5] As such, in accordance with the applicant’s submissions, the notional skilled person would be expected to be familiar with fibres conventionally used in fibre cement manufacturing, and the impact of fibre selection on mechanical properties of fibre cement products.[6]
[5] Opponent’s submissions in support at [56]; applicant’s submissions in answer at [54].
[6] Applicant’s submissions in answer at [55].
The only expert declarant in this matter is Mr Pagones. Mr Pagones is a long-term employee of the James Hardie corporate group with experience in developing fibre cement building products.[7] Mr Pagones has been employed by various entities of the James Hardie corporate group since taking up an industry placement during the second year of his Bachelor of Applied Science in 1996.[8] Since September 2016, Mr Pagones has held the position of Director of Research and Product Development, overseeing every research and development project globally and managing the global innovation portfolio of each new product and associated technologies.[9] Mr Pagones has been named as an inventor on several patents for inventions arising from his work associated with fibre cement products and technologies developed through projects at James Hardie.[10]
[7] Pagones at [3]-[28].
[8] Pagones at [4]-[5].
[9] Pagones at [28].
[10] Pagones at [33].
The applicant recognises that Mr Pagones “has relevant expertise in the development, formulation and production of fiber cement.”[11] However, the applicant submits that Mr Pagones “cannot be considered as a proxy for the skilled person because of his high level of inventiveness” and that “[h]is outstanding capacity for inventive research is reflected in his current position of Director of Research and Development at James Hardie Research Pty Ltd.”[12] The applicant submits that Mr Pagones’ demonstrated high level of inventiveness, his extensive knowledge above and beyond that of an ordinary person skilled in the art, his lack of independence from the Opponent and the lack of sighting of the Guidelines for Expert Witnesses in Proceedings in the Federal Court of Australia in Mr Pagones’ declaration significantly reduces the weight that can be placed on his evidence.[13]
[11] Applicant’s submissions in answer at [58].
[12] Applicant’s submissions in answer at [59].
[13] Applicant’s submissions in answer at [58]-[64].
I am satisfied that Mr Pagones has a background that enables him to understand the specification and provide evidence as to what a person skilled in the art knew or would have done at the relevant date – it is not uncommon for declarants in patent matters to be inventive individuals and this does not automatically render their evidence useless. While clearly Mr Pagones has an association with the opponent, it does not follow that I must treat his evidence as biased. Similarly, as noted by the opponent there is no obligation for declarants in Patent Office matters to adhere to the Guidelines for Expert Witness in Proceedings in the Federal Court of Australia,[14] and so, again, the lack of sighting of these guidelines does not taint Mr Pagones’ evidence. However, I am conscious of these matters and, where necessary, I will consider whether the evidence relates to only the personal knowledge and views of Mr Pagones or is representative of that of a notional person skilled in the art in attributing weight to it.
The description
[14] Opponent’s submissions in reply at [41].
As background to the invention, the specification states:
“Black or colored fiber cement products are known in the art. Obtaining the color is achieved either by using a cementitious matrix, which comprises one or more black and/or colored pigments or by coating ordinary gray fiber cement-based products with a black or with a colored paint. The latter way is most commonly applied because it is simple to do, less expensive compared to the use of pigments in the cement, and because it allows to obtain any desired color shade.”[15]
[15] Specification at page 1, lines 11-15.
Against this background, it is said that the inventors have developed “new and inventive colored fiber cement products at least comprising cement, a pigment and synthetic fibers.”[16] Specifically, the products of the invention comprise a cementitious matrix comprising a black pigment and/or a coloured pigment, and synthetic fibres pigmented with at least one white pigment.[17]
[16] Specification at page 1, lines 18-19.
[17] Specification at page 1, lines 21-24.
Such a black or coloured fibre cement product providing a colour-contrast between the cementitious matrix and a fibre component was considered to be “esthetically appealing” because of the “nice contrast between the black or dark-colored base color of the product and the bright white color of the synthetic fibers”,[18] while also having “very good mechanical and physical properties.”[19]
[18] Specification at page 1, lines 26-29.
[19] Specification at page 1, line 31.
The products of the invention are said to meet “an increasing demand from architects and designers to develop new fiber cement products, visualizing the natural fiber cement core material” which satisfy the same requirements concerning mechanical and physical requirements as their predecessors.[20]
[20] Specification at page 2 lines 30-35.
The specification states:
“While developing the new fiber cement products, the inventors found that it was essential to color the synthetic fibers with a white pigment in order to be able to visually distinguish these from the black or (dark-)colored background color provided by the pigment(s) present in the cementitious matrix. In fact, during the development of the present invention, the inventors found that it was technically very difficult to achieve the esthetic appearance of a black or (dark-)colored fiber cement product having bright white fibers uniformly but randomly dispersed therein.
It was for example found that organic natural fibers stained with a white dye, a white ink or a white resin, proved to be unsuitable for the production of the colored fiber cement products of the present invention. It was observed by the present inventors that after incorporating dye-stained or ink-stained fibers in the fiber cementitious products, the dye or ink caused bleeding effects and stains throughout the black or colored cementitious matrix. In other cases, the fibers simply completely lost their white color and as a result also their visibility. Without being bound to any hypothesis or theory, the inventors believe that the aqueous alkaline environment of the cementitious matrix causes an alteration in the chemical structure of the specific dye (or ink), thereby breaking the chemical bond between the dye (or ink) and the fiber or thereby causing a decolorization.
In other cases, when synthetic fibers having a naturally white color were used, it was observed that the fibers were colored by the pigment present in the cementitious matrix of the fiber cement products and therefore also lost their visibility.
Accordingly, the inventors looked for a solution to solve the above problems and have surprisingly found that when using a white pigment to color the synthetic fibers, the bleeding or decoloring issues did not occur.”[21]
[21] Specification at page 1, line 32 – page 2, line 18.
The specification goes on to recite various embodiments of the invention, for example, wherein the synthetic fibres are polypropylene fibres and the white pigment is titanium dioxide.[22] It is also disclosed that the fibre cement products of the invention may comprise between about 5% and 15% limestone by weight, which improves the water channelling properties of the product,[23] or may be coated with a clear coating.[24]
[22] Specification at page 3, lines 7-19.
[23] Specification at page 3, lines 21-32.
[24] Specification at page 3, line 34 – page 4, line 15; page 20, line 11 – page 24, line 32.
A method of manufacturing the product of the invention is also disclosed, comprising providing a fibre cement slurry comprising a cementitious matrix comprising a black and/or coloured pigment and synthetic fibres pigmented with at least one white pigment, manufacturing a fibre cement product by means of a fibre cement production process, and curing the fibre cement product to obtain the black or coloured fibre cement product.[25]
[25] Specification at page 4, lines 17-24.
The specification states that:
“…a fiber cement slurry can be prepared by using one or more sources of at least white cement, water and pigmented synthetic fibers… In certain specific embodiments, these one or more sources of at least cement, black and/or colored pigment(s), water and white-pigmented synthetic fibers are operatively connected to a continuous mixing device constructed so as to form a cementitious fiber cement slurry.”[26]
[26] Specification at page 25, lines 13-18.
In particular embodiments, the step of manufacturing a fibre cement product is carried out by a process selected from: a Hatschek process, a Magnani process, an extrusion process and a flow-on method.[27] The Hatschek process is said to be the most widely used process for manufacturing fiber cement products,[28] and is explained to at least comprise the steps of:
“(i) building a fiber cement film on a sieve, which sieve rotates so as to be in contact with a fiber cement slurry in a vat;
(ii) transferring the fiber cement film from the sieve to the felt transport belt, and(iii) accumulating the fiber cement film on an accumulator roll via the felt transport belt.”[29][27] Specification at page 4, lines 29-33.
[28] Specification at page 25, line 34.
[29] Specification at page 8, lines 18-24.
In particular embodiments the fibre cement products are air-cured, and the specification reports that: “air-cured fiber cement products as produced according to the methods as disclosed herein perform particularly well, especially having regard to their mechanical characteristics, such as impact resistance and mechanical strength.”[30]
[30] Specification at page 26, lines 31-34.
The specification ends with Example 1, which refers to the manufacture of seven samples of black or coloured fibre cement products with white pigmented fibres, as shown in Table 1 reproduced below:[31]
[31] Specification at page 28, line 5 – page 29, line 18.
The fibre cement products were manufactured by the Hatschek technique, pressed and then air-cured. Half of the formed fibre cement products were coated with a conventional clear coating.[32]
[32] Specification at page 28, line 30 – page 29, line 12.
The surface of the resulting products was observed to display the texture and colour of the core materials, providing the products with “a natural yet modern look.”[33] An “appealing contrast” between the natural textures of the black or coloured cement and the bright white synthetic fibres is said to result.[34]
The claims
[33] Specification at page 29, lines 14-15.
[34] Specification at page 29, lines 15-18.
The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd:
“…the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear. … While the claims define the monopoly claimed in the words of the patentee’s choosing, the specification should be read as a whole … It is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification … terms in the claim which are unclear may be defined or clarified by reference to the body of the specification.”[35]
[35] [2009] FCAFC 70; 81 IPR 228 at [118]-[120].
The entire claim set of the opposed application is reproduced at Annex A. Independent claim 1 reads:
A colored fiber cement product at least comprising:
-a cementitious matrix comprising a black pigment and/or a colored pigment, and
-synthetic fibers, wherein said synthetic fibers are pigmented with at least one white pigment.
Claims 2-12 further define various features mentioned in claim 1. Claim 2 provides that the synthetic fibres are polypropylene fibres and claims 3 and 4 define properties of the synthetic fibres. Claims 5-7 define the nature and quantity of the black and/or coloured pigment in the cementitious matrix. Claim 8 provides that the synthetic fibres are pigmented with titanium oxide. Claim 9 provides that the coloured fibre cement product comprises limestone at between about 5 and 15 weight %. Claim 10 provides that the coloured fibre cement product is coated with a clear coating and claims 11 and 12 define properties of the coating. Claims 13 and 14 relate to a method for the manufacture of coloured fibre cement products of any of claims 1-12 and claim 15 relates to the use of these products as a building material.
The claims do not present any particular construction challenges, and Mr Pagones provided the following comments regarding the construction of claim 1 which align with my understanding of the claim:[36]
[36] Pagones at [262].
Claim Feature Interpretation 1.1 A colored fiber cement product A fibre cement (FC) product in which the cementitious matrix of said product is through-coloured, though not necessarily homogenously or consistently.
1.2 at least comprising a cementitious matrix comprising a black pigment and/or a coloured pigment The cementitious matrix is through-coloured using either (i) a combination of black pigment and a coloured pigment; (ii) a black pigment alone; or (iii) a coloured pigment alone.
1.3 at least comprising synthetic fibers, wherein said synthetic fibers are pigmented with at least one white pigment
The FC product comprises synthetic fibres pigmented with a[t] least one white pigment.
Definitions for fibre(s), cement, fibre cement product, pigment and other terms appearing in the claims are given in the specification.[37] Some of the key definitions are reproduced below:
[37] Specification at page 6, line 18 – page 15, line 20.
“‘Fiber(s)’ present in the fiber cement slurry as described herein may be for example process fibers and/or reinforcing fibers which both may be organic fibers (typically cellulose fibers) or synthetic fibers (polyvinyl alcohol, polyacrylonitrile, polypropylene, polyamide, polyester, polycarbonate, etc.).”[38]
[38] Specification at page 7, lines 8-10.
“‘Cement’ present in the fiber cement slurry as described herein may be for example but is not limited to Portland cement, cement with high alumina content, Portland cement of iron, trass-cement, slag cement, plaster, calcium silicates formed by autoclave treatment and combinations of particular binders.”[39]
“The term ‘fiber cement product’ as used herein refer to products at least comprising fibers and cement. The fiber cement products as used in the context of the present invention may also further comprise other components, such as but not limited to, limestone, chalk, quick lime, slaked or hydrated lime, ground sand, silica sand flour, quartz flour, amorphous silica, condensed silica fume, microsilica, metakaolin, wollastonite, mica, perlite, vermiculite, aluminum hydroxide, pigments, anti-foaming agents, flocculants, and other additives.”[40]
“The term ‘pigment’ as used herein refers to a dry insoluble substance, usually pulverized, which when suspended in a liquid vehicle becomes a paint, ink, etc. Pigments typically consist of tiny solid particles that are used to enhance the appearance by providing color and/or to improve the physical (functional) properties of the paint or ink. Pigments used to provide color generally range from 0.2 to 0.4 microns in diameter. Functional pigments are typically 2-4 microns in diameter, but they may be as large as 50 microns.”[41]
“The term ‘white pigment’ as referred to herein means a prime pigment, capable of scattering light and providing whiteness and hiding in flat or glossy substance. White inorganic pigments include but are not limited to antimony pigments including Antimony White: Sb2O3; lead pigments (toxic) including White Lead (PbCO3·Pb(OH)2; titanium pigments including Titanium White: titanium (IV) oxide TiO2 and ; zinc pigments including Zinc White: Zinc Oxide (ZnO).”[42]
“The term ‘color pigment’ as referred to herein means a prime pigment, capable of selectively absorbing light and providing color to substance. There are two main types of color pigments: organic pigments, which include the brighter colors but are not highly durable in exterior use and inorganic pigments, which are not as bright as organic colors but are the most durable exterior pigments.”[43]
“In the context of the present invention, the term ‘polypropylene’ is intended to include any polymeric composition comprising propylene monomers, either as a homopolymer or copolymer with other polyolefins, dienes, or other monomers (such as ethylene, butylene, and the like). The term is also intended to encompass any different configuration and arrangement of the constituent monomers (such as syndiotactic, isotactic, and the like). Thus, the term as applied to filaments, monofilaments, multifilaments or fibers herein, is intended to encompass endless stretches, actual long strands, threads, and the like, of polypropylene homopolymer or copolymer.”[44]
[39] Specification at page 7, lines 12-15.
[40] Specification at page 7, line 31 – page 8, line 2.
[41] Specification at page 10, lines 29-34.
[42] Specification at page 11, lines 5-9.
[43] Specification at page 11, lines 11-15.
[44] Specification at page 15, lines 14-20.
Mr Pagones did not suggest that the definitions in the specification are at odds with his understanding.
I note that claim 1 defines a cementitious matrix “comprising” a black pigment and/or a coloured pigment. The specification makes clear that “comprising” is intended to be non-exclusive, and accordingly the cementitious matrix may include integers other than the specified pigment/s.
Manner of Manufacture
It is a requirement of paragraph 18(1)(a) that an invention be a manner of manufacture within the meaning of section 6 of the Statute of Monopolies. The opponent submitted that the invention claimed does not define a manner of manufacture, referring to two specific forms of that ground: principally, that the claims lack inventive character on the face of the specification, and also that the claims define a collocation of known integers.
Lack of inventive character
There is a threshold of inventiveness on the face of the specification necessary for a claim to satisfy the manner of manufacture requirement. In NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd the majority of the High Court said:
“…if it is apparent on the face of the specification that the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent, one need go no further.” [45]
and confirmed the proposition[46] set out in Commissioner of Patents v Microcell Limited, where the High Court said:
“We have in truth nothing but a claim for the use of a known material in the manufacture of known articles for the purpose of which its known properties make that material suitable. A claim for nothing more than that cannot be subject matter for a patent and the position cannot be affected either by the fact that nobody thought of doing the thing before, or by the fact that, when somebody did think of doing it, it was found to be a good thing to do”.[47]
[45] [1995] HCA 15; 183 CLR 655 at [9] (‘NV Philips’).
[46] Ibid at [5].
[47] [1959] HCA 71; 102 CLR 232 at [15].
The applicant submitted, and I agree, that the threshold of inventiveness is applied from what is apparent on the face of the specification.[48] This form of manner of manufacture is a narrow one, and it is clear from the body of case law that it must be assessed on the basis of the face of the specification alone.[49] In reply submissions, the opponent contended that the substance of the invention must be weighed in light of the contribution to the art, which in turn can only be weighed in light of common general knowledge.[50] I accept that this is the case at a general level, and I note the opponent’s reference to the reasons of Kiefel CJ, Gageler J and Keane J in Aristocrat Technologies Pty Ltd v Commissioner of Patents[51] and suggestion that inclusion of a consideration of the common general knowledge when considering manner of manufacture on the face of the specification is consistent with NV Philips. However, even if that is the effect of those reasons, the High Court in Aristocrat was evenly divided and as such the decision has no ratio decidendi. I do not believe it is permissible to depart from the reasons of previous courts concerning lack of manner of manufacture on the face of the specification.[52]
[48] Applicant’s submissions in answer at [8]-[17].
[49] See, e.g., Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21; 235 CLR 173 at [106], AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [382]-[386], InterPharma Pty Ltd v Hospira, Inc (No 5) [2019] FCA 960 at [465].
[50] Opponent’s submissions in reply at [17]-[23].
[51] [2022] HCA 29 at [77] (‘Aristocrat’): “In conformity with the decision in N V Philips,the issue is whether the implementation of what is otherwise an unpatentable idea or plan or game involves some adaptation or alteration of, or addition to, technology otherwise well‑known in the common general knowledge to accommodate the exigencies of the new idea or plan or game.”
[52] I note this is consistent with Perram J’s approach in Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (Liability) [2022] FCA 1585 at [356].
The opponent submitted that based on admissions in the specification, it is apparent that the claims are:
“…nothing but claims for the use of a known material (pigment, preferably white, black and/or colored pigment) in the manufacture of known articles (FC products at least comprising a cementitious matrix comprising black and/or colored pigment and synthetic fibers pigmented with at least one white pigment) for the purpose (coloring FC products for esthetic appeal) of which its known properties (coloring) make that material suitable.”[53]
[53] Opponent’s submissions in support at [23].
The applicant submitted that unless there were admissions in the specification that 1) it is a known property of white fibres that they create an aesthetically pleasing appearance when added to black or coloured fibre cement and 2) it is a known property of white pigmented synthetic fibres that they can be added to black or coloured fibre cement products without bleeding or decolouring issues, the opponent’s case cannot succeed.[54] The applicant noted that the references in the specification to the “surprising” findings that the claimed products are aesthetically appealing and that white pigmented synthetic fibres do not demonstrate bleeding or decolouring issues in contrast to differently coloured fibres were not the required admissions.[55]
[54] Applicant’s submissions in answer at [21].
[55] Applicant’s submissions in answer at [22].
On balance, I am inclined to agree with the applicant that, given that the specification does not disclose that it was known that use of pigmented synthetic fibres would improve the colour-fastness of such fibres when used in pigmented fibre cement products, or that the use of white pigmented synthetic fibres in fibre cement products was known, the specification on its face does not include admissions that expose a lack of invention.
Collocation of known integers
It is well established that to be patentable, a combination of known integers must have a working interrelationship.[56] The opponent submitted that the claimed invention merely defines a collocation of known integers, with each of the black/coloured cementitious matrix and white pigmented synthetic fibres performing their normal function and lacking a working inter-relationship or potential working inter-relationship.[57]
[56] See, e.g. British Celanese Ltd v Courtalds Ltd (1935) 52 RPC 171; Smith & Nephew Pty Ltd v Wake Forest University Health Sciences [2009] FCAFC 142; Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19; 194 CLR 171.
[57] Opponent’s submissions in support at [24].
In this regard, Mr Pagones stated that “there is nothing … that is in any way technically surprising” about the disclosed method, describing it as “the idea of having a dark-pigmented cementitious matrix with bright white pigmented synthetic fibres to maximise the contrast” and that it is “a matter of aesthetic preference, which is entirely situational” with “absolutely nothing technically difficult or even new or not commonplace about the approach adopted and described”.[58]
[58] Pagones at [260].
The applicant submitted that the invention is a coloured fibre cement product, where at least a cementitious matrix comprising a black pigment and/or coloured pigment together with synthetic fibres pigmented with at least one white pigment forms a unitary structure; the components function together to create an improved appearance of the fibre cement product.[59]
[59] Applicant’s submissions in answer at [37].
Although the individual integers defined in the claim may be known, to my mind there is clearly a working interrelationship between the integers making up the fibre cement product. As explained by Mr Pagones, choice of fibre(s) to add to the cementitious matrix can affect both the mechanical and aesthetic properties of the fibre cement product as well as impacting the manufacturing processes required.[60] The opponent has not established that the claims define a mere collocation of known integers.
Conclusion
[60] Pagones at [42]-[69].
The opponent has not established that the claims are not directed to a manner of manufacture.
Inventive Step
Subsection 7(2) states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in light of the common general knowledge (whether in or out of the patent area) before the priority date of the relevant claim when considered alone or together with the information mentioned in subsection 7(3).
Subsection 7(3) defines the relevant information as follows:
The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.
Having identified the common general knowledge and any relevant information as defined in subsection 7(3), the test for whether an invention is obvious is to ask whether it would have been a matter of routine to proceed to the claimed invention, as set out by Aickin J:
“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.”[61]
[61] Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd [1981] HCA 12; 148 CLR 262 at 286.
The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd[62] approved this approach as well as that taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd,[63] of asking whether the person skilled in the art would be directly led as a matter of course to try what was claimed in the expectation that it might well produce a useful or desired result.
[62] [2002] HCA 59; 212 CLR 411 at [50]-[53] (‘Alphapharm’).
[63] [1970] RPC 157 at 187.
In both of these approaches a person skilled in the art must have a reasonable expectation of success. This is explicit in the expectation that an approach “might well” succeed, and implicit in the characterisation of steps as to be taken as a matter of routine.[64] The reasonable expectation of success does not require that success is guaranteed,[65] but the taking of routine steps with a reasonable expectation of success must be distinguished from steps which the skilled addressee would consider “obvious to try”.[66] While “obvious to try” has been described as varying all parameters or trying each of many possible choices until possibly arriving at a successful result (with the prior art providing no direction as to likely success),[67] it is well established that multiple pathways may be obvious.[68] Indeed, in Nichia[69] the Full Court referred to the comments of Laddie J in Brugger v Medic-Aid Ltd:
“… if a particular route is an obvious one to take or try, it is not rendered any less obvious from a technical point of view merely because there are a number, and perhaps a large number, of other obvious routes as well. If a number of obvious routes exist it is more or less inevitable that a skilled worker will try some before others. The order in which he chooses to try them may depend on factors such as the ease and speed with which they can be tried, the availability of testing equipment, the costs involved and the commercial interests of his employer. There is no rule of law or logic which says that only the option which is likely to be tried first or second is to be treated as obvious for the purpose of patent legislation.”[70]
[64] Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2014] FCAFC 73; 314 ALR 91 at [71].
[65] Nichia Corporation v Arrow Electronics Australia Pty Ltd [2019] FCAFC 2 at [99] (‘Nichia’).
[66] Alphapharm at [76].
[67] In re O’Farrell 853 F 2d 894 at 903 (1988).
[68] Nichia at [91]-[94].
[69] Ibid at [93].
[70] [1996] RPC 635 at 661.
In addition, care must be taken if incorporating information from the specification into the problem:
“If the problem addressed by a patent specification is itself common general knowledge, or if knowledge of the problem is s 7(3) information, then such knowledge or information will be attributed to the hypothetical person skilled in the art for the purpose of assessing obviousness. But if the problem cannot be attributed to the hypothetical person skilled in the art in either of these ways then it is not permissible to attribute a knowledge of the problem on the basis of the inventor’s ‘starting point’ such as might be gleaned from a reading of the complete specification as a whole.”[71]
[71] AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [203] (‘AstraZeneca’).
Principles identified by the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) as of “continuing relevance” in relation to inventive step include:
“…obviousness and inventiveness are antitheses and the question is always ‘is the step taken over the prior art an “obvious step” or “an inventive step”’? An inventive step is often an issue ‘borne out by the evidence of the experts’. There is no distinction between obviousness and lack of inventive step. A ‘scintilla of invention’ remains sufficient in Australian law to support the validity of a patent. In R D Werner Lockhart J stated that there must be ‘some difficulty overcome, some barrier crossed’. This is consonant with older authorities in the United Kingdom which recognised that some inventiveness was required to distinguish patentable advances over the prior art from advances which ‘any fool’ could devise. It also accords with the requirement in the United States that for an invention to be ‘non-obvious’ it must be ‘beyond the skill of the calling’.”[72]
[72] [2007] HCA 21; 235 CLR 173 at [52] (‘Lockwood (No 2)’).
Relevantly, where a claim is directed to a combination of known integers obviousness is not established merely by identifying each of those features in the prior art or the common general knowledge – the question is whether the combination of those features is obvious;[73] the High Court has noted that the danger of misusing hindsight is particularly acute when considering a claim to a combination.[74]
Common general knowledge
[73] Minnesota Mining and Manufacturing Co v Beiersdorf (Aust) Ltd [1980] HCA 9; 144 CLR 253 at 293 (‘Minnesota Mining’).
[74] Alphapharm at [21].
Common general knowledge is the background knowledge and experience available to all those working in the relevant art:
“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.”[75]
[75] Minnesota Mining at 293.
It is not sufficient that a document is publicly available for it to be considered part of the common general knowledge in the art. There must be evidence of its general acceptance and assimilation by the person skilled in the art.[76] However, common general knowledge is not limited to information that the skilled person has committed to memory, but also includes material in the field in which they are working which they know exists and to which they would refer as a matter of course.[77]
[76] Alphapharm at [31]; Ranbaxy Laboratories Limited v AstraZeneca AB [2013] FCA 368 at [217].
[77] ICI Chemicals and Polymers Ltd v Lubrizol Corporation Inc [1999] FCA 345 at [112].
At the outset I note that throughout his evidence, and in particular in relation to his experience in developing fibre cement products and technologies involving consideration, testing or use of colour, Mr Pagones referred to the Thick Butt Roofing Project, which ran from 1998 to 2006 and in relation to which he held lead roles between 2002 and 2006.[78]
[78] Pagones at [16], [135].
The purpose of this project was to develop fibre cement roofing shakes that mimicked timber shakes popular in the US market.[79] Given the desired properties of the final product, a synthetic fibre was required for enhanced reinforcement and bendability, and a fibre that would withstand a curing process involving autoclaving was required.[80] Polypropylene and polyvinyl alcohol fibres were selected for survivability and modelling was used to determine that 18-20 mm was the optimum fibre length required for the thickness of the final product.[81] Various polypropylene and polyvinyl alcohol fibres sourced from various manufacturers were investigated, with only one polypropylene fibre deemed to satisfy all criteria in mechanical testing.[82]
[79] Pagones at [138].
[80] Pagones at [157].
[81] Pagones at [159].
[82] Pagones at [162].
When prototypes were made using synthetic fibres, the fibres were clearly visible against the dark brown through-coloured cementitious mixture.[83] The appearance of the prototypes containing visible white fibres were considered unsuitable for the project and Mr Pagones liaised with suppliers of synthetic fibres to identify and source dark-coloured fibres that would blend in with the cementitious matrix. The coloured fibre chosen was a black-pigmented polypropylene made by adding black pigment to the polypropylene resin during the fibre manufacturing process.[84]
[83] Pagones at [164]-[168].
[84] Pagones at [169]-[170].
Alongside this, the choice of curing process was reconsidered to enable a wider range of ingredients to be used in the fibre cement formulation.[85] Ultimately, a steam curing method, effectively a hybrid of autoclave- and air-curing methods, was chosen and adjustments were made to the ratios of each component of the fibre cement product accordingly.[86]
[85] Pagones at [171]-[172].
[86] Pagones at [172]-[174].
Mr Pagones did not mention whether the project’s complexity was normal or unusual for the field. Nevertheless, the opponent, while acknowledging that this project was not common general knowledge or indeed public,[87] characterised it as a “clearly articulated illustration” of how a skilled person adjusted the appearance of coloured fibre cement, with the adjustment dealing with the contrast (or lack thereof) between the cement and synthetic fibres.[88] The opponent submitted that this was a strong proxy for assessing obviousness in light of the common general knowledge alone.[89] However, given that this example clearly reflects Mr Pagones’ own experiences and knowledge at the time, and, as noted above, Mr Pagones is an inventive individual, it is not apparent to me that this is necessarily typical of what the notional skilled addressee would have known and done. Moreover, it is not apparent that the product resulting from the Thick Butt Roofing Project was well known in the art. As such, I am not satisfied that the evidence establishes that the Thick Butt Roofing Project in itself is a compelling indicator of what was routine in the art for the notional skilled person. This means that where statements made by Mr Pagones are in the context only of the Thick Butt Roofing Project and unsupported by other contemporaneous evidence, I am not satisfied that I can safely conclude that such statements represent common general knowledge in the art.
[87] Opponent’s submissions in support at [119]; opponent’s submissions in reply at [30].
[88] Opponent’s submissions in support at [57].
[89] Opponent’s submissions in support at [119].
I am satisfied that the evidence establishes that the common general knowledge included the following information:
·The main components of fibre cement are Portland cement, siliceous material and a reinforcing fibre.[90]
·The earliest cementitious panel products were reinforced by addition of asbestos fibres and alternative reinforcing fibres such as glass fibres, steel fibres, synthetic fibres and natural fibres have been considered.[91]
·Pigments have been used to change the colour of the cementitious matrix from the standard light grey – this is referred to as through-colouring and involves introduction of pigment into the cementitious mixture while it is a slurry such that it is distributed evenly throughout the product.[92] Painting is an alternative means of achieving a desired product colour.[93]
·The selection of fibres can affect the appearance of the fibre cement product.[94]
·The choice and design of a production method for any given fibre cement product is “largely dictated by a tripartite consideration” of the manufacturing process, curing conditions, and the formulation of the slurry itself.[95] The types of fibre cement products that can be made and the mechanical properties that can be achieved differ depending on the shaping/manufacturing process used.[96]
·There are two primary methods of curing fibre cement products (air and autoclave) and the curing process dictates what materials can be added to the slurry as some ingredients may decompose under the high temperatures and pressures of autoclave curing.[97] Where sensitive materials are to be used in the slurry, air-curing is a less harsh curing process but typically requires 28 days curing time.[98]
·Many synthetic fibres are prone to melt and degradation in the autoclave-curing processes due to the high temperatures. Organic pigments are also susceptible to the harsh conditions and may leach out from the cementitious matrix during autoclave-curing, thereby resulting in an inconsistent colouring.[99] Synthetic fibres with higher melting points may be used as reinforcing fibres.[100] Synthetic fibres may be obtained from suppliers who are able to produce fibres according to requirements, e.g. hydrophilic coatings, waterproofing, etc.[101]
·Various secondary processing steps, such as pressing, profiling, finishing, coating and painting of fibre cement may be undertaken.[102]
[90] Pagones at [40].
[91] Pagones at [42], [46]. See also, e.g., US 2005/0208285 A1 (Exhibit PP-06, D19) at [0058], WO 2016/096523 A1 (Exhibit PP-07, D28) at page 30, lines 9-13.
[92] Pagones at [77]-[79], [193].
[93] Pagones at [142].
[94] Pagones at [50]-[52].
[95] Pagones at [111].
[96] Pagones at [112].
[97] Pagones at [99], [111].
[98] Pagones at [113].
[99] Pagones at [111].
[100] Pagones at [59]. I note, however, that D28, referenced below, indicates that polypropylene fibres can lack the strength required for fibre cement applications.
[101] Pagones at [64], [66].
[102] Pagones at [114]-[128].
There was disagreement between the parties with respect to whether it was common general knowledge to include pigmented synthetic fibres in through-coloured fibre cement products.[103] The first aspect of disagreement is whether pigmented synthetic fibres were common general knowledge in the relevant art. Mr Pagones stated, in the common general knowledge part of his declaration (i.e. as information that was “to [his] observation, generally known and accepted in the field of FC manufacture before 13 December 2017”[104]) that “[a]ll synthetic fibre manufacturers have, throughout my career, offered their various fibres … with the option of various colour pigments, or no pigment at all.”[105] Discussing polypropylene, polyvinyl alcohol, polyacrylonitrile and similar synthetic fibres, Mr Pagones stated that:
“When pigments have been added to such synthetic fibres during their manufacture, their colours are starker than the uncoloured (whiteish) form. This can be used to match the pigment colour to the cementitious matrix, or to create a greater colour contrast.”[106]
I do not understand this part of Mr Pagones’ declaration to relate to idiosyncratic knowledge derived from the Thick Butt Roofing Project, and this evidence is uncontradicted.
[103] Applicant’s submissions in answer at [91].
[104] Pagones at [37].
[105] Pagones at [83].
[106] Pagones at [82].
The description of a new process for the preparation of pigmented polyolefin fibres in US 3,681,280[107] filed in 1970, is supportive of the longstanding availability of such fibres and of the longstanding consideration of titanium dioxide as a suitable pigment. In addition, D28, which is directed to improved polypropylene fibres for the production of fibre cement products, touches briefly on the topic of coloured fibres:
“For example, in certain embodiments, when the filaments are desired to have a certain color, the mixture can include suitable coloring agents, such as dyes or other pigments, which are added to the mixture via a so-called master-batch.”[108]
[107] Exhibit PP-10 (D34).
[108] D28 at page 17, lines 1-3.
The applicant submitted that D28 is not established to be common general knowledge, and in any event is not concerned with the issue at hand, and simply includes a sentence regarding fibre colouring.[109] However, while certainly not determinative, to my mind, the cursory reference to fibre colouring in D28 using dyes or pigments supports Mr Pagones’ apparent view that this was routine – that is, it is not a point on which elaboration was considered necessary by the drafters of D28.
[109] Applicant’s submissions in answer at [93].
The applicant also submitted that Mr Pagones’ consultation with a representative of fibre suppliers to identify appropriate fibres for use in the Thick Butt Roofing Project and to understand their components is evidence that information regarding pigmented synthetic fibres was not common general knowledge.[110] However, I do not consider this in itself indicative one way or the other whether the use of such fibres was routine. That is, it is not apparent to me that for the use of a particular product to be routine or common general knowledge, it is necessary for the notional skilled worker to have in the front of their mind specific and detailed knowledge of that product per se. Based on the uncontradicted evidence of Mr Pagones I am reasonably satisfied that pigmented synthetic fibres were known to be available and that it was common general knowledge that they could be included in fibre cement products.
[110] Applicant’s submissions in answer at [101].
The applicant emphasised the importance of distinguishing what was common general knowledge about fibre cement appearance (i.e. as an inherent property) and what was known about imparting an appearance to the fibre cement (i.e. what was routine in terms of directing the appearance of a product). They submitted that even if it was known that the nature and colour of fibres used in fibre cement products could impact the appearance of the product, this does not establish that selection of particular fibres with the object of imparting a particular appearance was common general knowledge.[111] While I can accept that that may not necessarily follow, the more significant question to my mind, is what the skilled person, equipped with the common general knowledge, would do as a matter of routine when faced with the relevant problem.
The Problem
[111] Applicant’s submissions in answer at [95].
The problem asserted in the specification is the development of new fibre cement products visualising the “natural” fibre cement core material,[112] that is, where at least some of the fibres in the product are visible. In line with this, the applicant characterised the problem to be addressed as “the provision of a fiber cement product having a black- and/or colour-pigmented cementitious matrix with enhanced aesthetic appeal”[113] and phrased a corresponding reformulated Cripps question as follows:
“Would the notional skilled addressee at the relevant date, in all the circumstances and faced with the problem of providing a colored fiber cement product having a black- and/or colour-pigmented cementitious matrix with enhanced aesthetic appeal be lead as a matter of course to try the inclusion of synthetic fibers pigmented with a white pigment in the expectation that it might well produce a useful result, being enhanced aesthetic appeal”[114]
[112] Specification at page 2, lines 30-31.
[113] Applicant’s submissions in answer at [107].
[114] Applicant’s submissions in answer at [117].
The opponent observed that the “problem-solution approach” is not law in Australia and is not always appropriate, and posed its own reformulated Cripps question as follows:
“Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of the relevant prior art base, directly be led as a matter of course to try black or dark colored pigments dispersed throughout the cementitious matrix of the product in combination with white-pigmented synthetic fibers, in the expectation that it might well produce a useful alternative or a body useful for any other purpose?” [115]
[115] Opponent’s submissions in support at [51] (emphasis in original).
Although the applicant characterised the result of the opponent’s reformulated Cripps question, provision of “a useful alternative or a body useful for any other purpose”, as “excessively broad”[116], having regard to the subjective nature of aesthetics it is difficult to distinguish in a practical sense between the applicant’s reference to a product with “enhanced aesthetic appeal” and a useful (aesthetic) alternative. Having regard to the submissions, the common general knowledge, and the specification, I consider the problem to be the provision of an aesthetic alternative fibre cement product.
[116] Applicant’s submissions in answer at [109].
For completeness, I do not understand the problem to incorporate any element of addressing the issue of decolouration of fibres by coloured cementitious matrices as described in the specification; it is not apparent that this forms part of the common general knowledge or section 7(3) information and in accordance with AstraZeneca cannot legitimately form part of the problem. Indeed, prior to seeing the specification Mr Pagones said that, in contrast to cellulose fibres which absorb components of the cementitious material during mixing (including pigments), synthetic fibres “do not absorb the colour of the cementitious material and therefore will generally be more visible” (depending on whether the fibre colour contrasts with the colour of the cementitious material).[117]
Obviousness in light of the common general knowledge alone
[117] Pagones at [60]. See also Pagones at [164], where the language leads me to consider this a reference to knowledge pre-existing the Thick Butt Research Project: “I was aware that the native colour of the polypropylene (PP) and polyvinylalcohol (PVA) fibres we intended to use is white, and that this would mean that these synthetic fibres would be visible in the dark brown through-coloured cementitious mixture, as the synthetic fibres would not absorb the black or red pigments that had been added to achieve the through-colour.”
The elements defined in claim 1 are all known components (albeit a selection from many such components) in fibre cement products. Prima facie when seeking an aesthetic alternative to existing fibre cement products, it would seem obvious to combine known elements in different colourways to achieve a new aesthetic. Indeed, the opponent referenced Mr Pagones as having “performed the invention, without any difficulty, more than a decade before the priority date”.[118] On one view, this is persuasive, noting of course that Mr Pagones was seeking a different aesthetic result but achieved that via an analogous process. However, Mr Pagones is clearly an inventive individual, and it is apparent that there were multiple pathways available to address the problem, and that the production of a fibre cement product involves more than simply combining integers (that is, the curing process dictates what materials may be used and vice versa). Ultimately, Mr Pagones’ actions cannot be determinative one way or the other. The question is simply whether the notional skilled person would arrive at the claimed fibre cement products as a matter of routine.
[118] Opponent’s submissions in support at [118].
In seeking an alternative aesthetic fibre cement product there are clearly an array of options available to the skilled person, including through-pigment colour, fibre colour, paint, coating, embossing, and so on. However, as set out above the existence of “perhaps a large number” of routine pathways does not render each of those pathways inventive. I am satisfied on the evidence discussed above regarding the knowledge of synthetic fibres and their use in fibre cement products, that it would be a matter of routine for a skilled person to use pigments to produce a through-coloured cementitious matrix and also to use synthetic fibres, including pigmented synthetic fibres, to achieve desired mechanical or aesthetic properties.[119] While there must be a consideration of what curing process – principally air or autoclave – is appropriate to a given cement product, I am satisfied that this is also a matter of routine for the skilled person.[120]
[119] See, in particular, Pagones at [50]-[52], [58]-[59].
[120] Pagones at [99]-[106]. See also, e.g., D19 at [0061].
To the extent that the claims define a specific combination of colouration in the cementitious matrix and the pigmented synthetic fibre, I can see no invention in the selection of a particular colourway to achieve a specific aesthetic effect in circumstances where the relevant pigments and pigmented fibres required are available to the skilled person; it is not apparent to me that the choice of particular pigment colours in the cementitious matrix and the synthetic fibre can be considered the crossing of a barrier or “beyond the skill of the calling”. For this reason, I am unpersuaded by the applicant’s submissions[121] that the opponent’s case is fundamentally flawed because of Mr Pagones’ failure to identify the desirability of the use of white synthetic fibres prior to reviewing the specification.
[121] Applicant’s submissions in answer at [120]-[122].
It follows that I consider claims 1, 13 and 15 to lack inventive step in light of the common general knowledge.
Claim 2 defines that the synthetic fibres are polypropylene fibres. It is apparent from the evidence that this is a routinely used synthetic fibre, and accordingly I consider the claim 2 lacks inventive step.
Claims 3 and 4 define the thickness/linear density and length of the polypropylene fibres, defining thick/fat and short fibres, respectively. The applicant made additional comments in relation to these claims in particular, with which I substantially agree.[122] Mr Pagones explained that these parameters are such that the fibres are “essentially aesthetic” and the fibre cement products would not be functionally acceptable in the absence of additional fibres for mechanical reinforcement.[123] While these parameters are explicable in hindsight, it is not apparent to me that a skilled person would arrive at these values as a matter of routine. For example, Mr Pagones stated that cellulose fibres are typically short (2-2.5 mm) and “synthetic polymer fibres are much longer” and “generally give better bending performance due to their length”.[124] Accordingly, it has not been established that claims 3 and 4 lack inventive step.
[122] Applicant’s submissions in answer at [149].
[123] Pagones at [262].
[124] Pagones at [55]-[56].
Claims 5 and 6 relate to colour choice and for the reasons given above I consider these also lack inventive step.
Claim 7 defines that the black and/or coloured pigment is present at between about 2 to about 6 weight percent. Mr Pagones stated that “[c]onventional amounts of pigment added to FC product for through-colouring … were (and remain) 1% to 10% by weight.”[125] There is no evidence to the contrary, and accordingly I consider that the product of claim 7 would be arrived at as a matter of routine.
[125] Pagones at [263].
Mr Pagones indicated that titanium dioxide is “the most common, likely and obvious choice of pigment to use in a white-pigmented polypropylene (PP) fibre, particularly one in an FC product”.[126] I am satisfied that claim 8, which defines that the synthetic fibres are pigmented with titanium dioxide, lacks inventive step.
[126] Pagones at [263].
Claim 9 defines that the fibre cement product comprises calcium carbonate in amount of between about 5 and about 15 weight percent. In a Thick Butt Roofing Project report, the effect of the addition of 5 – 15% calcium carbonate on nailability is reported and it is concluded that the cellulose free product shall use 7.5 to 10% calcium carbonate.[127] Consistent with this, Mr Pagones stated that “5-15% by weight has been a conventional range of calcium carbonate for use in FC products throughout my career at James Hardie… to improve nailability and reduce density and weight of the FC products.”[128] There is no evidence to the contrary, and other documents in evidence refer to the inclusion of calcium carbonate as a fibre cement additive albeit without specifying a quantity.[129] Accordingly, I conclude that a skilled person would arrive at the fibre cement product of claim 9 as a matter of routine.
[127] Exhibit PP-03.
[128] Pagones at [273].
[129] D28 at page 12; EP 3112330 (Exhibit PP-13, D36) at [0041].
Claims 10-12 define that the fibre cement product is coated with a clear coating (claim 10) which comprises between about 0.5 and about 4 weight percent of a black and/or coloured pigment (claim 11) and wherein the pigment is selected from black, gray, green, blue, red and brown (claim 12). Mr Pagones indicated that “throughout my career at James Hardie it has been conventional to use a clear coating to protect the surface of an FC product”.[130] It is also apparent from the background section of EP 3112330 A1, discussed further below, that this is common. Accordingly, I consider a skilled worker would arrive at the subject matter of claim 10 as a matter of routine. Mr Pagones also stated with respect to coating preparations that “some of these coating preparations have included pigments, particularly black or dark oxides, to serve a ‘tinting’ function”[131] and that “0.5% to 4% by weight has been a conventional amount of pigment for a coating throughout my career at James Hardie.”[132] There is no evidence to contradict Mr Pagones on these points, and accordingly I conclude that the use of a coating as defined in claims 11 and 12 would be arrived at as a matter of routine.
[130] Pagones at [265].
[131] Pagones at [88].
[132] Pagones at [262]
It is apparent that air-curing is one of the (two) routine methods of curing fibre cement products. Claim 14, which defines that the fibre cement product is produced via air-curing, lacks inventive step.
In summary, I am satisfied that claims 1, 2 and 5-15 lack inventive step in light of the common general knowledge alone.
Obviousness in light of prior art documents
The opponent submitted that the claims lack inventive step in light of common general knowledge when supplemented by any one of D28, D36 or the Equitone products:
-WO 2016/096523 A1 (Exhibit PP-07, D28)
-EP 3112330 A1 (Exhibit PP-13, D36)
-Equitone [natura] and [natura pro] (Exhibit PP-12, the Equitone products)
D28 and D36 are patent applications published before the priority date for the opposed application and Exhibit PP-12 is a collection of documents relating to the products “Equitone [natura]” and “Equitone [natura pro]”. There is dispute between the parties regarding the availability of the Equitone documents as section 7(3) documents[133] and it is apparent that at least one of the documents was not publicly available until well after the priority date.[134] However, it is not necessary to form a concluded view regarding the evidence as to the publication of the Equitone documents as I have found they do not render the present claims obvious for reasons set out below. For completeness, I note the opponent’s submission that even if the Equitone documents provided in evidence were not publicly available before the priority date, the Equitone range of coloured products have been commercially available in the European market since 2008 and accordingly are “clearly” common general knowledge.[135] However, there is no indication that Mr Pagones was familiar with these products and I am not satisfied that commercial availability alone means that they formed part of the common general knowledge.
[133] Applicant’s submissions in answer at [73]-[78]; opponent’s submissions in reply at [49]-[52].
[134] Pagones at [236].
[135] Opponent’s submissions in reply at [51].
While section 7 as amended by the Raising the Bar Act does not require inventive step documents to be ascertained, understood and regarded as relevant, the problem to be solved remains relevant to the inventive step consideration. The Explanatory Memorandum makes clear that the question remains whether a skilled person faced with the same problem would have taken routine steps to arrive at the claimed invention:
“While a skilled person is essentially deemed to be aware of and to have carefully read the publically available information, the inventive step tests are otherwise applied in the context of what the skilled person would have known and done before the priority date of the claims in question. The tests will therefore continue to take account of factors such as whether the skilled person would have understood and appreciated the relevance of the prior art to the problem the invention was seeking to solve and whether it would be considered a worthy starting point for further investigation or development.”[136]
[136] Explanatory Memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (Cth) at page 43.
D28 is directed to improved polypropylene fibres for the production of fibre cement products. D28 refers to the use of colour additives such as pigments to produce through-coloured fibre cement products.[137] As set out above, the only reference to coloured polypropylene fibres is separate from the reference to through-coloured products and in the context of optional additives:
“For example, in certain embodiments, when the filaments are desired to have a certain color, the mixture can include suitable coloring agents, such as dyes or other pigments, which are added to the mixture via a so-called master-batch.”[138]
[137] D28 at page 31, lines 7-9.
[138] D28 at page 17, lines 1-3.
This mention seems to treat dyes and pigments merely as alternatives when a particular colour is desired and, as discussed above, this passage supports a view that it was known that coloured synthetic fibres may be included in fibre cement products. For the same reasons as given in relation to the common general knowledge alone, I consider that in light of D28 and the common general knowledge, the claimed invention lacks inventive step. With respect to claim 3, while D28 refers to polypropylene fibres having a linear density of up to 75 dtex per filament, such fibres are not exemplified and noting Mr Pagones’ comments regarding high linear densities,[139] I am not satisfied that the evidence establishes that a skilled person would use such fibres as a matter of routine.
[139] For example, Pagones at [262]: “At 70 dtex and 110 dtex, the polypropylene fibres would not intertwine much and this would likely result in reduced bendability and mechanical strength of the FC product unless cellulose or other fibres were also intended to serve those mechanical functions.”
D36 discloses through-coloured fibre cement products coated to minimise efflorescence, that is, the tendency of salts present within the fibre cement structure to migrate to the surface leading to undesirable white spots.[140] D36 provides at least one coating layer having a pigment volume concentration of between about 1 % and about 20 % to avoid the visible defects caused by efflorescence.[141] While D36 discloses the inclusion of synthetic fibres in the fibre cement product,[142] it does not disclose use of pigmented synthetic fibres[143] or provide any motivation towards their use, given that it relates to the provision of an aesthetic effect via another route. I do not consider D36 to lead a skilled person as a matter of course to the claimed invention.
[140] D36 at [0003]-[0005].
[141] D36 at [0011].
[142] D36 at [0042], [0069]-[0070].
[143] Pagones at [273].
The Equitone product documents include a material sampler, a material information sheet, a price list, and an environmental product declaration. These documents provide some images and information concerning Equitone products, with the opponent focused on the [natura] and [natura pro] product lines. Equitone [natura] is described as “a through-coloured façade material … subtly displaying the raw texture of the core eternit fibre cement material.”[144] This product is said to contain, relevantly, cellulose fibres, polyethylene fibre fillers and polyvinyl alcohol fibres.[145]
[144] Exhibit PP-12.
[145] Exhibit PP-12.
Based on the images and descriptions of the Equitone products, Mr Pagones stated that he understands the Equitone [natura] and [natura pro] products to be through-coloured fibre cement products containing synthetic fibres with:
“visible white specks or lines on their surfaces, which I understand to be the polyethylene (PE) and/or polyvinyl alcohol (PVA) fibres (which are naturally white in colour, and could also have been pigmented white) given the surface is promoted as ‘subtly displaying the raw texture of the core fibre cement material’ and further that ‘The appearance of the fibre cement panels EQUITONE [natura] and [natura pro] is embossed to a large extent by natural raw materials’”.[146]
[146] Pagones at [244].
The opponent submitted that the Equitone products “disclose, expressly or implicitly or inferentially, virtually all of the features of claim 1”[147] and elaborated:
“The Equitone [natura] and [natura pro] Product Documents describe and depict colored FC products comprising white synthetic fibers which are clearly visible on the surface and contrast with the dark cementitious material. The use of pigments (such as inorganic oxides) to color the cementious and synthetic fiber components of the Equitone [natura] and [natura pro] FC products is evident, or at least a readily available inference, from the stark contrast between the colors of those components in the pictures within the Product Documents. Considering the Equitone [natura] and [natura pro] Product Documents would reinforce the skilled addressee’s expectations and motivations in seeking to create an FC product with a dark cementitious color (through-color) and contrasting white fibers that are clearly visible, with pigment the clear choice for both color aspects to achieve color fastness and stability.”
[147] Opponent’s submissions in support at [126].
The applicant submitted that the documents concerning the Equitone products merely establish that these fibre cement products have a pigmented cementitious matrix and display the natural texture of the fibre cement composite.[148] The applicant questioned the basis for Mr Pagones’ conclusion that synthetic fibres provide visible white specks/lines on the products:
“It is curious that Mr Pagones makes these comments. It is not apparent from the documents he reviewed that the products do have visible white specks or lines or if they do, what creates that appearance. He did not inspect a physical sample of the products. Further, Mr Pagones’ speculation that the fibres were pigmented white indicates that he already had the invention in suit in mind when he made these comments.”[149]
[148] Applicant’s submissions in answer at [79].
[149] Applicant’s submissions in answer at [81].
Certainly, there is no evidence to establish that the synthetic fibres in the Equitone products were pigmented white and Mr Pagones simply noted that “fibres such as native polyethylene (PE) and polyvinyl alcohol (PVA) fibres have a white colour and the white fibres are apparent”[150] in the Equitone products and opines that they “could” have been pigmented.
[150] Pagones at [264].
On balance, I am not satisfied that these documents, which do not explicitly reference fibre colour at all, nor identify what specific aspect of the composition has given rise to any visible white features on the product surface, would be either be considered a worthy starting point when addressing the problem, or directly lead the notional skilled worker to the claimed invention.
Conclusion
Claims 1, 2 and 5-14 lack inventive step in light of the common general knowledge, and the common general knowledge combined with D28. It has not been shown that claims 3 and 4 lack inventive step.
Utility
Paragraph 18(1)(c) of the Act requires that the claimed invention be useful. Greenwood J summarised the principles of utility in Artcraft Urban Group Pty Ltd v Streetworx Pty Ltd:
“The ‘basic principle’ of inutility is that if an invention ‘does what it is intended by the patentee to do, and the end attained is itself useful, the invention is a useful invention’. What the invention is ‘intended’ to do is a matter to be gathered from the ‘title and the whole of the specification’.
Put another way, the two questions are: first, what is the promise of the invention derived from the whole of the specification?; second, by following the teaching of the specification, doe the invention, as claimed in the patent, attain the result promised by the patentee? Further, ‘everything’ that is within the scope of a claim must be useful, that is, attain the result promised for the invention by the patentee.”[151]
[151] [2016] FCAFC 29 at [120]-[121] (citations omitted).
The latter point was put by Emmett J in H Lundbeck A/S v Alphapharm Pty Ltd as:
“A claim is bad if it covers means that will not produce the desired result, even if a skilled person would know which means to avoid. That is to say, everything that is within the scope of a claim must be useful, otherwise the claim will fail for inutility.”[152]
[152] [2009] FCAFC 70 at [81] (citations omitted).
However, I note Beach J’s observation regarding construction of the specification:
“…the specification (including the claims) must be construed from the perspective of a skilled person, but not in a way that such a person would appreciate would lead to unworkability when by construction it could be given a more limited but workable meaning.”[153]
[153] Sequenom, Inc. v Ariosa Diagnostics, Inc. [2019] FCA 1011 at [799] (‘Sequenom’). See also Welch Perrin & Co Pty Ltd v Worrel [1961] HCA 91; 106 CLR 588 at page 602.
I also note that section 7A of the Act provides that for an invention to be considered useful the specification must disclose a specific, substantial and credible use for the invention. However, this requirement is additional to the requirement that the claimed invention must achieve the promised benefit[154] and the opponent’s submissions relate only to a failure to achieve the promised benefit.
[154] Explanatory Memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (Cth) at page 44.
The opponent submitted that the scope of the invention claimed is the use of a black and/or coloured pigment in a cementitious mixture and white-pigmented synthetic fibre to provide “a colored fibre cement product” (opponent’s emphasis).[155] However, the opponent noted that each of the claims of the opposed application includes within their scope fibre cement products in which the only fibres present are synthetic fibres having an average length of about 1 mm to 2 mm or a linear density of 70 dtex to 110 dtex, such that the product would not have the required or acceptable mechanical properties, such as strength and bendability,[156] elaborating:
“A short fiber length of 1 mm to 2 mm, rather than the more usual 10 mm to 20 mm used for polypropylene fibers (e.g., as we used in the Artisan FC roofing shake products after testing shorter fibers in the Thick Butt Roofing Project), would be an obvious choice to reduce the mass/weight of thick/fat fibers with a high linear density of 70 dtex to 110 dtex. If such thick/fat fibers were also long, they would create difficulties during the manufacturing process as the slurry or paste would not dewater properly, the layers would not form properly on the Hatschek roller (if that process was used) and the dispersion of the fibers in the cement would be poor leading to significant clumps and poor intertwining. Having the short length of the thick/fat fibers is therefore critical to making them useable and visible in the final product. However, other fibers (such as cellulose) would be required to provide the mechanical properties, as such short synthetic fibers would not provide adequate mechanical properties such as strength and bendability. Such short synthetic fibers, especially if 70 dtex to 110 dtex linear density, would therefore be essentially esthetic the FC products would not be functionally acceptable without also including cellulose or other fibers for mechanical reinforcement. See Pagones, [262], item 4.1. Accordingly, the claims of the Opposed Application lack utility.
Each of the claims of the Opposed Application includes within its scope FC products in which the only fibers present are synthetic fibers having a “thickness” (or linear density) of 70 dtex to 110 dtex, without any synthetic fibers with a lower ‘thickness’ (or linear density) and without any cellulose or other fibers present, such that the FC products do not have the required or acceptable mechanical properties such as strength and bendability. A synthetic fiber having a ‘thickness’ (or linear density) would not intertwine much and this would likely result in reduced bendability and mechanical strength of the FC product unless cellulose or other fibers were also included to serve those mechanical functions. See Pagones, [262], item 4.1. Accordingly, the claims of the Opposed Application lack utility.”[157]
[155] Opponent’s submissions in support at [128].
[156] Opponent’s submissions in support at [129].
[157] Opponent’s submissions in support at [130]-[131].
The opponent referred to Mr Pagones’ evidence to support a conclusion that certain properties are required of fibre cement products, including workability, handleability, strength and durability.[158]
[158] Opponent’s submissions in reply at [89].
The applicant submitted that fibre cement products can be used for a wide variety of purposes such that there are no common minimum properties for fibre cement products.[159] Moreover, in the applicant’s submission, Mr Pagones’ evidence shows that a person skilled in the art can control various parameters to affect the required mechanical properties.[160] As such, the applicant submitted that “it is within the knowledge of the person skilled in the art to control these parameters to achieve a fiber cement product with the desired mechanical properties and therefore a useful product.”[161]
[159] Applicant’s submissions in answer at [182]-[183].
[160] Applicant’s submissions in answer at [185].
[161] Applicant’s submissions in answer at [186].
I consider that the specification promises a fibre cement product with aesthetic as well as mechanical properties, with the specification stating:
“Additionally [to the aesthetic appeal] and even more importantly, the fiber cement products of the present invention were observed to have very good mechanical and physical properties.”[162]
[162] Specification at page 1, lines 30-31.
It would appear based on Mr Pagones’ evidence that a product in which the only fibres were high linear density/short synthetic fibres would not provide “very good” mechanical and physical properties. However, I am not persuaded that such a product properly falls within the scope of the claims. Mr Pagones stated that he understands fibre cement products to include “reinforcing fibres”[163] and I consider this would similarly be the understanding of the skilled person in the context of the present specification. As such, in my view the skilled person would understand that the claims require more than just aesthetic fibres, and that additional reinforcing fibres, either synthetic or natural, would be required to produce a “fiber cement product”. It follows that I consider this a case as alluded to by Beach J in Sequenom where a skilled person would construe the claims in a manner that does not give rise to unworkability.
[163] Pagones at [40]-[45].
The opposition is unsuccessful on this ground.
Section 40
Section 40, as amended by the Raising the Bar Act, relevantly requires that the complete specification disclose the invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art (section 40(2)(a)) and include the best method of performing the invention known to the applicant at the filing date (section 40(2)(aa)), and that the claim or claims be supported by matter disclosed in the specification (section 40(3)).
The relevant considerations with respect to each of these grounds are well understood and I do not propose to repeat them at length. It suffices to say that to comply with section 40(2)(a) it is necessary that the invention be able to performed across the full scope of the claims without undue experimentation,[164] to comply with section 40(3) the claims should correspond to the technical contribution to the art disclosed in the specification,[165] and, while what is required to satisfy section 40(2)(aa) will depend on the nature of the invention, this is a provision underpinned by principles of good faith and obliges disclosure of the best method known to the applicant at the filing date to allow the public the full benefit of the invention at the expiration of the monopoly.[166]
[164] See, e.g., Cytec Industries Inc. v Nalco Company [2021] FCA 970 at [145]-[146].
[165] See, e.g., ToolGen Incorporated v Fisher (No 2) [2023] FCA 794 at [394]-[395].
[166] Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27 at [108].
The opponent submitted that the specification failed to comply with each of these requirements for the following reasons:
·where the claims encompass a white-coloured pigment in the cementitious matrix and synthetic fibres coloured with a white pigment, there is no explanation in the specification of how the combination could achieve a nice contrast between the black or dark-coloured base colour of the product and the bright white colour of the synthetic fibres;
·fibre cement products made with only short synthetic fibres would not have acceptable mechanical properties; and
·fibre cement products made with only thick synthetic fibres would not have acceptable mechanical properties. [167]
[167] Opponent’s submissions in support at [135]-[137].
With respect to the first consideration, the opponent submitted:
“The scope of the invention as claimed is directed to the use of a black and/or a colored pigment in a cementitious matrix and pigmented synthetic fibers with at least one white pigment. Page 11, lines 1 to 4 and 11 to 15 of the Opposed Application describes that the term “color pigment” means a prime pigment and the term ‘prime pigment’ is defined as any pigment capable of providing whiteness and/or color to a substance while also contributing significantly to the hiding power of said substance. The scope of the invention as claimed includes combinations of cementitious matrix comprising only white pigment and synthetic fibers ‘pigmented’ only with white pigment. There is no explanation in the specification of the Opposed Application of how such combinations could achieve the stated objective of the invention of providing ‘the nice contrast between the black or dark-colored base color of the product and the bright white color of the synthetic fibers’ (Opposed Application, page 1 lines 27-28). Accordingly, the scope of the claims is not supported by matter disclosed in the specification, the complete specification does not disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art, and the Applicant has not disclosed the best method of performing the invention known to it at the filing date of the Opposed Application.”[168]
[168] Opponent’s submissions in support at [135].
However, the applicant submitted that the opponent’s submission in this regard is based on a misreading of the relevant passages of the specification.[169] Specifically, the applicant referred to the full definition of “color pigment” as “a prime pigment, capable of selectively absorbing light and providing color to substance”. I note that, in contrast, “white pigment” is defined as “a prime pigment, capable of scattering light and providing whiteness and hiding in flat or glossy substance.” Moreover, as noted by the opponent, the specification states that “[p]rime pigments can be subdivided into white pigments and color pigments.”[170] My understanding of the specification is that reference to colour pigments includes only coloured prime pigments and references to white pigments includes only white prime pigments, i.e. those two definitions refer to exclusive subsets of prime pigments. Accordingly, I agree with the applicant that the specification makes clear that the claims do not encompass the presence of only a white pigment in the cementitious matrix.
[169] Applicant’s submissions in answer at [187].
[170] Opponent’s submissions in reply at [92], quoting the specification at page 11, line 3.
The opponent’s submissions regarding the second and third points above are substantially the same as those made in relation to utility. Accordingly, the applicant’s submissions in answer are also similar, focusing on the lack of evidence as to minimum mechanical properties required of a fibre cement product (and of the properties of products falling within the scope of the claims) and arguing that the specification, together with the common general knowledge, provides sufficient information to the person skilled in the art to enable them to create a fibre cement produce having the mechanical characteristics required for the intended purpose, noting that fibres in addition to white pigmented synthetic fibres may be included in the product.[171]
[171] Applicant’s submissions in answer at [190]-[195].
For the reasons given above I do not consider that the claims properly construed include the unworkable embodiments identified by the opponent, and there is no evidence to suggest that so understood the invention as claimed could not be performed by a person skilled in the relevant art or exceeds the contribution to the art, or that the applicant has not disclosed the best method known to it of performing the invention at the filing date.
It follows that the opposition is unsuccessful with respect to the section 40 grounds.
Conclusion
The opposition is successful; claims 1, 2 and 5-15 lack inventive step. I will allow the applicant an opportunity to propose amendments to overcome this finding.
Costs
It is usual in matters before the Commissioner that costs follow the event and I see no reason to depart from that approach. I will award costs according to Schedule 8 against the applicant.
Dr S. J. Smith
Delegate of the Commissioner of Patents
Annex A: Claims
1. A colored fiber cement product at least comprising:
- a cementitious matrix comprising a black pigment and/or a colored pigment, and
- synthetic fibers, wherein said synthetic fibers are pigmented with at least one white pigment.
2. The colored fiber cement product according to claim 1, wherein said synthetic fibers are
polypropylene fibers.
3. The colored fiber cement product according to claim 1 or 2, wherein said synthetic fibers are polypropylene fibers having a thickness of between 70 dtex and 110 dtex.
4. The colored fiber cement product according to any one of claims 1 to 3, wherein said synthetic fibers are milled polypropylene fibers having an average length of about 1 mm to about 2 mm.
5. The colored fiber cement product according to any one of claims 1 to 4, wherein said
cementitious matrix comprises a black pigment and/or a colored pigment chosen from the group consisting of a gray pigment, a green pigment, a blue pigment, a red pigment and a brown pigment.
6. The colored fiber cement product according to any one of claims 1 to 5, wherein said black pigment and/or said colored pigment is chosen from the group consisting of a gray iron oxide, a black iron oxide, a brown iron oxide and carbon black.
7. The colored fiber cement product according to any one of claims 1 to 6, wherein said black pigment and/or said colored pigment is present in an amount of between about 2 weight % and about 6 weight % (compared to the total dry weight of the fiber cement composition) of said fiber cement product.
8. The colored fiber cement product according to any one of claims 1 to 7, wherein said synthetic fibers are pigmented with at least one white pigment, which is titanium oxide (TiO2).
9. The colored fiber cement product according to any one of claims 1 to 8, which further comprises limestone (CaCO3) in an amount of between about 5 weight % and about 15 weight % (compared to the total dry weight of the fiber cement composition of said fiber cement product).
10. The colored fiber cement product according to any one of claims 1 to 9, which is coated with a clear coating.
11. The colored fiber cement product according to claim 10, wherein said clear coating comprises between about 0.5 weight % to about 4 weight % (compared to the total dry weight 5 of the fiber cement composition of said fiber cement product) of a black pigment and/or a colored pigment.
12. The colored fiber cement product according to claim 11, wherein said clear coating comprises a black pigment and/or a colored pigment chosen from the group consisting of a gray pigment, a green pigment, a blue pigment, a red pigment and a brown pigment.
13. A method for the manufacture of a colored fiber cement product according to any one of claims 1 to 12, comprising at least the steps of:
a) Providing a fiber cement slurry at least comprising water, cement, a black pigment and/or a colored pigment, and synthetic fibers, characterized in that said synthetic fibers are pigmented with at least one white pigment;
b) Manufacturing a fiber cement product by means of a fiber cement production process starting from the fiber cement slurry provided in step a);
c) Curing the fiber cement product, so as to obtain said fiber cement product.
14. The method according to claim 13, wherein said step c) of curing the fiber cement product
comprises air-curing the fiber cement product.
15. Use of a colored fiber cement product according to any one of claims 1 to 14 as a building
material.
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