Kimberley-Clark World-Wide Inc v Arico Trading Australia Pty Ltd
[2000] APO 15
•18 February 2000
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No.682191 in the name of Kimberley-Clark World-Wide Inc
Title: Lightweight Nonwoven Web Laminates with Improved Comfort and Barrier Properties
Action: Opposition under s.59 by Arico Trading Australia Pty Ltd
Decision: Issued .
Abstract
The invention as claimed is novel over the documents cited because they do not disclose the specific measures and ranges of the properties defined as characterising the laminates claimed.
The prior documents cited were found to comply with the requirements of sub-section 7(3) of the Patents Act 1990. The invention as claimed in claims 1-3, 5-11 was found to be obvious and lack inventive step in the light of US 4041203 (Brock) because it was a mere optimisation of properties disclosed as achievable by Brock and known to be suitable for the desired uses.
Claim 4 was found to be novel, inventive and a patentable invention or manner of new manufacture.
Claims 4 and 9 are not fairly based.
The applicant was given the opportunity to propose suitable amendments to overcome the deficiencies identified.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No.682191 by Kimberley-Clark World-Wide, Inc and opposition thereto under s.59 of the Patents Act 1990 by Arico Trading Australia Pty Ltd
BACKGROUND
Kimberley-Clark World-Wide filed Patent Application 682191 on 17 May 1994 claiming priority of 20 May 1993 and 2 March 1994 via two US applications. It was advertised accepted on 25 September 1997. Arico Trading Australia Pty Ltd (ARICO) filed notice of opposition on 30 December 1997, followed by the Statement of Grounds and Particulars on 30 March 1998 and Evidence-in-Support on 24 June 1998. The applicant did not file Evidence-in-Answer.
The matter was set down for hearing in Canberra on 5 February 1999. At that hearing Dr Ian Ernst, patent attorney, of Baldwin Shelston Waters appeared for the opponent, accompanied by a representative of ARICO, Mr Arie Kliger; and Mr Greg Turner, patent attorney, of Spruson & Ferguson appeared for the applicant.
A further hearing was set down in Canberra on 28 June 1998 in relation to disagreements between the parties regarding representations and evidence to be filed subsequent to the 5 February 1999 hearing. The parties agreed to proceed on the basis that they would make representations on these matters when the main hearing was reconvened in Canberra on 23 July 1999. The same attorneys represented the parties at both these later hearings.
PROPOSAL TO SERVE FURTHER EVIDENCE
On 25 January 1999, the opponent gave notice that they intended to rely on AU 636487 instead of its family member US 5213881 which had only been published on 25 May 1993, ie later than the earliest priority date of the claims of the opposed application. [This was despite it having been incorporated in full by reference into the opposed specification. (page 4, lines 4-5)] This was made the subject of a formal request to adduce further evidence at the hearing on 5 February 1999. As it was a document available in the Patent Office I invoked regulation 5.11 to inform myself of it and I gave the parties leave to make representations or give evidence with regard to it. Disagreements between the parties arose on whether the opponent was to be allowed to make further submissions and as to whether the material filed had gone outside matters relevant to AU 636487. A hearing on these issues was held on 28 June 1999.
Prima facie both parties had gone beyond the leave granted in that their evidence included matters not strictly with respect to the particular document. I proposed that two courses of action were open to the parties. The first was to continue under regulation 5.11. The second was to deal with the filed evidence under regulation 5.10(4). The parties agreed that they should proceed on the latter course and would make representations about the content of the evidence filed when the substantive hearing resumed on the agreed date of 23 July 1999.
STATEMENT OF GROUNDS AND PARTICULARS
The opponent's grounds for opposition were that:
The specification filed in respect of the complete application does not comply with sub-section 40(2) or 40(3)
The claims lack novelty.
The invention claimed is obvious and/or lacks inventive step.
The invention so far as claimed in any claim of the application in suit is not a manner of manufacture within the meaning of section 6 of the Statute of Monopolies”
THE SPECIFICATION
The specification is directed to overcoming or substantially ameliorating the disadvantages of earlier nonwoven laminates in personal care articles. Examples of personal care articles are given at page 1, lines 35-37, of the opposed specification as "disposable diapers, training pants, incontinent wear and feminine hygiene products." The disadvantages have arisen "because one or more of the important considerations has been lacking or not present to the desired degree.” These considerations are barrier properties, softness and conformability, porosity sufficient to “provide a level of breathability for increased comfort” and low cost. Barrier properties refer to the inhibition of strikethrough of liquids, as opposed to complete prevention of liquid passage. To achieve this a particular nonwoven fabric laminate is provided. In addition a disposable garment incorporating as containment means another nonwoven fabric laminate is provided.
In producing these fabrics well-known or conventional processes are used. Fine fibre layers are “preferably obtained by forming a melt-blown web in accordance with US Patent 5213881 dated 25 May 1993 to Timmons, Kobylivker and Woon incorporated herein in its entirety by reference, from a propylene polymer resin.” “The construction and operation of the melt-blown station…. for forming microfibres…and melt-blown layer…is conventional, and the design and operation are well within the ability of those of ordinary skill in the art.”
Continuous filament layers are made by “conventional extruders with spinnerettes which form continuous filaments of a polymer and deposit those filaments onto the forming belt…..in a random interlaced fashion.” This is “conventional in the art and the design of such a spun-bonded forming station is thought to be well within the ability of those of ordinary skill in the art.” Many conventional methods are available.
A typical laminate may be made from a fine fibre layer sandwiched between two filament layers and then bonded by passing between bonding rolls to create a pattern of discrete areas. “Such discrete area or spot bonding is well-known in the art.”
The example is a lightweight nonwoven laminate “produced generally in accordance with the teachings of US Patent 4041203 to Brock and Meitner dated 9 August 1977, incorporated herein in its entirety by reference.” This process was applied to two commercially available polypropylene polymers. The completed laminate was then tested by standard test methods for basis weight, hydrostatic head, Frazier air porosity. “Cup crush results” were determined by a method described in the specification. The measured properties of this example all fell within the ranges claimed.
There are 11 claims. Claims 2 to 8 are dependent on claim 1, which is directed to a nonwoven fabric laminate. Claims 1 to 5 are directed to a nonwoven fabric laminate per se and claims 6 and 7 to a "personal care article' comprising such a laminate. Claim 9 is directed to a disposable "absorption and containment "garment incorporating "flap means for enhanced containment" comprising a nonwoven fabric laminate, which has a broader range of structural features compared to those of claim1 and which also does not include reference to hydrostatic head as defined in claim 1. Claims 10 and 11 are omnibus claims directed to a nonwoven fabric laminate and a personal care article, respectively. They are limited by reference to the drawings. The drawings include a diagrammatic representation of a conventional lamination process and depictions of 2 and 3 layer laminates, the latter with outer layers being either both fine fibres or both continuous filaments.
CLAIMS
Nonwoven fabric laminate comprising:
(a) A nonwoven component layer comprising fine fibers having an average diameter in the range of up to about 10 microns and a basis weight of from about 3 gsm to about 26 gsm, and
(b) A nonwoven component layer comprising continuous filaments having an average diameter in the range of from about 12 microns to about 22 microns and a basis weight in the range of from about 10 gsm to about 30 gsm,
wherein said layers are intermittently bonded in a face-to-face relationship for a total basis weight not to exceed about 55gsm and the percent of the weight of the fine fibers layer to the laminate weight is at least 20%, and
wherein said laminate has a cup crush peak load value of no more than 150 grams, a cup crush energy value of no more than 2250 g/mm, a hydrostatic head of at least 15 cm, and a porosity of at least 50 scfm.
The nonwoven fabric laminate of Claim 1 wherein the total basis weight is in the range of up to about 34 gsm.
The nonwoven fabric laminate of Claim 2 wherein the continuous filament component layer comprises a propylene polymer.
The nonwoven fabric laminate of Claim 2 wherein the fine fiber component layer comprises a propylene polymer having a molecular weight distribution between 3.6 and 4.8 Mw/Mn and a melt flow rate up to about 3000g/10 min. at 230oC.
The nonwoven fabric laminate of Claim 1 comprising two continuous filament layers on opposite sides of a fine fiber layer.
The nonwoven fabric laminate of claim 2 wherein the total basis weight is in the range of up to about 29 gsm.
A personal care article comprising as a component the nonwoven fabric laminate of claim 5.
The personal care article of claim 7 as a disposable diaper.
A disposable garment utilized for the absorption and containment of urine and other body exudates comprising a liquid pervious bodyside liner, a fluid impervious backing sheet with an absorbent material disposed therebetween and having flap means for enhanced containment, wherein the means for enhanced containment comprises a nonwoven fabric laminate comprising:
(a) a nonwoven component layer comprising fine fibers having an average diameter in the range up to about 10 microns and a basis weight of at least about 1.5 gsm, and
(b) a nonwoven component layer comprising continuous filaments having an average diameter in the range from about 12 microns to 22 microns and a basis weight of at least about 5 gsm,
wherein said layers are intermittently bonded in a face-to-face relationship for a total basis weight not to exceed about 55 gsm and the percent of the weight of fine fibers layer to laminate weight is at least 55%, and
wherein said laminate has a cup crush peak load value of no more than 150 grams, a cup crush energy value of no more than 2250 g-mm, and a Frazier porosity of at least 50 scfm.
A nonwoven fabric laminate, substantially as hereinbefore described with reference to the accompanying drawings.
A personal care article, substantially as hereinbefore described with reference to the accompanying drawings.
EVIDENCE
The evidence in support of the opposition comprises two declarations by Dr Ernst. The first puts into evidence 23 patent specifications, including the opposed application 682191. The second provides details of the conversion to SI units of various measurements stated in imperial units in the documents cited. It is accompanied by an extract from “The Merck Index” setting out a range of conversion factors for different units; and by an extract from “Wellington Sears Handbook of Industrial Textiles” setting out a methodology for converting inter alia denier to diameter for various fibres.
No evidence in answer was filed.
Further evidence
Subsequent to the first hearing, statutory declarations were filed by Peter Michalovich Kobylivker and Christopher Cosgrove Creagan on behalf of the applicant and by Michael Thomas Pailthorpe and Ian Thomas Ernst, patent attorney, on behalf of the opponent. The last was accompanied by three exhibits: an extract from “Nonwovens Report International” dated June 1992, a copy of a letter dated 2 June 1999 from Dr Ernst to Reifenhauser GmbH & Co, and a copy of the response dated 7 June 1999 to Dr Ernst from a Dr Klitzing, representing “Reifenhauser”.
Peter Kobylivker identifies himself as a co-inventor of AU 636487, family equivalent of US 5213881. Christopher Creagan identifies himself as a co-inventor of the opposed application.
Michael Pailthorpe is professor in and head of the Department of Textile Technology of the School of Materials Science and Engineering at the University of New South Wales. He has a BSc (Hons) and a PhD. in Textile Technology, is a Chartered Textile Technologist and Fellow of the Textile Institute and states he is “familiar with the manufacture and properties of non-woven fabrics and non-woven fabric laminates.” He has “undertaken research and consultancies in the field of non-woven fabrics and non-woven fabric laminates for over 25 years.”
Submissions on evidence
Mr Turner for the applicant submitted that some of the evidence, in particular statements in two of the exhibits filed by the opponent, was not in the form of statutory declarations as required by regulation 22.12. He also argued that Professor Pailthorpe’s evidence that various properties were well-known in the art should have little weight because it is unsupported by any of the documentary evidence which would be expected to exist if this were so. Pailthorpe is a professor and researcher and thus over-qualified. He is thus not a person skilled in the art and cannot give evidence regarding common general knowledge or to draw conclusions on matters such as "inventiveness". Such statements should be ignored.
Mr Turner referred me to a number of cases in support of his argument that Professor Pailthorpe was over-qualified and consequently his evidence on both common general knowledge and obviousness should be ignored or given little weight: Valensi v British Radio Corp (1973) RPC 337 at 375; Plimpton v Malcolmson (1876) 3 Ch D 531 at 568-70; Catnic Components Ltd v Hill & Smith Ltd (1982) RPC 183 at 243; HPM Industries v Gerard Industries (1957) 98 CLR 424; Clafton v Forbes 19 IPR 293; Braas & Co GMBH v Humes Limited 26 IPR 273; 3M v Beiersdorf (1980) CLR 253 at 293; Sue v Carpenter 19 IPR 187.
Dr Ernst for the opponent argued that evidence in non- declaratory form was admissible and the weight to be given to it to be determined by the hearing officer. He referred me to T.A. Miller Ltd v the Minister for Housing and Local Government and Another (1968) 1 WLR 992: "Tribunals are entitled to act on any material which is logically probative, and even though it is not evidence in a court of law." He submitted that no information had been provided about the qualifications of Kobylivker and Creagan except that they were both inventors, Creagan a coinventor of the opposed application and Kobylivker of AU 636487 (Timmons). He referred me to Allfex Intern v Leader Products 9 IPR 649 and Byrne & Davidson Industries Ltd v Firmagroup Australia Pty Ltd (unreported decision on Petty Patent 538392, dated 20 October 1986). He argued that in general evidence should be weighted taking into account whether what was said was consistent with the specification and that this would result in more weight being given to the opponent's evidence.
Decision on evidence
I have considered these submissions. In regard to the cases cited, I note that in general they make a distinction between who may be qualified to give evidence regarding common general knowledge, as opposed to who may be qualified to give evidence on questions of what is obvious.
Thus while an "over-qualified" person may not be acceptable to give evidence on obviousness, their evidence may, after taking other factors such as credibility into account, still be given significant weight on questions on the state of the common general knowledge in an art. Thus, bearing in mind that Professor Pailthorpe's knowledge and experience is based in Australia, the patent area, I think it is appropriate to give significant weight to his evidence on common general knowledge, but to place very little weight on his opinions on what is obvious or inventive.
Mr Kobylivker and Mr Creagan are both inventors in the art in question. Thus any evidence they offer on obviousness or inventiveness can also receive very little weight. They have given addresses in the USA and there has been no evidence presented that they have knowledge or experience of the art in Australia. Although I think it is not very likely that there are large differences in this art between the USA and Australia, there may be some. Also there are some inconsistencies in their evidence. For example, Mr Kobylivker in paragraph 5 contradicts himself by saying firstly that SMS laminates were not soft and comfortable and in the next sentence saying they were soft and comfortable but were inadequate in other respects. Later in the same paragraph he refers to the laminate of claim 9 having good hydrostatic head values when this is not a feature of claim 9. Mr Creagan makes the same mistake. Consequently I will, in general, place greater weight on Professor Pailthorpe's evidence on common general knowledge.
SUBMISSIONS
Dr Ernst for the opponent made submissions with regard to section 40 matters, novelty, inventive step, selection and manner of manufacture.
Mr Turner for the applicant made submissions in response, in particular, in regard to the requirements for novelty, for prior art information, for a valid selection, and the need for expert evidence especially to support issues of obviousness,
I will refer to these in detail as needed in my decision.
DECISION
Section 40 matters
Sufficiency and fair basis
The laminates claimed per se in claim 1 and as a component of a disposable garment, eg a diaper, in claim 9 are defined differently. In claim 9:
the laminate is not limited by "a hydrostatic head of at least 15 cm" as defined in claim 1;
the basis weight ranges of the layers are broader: "at least about 1.5 gsm compared to "about 3 gsm to about 26 gsm" for the fine fibre layer and "at least about 5gsm" compared to "about 10gsm to about 30 gsm" for the filament layer;
the ratio of the weight of the fine fibre layer to the weight of the laminate is "at least about 5gsm" compared to " at least 20%".
The opponent has argued that this divergence or disconformity in requirements "renders unclear what is the invention claimed." In my view it creates uncertainty as to what are the essential features of the invention.
It has been argued for the applicant that the inventive concept resides in the definition of the properties of "softness and conformability", "breathability" and ability to act as a "barrier". The specification asserts that it is the objective of the invention to "overcome or substantially ameliorate the disadvantages arising from not all of these being available in combination and to a "desired degree" as required for use in personal care products (page 2, lines7-13). Arguably the absence of one of these requirements from the definition of the laminate in claim 9 gives rise to a lack of fair basis of that claim. This is supported by the statement at page 1, line 39 to page 2, line 3, where "barrier properties" are described as playing an important role in many personal care articles and, for example, in "containment flaps."
Consequently, I find this feature essential and thus claim 9, because it omits this feature, is not fairly based.
In considering the specification as a whole I can find no support beyond the consistory statement for the narrower ranges of the laminate structural features defined in claim 1. Although the laminate in the example described falls within these narrower ranges, it also falls within the ranges defined in claim 9. Consequently the laminates defined in claim1 fall within the scope of those defined in claim 9 and would be equally suitable for use in a diaper containment flap as those defined in claim 9. Thus I find that the essential ranges for these features of the invention described are those defined in claim 9. The more restricted ranges for these structural features in claim1 are, in this context, merely preferred.
Claim 4 sets out the features of what is described at page 5, lines 20-24, as a starting polymer, subsequently to be modified by the addition of peroxide, for the fine fibre web of the laminate. However claim 4 is not limited to being a starting polymer of this kind and is consequently not fairly based.
The omnibus claims, 10 and 11, are also affected by the difficulties in determining essential features. Following my finding above, I find that "barrier properties" as set out in claim1 are an essential feature of the laminate defined in these claims.
Clarity
The opponent has submitted that the frequent use of "about" and the absence of lower limits make it difficult for the public to know the scope of the claims. While "about" may cause problems I do not think that in this case and in this technology, there is a requirement that these measures be very precise. In fact there is a degree of variability inherent in these sorts of structures which militates against such precision. Thus I find that the use of "about" does not lead to a lack of clarity. Although the absence of lower limits could lead to some uncertainty, I think it is clear that the suggested zero diameter would be absurd in the context and should be rejected as such. In my view, there is likely to be a practical lower limit to the diameter of the fibres which would be clear to a skilled workman. Although no evidence has been provided on this issue, I think it unlikely that it would cause any practical problems.
Thus I find the claims do not lack clarity in regard to these matters.
Summary
I have found that there are some problems in determining the essential features of the invention but that on a reading of the specification as a whole these may be resolved, and I have done so as set out above. I have found claims 4 and 9 not fairly based. I have found that the claims are clear despite the use of the word "about" and the absence of lower limits for some ranges.
Novelty
Disclosures of the prior art
The documents primarily relied upon by the opponent are US 4041203 (Brock), AU 636487 (US 5213 881)(Timmons) and AU 636487 (US 4704116)(Enloe). Their disclosures are referred to as relevant in the body of my decision below. A number of other documents were not relied on individually but as forming a "body of prior knowledge". I have not found it necessary to refer to these in my decision and so have not listed them here.
Brock, US 4041203
Brock is incorporated in its entirety into the opposed specification. (See page 9, lines 34-35) In particular Brock proposes (column 15, lines 18-55) a laminate for use in sterile wrappers or containment fabrics which may have a fine fibre layer with fibres with an average diameter of 6 microns, and a basis weight of at least about 10.2 gsm and a filament layer with filaments of 12-55 microns, or preferably 15-25 microns, and a basis weight of 16.95 gsm. (I have used the conversions to metric units provided by Dr Ernst.) The layers are intermittently bonded together and the total weight of the laminate should be about 27.1-50.9 gsm where good drapability is required. Thus the mat to laminate ratio is in the range 20% to 37%. The laminate should also be fluid repellent and allow "penetration of a sterilent." The structural features of this laminate are clearly within, or overlapping, the equivalent ranges defined in the claims.
Drapability and fluid repellency are clearly recognised. In addition Brock recognises generally that fluid repellency, breathability and good hand and drapability are desirable for “garment related applications” and indicates that these laminates may be configured to have these properties. (column 7, lines 44-49 and column 8, lines 40-55) Materials which are both repellent and breathable may be produced. (column 8, line 53)
Brock also discloses the use of polypropylene (Claim 3 of the opposed application.) and laminates with two spun bonded filament layers, one on either side of a melt blown fibre layer (Claim 5 of the opposed specification.). Laminates are also disclosed which have 2 or 3 layers as defined in claim 10.
In addition Brock teaches how to vary the bonding between the layers of the laminate so as to achieve “the combination of desirable strength characteristics and textile–like drapability.” (column 4, lines 23 ff) Only “simple experimentation” is required to determine the best conditions. (column 5, line 21)
There is no disclosure of cup crush peak loads, cup crush energy, hydrostatic head or porosity ranges. Brock makes no specific disclosure either of use in personal care articles or as a containment flap in disposable garments for absorbing and containing body exudates.
Timmons, AU 636487 (US 5213881)
Timmons is incorporated into the opposed specification by reference. (page 9, lines 11-13). It refers (page 8, lines 24-30) to Brock as disclosing conventional practice with regard to the fusing of fibres rather than filaments in the bonding of the layers of the laminate. It discloses the modification, for use in the fine fibre layer of a surgical fabric laminate, of a propylene polymer with particular starting properties, ie a particular molecular weight distribution and a particular melt flow rate. The purpose of this modification is to assure “breathability while at the same time inhibiting strikethrough of fluids.” (page 2, lines 7-8) It discloses the use of varying amounts of peroxide to modify these properties, specifically to increase the melt flow rate of the polymer and reduce and narrow the polymer’s molecular weight distribution.
Timmons discloses starting polypropylene polymers within the ranges:
4.0-4.5 Mw/Mn, melt flow rate of about 400 gm/10 min at 230oC (page 3, lines 15-19);
4.0-4.5 Mw/Mn, melt flow rate of about 300-1000gm/10 min at 230oC (page 4, lines 7-10); an
4.0-4.5 Mw/Mn, melt flow rate of about 2000 gm/10 min at 230oC (page 4, lines 17-21).
In example 1, it discloses an SMS laminate with spun bond (filament) layers of basis weight about 19gsm and melt-blown (fibre) layers of about 17 gsm. It does not disclose any ranges for the filament or fibre diameters.
Claim 4 of the opposed application defines a polypropylene polymer in use in a laminate of the invention, with a molecular weight distribution between 3.6 and 4.8 Mw/Mn and a melt flow rate up to about 3000g/10 min. at 230oC. Thus the Timmons polymers are all within the ranges defined by claim 4.
There is no disclosure of cup crush peak loads, cup crush energy, hydrostatic head or porosity or their ranges or of use in personal care articles, or as a containment flap in a disposable diaper.
Enloe, US 4704116
Enloe is incorporated in its entirety into the opposed specification and is referred to as disclosing an example of the use of materials requiring barrier properties. (See page 2, lines 1-3) It discloses disposable diapers with fluid pervious flaps defining a waste containment pocket. It discloses the flaps as being made of water pervious material which slows the sideways flow of fluidic material, and also as allowing liquid faecal material to be "strained" into the inner absorbent material.
Enloe, AU 586633
The Australian family equivalent of this specification discloses the flap material as “preferably soft, conformable and vapour and/or fluid permeable. (It may have a basis weight of 0.7-0.8 oz per sq yd [23.7-27.1 gsm] and be a spun bonded diaper liner fabric. "Vapour and/or fluid permeable" has been construed by the Federal Court in Arico Trading International Pty Ltd v Kimberley-Clark Australia Pty Ltd [1999] FCA 1191 as disclosing a number of alternatives. However, the Court found that the claims were limited to flaps which were "fluid pervious" but this was not described as a requirement of the invention. Consequently the specification was insufficient.
Although the opponent has referred to AU 586633, because of the difficulties found by the Court in interpreting it, I will consider primarily the US specification to which I will refer as Enloe.
The law on novelty
The test for determining whether an invention lacks novelty is “the reverse infringement test”. This was stated in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) CLR 228 at page 235:
“Generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”
I think the following passage from C. Van der Lely v Bamfords Ltd (1963) RPC 61 is also relevant:
"If the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would at least be as likely to be carried out in a way that would not do so, the patentee's claim will not be anticipated".
The opponent has argued that the properties of cup crush peak load, cup crush energy, hydrostatic head and porosity are "intrinsic" to laminates made according to Brock and that it is thus not necessary for Brock to disclose the measures explicitly to anticipate the claimed invention. The applicant has argued that not all laminates produced according to Brock will have these properties to the desired degree, ie they are not inherent, and that without evidence to establish that any of the Brock laminates actually have these properties the claims must be found to be novel.
There are no statements in the specification identifying any aspect of the basic claimed process which differed from Brock. As already discussed above, Brock has disclosed laminates with the structural features of the laminate claimed, ie all the features defined in independent claims 1 and 9, and omnibus claims 10 and 11, except the properties of cup crush peak load, cup crush energy, hydrostatic head and porosity. Brock also discloses that its laminates may have the properties "fabric-like in drape, hand and appearance" and good breathability. This is equivalent to the desirability stated in the opposed specification for laminates for use in personal care products to have good breathability, softness and conformability.
However there is no disclosure of the specific measures of cup crush peak load, cup crush energy value, hydrostatic head and Frazier porosity. More importantly there is no disclosure of the specific ranges for those measures. These specific ranges make in effect a selection of laminates from those disclosed by Brock. This is a selection which Brock does not explicitly disclose.
The question then is whether or not Brock laminates with the claimed structural features will necessarily have these properties within these specific ranges.
The evidence presented by the parties can assist in determining this. In his evidence for the applicant, Mr Kobylivker at paragraph 4 stated that:
"Laminated fabrics having the various diameters, weights and relative weights do not inherently have the cup crush peak load values, cup crush energy values or hydrostatic head values as defined in the claims of the opposed specification. However, those skilled in the art, are capable of making a laminated structure as defined in the claims of the opposed specification from the information provided in the opposed specification."
Mr Creagan at paragraph 5 made similar comments.
Professor Pailthorpe, for the opponent, has stated at paragraph 10 of his declaration that:
"Those skilled in the art can adjust the intrinsic properties of the melt-blown and spun bond layers and the lamination process so as to achieve a desired combination of properties by simple trial."
Thus the declarants for both parties agree that the person skilled in the art, ie someone with common general knowledge, will be able to "adjust the intrinsic properties" to achieve the desired result, once that has been defined. However Brock has not defined the specific result. Thus it follows that a laminate produced according to Brock will not necessarily have the specific desired combination of properties.
In addition, there has been no evidence presented that laminates had previously been produced which had these properties at the claimed levels.
Consequently, in line with Van der Lely v Bamfords (supra), it can be concluded that the process of Brock would be "at least as likely to be carried out in a way which would not" infringe the applicant's claims and the claims are thus not anticipated.
Thus I find the invention as defined in the claims is novel over Brock.
The opponent also made submissions that claim 4 lacked novelty with regard to Timmons and claim 9 lacked novelty with regard to Enloe. Both claims 4 and 9 include the specific ranges of properties discussed above. Neither Enloe nor Timmons disclose these. Thus neither Timmons nor Enloe anticipate claims 4 and 9, or any of the other claims.
I find the invention as claimed in all the claims novel
Inventive step
The applicant has argued that it is the identification of the specific defined properties and their values which allows a person skilled in the art to adapt the Brock process, using their common general knowledge in the art, and thus provides the ability to manufacture a laminate with the desirable and advantageous properties required for use in personal care products and more particularly for use in diaper flaps. In other words it is simply the recognition of these properties and the defined ranges as being the ones which will make the laminate useful in the envisaged use which constitutes the inventive step. The applicant has also argued that there has been no evidence presented that Brock is a document that complies with section 7(3) of The Patents Act 1990, ie that it is "information that the skilled person" could "be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area."
The opponent has argued that the invention lacks inventive step, that it merely describes what those of ordinary skill in the art do conventionally. It was also argued that the invention is, in effect, a selection from a known range of laminates, ie all those which can be made by the Brock process. Because a selection patent is, in effect, a remonopolisation of part of an already known class of products or processes, there is a heavy onus on the applicant to demonstrate that the conditions for a selection patent have been met. The opponent further argues that this application does not claim a selection which will give rise to a valid patent because it fails the tests for a valid selection patent which have been developed in patent law. In particular there is nothing in the specification to suggest that there is a "substantial advantage" to be gained or "substantial disadvantage" to be avoided. Porosity, handle, conformability and barrier properties are not "special" properties. They are properties already recognised as desirable by Brock.
Prior art information
For consideration as prior art information, part of the prior art base, in relation to the ground of lack of inventive step, or obviousness, a document must comply with sub-section 7(3) of the Patents Act 1990. In particular it must be one that "a skilled person could…….be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area".
The skilled person in this case has been generally accepted as a person working in the art of non-woven laminates and their applications.
The documents already discussed, Brock, Enloe and Timmons, are clearly closely related to the field of the opposed specification. The patentee for all three is Kimberley-Clark Corporation which is a major player in the field of personal care articles and whose patents would be a primary source of information for any other player in the field. In addition the opposed specification uses as its starting point the laminates and processes which are principally disclosed by Brock, together with the disclosures of Timmons for a preferred starting polymer and Enloe for the diaper containment flaps. All three documents were published before the priority date of the opposed application. (Although the US family member of Timmons was not published in the USA until five days after the priority date of the opposed application, its Australian equivalent was made open to public inspection on 19 December 1991.)
I note the applicant's submission that no evidence has been put forward that these documents would have been so treated by a skilled person in the patent area. However, it is only necessary that they "could……be reasonably expected" to have been so treated.
In my view, taking the above factors into account, and in the absence of evidence to the contrary, it is reasonable to assume that all three documents fulfil this requirement. Thus I find that they can be considered as part of the prior art base in considering issues of obviousness or lack of inventive step.
The problem
The problem described in the opposed specification is to find a way to produce laminates which have all the properties known to be necessary for them to be suitable for use in personal care articles. The problem relative to Brock, the closest prior art, is for the person skilled in the art to find a way to select from Brock the most suitable laminates for use in personal care products. First it is necessary to determine precisely what Brock has disclosed. The disclosure at column 15, lines 18-55, is, in my view, most directly relevant. The preferred structural features disclosed in a 2 layer laminate are fibres with an average diameter of about 6 microns (lines 54-55) and filaments 12-55 microns, preferably 15-25 microns (column 3, lines 5-8); fibre layer basis weight of at least about 10.2 gsm and filament layer of at least about 16.95 gsm (column 15, lines 33-34); total basis weight 27.1-50.9 gsm (column 15, lines 39-40). This gives a ratio of fibre layer to laminate of at least from 20-37%. Bonding is done by a "fabric-wire pattern roll" (column 14, lines 13-15) which produces discrete bonding points, ie intermittent bonding. Thus Brock has identified laminates whose structural features fall within the ranges defined in the claims.
Brock has also disclosed in combination with those structural features recognition that laminates for particular uses need to have particular combinations of properties. In general these laminates "are exceptionally useful as sterile wrappers or containment fabrics for surgical and other health care procedures" (column 15, lines21-23). Specifically, the laminate should be fluid repellent and allow "penetration of a sterilent" (column 15, lines18-29). "Lower basis weight materials……are most useful where drapability, quietness and the like are especially important" such as surgical caps, gowns, patient drapes and isolation gowns. (column 15, lines 38-45) It is also recognised (column 15, lines 49-51) that a higher ratio of fibre layer gives "better barrier characteristics….but permeability is decreased." I think these properties can be fairly equated with the breathability, barrier and softness and conformability properties identified by the inventor as being necessary for personal care uses.
Example I is described as having both "a desirable drape and full-bodied hand, and is comfortable to the touch….." (column 7, lines 47-48) and "the combination of good water repellency and high air permeability" which "renders it exceptionally suitable for fabric applications where a repellent, breathable material is required." (column 8, lines41-43, 52-54).
More generally, Brock has disclosed laminates with "a desirable drape and full bodied hand" and "good water repellency and high air permeability"; has recognised and provided guidance in producing laminates suitable for use in garments with a range of desirable properties in a number of different combinations; and has provided general guidance on how to achieve the different combinations. For example, at column 16, lines 59-65:
"Materials are provided which are fabric-like in drape, hand and appearance. By employing the techniques illustrated herein, breathable, fluid-repellent materials can be fashioned which are highly suitable for garment applications…."
The opposed specification at page 4, lines 5-10, equates the known desired properties, ie softness and conformability, barrier and breathability, which make laminates suitable for use in personal care products, with the particular measures defined in the claims:
“The resulting laminate has an improved combination of properties including softness and conformability as measured by a cup crush test value no more than 150g, barrier as measured by hydrostatic head of at least 15 cm, and breathability as measured in terms of Frazier porosity of at least 50 scfm.”
Thus the combination of properties disclosed by Brock is also broadly equivalent to the measures defined in the claims of the opposed specification.
Although the uses envisaged by Brock do not specifically include the personal care articles exemplified in the opposed specification, the requirements disclosed by Brock are, in general terms, the same as the desired properties described and claimed for the products of the opposed specification.
Paragraph 14 of Pailthorpe's evidence directly supports this conclusion. Paragraph 5 also provides support that this combination of properties was known to be desirable:
"In particular it was well-known that SM and SMS fabrics could be manufactured so as to have a high degree of porosity or breathability while at the same time providing a barrier against strike through of liquids. In addition it was well-known that such fabrics could be made to be soft and conformable."
I note also that Kobylivker, at paragraph 5, discusses the observed deficiencies of previous laminates:
"previous SMS laminates had not found their way into personal care products as they were not soft and comfortable from a user's point of view. Conversely, SMS products found to be soft and comfortable, were not suitable in other areas such as surgical fabrics as they did not, to the desired degree, inhibit strike through of fluids…"
While this statement is somewhat unclear as to why "soft and comfortable" laminates had not been used in personal care products, it does make it clear that the properties of softness and comfort and inhibition of strike through (barrier) were known to be desirable in personal care products.
It is also clear from the specification itself, from Brock and from the statements by Kobylivker (paragraph 4), Creagan (paragraph 5) and Pailthorpe (paragraphs 10, 11 and 12) that a person skilled in the art would know how to adjust the process to achieve particular defined properties. Thus it is common ground between the parties that once given the direction the skilled workman would know how to get there without need of inventive ingenuity.
The problem, starting from Brock's disclosure that the combination of properties required was broadly achievable in laminates with the defined structure, can now be stated as how to produce the laminates most suitable for use in personal care products or how to select from Brock the most suitable laminates for use in personal care products. The solution given by the opposed application is to determine ranges for a particular set of measurements of these known properties which will allow the skilled workman to achieve the best or optimum results. Thus the basic question remaining to be settled is whether from the point reached by Brock it is inventive or non-obvious to determine such ranges.
The law on inventive step
One test for obviousness or lack of inventive step is that set out in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at page 286
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
Thus there are two questions to be answered:
What steps would the person skilled in the art of nonwoven fabric manufacture and its application in personal care products take to determine the ranges which will allow the most suitable laminates for use in personal care products to be produced?
Would those steps be merely a matter of routine?
I note that what steps the inventor actually took to arrive at the measures and ranges defined is not relevant.
In my view, all that is required in the present case is an optimisation exercise, to find the ranges for the known properties which will give the best results. All that this involves is simple trial to seek out and quantify these optimum ranges for this particular use. Simple analysis of the trial results would then allow the optimum ranges to be identified. Any suitable testing methods could be used to provide objective measures of the properties of suitable laminates as they are found. The measures to be used cannot be essential to the result. They are arbitrary and can be replaced by any equivalent measures. Such an optimisation exercise would clearly provide a result equivalent, whatever the measures used, to the result obtained by the inventor in the present case.
Such optimisation is also well recognised as being routine and non-inventive in character. In any art, given a combination of features, some ranges for those features will give a better result than others. Merely identifying and recording these better ranges is not inventive per se. For example in The Carlton Tyre Saving Co.'s Application (1973) 43 AOJP 1404, where the applicant claimed a specific wall thickness of a badminton racquet frame, the delegate of the Commissioner found that "all the applicant had done was to optimise a range of values and.…..some thicknesses must have better results than others."
Invention may, however, be involved if an unexpected result is obtained. Creagan (paragraph 3) states that there was an unexpected result in that a barrier laminate was provided which was both soft and comfortable "particularly having regard to the hydrostatic head defined in claim1 and 9". As discussed above I am unable to give this statement much weight - as a matter of detail "hydrostatic head" is not a feature of claim 9. The specification itself merely defines the result as being either the ability to achieve such a combination of properties or to do so to a desired degree. I have already found that Brock has disclosed the same broad properties as those which determine laminate suitability in personal care products. Pailthorpe (paragraph 10) confirms that such combinations are known and that these laminates can be provided with a wide range of desired combinations of the relevant properties. The question of degree is merely optimisation. On balance I find there is no unexpected result.
Thus I find the invention as claimed in claim 1 is obvious and lacks an inventive step in the light of Brock.
The features added by claims 2 and 6, total basis weight up to about 34 gsm and up to about 29gsm, respectively, both overlap with the range disclosed by Brock in column 15, as discussed above. The feature added by claim 3, the filament layer comprising a propylene polymer, is also disclosed by Brock at column 14, examples XI and XII. The feature added by claim 5, filament layers on either side of a fine fibre layer, is also disclosed as an alternative construction by Brock, see example III. As the opposed application makes no special claims for this 3 layer construction, I do not think its inclusion can be considered inventive. Claim 10 is an omnibus claim to the laminate referred to the drawings. There is nothing in the opposed specification to suggest that any of the specific features disclosed for this embodiment are in themselves inventive.
Thus I find claims 2, 3, 5, 6 and 10 are also obvious and lack an inventive step in the light of Brock.
Claim 7 is directed to a personal care article comprising the laminate of claim 5, which is directly dependent on claim 1, as a component. The problem is essentially the same as that set out above for claim 1, ie starting from Brock's disclosure that the combination of properties required was broadly achievable, how to produce the laminates most suitable for use in personal care products, with the addition of how to incorporate them in those products. I have found that the solution to the first part of the problem is obvious. In addition, the specification has disclosed no difficulties in the step of incorporating the suitable laminates into the personal care products. There is no invention in the incorporation step. At most it is substitution of a more suitable for a less suitable laminate. Thus a personal care article as claimed in claim 7 incorporating the laminate is obvious and lacks inventive step in the light of Brock.
Similar arguments apply to claims 8, 9 and 11:
Claim 8 is dependent on clam 7 and is further limited to use in a disposable diaper. There is nothing in the specification to suggest any difficulties involved in this application. Thus claim 8 is also obvious and lacks inventive step in the light of Brock.
Claim 9 is limited to the use of the laminate as a barrier flap in a disposable diaper. I note that the laminate of claim 9 is defined slightly differently from that of claim 1. However I do not think that these differences affect the present argument. The claim further includes some well-known details of diaper construction, ie "liquid pervious bodyside liner, a fluid impervious backing sheet with an absorbent material disposed therebetween", together with containment flaps. Containment flaps are disclosed in Enloe and Pailthorpe states at paragraph 6 that he is "familiar with diapers sold in Australia in accordance with the Enloe patent before the priority date". I think that this is sufficient for me to determine that containment flaps in disposable diapers were common general knowledge in the art. The opposed specification identifies no special difficulties involved in this use of laminates with the optimised known combination of properties. Thus I find claim 9 is obvious and lacks inventive step in the light of Brock.
Claim 11 is an omnibus claim to a personal care article limited by reference to the drawings, ie limited to 2 or 3 layer laminates as discussed above. The opposed specification discloses no special difficulties for the use of these constructions in personal care articles. Thus claim 11 is also obvious and lacks inventive step in the light of Brock.
Enloe discloses the use of containment flaps in disposable diapers. While it also discloses the need for the flaps to have barrier properties it does not disclose, even broadly, the other desirable properties claimed in claim 9. These are however disclosed in the Australian family equivalent of Enloe. In this context the problem is how to produce fabrics suitable for use in containment flaps starting from Enloe and given common general knowledge in the art. Brock supplies the required information. However I have not concluded that Brock's relevant disclosures are common general knowledge. Although Pailthorpe (paragraph 14) states that water repellency, breathability, drapeability, handle and comfortable feel were "properties of such fabrics (which) have become well-known to those skilled in the art" and a desired combination of such properties could be achieved by those skilled in the art by simple trial, his statement does not extend to the structural features of the laminate which are also disclosed in Brock. In addition although Brock has been cited in a number of related patent specifications including AU 636487 (Timmons), EP 370835 (River), US 43748888 (Bornslaeger), GB 2126162 (Kimberley-Clark Corporation), EP 569860 (Kimberley-Clark Corporation), these do not all focus on the properties relevant to this problem. Thus I do believe that I can conclude that the relevant information disclosed in Brock is common general knowledge. Thus I find that claim 9 is not obvious in the light of Enloe
Claim 4 is dependent on claims 1 and 2 and adds the feature that the starting polymer (see finding above on fair basis) for the fine fibre web component of the laminate has a particular molecular weight distribution and flow rate. This produces a narrower and more effective pore size distribution in the web which determines its breathability. There is no disclosure of this in Brock. I have no evidence either that this starting polymer is common general knowledge or that its inclusion would be obvious. Thus I find claim 4 is not obvious in the light of Brock.
The use of this starting polymer is, however, disclosed in Timmons which is incorporated in the opposed specification (page 4, line 14 ff) "in its entirety by reference". [US 5213881 is the family equivalent of AU 636487 (Timmons).] Timmons specifically discusses only porosity and barrier properties for use in a variety of medical and industrial uses. It does not disclose all the structural features of the claimed laminate and it does not refer to softness and conformability, drapability or use in personal care articles. Although Timmons refers to Brock (page 8, lines24-26), this reference is limited to the nature of the bonding between the layers of the laminate. I do not think it allows Timmons and Brock to be read as a single source of information on all the features of claim 4. Also there is no evidence that the structural features of the claim are common general knowledge. Thus I find claim 4 is not obvious in the light of Timmons.
Summary
I have found claims 1-3 and 5-11 to be obvious and lack inventive step in the light of Brock. I have found claim 4 to be non-obvious in the light of both Brock and Timmons.
Manner of manufacture
The opponent made submissions that claims 7, 8, 9 and 11 were not directed to a manner of manufacture as they were "nothing but a claim for a use of a known material in the manufacture of known articles for the purpose of which its known properties make that material suitable": Commissioner of Patents v Microcell Ltd (1959) 1 IPR 52 at 62. As I have already found that these claims are obvious and lack inventive step I do not consider it necessary to determine this issue and I will not do so.
Selection
The opponent also made submissions that the application was in substance, if not in form, a selection from a known range of products, ie those disclosed by Brock or Timmons, but that it was not a valid selection. I think it is appropriate in this context to apply the statement of the delegate in American Home Products Corporation (unreported Patent Office decision on patent application number 16397/92, issued 28 September 1994):
"If a citation contains clear and unmistakable directions and an enabling disclosure, then the application will prima facie lack novelty. Then, and only then, will it be necessary to consider the question of selection."
As I have already found that the claims are novel over Brock, as well as Timmons, there is no need for me to determine whether or not any such selection is valid, and I will not do so.
CONCLUSION
I have found:
There are some section 40 defects in the specification. There are some problems in determining the essential features of the invention but I have resolved these. I have found claims 4 and 9 are not fairly based.
The invention as claimed in all the claims is novel.
The invention as claimed in claim 4 is inventive and non-obvious and is a patentable invention or manner of new manufacture.
The invention as claimed in claims 1-3 and 5-11 is obvious and lacks inventive step.
The opposition has in the main succeeded. All the claims except claim 4 have been found invalid. As there is patentable subject matter in the specification I allow the applicant 60 days from the date of this decision to propose suitable amendments.
COSTS
Both parties made submissions on costs. They were in agreement that each party should bear its own costs in relation to the hearing on further evidence held on 28 June 1999. I agree that this is appropriate.
Dr Ernst submitted that for the hearing of the substantive matters, costs should follow the decision as is the usual practice for matters before the Commissioner. However Mr Turner argued that if further evidence had not been raised by the opponent the matter could have concluded in a single day and there would have been no need to reconvene the hearing. Dr Ernst disagreed arguing that the further evidence could have been dealt with at the first hearing.
Although the opponent made the first move to file further evidence, it was, in my view, the extent of the evidence subsequently filed by both parties that made it necessary to reconvene the hearing. Thus I see no reason to vary the usual practice. I have found in favour of the opponent on almost all matters. I award costs in relation to the hearings of the substantive matters in favour of the opponent, Arico Trading Australia Pty Ltd and I make no award of costs in relation to the hearing on further evidence.
Wanda Gunawardana
Delegate of the Commissioner of Patents
Patent attorneys for the applicant: Spruson & Ferguson, Sydney
Patent attorneys for the opponent: Baldwin Shelston Waters, Sydney
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