James Hardie Technology Limited v Etex Services NV - [2022] APO 14

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
James Hardie Technology Limited v Etex Services NV [2022] APO 14
Patent Application: 2018201569

Title:Hydrophobized Fiber Cement Product Comprising At Least One Profiled Surface

Patent Applicant: Etex Services NV

Opponent:James Hardie Technology Limited

Delegate:R Subbarayan

Decision Date: 24 February 2022

Hearing Date: 5 October 2021, in Video Conference

Catchwords: PATENTS – opposition to grant of patent – manner of manufacture - whether claims lack threshold level of inventiveness – whether claims lack inventive step – whether claims lack support – lack of inventive step established – costs awarded

Representation: Patent attorney for the applicant: Chris Schlicht and Matthew Overett of Phillips Ormonde Fitzpatrick
Counsel for the opponent: Cynthia Cochrane
Patent attorney for the opponent: Duncan Longstaff and Jonathan Wright of Spruson & Ferguson

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2018201569

Title:Hydrophobized Fiber Cement Product Comprising At Least One Profiled Surface

Patent Applicant: Etex Services NV
Date of Decision: 24 February 2022
DECISION

All claims lack an inventive step.
Subject to appeal, the applicant has a period of two months from the date of this decision to file amendments that would overcome the adverse finding in relation to inventive step.
Costs awarded against Etex Services NV.
REASONS FOR DECISION
BACKGROUND

Patent application AU2018201569 in the name of Etex Services NV (the applicant) was filed on 5 March 2018 as a divisional application of AU2014320551 and through this parent application claims an earlier priority date of 13 September 2013. Following examination, it was advertised as accepted on 18 April 2019. A notice of opposition to the grant of the patent was filed by James Hardie Technology Limited (the opponent) on 18 July 2019. Following the filing of evidence in support and evidence in answer, on 28 April 2020 the applicant filed a statement of proposed amendments that included a new set of claims. These amendments were advertised as having been allowed on 27 August 2020. The matter was heard by videoconference on 5 October 2021.
GROUNDS OF OPPOSITION
The Statement of Grounds and Particulars states that the application is being opposed under the grounds Manner of Manufacture, Novelty, Inventive Step, Utility, Disclosure and Support. However, at the hearing the opponent only pressed the grounds of Manner of Manufacture, Inventive Step and Support.
EVIDENCE
Evidence in support from the opponent comprises the following:
·Declaration by Adrian Thomas dated 14 January 2020 with exhibits AT-1 to AT-16 (Thomas)
·Declaration by James Albert Gleeson dated 15 January 2020 with exhibits JAG-1 to JAG-14 (Gleeson)
Evidence in answer from the applicant comprises the following:
·Declaration by Anthony M Cooke dated 20 April 2020 with exhibits TMC-1 to TMC-4 (Cooke)
·Declaration by Frank Van den Bergh dated 20 April 2020 with exhibits FVDB-1 to FVDB-2 (Van den Berg)
Evidence in reply from the opponent comprises the following:
·Declaration by Maree Anast dated 21 December 2020 with exhibits MA-1 to MA-4 (Anast)
Regulation 5.23
On 3 March 2021, the applicant filed a declaration from Joyce Mareels, who is an R&D engineer with Etex, with a request that the Commissioner consult this under regulation 5.23 of the Patents Regulations 1991. In this declaration Ms Mareels present some results of experiments relating to penetration of water borne hydrophobation agents on milled FRC substrates she conducted for purposes that have nothing to do with the present opposition and that based on these experimental results she opines that milling does not appreciably increase the density of the milled surface as suggested by the opponent’s experts. The Commissioner wrote to the parties that this request would be determined as part of hearing and deciding the substantive opposition, rather than on an interlocutory basis.
On 9 September 2021, the applicant filed another five documents with a request that these be consulted as well under regulation 5.23. These relate to information pertaining to the Mareels’ experiments that the opponent sought to acquire from the applicant.
On 20 September 2021 as part of their written submissions for the hearing, the opponent filed a second declaration from Maree Anast with a request that the Commissioner consult this document under regulation 5.23. In this second declaration Ms Anast merely provides copies of product information sheets of one of the water borne silane hydropobation agents used in the tests of the opposed application.
The Commissioner again wrote to the parties that these requests would be determined as part of hearing and deciding the substantive opposition.
At the hearing, the parties made submissions as to the relevance of Mareels and second Anast declarations and why they should or should not be brought into the proceedings. I advised the parties that I would consider their submissions as part of my deliberations and if I decide to bring them into the proceedings, I would advise the parties and invite any further submissions as appropriate.
On 15 October 2021, before I had had a chance to consider the regulation 5.23 requests, the applicant advised the Commissioner that they withdraw their regulation 5.23 requests of 3 March and 9 September as they considered that the evidence already filed is sufficient for me to make my decision. The opponent did not provide any comments on this withdrawal.
Regulation 5.23 gives the Commissioner the power to consult documents that are relevant to the opposition, have not been filed in evidence and are available in the Patent Office. In line with the decision in Merial Limited v Bayer Intellectual Property GmbH [2015] APO 16, the Commissioner will only consult these documents if the information in them is likely, if not certain, to change the outcome of the opposition in a significant way. Although I can still consult the documents filed by the parties even if they have subsequently advised that they do not intend to rely upon these documents anymore, I have formed the view from a quick perusal that the relevance of the documents filed by the applicant and the opponent is such that they are unlikely to change the outcome of the opposition in a significant manner. As submitted by the opponent, the Mareels experiments were not in relation to the present opposition and furthermore there is no indication whether any visual traces were noticed in the test results. I also note that Ms Anast is not an independent expert. The product information sheets provided in the second Anast declaration are also unlikely to add anything of significance to my considerations. I have therefore decided not to bring these documents into the current proceedings under the provisions of regulation 5.23.
The Relevant Law and Onus
The present opposition is governed by the Patents Act 1990 (the Act) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act) as the opposed application was filed after 14 April 2013. As a consequence, the Commissioner may, under section 60(3A), refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists.
It is well settled that the Opponent has the onus of establishing the facts supporting the grounds of opposition, and this applies even though the standard of proof is “the balance of probabilities”.
SPECIFICATION
The present invention relates to a method of hydrophobising a fibre cement product having a profiled surface.
Fibre cement, or fibre reinforced cement (FRC), is a composite material made of cement reinforced with cellulose fibres. It is a building and construction material that is used in roofing and façade products.
The specification notes that water can have a deleterious effect on FRC products if it penetrates into the product.
“Fiber cement products are well known. However under some weather conditions, typically under humid conditions, water can penetrate into the fiber cement matrix of the product. In general, fiber cement products need to be protected to penetrating water, as the water may negatively influence the mechanical properties, resistance to weather conditions such as frost, the aging of the product and in some cases the appearance of the fiber cement product.
As an example, by slowly dissolving salts present in the matrix, the water can function as a carrier to bring the salts to the surface. This effect, called efflorescence, causes white traces to become visible on the surface.
To avoid these negative effects, agents which cause the fiber cement product to be more hydrophobic, hydrophobation agents, are used and applied to the surface of the fiber cement product. As such, water is to a large extent prevented to penetrate into the fiber cement matrix, reducing the efflorescence to a large extent”[1].
[1] Specification at page 1, lines 10-23
The specification however notes that there are certain problems with hydrophobising profiled FRC products.
“However it was noticed that, when applying typical hydrophobation agents to a profiled, such as milled, surface, the hydrophobation agent itself leaves traces in
the surface after being applied and dried”[2].
“When a silane- and/or siloxane-base, water diluted liquid is used, it was found that
white residue traces were noticed on the profiled surface of the fiber cement product.
Using solvent diluted silane- and/or siloxane-based liquids to provide improved hydrophobic properties to the fiber cement product, often, but not always, discolored
spots are visible. Both visual effects are noticed as defects, causing the fiber cement
[2] Specification at page 1, lines 24-26
[3] Specification at page 3, lines 1-6
product to be either rejected or considered as impaired”[3].
The object of the invention is therefore stated to be “to provide a fiber cement product having at least one profiled, typically milled, surface, to which a hydrophobation agent is applied without leaving traces of this hydrophobation agent”[4].
[4] Specification at page 1, lines 29-31
This object is stated to be achieved by applying a water-free silane-based liquid to the at least one profiled surface produced by milling and allowing it to penetrate into the FRC product.
“According to an aspect, the invention provides a method for improving the hydrophobic properties of a fiber cement product comprising at least one profiled surface, said method comprises the steps of
• Providing a fiber cement product comprising at least one profiled surface, wherein the profiled surface is provided by milling the fiber cement product;
• Applying a water-free silane-based liquid to the at least one profiled surface; and
• Allowing said water-free silane-based liquid to penetrate into the fiber cement product”.
The specification notes that the water-free silanes were able to better penetrate in the corners of the profiled FRC product without leaving visual traces.
“Though the reason is not fully understood, water-free and preferably also solvent-free silane-based liquid, when used as hydrophobation agent on profiled fiber cement products, in particularly having recesses or groves along its surface, was found to penetrate in the fiber cement material also along the inside corners of the recessions, without leaving visual traces”[5].
[5] Specification at page 3, lines 26-30
The specification then describes tests that were carried out on a profiled FRC product in which the profile was created by milling. One such profiled product is shown in figures 1a and 1b that are reproduced below.
After the profile was formed using appropriate milling tools, the profile surface was treated by spraying with different hydrophobation agents so that the agents penetrated into the profiled surface to an average depth D thereby forming zone 120 in which the hydrophobation agent is present in the porous FRC matrix. The agents used in the tests were as per Table 1 that is reproduced below of which agents 1-3 were water-based and silane-based liquids, agents 4 to 9 were water-free silane-based liquids and agents 4, 6-8 were also solvent-free silane-based liquids.
The treated profiled surfaces were then tested for hydrophobicity using the RILEM Test No 11.4
in horizontal application. Also, the presence of any white residue of the hydrophobation agent was noted (yes or no), and the beading effect of the hydrophobation agent was characterized using a ranking of 1 to 5. The results are set out in Table 2 that is reproduced below.
The application was accepted without any amendments to the specification. However, as noted earlier the claims have been since amended and now read as follows.
1. A method for improving the hydrophobic properties of a fiber cement product comprising at least one profiled surface, said method comprises the steps of
• Providing a fiber cement product comprising at least one profiled surface, wherein the profiled surface is provided by milling the fiber cement product;
• Applying a water-free silane-based liquid to the at least one profiled surface; and
• Allowing said water-free silane-based liquid to penetrate into the fiber cement product.
2. The method according to claim 1, wherein said water-free silane-based liquid is a solvent-free silane-based liquid.
3. The method according to claim 1 or claim 2, wherein a water-free silane-based liquid is applied to the at least one profiled surface in an amount of less than 150 g/m², and more than 10 g/m².
4. The method according to any one of the preceding claims, wherein the fiber cement product is a fiber cement plate.
5. The method according to any one of the preceding claims, wherein the fiber cement product is a fiber cement plate having at least one profiled surface comprising at least one groove provided by milling the fiber cement plate.
6. The method according to claim 5, wherein the profiled surface comprises a plurality of said grooves being equally distributed over said surface, said grooves all have a uniform direction and a uniform depth.
7. The method according to claim 5 or claim 6, wherein said grooves have a trapezoid cross section in a section according to a plane perpendicular to the direction of the groove, said grooves having a flat bottom and two flanks, the angles between the bottom and each of said flanks is in the range of 90° to 160°.
8. The method according to any one of claims 1 to 7, wherein applying said water-free silane-based liquid is done by spraying said water-free silane-based liquid onto the profiled surface.
9. The method according to any one of claims 1 to 7, wherein applying said water-free silane-based liquid is done by brushing or rolling said water-free silane-based liquid onto the profiled surface.
10. The method according to any one of claims 1 to 9, wherein the provision of a fiber cement product comprising at least one profiled surface comprises the provision of a green fiber cement plate using a Hatschek process, and profiling at least one surface of said fiber cement plate after curing of the green fiber cement plate.
11. The method according to claim 10, wherein the green fiber cement plate is cured using autoclave curing.
12. The method according to any one of claims 1 to 11, wherein the water-free silane-based liquid comprises alkyltriethoxysilane.
13. The method according to any one of claims 1 to 12, wherein the water-free silane-based liquid further comprises one or more oligomer siloxanes.
14. The method according to any one of claims 1 to 13, wherein the obtained fiber cement product has a water take up of less than 1.5 mL after 48 hours as measured by the RILEM Test No 11.4 in horizontal application.
15. A fiber cement product comprising at least one profiled surface obtained according to any one of the preceding claims.
16. Use of a water-free silane-based liquid to improve the hydrophobic properties of the profiled surfaces of a fiber cement product having at least one profiled surface, wherein the profiled surface is provided by milling the fiber cement product.
INVENTIVE STEP
The statutory basis for inventive step is set out at s7(2) and s7(3) of the Act, and is reproduced below:
(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) 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.
The test for obviousness is whether it would have been a matter of routine to proceed to the claimed invention.
“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.” (Aicken J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; (1981) 148 CLR 262 at 286)
The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 at [51] - [53] also approved the approach taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187 in which Graham J had posed the reformulated Cripp’s question:
“Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce a useful [desired result]?”
In AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 (AstraZeneca), the Full Court held at [203] that in formulating the problem it is not permissible to incorporate information that is not available to the person skilled in the art either as common general knowledge or information available under subsection 7(3).
In relation to what level of inventiveness is required to sustain a patent, the Full Federal Court in Garford Pty Ltd v Dywidag Systems International Pty Ltd [2015] FCAFC 6 stated as follows at [44]:
“The inventiveness required to sustain a patent for a claimed invention is quite small. A “scintilla” of inventiveness is all that is required: Alphapharm at [195]. However, there must still be “some difficulty overcome, some barrier crossed” (per Lockhart J in RD Werner & Co Inc v Bailey Aluminium Products Pty Ltd [1989] FCA 57; (1989) 25 FCR 565 at 574) or some contribution to the art “beyond the skill of the calling” (Allsop Inc v Bintang Ltd [1989] FCA 297; (1989) 15 IPR 686 at 701)”.
Problem to be Addressed
The applicant has submitted that as mentioned in the specification, when a water diluted silane- and/or siloxane-based hydrophobation agent, is applied to a profiled surface produced by milling, the hydrophobation agent itself leaves white residue traces on the surface after it has dried and that this is the problem that the claimed invention seeks to address. This is confirmed by the inventor Mr Van den Berg in his declaration[6].
[6] Van den Berg at [22]-[23]
The opponent has questioned the applicant’s characterisation of the technical problem on the basis that this technical problem is neither common general knowledge or disclosed in any of the s7(3) information and furthermore the claimed invention makes no reference to the presence or absence of any such traces on the surface of the FRC product. They submitted that the technical problem addressed by the claimed invention is the need to improve the hydrophobicity of a FRC product to which a silane- and/or siloxane-based, water-diluted liquid had been applied.

As noted earlier, the Full Court in AstraZeneca held that when assessing inventive step, the problem that is identified as the starting point for the invention should be one that is either common general knowledge or disclosed in s7(3) information. All the experts including Mr Thomas and Mr Cooke have clearly stated that they were never aware that when a fibre cement substrate having a profiled surface produced by milling was hydrophobated with a water borne silane agent, white residue traces would occur at the corners of the milled surface. There is also no recognition of this problem in any of the s7(3) prior art. Hence, the applicant’s characterisation of the technical problem cannot be the proper starting point for assessing whether the claimed invention is obvious. Although the applicant has also submitted that as the only hydrophobation agents that were used with FRC products at the priority date were water borne agents, the person skilled in the art would have inevitably encountered the problem of residue traces when such agents were used with a milled profiled surface and hence their characterisation of the problem is still valid, I remain unconvinced. As will be clear later in this decision, I am not satisfied that water borne hydrophobation agents were the only agents known to be used on FRC substrates and furthermore, there is no suggestion in the specification that the problem of white traces would occur with any water borne agent irrespective of other parameters such as concentration, rate of application, method of applying etc.
However, I also do not accept the opponent’s overly broad characterisation of the technical problem as it does not take into consideration the claimed limitation of the FRC product having a profiled surface that is formed by milling.
In my view, the problem that the claimed invention seeks to address is to find a suitable hydrophobating agent for a FRC substrate having a profiled surface produced by milling. I do however note that if the solution that the person skilled in the art comes up with first is the use of a water borne silane agent and if by using such an agent, the person skilled in the art notices the issue of white residue traces (as alleged in the opposed application) the applicant’s characterisation of the problem may well then be an additional problem that the person skilled in the art needs to resolve.
The Person Skilled in the Art (PSA)
The opponent has submitted that the person skilled in the art is a team comprising:
a)a person with experience in the development, formulation and production of fibre reinforced cement; and
b)a chemist with experience in surface coating and surface treatments, in particular hydrophobic agents.
The applicant has not disputed this or provided an alternative opinion on the PSA.
Given that the claimed invention is all to do with overcoming the problems associated with water based hydrophobation agents for FRC products with a milled profiled surface, I am satisfied that the opponent’s submission in relation to the PSA is a fair representation of the PSA in relation to the claimed invention.
Mr Gleeson has been working as a consultant since 2017 providing consulting services in the field of building materials, building design, and construction. Prior to that he worked with the opponent James Hardie from 1992 to April 2017 in a variety of roles including research and development of FRC products and systems for interior and exterior applications including façade panel products and flooring products. It is evident from his resume that he has extensive experience in the development, formulation and production of FRC products.
Mr Thomas is an independent expert who holds a Bachelor of Science in Chemistry and has 45 years of experience in the surface coatings industry, including 12 years with Wacker Chemicals Australia Pty Ltd, a supplier of silicone, silane and siloxane-based hydrophobation agents, for use as surface coatings on cement-based substrates and concretes. Since 1999 he has been a consultant through his own company Chemicalia Pty Ltd. providing consulting services in the field of chemicals such as adhesion promoters, additives for polyurethane resins, and water-borne silicates. He has published extensively on technology relating to surface coatings and has contributed to the Surface Coatings Association of Australia’s Surface Coatings textbook including a chapter on silicone resins and hydrophobic treatments of masonry substrates.
Mr Cooke has been employed by Building Materials and Technology Pty Ltd, a company that provides consultancy services on all aspects of FRC products and manufacturing since 2000. Prior to that he has performed chemist and engineering roles at various concrete and cement companies including the Opponent James Hardie. It is evident from his resume that like Mr Gleeson, he also has extensive experience in the development, formulation and production of FRC products.
Mr Van den Bergh is the inventor of the opposed application and was employed at Eternit BV from 2005 in the role of Process Engineer until his retirement in 2018. His work involved selecting and developing coating compositions for FRC board and developing processes for applying coatings to FRC board.
Ms Anast is the Senior IP coordinator for James Hardie Research Pty Ltd. She has a Masters in
Applied Science and has worked with James Hardie Research Pty Ltd since 1997 in the field
of FRC sheeting, initially as a Research Scientist and then as an Intellectual Property coordinator
Common General Knowledge (CGK)
Common general knowledge was described by the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [No 2] [2007] HCA 21; (2007) 235 CLR 173 (Lockwood [No 2]) in the following terms (at [55]):
“Common general knowledge” was well understood as being “part of the mental equipment of those concerned in the art under consideration”, and Minnesota Mining had confirmed that what was “known or used” in Australia was confined to common general knowledge, which was explained as:
“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”. (Citations omitted.)
In Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411 (Alphapharm) (at [31]), the High Court upheld the primary judge’s rejection of s7(3) information as common general knowledge in circumstances in which there was no evidence of its general acceptance and assimilation by those persons skilled in the relevant art.
In order to qualify as common general knowledge, it is not necessary that the knowledge be memorised by persons skilled in the art. It is sufficient if it is material in the field in which the person skilled in the art is working which he or she knows exists to which he or she would refer as a matter of course (ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc [1999] FCA 345; (1999) 45 IPR 577 at [112] per Emmett J; Re ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc [2000] FCA 1349; (2000) 106 FCR 214 at [57]; see Bodkin C, Patent Law in Australia (2nd ed, Thomson Reuters, 2014) at [4110]).
From the evidence available to me, it is quite clear that there is no disagreement between the parties, that the following formed part of the CGK at the priority date.
·FRC products including fibre cement sheets.
·FRC products can be made using the Hatschek process.[7]
[7] Gleeson at [35]; Cooke at [27]
·FRC can be cured by air curing or autoclaving.[8]
·FRC sheets having a profiled surface that is produced by machining operations such as grinding or milling.[9]
·FRC products need to be protected from penetrating water as the water may affect the mechanical properties and the appearance of the FRC product.[10]
·A deleterious effect caused by penetrating water, called efflorescence, is the appearance of white traces on the surface.[11]
·Protecting the FRC product from penetrating water can be done in a number of ways such as sealant coating, painting and applying a hydrophobation agent to the surface of the FRC product.[12]
·Commonly used hydrophoabation agents are organo-silicon compounds, collectively referred to as silicones and includes siliconates, silicone resins, alkylalkoxysilanes, oligomerous alkylalkoxysiloxanes and polymeric alkylalkoxysiloxane.[13]
·Silanes and siloxanes were widely used as masonry water repellents and could be used neat (i.e., 100% actives) or diluted in solvents (solvent borne) or water (water borne).[14]
·A range of silane/siloxane hydrophobation agents were commercially available and these include agents which are neat or solvent borne or water borne.[15]
·Hydrophobation agents penetrate the substrate better when they are neat or solvent borne than when they are water borne.[16]
·Solvent borne agents have safety issues because of the use of volatile compounds and these would need to be suitably addressed if solvent borne agents are used.[17]
[8] Gleeson at [36]
[9] Gleeson at [45]-[47]
[10] Gleeson at [57]-[58]
[11] Gleeson at [60]
[12] Gleeson at [79]; Cooke at [21]-[22], [152]
[13] Thomas at [41]-[46]
[14] Thomas at [49], [51]
[15] Thomas at [49, [78]
[16] Thomas at [48], [55]
[17] Thomas at [51]; Cooke at [41]
Non-aqueous silane hydrophobation agents for use with FRC products
There is divergence of opinion between the experts as to whether the use of solvent borne and neat silane hydrophobation agents (the non-aqueous agents) for hydrophobising FRC products was CGK at the priority date.
The opponent has submitted that it is clear from the evidence of their experts that both solvent borne and neat silane agents were used with FRC products.
Mr Thomas who is an expert in surface treatments has discussed the use of silane based hydrophobation agents and their application to concrete, masonry and cementitious substrates. Some of the relevant disclosure from his declaration is given below.
“As noted in section 13.7.1 of Chapter 13 of the SCAA textbook,
“Mineral building materials tend to absorb moisture when in contact with water, because of their pore and capillary structure. To prevent damage due to this moisture absorption, the absorbency of the material must be eliminated or at any rate reduced. One way of achieving this is to make the material water-repellent. The most effective and widely used products for achieving this are the organo-silicon compounds, collectively referred to as silicones.”
Silanes and siloxanes, when correctly applied, can result in the impregnated substrate being “breathable” in that this allows water vapour to pass through the substrate such as concrete or cement-based materials, but repel liquid water.”[18]
“As at 2013, and also as at 1999, in the area of masonry water repellents, silanes and siloxanes were available and used neat (i.e., 100% actives) and also in solvent borne concentrates. Emulsions of silanes and siloxane/silane mixtures were also available. The emulsions were available as regular emulsions and micro-emulsions, which I discuss further below. I was aware that other suppliers of hydrophobising agents, such as DOW, had similar product ranges.”[19]
“In relation to hydrophobising cement-based substrates, solvent-based silanes and siloxanes were initially the most common form that were supplied and used. They were sold in a concentrated form which the customer could further dilute with, say hydrocarbon solvents. They were also supplied and used neat (solvent free), and could be diluted with hydrocarbon solvent. Water-based hydrophobising agents were also developed and marketed, which were in the form of emulsions. These are technically challenging, because the objective is to achieve hydrophobicity using a hydrophilic delivery system. Emulsions are attractive from the point of using water and avoiding the use of solvents. The issue with an emulsion, however, is that the particle size can be large as compared with the pores of the substrate, which can cause problems in penetrating the cementitious substrate. This is especially the case for dense substrates. Another issue is that emulsions can have a large amount of emulsifying surfactant that can affect hydrophobicity. As I have discussed in paragraph 47 above, one key consideration is penetration of the substrate to obtain good impregnation with the hydrophobing agent, and that generally the deeper the impregnation the better hydrophobicity is achieved.”[20]
“As at 2013, it was known that the depth of penetration from an emulsion will be less compared to a solvent-based or neat version of the hydrophobising agent if the substrate was dense. Generally speaking, to get good depth of penetration, and therefore good water repellent properties, I would routinely recommend neat or solvent based hydrophobising agents to my customers who manufacture cementitious-based materials, rather than emulsions, especially for a dense substrate.”[21]
“I note that the focus of this article is on concrete. However, many of the conclusions
[18] Thomas at [41]
[19] Thomas at [49]
[20] Thomas at [51]
[21] Thomas at [55]
[22] Thomas at [57]
may be equally applicable to other cement-based substrates.”[22]
It would certainly appear from these statements that silane based hydrophobating agents were well known for imparting water repellency in masonry, concrete and cement based substrates such as FRC products. These silane based agents were generally used diluted with a solvent or as a water based emulsion. While solvent based agents had better penetration in the surface of the product, water based emulsions were safer because of the avoidance of solvents.
Mr Cooke who is also an expert in the field of FRC products, notes that he was not aware of solvent based agents being used on profiled FRC substrates and that it was preferred to make FRC substrates water repellent by the use of surface sealants or by painting rather than the use of hydrophobation agents.[23]
[23] Cooke at [37], [152], [153]
Mr Van den Berg who is the inventor of the present invention is also of the view that water based hydrophobation agents were preferred for use in FRC substrates due to ease of handling and safety and that solvent-based agents were niche products.[24]
[24] Van den Berg at [15]-[17]
Although there is clearly some difference of opinion between Mr Thomas and Mr Cooke, I am inclined to give more weight to the evidence of Mr Thomas as he has worked for Wacker Chemicals, a supplier of hydrophobation agents and has stated that both solvent based and water based agents were commercially available before the priority date and their range of applications included masonry, concrete and FRC substrates.
Although Mr Cooke states that water-based agents were the preferred agent for FRC substrates, he does not explicitly state that solvent-based agents were not well known for use with FRC; his statement in this regard is specific to profiled FRC substrates rather than FRC substrates in general.
Similarly, while Mr Van den Berg states that water-based agents were the preferred agent for FRC substrates, this appears to be more due to issues with safety and cost rather than the performance of the agent. He does however acknowledge that both solvent-based and water-based agents were commercially available at the priority date, and they all came with technical data sheets.
Based on the evidence, I am satisfied that, at the priority date, in addition to water borne hydrophobation agents, solvent based and neat silane hydrophobation agents were also commercially available and were used as water repelling agents with concrete and other cement based substrates including FRC substrates.
PCT Applications mentioned in Gleeson
The opponent has submitted that the PCT applications discussed by Mr Gleeson in his declaration formed part of the CGK. The basis for this assertion is Mr Gleeson’s evidence that the formulation and manufacture of fibre reinforced cement is commercially valuable and that any information that does get published on this topic is usually in the patent literature and sometimes conference papers.
The opponent relied on the High Court authority in Minnesota Mining and Manufacturing Co v Beiersdorf (Aust.) Ltd (1980) 144 CLR 253 at 294 where it was recognised that, “[t]here may be some fields of endeavour in which those who work therein study and make themselves familiar with all patent specifications as they become available for inspection in one or in many countries so that what was contained therein becomes common general knowledge in that particular trade or field of manufacture”.
The applicant has argued that the statement by Mr Gleeson is a statement about public knowledge as opposed to common general knowledge and that there is no evidence that the PCT applications mentioned by Mr Gleeson were part of the common general knowledge at the priority date.
I am inclined to agree with the applicant. While Mr Gleeson may be of the view that new information on FRC is generally published in patent literature, there is no clear statement from him that the PCT applications he has mentioned have become part of the background knowledge which is available to all in the trade. As noted in British Acoustic Films Ld v Nettlefold Productions (1936) 53 RPC 221 at page 250, and affirmed in General Tire & Rubber Company v Firestone Tyre and Rubber Company Ltd [1972] RPC 457:
"In my judgement it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or a series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less merely because it is widely circulated. Such a piece of knowledge only becomes common general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art."
Furthermore, as noted by the applicant, Mr Gleeson is a named inventor of WO 03/045688 and also identifies documents such as WO 98/45222 as examples of work that he was involved in during his career rather than as information that was known to all in the art. His evidence does not clearly establish that this is a field in which all practitioners make themselves familiar with all patent specifications as they become available so that what was contained therein becomes common general knowledge in this particular field.
I am not satisfied that the PCT applications were part of the CGK at the priority date.
Consideration
As noted earlier, one of the tests for assessing inventive step is the modified Cripp’s question, which when applied to the present invention can be posed as:
Would the notional person skilled in the art at the relevant date in all the circumstances directly be led as a matter of course to try water free silane hydrophation agents on a FRC substrate having a profiled surface formed by milling in the expectation that it might well be effective in hydrophobating the milled surface?
The opponent has submitted that the claimed invention lacks an inventive step in light of the CGK alone or when combined with the disclosure of prior art document EP 2036871 (D1).
Inventive Step in light of CGK
The opponent has submitted that the claimed invention lacks an inventive step in light of the CGK in the art at the priority date irrespective of whether the problem to be addressed is the presence of white residue traces on the milled surfaces with the use of water borne agents or to find a suitable hydrophobation agent for use with FRC products. Their reasoning can be summarised as follows:
·There is a clear acknowledgement in the specification that as a consequence of the milling operation the milled surface would have a higher density than the non-milled surface. This is also supported by the evidence of Mr Thomas and Mr Gleeson.
·It was CGK that the density of the surface is one of the factors that affects the penetration of a hydrophobation agent into a substrate, with a higher density decreasing the penetration of the agent.
·Faced with the stated problem, the PSA would understand that the residue traces are caused by the water based hydrophobation agent not penetrating properly into the milled surface as the milled surface would have a higher density than the non-milled surface.
·It was CGK that solvent borne and neat silane hydrophobation agents have greater penetrating ability than water borne silane agents because of their smaller molecular size.
·The use of solvent borne and neat silane hydrophobation agents for hydrophobising concrete and other cementitious materials was also CGK in the art.
·The PSA armed with the CGK in the art would have been led as a matter of course to try solvent borne and neat silane hydrophobation agents with the expectation that it may well solve the problem and by doing so would have arrived at the claimed invention.

The applicant has refuted this reasoning and their submissions can be summarised as follows:
·Milling the fibre cement product to provide a profiled surface does not compress the milled surface (Van den Bergh at [42]) or significantly increase the density or modify the internal porosity of the remaining FRC material at the milled surface (Cooke at [33] and 176 and Van den Bergh at [24]).
·Hence the PSA would not identify the density of the milled surface as being the cause of lack of penetration of the water-borne agent.
·Consequently, there would not have been any reason for the PSA to conclude that the use solvent borne or neat silane hydrophobation agents would address the stated problem.
·Although Mr Thomas and Mr Gleeson have stated that they would have been led to try solvent borne and neat silane hydrophobation agents, they were posed the wrong question and hence their evidence in this regard cannot be given weight.
·Furthermore, there are a number of alternative solutions that the PSA would have considered in preference to trying solvent borne or neat silane hydrophobation agents, such as trying other water borne agents instead of silanes, vary the concentration of the silane agent or try different application methods for the agent.
·There are also other ways to make the FRC product resistant to water, such as priming and applying a paint and in fact these were generally preferred over hydrophating agents.
I have found that the problem to be solved is to find a suitable hydrophobating agent for a FRC product with a profiled surface formed by milling rather than the problem of residue traces left behind with the use of a water borne silane agent.
As discussed earlier, the evidence has established that a range of silane hydrophobation agents were commercially available at the priority date and these included agents that were neat, agents that were solvent borne and agents that were water borne and that all of them were known to be used for hydrophobating concrete and other cementitious substrates including FRC substrates. The evidence has also established that silane agents will penetrate better if they are solvent borne compared to if they are water borne.
It is therefore logical that the PSA trying to find a suitable hydrophobating agent for a milled FRC substrate would try the agents that were known to be routinely used with non-milled FRC substrates in the expectation that they would also perform well on milled substrates. These would include neat, water borne and solvent borne agents. By doing so, the PSA would have realised that water free silane agents give the best result without leaving any residue traces and thereby arrived at the claimed invention.
I am therefore satisfied that the claimed invention lacks an inventive step in light of the CGK at the priority date.
I note that the opponent has also made submissions based on the applicant’s characterisation of the problem. Also as noted earlier, if the solution that the person skilled in the art comes up with is the use of a water borne silane agent, they would then, according to the opposed specification, encounter the issue of white residue traces which they would then need to resolve. Hence for completeness I will also consider the inventive step issue based on the applicant’s characterisation of the problem.
Although the specification states that the reason why the water-free silane agent was able to penetrate the milled surface without leaving white residue traces is not fully understood, the specification acknowledges that milling will cause some increased density of the FRC cement material at the milled surface.
“The product at its profiled surface may have a density slightly higher as the density throughout the product at the non profiled volumes and surfaces. This due e.g. the profiling action, such as milling and alike”.[25]
[25] Specification at page 3, line 34 – page 4, line 3
Mr Gleeson is also of the view that machining a surface profile in FRC will create different surface characteristics between the machined and unmachined areas.
“Machining or grinding a surface profile into cured FRC is a different process. Grinding a profile into FRC essentially scrapes material off the surface and forms a
fine particulate dust. This dust is driven into the surface, creating an apparent differential in surface characteristics between those areas that have been subject to
a grinding process compared to those that have not”.[26]
“Additionally, the face of the plank that has the compacted regions (i.e., embossed) will have different water absorption than the regions that have not been embossed”.[27]
[26] Gleeson at [52]
[27] Gleeson at [111]
Mr Thomas is of the view that when the surface of fibre concrete sheet is profiled by embossing, it will lead to reduced porosity of the profiled surface.
“To be specific, I would expect there to be reduced surface porosity as a result of a compression/embossing process to produce the surface profiling”.[28]
[28] Thomas at [73]
He also agrees with the statement in the specification that the milled surface will have a higher density.
“This statement makes intuitive sense to me in relation to different surface characteristics as a result of a profiled surface being produced, and I had already come to that conclusion before I read the 569 Application (see paragraph 73 above). It also makes intuitive sense to me that a profiled surface formed as a result of a milling process would also have a slightly higher density (i.e., relatively lower porosity) than non-profiled surfaces”.[29]
[29] Thomas at [156]
The applicant has submitted that Mr Gleeson does not specifically mention that the density of the milled surface is increased as a consequence of milling. Whilst that is true, in my view it is quite clear that the differential in surface characteristics that Mr Gleeson refers to, is the difference in density/porosity between the milled and non-milled surfaces.
The applicant has also submitted that Mr Cooke is of the view that any increase in density at the milled surface would only be minimal if at all and is unlikely to affect the penetration of the hydrophobation agent.
182. In my experience, this is not true, or at least any effect of dust clogging the pores is minor. In fact, my experience is that - if anything - milling is likely to open up the porosity of the fibre cement. One possible reason for the increased permeability of milled or sanded fibre cement surfaces is that discrete silica grains remain present in the fibre cement even when the product is autoclave-cured. These grains, which are harder than the other constituents of the fibre cement, can be pulled out of the surface during milling, leaving small voids in the surface.
While Mr Gleeson and Mr Cooke are both independent experts in the field of FRC products and their manufacture and the weight that I would give to their opinions would generally be equal, I note that there is a clear admission in the opposed specification that there will be a slightly increased density at the milled surface. Furthermore, neither the specification nor Mr Cooke has proffered an alternative explanation for the lack of penetration of the hydrophobation agent at the corners of the milled surface. In the circumstance, I prefer the view of Mr Gleeson and Mr Thomas which is also supported by admissions in the specification and accept that the milling operation will lead to a slightly increased density and reduced porosity at the surface of the milled portion.
It is clear from the evidence of Mr Thomas who is an expert in the field of surface coatings that density and porosity of the substrate are factors that affect the penetration of the hydrophobation agent. I am therefore satisfied that the PSA would attribute the lack of proper penetration of the hydrophobation agent at the corners of the milled surface to the increased density/reduced porosity at these areas due to the milling operation.
It is also clear from the evidence of Mr Thomas that hydrophobation agents in the form of a water borne emulsion will have a tendency to demulsify if the particle size of the emulsion is too large for the pore size.
“52. An oil-in-water emulsion is generally a dispersion of oil particles in a water phase achieved using a hydrophilic surfactant. If the water concentration of an emulsion is reduced, such as by atmospheric evaporation or absorption into a porous substrate (such as concrete or a cementitious substrate, e.g., FRC) “demulsification” will occur and the oil particles will aggregate and gradually coalesce into a film. Where a large quantity of emulsion is applied this can result in excess hydrophobic material being left on the surface of the substrate rather than lining the pores, with the effects of:
·Reducing or eliminating breathability of the substrate, which is an undesirable effect because poor substrate breathability can affect other substrate properties such as good thermal insulation of the substrate.
·Achieving poor penetration depth of the hydrophobic agent which can reduce the substrate’s repellency to water.
Consequently, good water repellency and breathability requires the appropriate physical application of a water repellent emulsion to achieve good penetration depth (sometimes by multiple applications) and avoidance of excess material at or close to the substrate’s surface.
53. If the particle size of the emulsion is too large for the pore size of the substrate being impregnated (which could especially occur with a dense substrate), the emulsion could have a tendency to remain on the surface and, over time, the water phase will be absorbed/sucked into the porous substrate (and some will evaporate, too), causing the emulsion to eventually break. In this case, the film of hydrophobic
material would tend to remain on the surface and in the surface pores only, without
deeply impregnating the substrate”.
This is also consistent with the statement in the specification that water-based
hydrophobation agents “were not able to penetrate in the fiber cement material along the inside corners of the recessions, leaving traces of polymerized hydrophobation agent”.[30]
[30] Specification at page 3, lines 23-25
The question that remains is having identified that the residue traces on the milled surface are due to lack of penetration of the water based hydrophobation emulsion at the corners of the milled surface due to the increased density and reduced porosity, what would the PSA have done to address this problem.
The opponent has submitted that the PSA, armed with the CGK that solvent borne and neat hydrophobation agents will penetrate cementitious substrates better than water borne agents, and having determined that the visual traces are caused by a lack of penetration of the water borne agent at the corners of the milled surface, would have as a matter of course been led to try water free hydrophobation agents with the expectation that this is likely to solve the problem.
The opponent’s reasoning is certainly compelling. However, before I accept this reasoning, I will consider the counter submissions from the applicant.
Firstly, the applicant has submitted that the hypothetical question posed to Mr Thomas when asked for his opinion on whether the claimed invention was obvious does not mention that the profiled surface was formed by milling nor the problem of residue traces when a water borne agent was used.
The hypothetical question posed to Mr Thomas was:
“Approached by a FRC manufacturer that wanted to provide a FRC product having at least one profiled surface to which a hydrophobation agent is applied, and whereby the profiled surface has different surface characteristics, what hydrophobation agent would you suggest?”[31]
[31] Thomas at [69]
The feature of the profiled surface being formed by milling was introduced by amendment well after the filing of the evidence in support. The claim as accepted only referred to a profiled surface without any further reference to having been formed by milling. Hence this argument of the applicant does not stand. Whilst I agree that there is no reference to the problem of residue traces with water borne agents, Mr Thomas understood the reference to different surface characteristics as a difference in porosity and based on this understanding opined that he would “would recommend a solvent based hydrophobising agent as solvent-based systems generally give better results than water-based systems in terms of penetration, especially in this case where there is reduced surface porosity as a result of the compression/embossing process to produce the surface profiling, and the substrate contains residual moisture”[32]. So, while he may have not been specifically directed to the problem of residue traces, his opinion still takes into consideration the reduced porosity of the profiled surface (which is true even in respect of milled surfaces). Based on this assumption, he clearly chose a solvent borne hydrophobation agent as the preferred agent to achieve better penetration. Hence his opinion, in my view, is still highly relevant to the stated problem.
[32] Thomas at [77]
In any event, I would note that expert witnesses are only there to guide me in determining whether the claimed invention involves an inventive step.
Secondly, the applicant has submitted that there were a number of other treatments other than water borne hydrophobation agents to increase the hydrophobicity of FRC products such as painting the surface, adding waxes and emulsions to the fibre cement slurry and as the use of water-free hydrophobation agents was not CGK at the priority date, the PSA would have chosen one of these other well-known surface treatments in preference to water-free hydrophobation agents.
Whilst I accept that sealing and painting were also well-known options for providing water repellency to FRC substrates, the applicant has clearly chosen the option of hydrophobation agents for this particular application of their FRC substrate. Hence this argument also does not stand.
Having identified the most likely cause of the problem as lack of penetration at the corners of the milled surface, and armed with the CGK that solvent borne silane agents could also be used with fibre cement products and will penetrate better than water borne agents, I am satisfied that the PSA would have as a matter of course tried a water-free silane hydrophobation agent with the expectation that it may well solve the problem and by doing so would have arrived at the claimed invention through routine steps.
Irrespective of the formulation of the problem to be solved, I am satisfied that the invention of independent claims 1 and 16 lacks an inventive step in light of the CGK.
Inventive Step in light of CGK and (D1) EP 2036871
The opponent has submitted that the claimed invention also lacks an inventive step over the CGK and the disclosure of prior art document D1.
D1 is titled “Prefinished fibre reinforced cement articles” and relates to an air cured FRC article to which a water repellent composition is applied.
D1 discusses the problem of efflorescence and the need to therefore make the FRC product water repellent. It then describes a prior art in which this problem is addressed with a water based hydrophobation agent, but then notes that this brings with it the problem of demulsification of the emulsion.
[0015] In WO 02/081399, use is made of aqueous emulsions of water repellent agents. However, such aqueous emulsions decompose due to the alkalinity of the cement matrix; during the suction (or penetration) process demulsification takes place, and as a result of the phase separation water penetrates into the fibre reinforced cement article only, while the water repellent agent remains on the surface and does not penetrate deeply into the fibre reinforced cement article to avoid the appearance of dark zones around untreated cut edges and fixation holes upon exposure to rain; moreover it forms a weak boundary layer, resulting in poor adhesion of subsequently applied coatings. Besides, aqueous emulsions of water repellent agents penetrate less in the fibre cement substrate compared to solvent based water repellents due to their higher surface tension and generally bigger particle size. Also, the aqueous emulsions cause swelling of the cellulose fibres used in the fibre reinforced cement article.
D1 addresses this problem by the use of a water-free silane based hydrophobation agent.
[0016] Advantageously, the water repellent composition used in the process according to the present invention is a non aqueous composition providing a more deeply penetration of the water repellent agent and does not impair the adhesion of subsequently applied coatings. In a preferred embodiment of the process according to the invention, the water repellent composition comprises silanes and preferably comprises also siloxanes.
[0028] The fibre reinforced cement article according to the present invention comprises a front surface comprising a water impermeable zone. This water impermeable zone is obtained by applying a composition comprising a water repellent agent on the front surface of the fibre cement article. Water repellent agents characterized by an average particle size which is lower than the average pore diameter of the fibre reinforced cement article are preferred. The average pore diameter of the fibre rein forced cement article depends on the conditions of post compression and/or autoclaving steps. Suitable water repellent agents to treat the front surface of the fibre reinforced cement articles comprise silanes. Water repellent agents further comprising siloxanes are particularly preferred. Water repellent agents comprising a blend of alkylalkoxysilane and its corresponding siloxane oligomer are particularly preferred in the case of high density fibre reinforced cement articles, because the small, but rather volatile silane molecules can penetrate into the minor small pores of the fibre reinforced cement product, while the siloxane oligomer molecules can penetrate into the majority of pores characterized by a diameter greater than 200 nm.
[0029] Non-aqueous compositions comprising water repellent agents which are used pure or diluted with a polar organic solvent which is compatible with the cement matrix and of relative low molecular weight to assure quick penetration into the cementitious matrix are preferred. Alkylalcohols with 1 to 5 carbon atoms are especially preferred solvents.
[0030] Aqueous emulsions comprising water repellent agents are not the most suitable for the water repellent treatment of air-cured fibre reinforced cement products; they do not penetrate so deeply into the cement based matrix with respect to non-aqueous composition because they decompose due to the high alkalinity of the air-cured fibre reinforced cement product. In the case of air-cured compressed fibre reinforced cement articles characterized by a density of at least 1400 kg/m3, good results were obtained with a blend of an alkylalkoxysilane and the corresponding siloxane oligomer with an average particle size of about 200 nm. A solution of this blend in isopropanol, ethanol or butanol at a dilution in the range of 1:1 to 1:4 performed extremely well.
The opponent has submitted that the PSA faced with the problem of residue traces because of the lack of penetration of the water borne hydrophobation agent at the corners of the milled surface would be led to adopt the teachings of D1 which clearly highlights the better penetration that can be achieved with a non-aqueous silane agent over an aqueous emulsion.
I agree. There is a clear teaching in D1 that aqueous silane agents do not penetrate cured FRC substrates as well as non-aqueous agents. The skilled addressee faced with either formulation of the problem being addressed, would certainly be led to try non-aqueous silane solutions as taught in D1 with the expectation that it may well solve the problem.

The applicant has argued that D1 is directed to solving the problem of vulnerability of the FRC substrate to water penetration when the FRC substrate is cut or drilled during installation. Whilst I accept that is the primary problem that D1 is trying to address, that does not alter the fact that D1 also teaches that non-aqueous silane agents are preferred for cured FRC substrates because of their better penetrating ability. The PSA faced with the stated problem would certainly be led to try non-aqueous silane agents due to its better penetration into the substrate.
I am satisfied that the invention of claims 1 and 16 lacks an inventive step over the CGK and the disclosure of D1.
Dependent Claims
The opponent has submitted that all of the dependent claims 2-15 also lack an inventive step as the features of these claims are also disclosed either as admissions in the specification or are part of the CGK in the art. The applicant has provided no submissions on the dependent claims.
Looking at the dependent claims, it is quite clear that all of the features added by these claims are nothing more than features that are CGK in the art or mere design choices. For example, claims 4-7 specify that the FRC product is a plate and it has equally spaced grooves of a trapezoid cross section; claims 3, 8 and 9 specify the quantity and method of applying the agent; claim 10 defines the well-known Hatschek process; claim 10 defines the well-known autoclave curing process and claims 11-12 specify the well-known chemical compound in the hydrophobation agent. Given that the applicant has not identified any features in the dependent claims that are other than matters of CGK or a mere design choice, I am satisfied that all of the dependent claims also lack an inventive step.
SUPPORT
Subsection 40(3) requires that the claim(s) must be supported by matter disclosed in the specification. Burley J discussed the requirement of support in Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477 at [546]- [547]:
“In CSR Building Products Ltd v United States Gypsum Company [2015] APO 72, Dr S D Barker adopted the summary provided by Aldous J in Schering Biotech at 252 – 253, which has been often followed in the United Kingdom (emphasis added):
...to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court’s task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word “support” means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.
That approach encapsulates broadly the claim support obligation under s 40(3). To it may be added the requirement that the technical contribution to the art must be ascertained. Where it is a product, it is that which must be supported in the sense that the technical contribution to the art disclosed by the specification must justify the breath of the monopoly claimed”.
The opponent has submitted that the claims are overly broad and lack support under s40(3), but if I find that either of the grounds of lack of inventive step and lack of manner of manufacture is made out, it is not necessary to consider this alternative argument.
I have found that all of the claims lack an inventive step. So, while I strictly do not need to consider the ground of lack of support, for completeness I will briefly consider this ground as well.
The opponent’s main contention under this ground is that the claimed invention is directed to the use of any water-free silane based liquid whereas the description supports the use of only 6 specific silanes and furthermore the invention is not "a principle of general application" to the effect that all water-free silane based liquids are suitable for improving hydrophobic properties of milled profiled substrates and hence the claimed invention extends beyond the technical contribution to the art.
I am not convinced. Whilst it is true that the specification has enabled only 6 non-aqueous silane agents through the tests carried out, 2 that are solvent borne and 4 that are water-free and solvent-free, the opponent has provided no evidence that would suggest let alone establish that all non-aqueous silane agents will not be effective in hydrophobating without leaving visible traces when applied to a profiled surface formed by milling. Clearly the onus rests on the opponent in this regard. Also, it is clear from the evidence of Mr Thomas and Mr Gleeson that silane agents will better penetrate a FRC substrate when it is in a non-aqueous form compared to the aqueous form. Given that the problem of visible traces is caused by the poor penetration of the water borne agent at the milled surface due to the increased surface density of these areas, it is plausible that the invention would work with any non-aqueous silane agent.
Based on the evidence available to me, I am not satisfied that the claimed invention exceeds the technical contribution to the art. The claimed invention is supported by matter disclosed in the specification and hence this ground has not been made out.
MANNER OF MANUFACTURE
The opponent has submitted that the claimed invention is not a manner of manufacture as it fails the threshold requirement for an ‘invention’ in line with the authorities, especially the High Court decision in Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232 (Microcell) where it was held at [251]:
"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".
More specifically, they have submitted as follows:
“The following statements in the specification constitute admissions that, at the priority date, fibre cement products, with at least one profiled surface provided by milling, to which a hydrophobic agent had been applied were known:
(a) Page 1.10: "Fibre cement products are well known".
(b) Page 1.12: "Fibre cement products need to be protected to penetrating water".
(c) Page 1.19-21: "Agents which cause the fibre cement product to be more hydrophobic, hydrophobation agents, are used and applied to the surface of the fibre cement product".
(d) Page 9.18-21: "Most preferably the profiled surface is provided after curing of the green fibre cement product. This is typically done by milling. The milling can be done using suitable milling tools such as milling cutters, typically having hard metal of diamond coated cutting surfaces".
Table 1 on page 12 constitutes an admission that water-free and solvent-free silane-based hydrophobic agents were known. Table 1 provides that the following water-free and solvent free silane-based hydrophobic agents were commercially available: Z6341 (from Dow Corning) and Protectosil BHN and Protectosil 100NK (from Demula / Evonik).
That is, on the face of the specification itself, claims 1, 2 and 16 claim no more than:
(a) the new use of a known material ("water-free solvent-free silane-based liquid");
(b) in manufacturing known articles ("a fibre cement product comprising at least one profiled surface, wherein the profiled surface is provided by milling" to which an agent has been applied "for improving the hydrophobic properties");
(c) for the purpose ("improving the hydrophobic properties" of those products);
[33] Opponent’s written submissions at [31]-[33]
(d) of which its known properties (hydrophobicity) make it suitable”.[33]
The applicant has submitted that it is clear from later authorities, that the Microcell type ‘threshold requirement’ manner of manufacture has limited application especially in inter parte proceedings where evidence from experts is available to the decision maker. In particular they referred to the statements by Beach J in Meat and Livestock Australia LTD v Cargill (2018) 129 278.
“503. In considering this other type of objection, the analysis is limited to what appears on the face of the specification properly construed of course by the skilled addressee in the light of common general knowledge. This type of objection has sometimes been characterised as turning upon an admission in the specification that there is no patentable invention. That is how the plurality characterised the objection in Myriad (at 12]):
That anterior exclusion may be based upon an admission, on the face of the specification, which makes clear that the invention claimed is not novel or does not involve an inventive step”.
“506. So, the objection is narrow. Further, what was also stressed was the importance in having regard to evidence from skilled addressees in deciding whether an invention involves an inventive step. Admissions in a specification always need to be weighed with evidence from persons skilled in the relevant art addressing such matters. Further, the context of Microcell is important. In Microcell, the objection arose in the context of proceedings that were not inter partes. In other words expert evidence was not necessarily available to assist. But in the present case, expert evidence has been adduced. As Branhaven contended, there is something to be said for having the issues decided by reference to the substantive requirements of novelty and inventive step rather than dealing with the matter as a so-called “threshold requirement” test. In Bristol-Myers Squibb Co v FH Faulding & Co Ltd (2000) 97 FCR 524, it was said (at [45] per Black CJ and Lehane J):
Indeed, there is in our view an element of unreality, in a case such as the present, even in posing the question in that form. Although Philips suggests that there may be such cases (it does not decide the question, because obviousness was not pressed), it is not easy to envisage circumstances in which a claimed invention may lack the threshold requirement of inventiveness, but yet involve (for the purposes of s 18(1)(b)(ii)) an inventive step. This is not a case, like Philips, where there was no attack on the patents on the ground of obviousness. It was, instead, a case where expert evidence, including evidence as to common general knowledge, was available (and was given). Where the Court has evidence on the basis of which it can make a finding about common general knowledge, and the other information referred to in s 7(2) and (3), and about what would or would not have been obvious to persons skilled in the relevant art, it must be only rarely that it will be appropriate to find (by resort to a “threshold test”) lack of inventiveness on the face of a specification. In our opinion this is not a case where such a finding is justified.
507 Now in terms of the threshold requirement determined on the face of the specification, it is not sufficient for the specification to assert “newness” or “inventiveness”. The specification must be properly construed in order to see whether that appears on its face or conversely clearly does not. The specification includes documents referred to therein and which are incorporated into and read as part of the specification”.
Although at the hearing, the opponent submitted that Microcell is still good law, as noted by Beach J, Microcell has limited applicability in inter parte cases like the present one where one of the other grounds of opposition is obviousness and I have available to me expert evidence.
Having said that I will still consider this ground as the applicant has addressed this in their submissions. The applicant has submitted as follows:
·While the specification lists various hydrophobation agents, there is no admission in the specification that these specific agents were suitable for treating FRC products.
·While the specification admits it was known to treat a FRC product with a hydrophobation agent, there is no admission that these agents were used on FRC products having a profiled surface formed by milling.
·While the specification states that the profiling is typically done by milling, that is not a statement of what was done in the art.
·It is also not apparent from the face of the specification that it was known that water-free and solvent-free silane-based hydrophobation agents would overcome the problem of the appearance of white markings on milled surfaces arising from the use of water borne agents.
I agree with the applicant. While the specification identifies commercially available non-aqueous hydrophation agents that can be used, there is nothing in the specification to suggest that these were known to be used in FRC products or more specifically FRC products having a profiled surface that is formed by milling. It is also not apparent on the face of the specification that the use of a non-aqueous agent will avoid the problem of the appearance of white residue traces on the milled surface. I am not satisfied that the claimed invention lacks the threshold requirement of inventiveness.
This ground of opposition has not been made out.
CONCLUSION
All of the claims lack an inventive step.
Although there appears to be nothing in the specification that could be considered inventive, subject to any appeal, I am prepared to give the applicant a period of two months from the date of this decision to file amendments that would overcome my adverse finding in relation to inventive step.
COSTS
The opposition is successful as the ground of lack of inventive step has been made out. It is therefore appropriate that I award costs according to schedule 8 against the applicant.
R Subbarayan
Delegate of the Commissioner of Patents