Kimberly-Clarke Worldwide, Inc v Carter Holt Tissue Australia Pty Ltd

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 696144 in the name of KIMBERLY-CLARKE WORLDWIDE, INC

Title: Soft Treated Tissue

Action: Opposition under s 59 of the Patent Act 1990 by CARTER HOLT TISSUE AUSTRALIA PTY LTD.

Decision: Issued.
Abstract

The expression "uniformly distributed solidified deposits" in claim 1 is not clear and fairly based without reference to the deposits being spaced-apart and that the uniformity of the surface coating which is treated with osmium tetroxide gas and is measured by the percent coefficient of variation for a gray-level histogram analysis, is about 15 or less". In this respect claim 29 also lacks fair basis.
Claim 29 is not fairly based because it does not define the percentage values for the oil/wax composition.
Both claim 1 and claim 29 lack fair basis, as they do not define the degree of penetration that the product and method need to achieve; i.e. the GL_Diffof about 5 or greater needs to be defined in both claims.
I found that the term "wax" was to be given a restricted meaning; one that excludes fatty alcohols and ethoxylated fatty alcohols.
As currently defined neither claim 1 nor claim 29 can be classed as a selection patent as neither of the claims necessarily possess the advantages described. Further, these claims do not uniquely identify the class of materials or its properties that would give rise to a proper selection.
The citations disclose the invention as defined by claims 1-8, 10-13, 15-21, 29-35, and claim 40. In addition claims 9, 14, 25 to 27 were not considered to be novelty conferring features.
Claims 29-41 are directed towards a manner of manufacture.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 696144 by Kimberly-Clarke World-wide, Inc and opposition thereto under s59 of the Patents Act 1990 by Carter Hot Harvey Tissue Australia Pty Ltd.

BACKGROUND

Patent application 49686/96 was filed as the national phase application of WO96/24723, which has claimed priority from US basic application 384170 that was filed on 6 February 1995. The application was advertised accepted on 3 September 1998 and allocated serial number 696144. A notice of opposition was filed on 3 December 1998 with the statement of grounds and particulars being served on 3 March 1999. Evidence-in-support was filed on 3 February 2000, evidence-in-answer on 8 November 2000 and on 2 April 2001 evidence-in-reply was filed.
A request for further evidence was filed on 2 May 2001 and leave was granted on 5 July 2001. Evidence-in-support was filed on 5 August 2001 and evidence-in-response was completed on 6 September 2001.
A hearing on the matter was set for 9 and 10 April 2002 in the Sydney State Office. Stephen Burley of Council, with Paul Harrison, patent attorney of Baldwin Shelston Waters and Linda King, solicitor of Baldwin Shelston Waters, attended on behalf of the opponent, Carter Holt Harvey Tissue Australia Pty Ltd [CHH]. Shahnaz Irani, patent attorney of Sprusons & Ferguson attended on behalf of Kimberly-Clarke Worldwide, Inc [KCW].
Grounds of Opposition
In its statement of grounds and particulars, the opponent alleged that the claims were not novel, did not possess an inventive step, and were not directed towards a manner of manufacture. In addition the opponent alleged that there are a number of s40(2) and s40(3) matters. At the hearing the matter the ground of inventive step was not pressed and the ground of lack of manner of manufacture was confined to the method claims 29 to 41.
Specification
The invention relates to a soft treated tissue and in particular relates to facial tissues and bath tissues that absorb body fluids. However, these tissues abrade the skin and prior art attempts to solve this problem have included the use of additive formulations that provide lubricity to the tissue.
"Absorbent tissue products such as facial tissue and bath tissue have been used to absorb body fluids and leave the skin dry. Absorbent tissues, in addition to absorbing fluids, however, have also abraded the skin. In particular, during frequent nose blowing, the skin can become so abraded as to appear red and be sore to the touch. To reduce skin abrasion, tissue additive formulations can be applied to the tissue such that, in use, the additive formulation either provides lubricity causing the tissue to glide across the surface of the skin, or leaves the tissue and is deposited on the skin."
As these formulations are liquids or semi-liquids at room temperature, a large amount must be used in order to provide the required effect. Hence, one of the objects of the invention is to minimise the amount used and to improve the effectiveness of its application.
"To date these formulations have been liquids or semi solids at room temperature to enable them to be easily deposited onto the tissue. A high amount of these liquids is required to be deposited on the tissue to deliver the benefit of reduced skin irritation and redness because these liquids absorb into the tissue, leaving less on the surface to provide the benefit.
Thus, there is a need for a formulation that can be applied to a tissue which will remain readily available for transfer to the user's skin to reduce skin irritation and redness in an efficient cost-effective manner."
Summary of the invention
The invention is extensively discussed in the "summary" section of the specification. The specification acknowledges that the formation of a large number of individual deposits of an oil/wax composition on the surface of the tissue web is essential.
"It has now been discovered that a superior soft tissue product can be made by applying, on the surface(s) of the tissue, large numbers of individual deposits of a melted moisturizing/protective composition comprising a wax and an oil, and thereafter resolidifying the composition to form a distribution, preferably a uniform distribution, of solid deposits on the surface(s) of the tissue. Because the composition is a solid at room temperature and rapidly solidifies after deposition, it has less tendency to penetrate and migrate into the sheet."
As a result of the deposition, two main benefits emerge; a greater amount of the composition is available to the user and a lower amount of composition can be used.
"Compared to tissues treated with liquid formulations, this leaves a greater percentage of the added composition on the surface of the tissue where it can contact and transfer to the user's skin to provide a benefit. Furthermore, a lower add-on amount can be used to deliver the same benefit at lower cost because of the efficient placement of the composition substantially at the surface of the product."
The invention is expressed as having two aspects. The first aspect resides in a tissue product characterised by a distribution of an oil/wax composition that finds expression as claim 1.
"Hence, in one aspect the invention resides in a tissue product having one or more plies, wherein one or both of the outer surfaces of the product have uniformly distributed solidified deposits of a composition comprising from about 30 to about 90 weight percent oil, and from about 10 to about 40 weight percent wax, preferably also containing from about 5 to about 40 weight percent fatty alcohol, said composition having a melting point of from about 30°C to about 70°C, more specifically from about 40°C to about 60°C.
The second aspect is expressed as a method of making the product that finds expression as method claim 29. Importantly the composition resolidifies on the surface of the tissue so that penetration into the tissue is impeded.
"In another aspect, the invention resides in a method of making a soft tissue product comprising: (a) heating a composition comprising an oil, wax, and preferably a fatty alcohol, to a temperature above the melting point of the composition, causing the composition to melt, said composition having a melting point of from about 30°C. to about 70°C; (b) uniformly applying the melted composition to one or both surfaces of a tissue web in spaced-apart deposits; and (c) resolidifying the deposits of the melted composition."
The specification discusses that the importance of the composition resolidifying on the surface of the tissue web is to reduce penetration of the composition into the layers of the tissue web.
"Resolidification of the deposits can occur almost instantaneously, without the need for external cooling means such as chill rolls, if the composition is heated to a temperature only slightly above or at the melting point of the composition. However, external cooling means such as chill rolls, either before or after the application of the melt, can be used if desired to accelerate resolidification. Such instantaneous resolidification tends to impede penetration of the composition into the tissue and retain it on the surface of the tissue, which is advantageous. For example, the temperature of the melted composition can advantageously be above the melting point about 10°C. or less, more specifically about 5°C. or less, and still more specifically about 2°C. or less. As the temperature of the melted composition approaches the melting point, the viscosity of the melted composition generally increases, which further enhances the tendency of the melted composition to be retained on the surface."
The specification ends with 41 claims of which claims 1 and 29 are the independent claims with claim 1 being directed to the product and claim 29 being directed to a method. Claims 2 to 5 are directed to the oil component; claims 6 to 9 are directed to the wax component; claims 10 to 15 and claim 40 are directed to the fatty alcohol component; claim 16 is directed to the melting point; claims 17 to 19 and claims 33 to 35 are directed to the amounts of composition; claims 20 to 21 and claims 31 to 32 are directed to the surface area coverage; claims 22 to 24 are directed to percent coefficient of variation; claims 25 to 27 are directed to the sink time; claim 30 is directed to the use of a rotogravure; claim 36 is directed to cooling of the tissue web; claims 37 to 39 are directed to the heating of the composition; and claims 28 and 41 are omnibus claims.
The claims defining the invention are as follows.
"1. A soft tissue product having one or more plies, wherein one or both outer surfaces of the product have uniformly distributed solidified deposits having a composition comprising from about 30 to about 90 weight percent oil and from about 10 to about 40 weight percent wax, said compositions having a melting point of from about 30°C to about 70°C.
2. The tissue product of claim 1 wherein the amount of oil in the composition is from about 40 to about 70 weight percent.
3. The tissue product of claim 2 wherein the amount of oil in the composition is from about 45 to about 60 weight percent.
4. The tissue product of any one of claims 1 to 3 wherein the oil is selected from the group consisting of mineral oil, animal oil, plant oil and silicone oil.
5. The tissue product of claim 4 wherein the oil is mineral oil.
6. The tissue product of any one of claims 1 to 5 wherein the amount of wax in the composition is from about 10 to about 30 weight percent.
7. The tissue product of claim 6 wherein the amount of wax in the composition is from about 15 to about 25 weight percent.
8. The tissue product of any one of claims 1 to 7 wherein the wax is selected from the group consisting of natural wax, petroleum wax, silicone wax and synthetic wax.
9. The tissue product of claim 8 wherein the wax is ceresin wax.
10. The tissue product of any one of claims 1 to 9 further comprising from about 5 to about 40 weight percent fatty alcohol.
11. The tissue product of any one of claims 1 to 9 further comprising from about 10 to about 30 weight percent fatty alcohol.
12. The tissue product of any one of claims 1 to 9 further comprising from about 15 to about 25 weight percent fatty alcohol.
13. The tissue product of any one of claims 10 to 12 wherein the fatty alcohol is selected from the group consisting of cetyl alcohol, stearyl alcohol, behenyl alcohol and dodecyl alcohol.
14. The tissue product of claim 13 wherein the fatty alcohol is behenyl alcohol.
15. The tissue product of claim 10 wherein the fatty alcohol is cetearyl alcohol.
16. The tissue product of any one of claims 1 to 15 wherein the melting point of the composition is from about 40⁰C to about 60⁰C.
17. The tissue product of any one of claims 1 to 16 wherein the amount of the composition is from about 1 to about 40 weight percent based on the weight of the tissue.
18. The tissue product of claim 17 wherein the amount of the composition is from about 5 to about 25 weight percent based on the weight of the tissue.
19. The tissue product of claim 17 wherein the amount of the composition is from about 10 to about 15 weight percent based on the weight of the tissue.
20. The tissue product of any one of claims 1 to 19 wherein the actual surface area coverage is from about 30 to about 99 percent.
21. The tissue product of claim 20 wherein the actual surface area coverage is from about 50 to about 80 percent.
22. The tissue product of any one of claims 1 to 21 wherein the uniformity of the surface coating, treated with osmium tetroxide gas and as measured by the percent coefficient of variation for a gray-level histogram analysis, is about 15 or less.
23. The tissue product of claim 22 wherein the percent coefficient of variation is about 10 or less.
24.The tissue product of claim 22 wherein the percent coefficient of variation is from about 5 to about 15.
25. The tissue product of any one of claims 1 to 24 having a Sink Time of about 20 seconds or greater.
26. The tissue product of claim 25 having a Sink Time of about 40 seconds or 15 greater.
27. The tissue product of claim 25 having a Sink Time of from about 50 to about 150 seconds.
28. A soft tissue product having one or more plies, wherein one or both outer surfaces of the product have uniformly distributed solidified deposits, substantially as hereinbefore described with reference to any one of the Examples.
29. A method of making a soft tissue product comprising:
a) heating a composition comprising an oil and a wax to a temperature above the melting point of the composition, causing said composition to melt, said composition having a melting point of from about 30°C to about 70°C;
b) uniformly applying the melted composition to one or both surfaces of a tissue web in spaced-apart deposits; and
c) resolidifying the deposits of the melted composition.
30. The method of claim 29 wherein the heated composition is applied to the tissue web with a rotogravure printer providing from about 15.5 to about 155000 deposits per cm² (about 100 to about 1000000 deposits per square inch).
31. The method of claim 30 wherein from about 30 to about 99 percent of the surface area of the tissue is covered with the composition.
32.The method of claim 30 wherein from about 50 to about 80 percent of the surface area of the tissue is covered with the composition.
33. The method of any one of claims 29 to 32 wherein the amount of the composition applied to the tissue is from about 1 to about 40 weight percent.
34. The method of claim 33 wherein the amount of the composition applied to the tissue is from about 5 to about 25 weight percent.
35. The method of claim 33 wherein the amount of the composition applied to the tissue is from about 10 to about 15 weight percent.
36. The method of any one of claims 29 to 35 wherein the tissue web is cooled before or after the deposits of the coating composition are applied in order to accelerate solidification of the deposits.
37. The method of any one of claims 29 to 36 wherein the composition is heated to a temperature of about 10°C or less above the melting point of the composition.
38. The method of claim 37 wherein the composition is heated to a temperature of about 5°C or less above the melting point of the composition.
39. The method of claim 37 wherein the composition is heated to a temperature of about 2°C above the melting point of the composition.
40. The method of any one of claims 29 to 39 wherein the composition contains from about 5 to about 40 weight percent fatty alcohol.
41. A method of making a soft tissue product, substantially as hereinbefore described with reference to any one of the Examples."
Evidence
Evidence-in-support
Dr Motty Sobol, director of SIRIS Corporation (Aust) Pty Ltd filed a statutory declaration made on17 December 1999 accompanied with a copy of Dr Sobol's curriculum vitae (exhibit MS1) and two reports, exhibits MS2 and MS3.
Dr Sobol filed a further statutory declaration made on 1 February 2000. This declaration was accompanied with exhibit MS4.
Melinda Tait, an investigations chemist with the opponent (CHH) filed a statutory declaration dated 17 December 1999 accompanied by exhibit MT1.
Paul G Harrison, patent attorney of Baldwin Shelston Waters, filed a statutory declaration dated 21 December 1999 accompanied by exhibit PGH1.
Evidence-in-answer
Duane G Krzysik, senior research at KCW, and one of the inventors of the current application filed two statutory declarations dated 1 August 2000 and 1 November 2000. The declaration filed 1 November 2000 was accompanied with exhibit DGK1.
John Alexander Staton, director at Technical Services Consultancy Pty Ltd filed a statutory declaration dated 29 June 2000 accompanied by exhibits JAS1 to JAS7. Mr Staton also filed a second statutory declaration dated 1 November 2000 accompanied by exhibits JASA and JASB.
Evidence-in-reply
Dr Phillip Marshall, consultant, filed a statutory declaration dated 29 March 2001 accompanied by exhibit PM1.
John Proctor, manager of the environmental and technical department of the opponent [CHH] filed a statutory declaration dated 2 March 2001 accompanied by exhibits JP1 to JP8.
Dr Sobol filed his third statutory declaration dated 2 March 2001 accompanied by exhibits MS5 to MS7.
Paul G Harrison, patent attorney of Baldwin Shelston Waters filed his second statutory declaration dated 2 March 2001 accompanied by exhibit PGH2.
Further evidence
On 2 May 2001, the applicant filed a request under regulation 5.10(4) for a direction by the Commissioner to allow it to serve further evidence on the opponent. This request was considered by the delegate and subsequently allowed.
A second declaration dated 29 June 2001 by Duane Gerard Krzysik was filed. The opponent was given an opportunity to file evidence-in-response. Dr Motty filed his fourth declaration dated 5 December 2001 with exhibits MS8 and MS9, and Dr Phillip Marshall filed his second declaration dated 6 September 2001.
DECISION
SELECTION
Before discussing the specific grounds of opposition I would like to note how Krzysik (one of the inventors of the application in suit) expresses the solution provided by the invention.
"The solution ultimately involved an unexpected combination of a number of factors which I did not anticipate, including not only specifically formulating a composition possessing a melting point within a specific range based on a choice of appropriate combinations of waxes and oils but also utilisation of a technique of applying large numbers of individual deposits of a composition to the surface of tissue and ensuring uniform distribution of such deposits."
From this statement and the statement in the specification regarding comparative example 6, that;
"It is believed that the lack of a wax component reduced the ability of the oil component to remain at or near the surface of the tissue and thus preventing a preferred result."
the invention may be seen as arriving at an unexpected result. It is recognised that a selection has the quality of being unexpected; The Carlton Tyre Saving Co's Application, (1973) AOJP 1404. It is also recognised that the class needs to be identified.
The issue of selection permeates the considerations of fair basis and novelty.
S40: CLARITY and FAIR BASIS

Mr Burley submitted that claim 1 was unclear and not fairly based. Specifically he alluded to the fact that the expression "uniformly distributed solidified deposits" does not identify the number or size of the deposits and that the expression does not necessarily include a "large number of individual deposits". Mr Burley also suggested that two or more deposits would satisfy the criterion of being "uniformly deposited".
The second major area of dispute between the parties lies in the interpretation of the term "wax". The opponent contended that the term as used in the claims should be given its plain meaning whereas the applicant contended that the term must be interpreted in light of the specification, in particular, the applicant contended that the term should be read in light of the definitions as used by the Cosmetic, Toiletry and Fragrance Association (CTFA).
Uniform distributed solidified deposits: claim 1
Mr Burley contended that the essential aspect of the invention is the use of "large numbers of individual deposits of a melted ...composition" (page 1 lines 26 to 28 of the specification). Furthermore, Mr Burley pointed out that claim 1 makes no mention of the deposits being composed of a large number of individual deposits.
Ms Irani submitted that the words of the claim are plain English words, which are not terms in the art, and when viewed in the light of the specification, the phrase does not lack clarity. In support of this submission, Ms Irani submitted that the words import into the claim the limitations that the opponent submits is lacking. Ms Irani stated:
"One of the features of the invention is the provision of the protective composition as an array of multiple small deposits on at least one of the outer surfaces of the tissue. The term 'uniformly distributed' clearly indicates that there are multiple deposits and this interpretation is supported by page 1 lines 26-27 '…applying, on the surface(s) of the tissue, large numbers of individual deposits of a…composition…and thereafter resolidifying the composition to from a…uniform distribution of solid deposits'…"
Ms Irani argued that the description of the invention gives effect to the expression. Ms Irani stated:
"Considering this expression in the context of the specification makes it very clear that it refers to a large number of 'very small deposits of the composition printed on the surface of the tissue'. At page 4 lines 7-11 the following is stated:
'The surface area coverage of the composition is preferably uniform over substantially all of the tissue surface, but only partially covers the surface(s) of the tissue product. This is achieved by a large number of small space apart deposits which, when viewed by the naked eye, appear to cover the entire surface, but in fact do not.'
At page 4, lines 17-22:
'By providing a large number of very small deposits, the penetration of the composition can be more easily controlled to substantially remain on or near the surface of the tissue. Gravure printing is ideally suited to such an application by providing, for example, from about 10 to about 1000 deposits per lineal inch of surface, or from about 100 to about 1,000,000 deposits per square inch.'
Again, at page 4 lines 26-35:
'By providing such a large number of small deposits, the uniformity of the deposit distribution is very high....Because of the large number of small deposits applied to the surface of the tissue, the deposits more readily resolidify on the surface of the tissue.' ".
In Ms Irani's view, this interpretation gives effect to a valid construction of the claim. If the applicant's interpretation is adopted then the object of the invention is met and this would be preferable to a construction in which the object of the invention is not met. Ms Irani expressed this as follows.
"The object of the invention is not met if this interpretation is not favoured as part of the inventive solution is the presence of the composition as a large number of small deposits arrayed across at least one tissue surface as this uniform distribution adds to the retention of the deposits on the surface when compared to irregular 'blobs' of the composition."
In the context of the specification, Ms Irani submitted that the expression "uniformly distributed solidified deposits" can only refer to fact that a large number of very small deposits are deposited on the surface of the tissue.
Ms Irani drew my attention to the drawings and submitted that the expression "uniformly distributed solidified deposits" means a large number or an array of solidified deposits of the composition on at least one outer surface of a tissue product is further enforced by the drawings. In support, Ms Irani referred to the case of Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331 at [86]-[87] in which Hely J noted that it was appropriate to also look at the drawings which form part of a patent specification when interpreting a claim or claims. Ms Irani drew my attention to the following passages [86] and [87] of the decision.
"An inventor of a machine is not tied down to make such a specification, as by words only, would enable a skilful mechanic to make the machine, but he is allowed to call in aid the drawings which he annexes to the specification; and if, by comparison of the words and the drawings, the one will explain the other sufficiently to enable a skilful mechanic to perform the work; such a specification is sufficient"; at [86] quoting a statement by Abbott CJ;
And further;
"Thus, in the interpretation of the specification, regard is to be had to both the words and the drawings. The drawings may be used to help to explain the words just as much as the words may be used to help explain the drawings. It would be consistent with ordinary cannons of construction to endeavor to give a consistent and harmonious construction to the disclosures made by each. One would not lightly conclude that the written word and the drawings are describing two different things." [87] per Hely J.
Thus, Ms Irani concludes that looking at the drawings/figures and the accompanying description, that the only consistent interpretation of the expression "uniformly distributed solidified deposits" is that of a large number of uniformly placed small deposits on at least one outer surface of a tissue.
"This interpretation is supported at page 6 lines 33-35 where the rotogravure printing apparatus of Figure 1 is described, this being the preferred apparatus for effecting the application of the composition on the tissue surface. There it describes the '...engraved roll, the surface of which contains a plurality of small cells having a transfer volume necessary to achieve the desired effect.' Further similar statements are made in relation to the other Figures at page 7 of the specification. This interpretation is also supported by Figure 7A which shows a uniformity of coverage of a tissue surface by a large number of small deposits of composition (see also text pat page 8 relating to this Figure)."
Ms Irani submitted that the term "solidified deposits" enhances her submission that the composition is in the form of a solid application on the surface of the tissue and the term "deposits" indicates that the composition is deposited on the surface of the tissue in discrete amounts. These words, Ms Irani contends, effectively enforce the term "outer surfaces" in claim 1 thus emphasising the retention of the composition on the surface. Furthermore Ms Irani suggested that this interpretation is enforced by Figures 8 and 9 (see also accompanying discussion at page 9 at 1ine 12 to page 10 at line 21 of the specification).
Ms Irani concludes her submission by referring to the declarants' statements;
"I note that Philip Marshall [for KCA] does not dispute the meaning of this expression and accepts that it means a controlled delivery of liquid compositions under high pressure to tissue substrates to give a predetermined, predictable, reproducible and reliable pattern of deposited material. He agrees (paragraph 11.3) that the disclosed method of application in the opposed specification results in such a 'pattern'. John Staton [for CHH] similarly has a consistent interpretation of this expression. Motty Sobol's [for KCA] interpretation of this expression (paragraphs 16 and 17 of his declaration of 2nd March 2001) is strained and inconsistent with the entire teaching of the specification and drawings."
Ms Irani, in summary, points out that the expression can only have one meaning; one that is consistent with the description.
"In light of the foregoing it is therefore most strongly submitted that the terms of the opposed specification and the drawings are such as to require -in fact necessitate- a conclusion that the composition is in the form of a large number of small discrete deposits on at least one outer surface of the tissue. The text and diagrams unmistakably show that this is the valid and clear interpretation of this expression."
Decision on the expression uniform distributed solidified deposits
The expression is made up of English words that are not terms in the art. The expression can be rephrased as deposits that are solid in nature and are uniformly distributed over some datum level. Krzysik and Staton, declarants for KCA, take the view that the expression means "large numbers of individual deposits". Staton also points out that a composition that is composed of a large number of individual deposits is to be contrasted with a composition that provides a "continuous laminate". However, the specification makes it plain that when the tissue product is viewed by the naked eye the deposition may appear to be continuous but in fact is not so. This is demonstrated by figures 7A and 7B of the current invention that illustrate the difference between the coverage of the composition of the invention (Figure 7A) and "PUFFS Plus" of the prior art (Figure 7B). In order to demonstrate the difference between the two products, tissues were treated with osmium tetroxide and viewed under a microscope at a magnification of 7.5X with cross-polarized light. The specification further discloses that a grey-scale histogram analysis on the dyed tissues was undertaken with the tissue of the invention having an average percent coefficient of variation (COV) of 10.6 whereas the "PUFFS Plus" facial tissues had a coefficient of 22.6, thus indicating that the tissues of the invention had significantly less variability in coverage. From this, I conclude that the tissues of the current application would appear to have a continuous coating but under the appropriate scientific analysis, it will not appear to be so. The specification at page 4 lines 28-31 refers to the coefficient of variation.
"By providing such a large number of small deposits, the uniformity of the deposit distribution is very high. The uniformity can be quantified by image analysis as will hereinafter be described and preferably can be characterized by a percent coefficient of variation of about 15 or less, more specifically about 10 or less, and still more specifically from about 5 to about 15. Because of the large number of small deposits applied to the surface of the tissue, the deposits more readily resolidify on the surface of the tissue where they is [are] most effective in benefiting the user."
Accordingly, I am of the view that the expression "uniformly distributed solidified deposits" is not necessarily confined to a large number of individual deposits which in itself does not convey the degree of coverage that the tissues of the invention is intended to possess. To my untrained eye, figure 7B seems to display uniformity of coverage but less densely packed than the tissue of the current invention (figure 7A). There does not appear to be any necessary connection between uniformly distributed solidified deposits and large numbers of individual deposits. Thus, I would thus uphold the opponent's objection. However, I would go further than the opponent's submissions. From a reading of the specification, the aim of the invention is to achieve a certain level of uniformity of distribution. The only certainty that the specification provides lies in the percent coefficient of variation. Hence, I am of the view that claim 1 lacks fair basis as it does not recite an essential feature of the invention, namely that the uniformity of the surface coating, treated with osmium tetroxide gas and as measured by the percent coefficient of variation for a gray-level histogram analysis, is about 15 or less. Without such a reference, the expression "uniformly distributed solidified deposits" has no certainty of meaning in that it is indistinguishable from a laminate made up of a multiplicity of deposits. In other words, the quality of being spaced apart is absent from the expression as indeed is the quality of uniformity.
There is a further issue, one that I will take up in respect of claim 29, that the claim states that the outer surfaces of the product have "uniformly distributed solidified deposits". This does not give rise to an implication of the degree of penetration that is considered necessary for the object of the invention to be met.
Waxes and oils: claim 1 and 29
The other issue related to the meaning of the term "oil" and "waxes". From the definition in the specification, Mr Burley submitted that these terms are inclusive and not exhaustive. Mr Burley submitted that these "definitions" simply tell the skilled addressee what oils or waxes the skilled addressee might adopt but there is nothing in the specification that would tell the skilled addressee what other oils or waxes might be used. In other words, the skilled addressee would be encouraged to refer to the general definition of an "oil" or "wax" for the selection of any other oils or waxes that might be used.
The "definition" of "oils" and "waxes" is as follows:
"Suitable oils include, but are not limited to, the following classes of oils: petroleum or mineral oils, such as mineral oil and petrolatum: animal oils, such as mink oil and lanolin oil: plants oils, such as aloe extract, sunflower oil and avocado oil; and silicone oils, such as dimethicone and alkyl methyl silicones."
"Suitable waxes include, but are not limited to, the following classes: natural waxes, such as beeswax and carnuba wax, petroleum waxes, such as paraffin and ceresine wax; silicone waxes, such as alkyl methyl siloxanes; or synthetic waxes, such as synthetic beeswax and synthetic sperm wax."
The other issue is whether one of the preferred features of the invention, a fatty alcohol is classed as a wax. This particular issue has consequences relating to the novelty of the invention. A fatty alcohol is defined as follows:
"The amount of fatty alcohol in the composition, if present, can be from about 5 to about 40 weight percent, more specifically from about 10 to about 30 weight percent, and still more specifically from about 15 to 20 about 25 weight percent. Suitable fatty alcohols include alcohols having a carbon chain length of C₁₄ - C₃₀ including cetyl alcohol, stearyl alcohol, behenyl alcohol, and dodecyl alcohol." [my emphasis]
Mr Burley also pointed out that the composition may contain other ingredients such as the following:
"In order to better enhance the benefits to consumers, additional ingredients can be used. The classes of ingredients and their corresponding benefits include, without limitation, C₁₀or greater fatty alcohols (lubricity, body, opacity); fatty esters (lubricity, feel modification); vitamins (topical medicinal benefits); dimethicone (skin protection); powders (lubricity, oil absorption, skin protection); preservatives and antioxidants (product integrity); ethoxylated fatty alcohols (wetability, process aids); fragrance (consumer appeal); lanolin derivatives (skin moisturization), colorants, optical brighteners, sunscreens, alpha hydroxy acids, natural herbal extracts, and the like."
Much of the evidence in this opposition relates to the meaning of "wax" and whether this can include a fatty alcohol. Mr Burley for the opponent contended that the term is not limited to any particular wax.
"The opponent contends that the term used in the patent application is not limited to any particular waxes. Indeed, as has been demonstrated by the dictionary definitions contained in the evidence (Marshall, 6/9/01, paragraphs 15 & 16; Proctor 2/3/01, paragraphs 11-13 and JP3, paragraphs 4 and 5; Staton declaration of 29/6/00 at paragraph 11(b) and JAS 3; Sobol declaration of 19/12/99, MRS 1 page 43), the term 'wax' has a broad and well established meaning."
Mr Burley asserts that the definition given by the applicant's declarant, Mr Staton, is instructive. He says (declaration of 29 June 2000) at paragraph 11 (b) that:
"Waxes are those lipophilic substances described in [the specification] which are solid at room temperature."
The opponent's experts concur in this definition. Mr Burley refers to the declaration of Dr Marshall of 29 March 2001 at paragraph 8.3 in which he expressly agrees with this definition.
Other definitions of waxes included in the evidence are as follows:
"(a)      'A low-melting organic mixture or compound of high molecular weight, solid at room temperature and generally similar in composition to fats and oils except that it contains no glycerides. Some are hydrocarbons; others are esters of fatty acids and alcohols...' The Condensed Chemical Dictionary - JAS 3;
(b)       'In modern times the term has taken on a broader significance as it generally applied to all wax like solids, natural or synthetic and to liquids when they are composed of monohydric alcohol esters... Waxes with a few exceptions are free from glycerides which are common constituents of oils and fats' - Hampel and Hawler, the Encyclopaedia of Chemistry (Marshall, 6/9/01, paragraph 15);
(c)       'Ester of a long chain carboxylic acid that is plastic, hydrophobic and spreadable solid. Any organic compound that has these properties is also known as a wax' - MacMillan Dictionary of Chemistry (1987) (Marshall, 6/9/01, paragraph 16);
(d) 'Wax usually refers to a substance that is a plastic solid at ambient temperature and, on being subjected to moderately elevated temperatures, becomes a low viscosity liquid. Because it is plastic, wax usually deforms under pressure without the application of heat. The chemical composition of waxes is complex; they usually contain a broad variety of molecular weight species and reactive functional groups, although some classes of mineral and synthetic waxes are totally hydrocarbon compounds' - Kirk Othmer Concise Encyclopaedia of Chemical Technology, 1985 (Proctor, 2/3/01, JP4);
(e)       '1.any group of amorphous solid materials consisting of esters of monohydric alcohols and the higher homologues of fatty acids, as beeswax, an ester of palmitic acid ...3. any of a group of solid, non-greasy, insoluble substances which have a low melting or softening point esp. mixtures of the higher hydrocarbons as paraffin wax' - Macquarie Dictionary, 1992 (Proctor JP 6)."
Mr Burley submitted that the applicant was trying to put a gloss onto the meaning of wax which was that the term "wax" was to be construed as to how it was used in the specification.
"In paragraph 15.3 of his declaration, Dr Sobol argues that the term 'wax' is a non-specific one and that there are a wide variety of definitions which can be applied to that term. As I have stated above, the question is one of semantics. The term 'wax' is not used as a broad term in the context of the opposed application as we have identified a number of specific examples of 'waxes' in the opposed specification. The term 'wax' is to be understood with reference to how we define and use it in the opposed application - that is narrowly." - Kryzsik states (29/6/01, paragraph 11):
Ms Irani submitted that "wax" should be construed in relation to the art. She pointed out that the art is one relating to cosmetics etc and to construe the term in its general sense would not be correct. The Krzysik declaration discusses the definition that applies in this art. He refers to the standard as published by the Cosmetic, Toiletry, and Fragrance Association (CTFA) John A. Wenninger and G.N. McEwen, Jr., Eds.: CTFA Cosmetic Ingredient Handbook, Second Edition; The Cosmetic, Toiletry, and Fragrance Association, Washington, D.C.; 1992.

Mr Burley submitted that such an approach misconceives the task of construing the meaning of a term in a claim and he referred to the cases of Kimberly-Clark Australia Pty Ltdv Arico Trading International Pty Ltd (2001) 177 ALR 460 at [15]; Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 610; Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 469) and Atlantis Corp Pty Ltd v Schindler at 48-49 as authorities for the proposition that claims are to be given their ordinary meaning without glosses.
Mr Krzysik in his 1 November declaration referred to the definition from the CTFA.
Waxes (CTFA, pp534-535) were defined as follows:
"The word wax originally referred to relatively high melting animal or vegetable derived lipids. In modern usage, the term is applied to a wide variety of chemically different lipids. Included are animal waxes, plant waxes, mineral waxes, and petroleum waxes. Animal, plant, and some mineral waxes are primary esters of high molecular weight (greater than C22) fatty alcohols and fatty acids. There are also synthetic waxes which include diverse chemicals, such as polyethylene and hydrocarbon waxes derived form carbon monoxide and hydrogen (Fischer-Tropsch synthesis). Waxes find uses in all types of cosmetics to impart high viscosity to emulsions and suspensions and to harden lipid based materials, such as lipsticks and hair pomades."
Fatty acids (CTFA, p 508) were defined as follows:
"Fatty acids are carboxylic acids having alkyl chains greater than about seven carbon atoms obtained by the hydrolysis of animal and vegetable fats and oils. They are used in the cosmetics as emulsifiers in the form of their salts (i.e. soaps) and as opacifiers and thickening agents."
And fatty alcohols (CTFA p 508) are defined as follows:
"Fatty alcohols are higher molecular weight non-volatile alcohols. They are produced from natural fats and oils by reduction of the fatty acid-COOH grouping to the hydroxyl function. Fatty alcohols are used in cosmetics as emollients, co-emulsifiers and viscosity enhancers."
Alternatively, Mr Burley stated that if "wax" was to be narrowly construed in the specification, there is no basis for considering such a limitation when construing the claims. And if such an approach were adopted, the claims would lack fair basis.
It is important to see how the terms "wax" and "fatty alcohols" are used in the specification and claims. The specification in its consistory clause states that the invention comprises "...[a]...wax, preferably also containing [a] ...fatty alcohol". The method of the invention is described in near identical terms " heating a composition comprising an oil, wax, and preferably a fatty alcohol". I have already referred to the "definitions" of "wax" and "fatty alcohol", in which the fatty alcohol is described as a preferable feature and one in which the composition may contain "if present". Examples 1 to 5 describe a composition including a wax and a fatty alcohol. Example 6 discloses the prior art that contains no wax but a fatty alcohol. A similar distinction is made in the claims in which claims 10 and 40 introduce a fatty alcohol as an additional component of the composition. In my view, the distinction between a wax and a fatty alcohol is maintained in the descriptive part of the specification and in the claims. A reader could only reasonably conclude that the drafter of the specification was making a distinction between a wax and a fatty alcohol. This would be evident to a person skilled in the personal care art as well as other arts. The argument put by the opponent seems to imply that a skilled reader would when reading the claims think that a wax might included a fatty alcohol. However, when the specification is properly construed there can be no doubt about the intention of the patent applicant that waxes do not include fatty alcohols. It must be emphasised that I consider the presence of claims 10 and 40 to be critical to my analysis of the use of the term "wax" in the claims. The patent applicant acknowledges it in its evidence that fatty alcohols share some physical properties with waxes but it is very clear from example 6 that fatty alcohols cannot replace a wax. Without their presence, the opponent's arguments would be more forceful and compelling as the skilled addressee would be left in considerable doubt about what meaning to ascribe to the term "wax" in the claims. I also note that other components might be added to the composition; fatty alcohols for lubricity and ethoxylated fatty alcohols for wetability. Such materials are in addition to the components of the wax / oil composition. Concluding, I view the presence of example 6 (and its implication that fatty alcohols would not work) and the plain language in the specification and the presence of claims 10 and 40 justify a restricted meaning of the term. I am also of the view that the exclusion of ethoxylated fatty alcohols from the definition of “waxes” is also warranted.
However, this is not to say that the definition as used by the CTFA should be adopted uncritically. After all, it would have been a very simple matter to refer to the definition of the term from the CTFA. If there is any inconsistency, and no one has suggested otherwise, I would adopt a meaning that was consistent with the definitions given in the specification rather than rely upon an external reference. Having said this, it is only necessary for me to conclude that fatty alcohols and ethoxylated fatty alcohols are excluded from the definition of “waxes."
Method claim 29
Mr Burley in his written submissions on behalf of CCH made the following points about claim 29.
"(i) the 'composition' is not limited to the composition of claim 1, and is not defined by reference to the proportion of 'oil' to 'wax'. The only requirement for the composition is that it has a melting point within a range of 30-70 degrees. Insofar as the invention requires such a combination to be effective, the claim is not fairly based.
(ii) the claim requires the composition to be 'uniformly applied... in spaced apart deposits', but there is no limitation as to the number of deposits. Unlike claim 1, there is no requirement that the deposits be 'uniformly distributed'. The requirement for uniformity in claim 29 is uniformity of application, not distribution; [emphasis in original]
(iii) the requirement of (c) for 'resolidifying' does not refer to the solidification occurring primarily on the surface as opposed to its penetration into the tissue itself."
Thus, Mr Burley submitted that Claim 29 while referring to "spaced-apart deposits" makes no overt reference to the production of large numbers of individual deposits, nor does claim 29 specifically mention that the deposits are "uniformly distributed" merely that they are applied uniformly. Mr Burley emphasised that only in claim 30 does a reference to the use of rotogravure printing techniques occur and this would impliedly deliver large numbers of individual deposits.
In relation to feature (i), I agree with Mr Burley. While, in the summary section of the description it is stated that the amount of oil and the amount of wax can [my emphasis] be those percentages as defined by claim 1, it would be illogical if a tissue product that was produced by the method of claim 29 was not covered by claim 1. I think that this may be a case of claiming by result, but that claim 29 does not sufficiently define the means for achieving the result and therefore lacks fair basis. I note that none of the examples given in the specification have percentage compositions other than those defined by claim 1 of the specification. Furthermore claim 40, a dependent claim, states that the weight percentage of fatty alcohol is from about 5 to about 40 percent. This is innocuous given that claim 29 mentions no weight percentages.
In relation to feature (ii), Mr Burley has correctly interpreted the claim but I find that while uniformity of application implies uniformity distribution, it does not imply the degree of uniformity required. The words of the claim clearly encompasses a continuous coating. Thus, claim 29 suffers from the same conflict as does claim 1: It does not produce a product having the desired uniformity.
Mr Burley referred to the preferred embodiment of the invention, which was to uniformly apply the heated composition to the surface of the tissue by rotogravure printing, either directly or indirectly. Other printing methods such as flexographic printing can be used. Gravure printing is stated as being ideally suited to such an application by providing, for example, from about 10 to about 1000 deposits per lineal inch of surface, or from about 100 to about 1,000,000 deposits per square inch. Also other well known engraving techniques, such as mechanical engraving, acid-etch engraving, electronic engraving and ceramic laser engraving can be used. A suitable electronic engraved example was given in which about 250 deposits per lineal inch of surface or about 62,500 deposits per square inch was produced. As a consequence, a relatively low amount of the composition can be used to cover a large area.
On this basis, Mr Burley alleged that claim 29 as well as claim 1 lack fair basis, as the specific uniformity is not defined.
"Claims 1 and 29 are not fairly based on the specification in so far as it claims for a product that does not have large numbers of individual deposits of the composition on the surface of the tissue. The disclosure of the specification requires such deposits in order to achieve the objects of the invention - page 1 lines 25-30. The test for fair basis is to ask whether there is a real and reasonably clear disclosure of the matter that is claimed Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79; Patent Gesellschaft AG v Saudi Livestock Transport & Trading Co (1997) 37 IPR 523. There is no disclosure in the specification for the location of uniformly spaced deposits which are not in large numbers, yet the claim is not so confined."
The specification does not provide any clear description of what is meant by the terms "uniformly applied" and "uniformly distributed." The passage at page 4 lines 28-31 of the specification appears to define the distribution as being one that has a defined "coefficient of variation." Further, if that is the definition of "uniformity," then the claims are not fairly based insofar as they claim deposits which are not so limited.
I agree with Mr Burley's analysis. As stated in relation to claim 1 an essential feature of claim 1 resides in the uniformity of the deposition. This is only defined by reference to the uniformity of the surface coating, treated with osmium tetroxide gas and as measured by the percent coefficient of variation for a gray-level histogram analysis, is about 15 or less.
In relation to feature (iii), Mr Krzysik in his declaration of 1 November 2000 commented on the method. While, it is to be remembered that Mr Krzysik is one of the inventors, I find his comments persuasive.
"During the application process (gravure printing), the compositions are applied to the tissue substrate as individual uniformly distributed liquid deposits which immediately solidify on contact with the tissue to form uniformly distributed solidify deposits."
This feature is about resolidifying the melted composition onto the surface to minimise the amount of penetration. The specification refers to almost instantaneous solidification being advantageous to impede the penetration of the composition into the surface of the tissue and retain it on the surface. As presently defined the composition may penetrate to the level exhibited by the prior art and so the advantages of the invention are not met. The specification refers to a test for measuring the degree of penetration.
"The ability of the method of this invention to substantially retain the composition on the surface of the tissue was quantified using image analysis. More specifically, the imaging and optical conditions for this analysis were the same as described above for the uniformity measurement. But in this case, top surface and bottom surface pieces of each ply of tissue were placed tightly next to each other to form a "butt joint" with no gap between the two pieces. The sample is placed under the lens with, for example, the lighter bottom surface piece on the right of the image frame and the darker top surface piece on the left of the image frame. If first measuring the gray-level histogram of the lighter, bottom surface, the variable live frame is placed over just that region of the image frame, with the scanner white level set at 1.00 volt for the whole field. Then the sample is rotated so that the lighter bottom surface is now on the left. The scanner is adjusted again to 1.00 volt and this surface is once again isolated by the variable live frame. This data is accumulated into the same gray-level histogram. The mean gray level for the bottom surface, GL_BOTTOM is recorded.
The same procedure is then conducted on the darker, top surface that occupies the other half of the image, again with the scanner white level set at 1.00 volt for the entire image. (This will tend to compensate for the overall differences in the amount of the composition added to the tissue, while zeroing in more accurately on whether the composition is on the top or bottom surface, which reflects the degree of penetration.) Again, the mean gray level for the top surface, GL_TOP is recorded.
Finally, the difference between the two mean gray levels, GL_Diff is calculated as a value inversely related to the penetration:
GL_Diff= GL_BOTTOM-GL_TOP
Note that if GL_Diff is zero or negative, then complete penetration has occurred. If GL_Diff is strongly positive, then most of the osmium stained composition is sitting on the top surface of the tissue.
The GL_Diff values for the two tissue samples of this invention as illustrated in Figures 8 and 9 were 10.4 and 6.1. By comparison, the PUFFS Plus tissue sample had a GL_Diff value of -2.1. In general, the tissues of this invention can be characterized by a GL_Diffof about 5 or greater, more specifically about 10 or greater, and still more specifically from about 5 to about 15. [my emphasis]
What this rather large quote demonstrates is that the penetration of the composition into the tissue product is quantifiable. Presently, there is nothing in claim 29 that quantifies the penetration of the composition into the tissue web. Without this feature, the claim does not incorporate the benefits of the invention.
The declaration of Mr Krzysik is instructive on this matter. Mr Krzysik states that:
"By providing a large number of very small deposits, the deposition of the composition can be more easily controlled to remain substantially on or near the tissue surface. The small deposits resolidify more readily on the surface of the tissue than large deposits or overall coatings, so they are more effective for benefiting the user."
There is nothing in claim 29 that allows this control to be exercised. The only reference to "deposits" occurs in feature (iii) yet there is no prior reference to this feature and there is nothing in claim 29 than leads me to conclude that a very large number of small deposits is being referred to.
In relation to the issue of penetration, it is also my view that claim 1 also suffers from this deficiency. As presently defined the composition of claim 1 may penetrate into the tissue to a significant degree.
Other section 40 issues
Mr Burley raised a number of other s40 issues.
a)   Claims 10 - 15 define the tissue product further comprising a certain quantity of fatty alcohol. Mr Burley suggested that the fatty alcohol can be applied after the composition which is defined in claim 1 and not as a part of it. Thus, Mr Burley argued that the claim lacks fair basis because the invention only discloses fatty alcohols as forming part of the whole composition and not as a separate component to the composition.
b)   Claims 20 and 21 are not clear because there is no antecedent for the "actual surface area".
c)   Claims 28 and 41 include within their scope example 6, which according to the specification does not work.
d)   Claims 33 to 35 define an amount of the composition applied to the tissue by a weight percentage but do not define on what the weight percentage is to be based.
In my view:
a)   Claims 10 to 15 are fairly based, as it is reasonable to interpret the claims as defining an additional component to the composition.
b)   The antecedent objection in claims 20 and 21 is easily construed especially as the specification defines the term.
c)   In relation to claims 28 and 41, it is apparent that no claim is made for example 6 which is disclosed, as been prior art.
d)   In relation to claims 33 to 35, it is readily apparent that the weight percentage relates to the weight of the tissue. Reference to claims 17 to 19 that define the tissue product indicate that claims 33 to 35 should be similarly construed.
Summary of clarity and fair basis
The expression "uniformly distributed solidified deposits" in claim 1 is not clear and fairly based without reference to the deposits being spaced-apart and that the uniformity of the surface coating which is treated with osmium tetroxide gas and is measured by the percent coefficient of variation for a gray-level histogram analysis, is about 15 or less. In this respect claim 29 also lacks fair basis.
Claim 29 is not fairly based because it does not define the percentage values for the oil/wax composition.
Both claim 1 and claim 29 lack fair basis, as they do not define the degree of penetration that the product and method need to achieve; i.e. the GL_Diffof about 5 or greater needs to be defined in both claims.
I found no problem with clarity or fair basis on how the term "wax" was used in the opposed specification. I found that the term "wax" was to be given a restricted meaning: one that excludes fatty alcohols and ethoxylated fatty alcohols.
NOVELTY
The test for determining whether an invention lacks novelty is the " reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) CLR 228 at page 235 (see also 13 ALR 605 at page 611), where Aickin J stated:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
Infringement of a claim occurs where "each and every one of the essential integers" of that claim have been taken. See e.g. Rodi and Wienenberger AG v Henry Showell Ltd (1969) RPC 367 at page 391, (1968) FSR 100.
The opponent pressed that the following documents deprive the invention of novelty.
a)   AU 26466/95 and AU 28144/85 (The Proctor & Gamble Company) 28 December 1995: both specifications have the same priority document dated 17 June 1994 and are virtually identical for the purposes of this opposition.
b)   AU 12958/95 (The Proctor & Gamble Company) 22 June 1995 but having a priority date of 13 December 1993.
c)   AU 45101/96 (The Proctor & Gamble Company) 27 June 1996 but having a priority date of 19 December 1994.
d)   US 4481243 (The Proctor & Gamble Company) 16 November 1984 and US 4513051 (The Proctor & Gamble Company) 23 April 1985: While these documents are not "family members", the disclosures are virtually identical for the purposes of this opposition.
The AU patents listed above each have a publication date that is later than the priority date of the application, but each has a priority date that is earlier than the priority date of the application. Both parties are in agreement that these patents fall within the "prior art base" of section 7(1) of the Patents Act 1990 as that term is defined in Schedule 1 to the Act. That is, the disclosure in these documents is one in which the following apply.
(ii) information contained in a published specification filed in respect of a complete application where
(A) if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
(B) the specification was published after the priority date of the claim under consideration; and
(C) the information was contained in the specification on its filing date and when it was published.

It is self evident that international publication dates for each of the listed US patents lies significantly before the priority date of the patent application in suit.
While there is considerable overlap between the group of cited documents, I have nevertheless considered the various grouping of citations, as both parties made submission in respect of each grouping.
a) AU 28144/95 & AU 26466/95
The opponent submitted that claims 1-19, 29-30, 33-36 and 40 were disclosed in the cited documents. These citations disclose a lotion composition for imparting a soft, lubricious feel to a tissue paper. The following is a typical example of the composition of the lotions.
Lotion A          Lotion B
White protopet (oil)     49%                39%
Cetearyl alcohol          35%                40%
Steareth-10                 15%                20%
Aloe  1%                  1%
Cetearyl alcohol is a mixed linear C₁₆-C₁₈ primary alcohol and Steareth-10 is also known as brij 76 and is a C₁₈ linear alcohol ethoxylate. Neither of these substances are “waxes”.
The lotions are described as having the following features.
a)   The compositions are solid or more often semisolid at 20⁰C.
b)   By being solid or semi solid, the composition does not have a tendency to flow and migrate into the interior of the tissue-hence less lotion composition is required for imparting softness and lotion-like feel benefits.
c)   Emollients used include mineral oil. Up to 10% of the emollient may contain "spermaceti or other waxes". [my emphasis]
d)   Suitable immobilizing agents comprise "C ₁₄ - C ₂₂ fatty alcohols, C₁₂ - C₂₂ fatty acids and C₁₂ - C₂₂ fatty alcohol ethoxylates having an average degree of ethoxylation ranging from 2 to about 30". Further, the citations state that "optionally, other types of immobilizing agents can be used in combination with the fatty alcohols, fatty acids and fatty alcohol ethoxylates". The immobilizing agent is capable of immobilizing the emollient on the surface of the paper to which the lotion composition is applied.
e)   The lotion is typically heated to a range from about 35 degrees to about 100 degrees C.
f)    A variety of application methods that evenly distribute lubricious materials having a molten or liquid consistency can be used. While gravure coating and extrusion are preferred, the examples use spray coating. Flexographic printing is specifically mentioned. The composition is applied in the melted state, which is then cooled.
g)   The composition can be applied uniformly or "nonuniformly to the surface(s) of the tissue paper web". By "nonuniform" is meant that the amount pattern of distribution etc of the lotion composition can vary over the surface of the paper.
Mr Burley submitted that the Steareth-10, for example, falls within the general definition of waxes provided and that they fall within the definition provided by Mr Staton in exhibit JAS 3 (see also, for example, Sobol, 2/3/01, paragraph 22.3) as synthetic waxes. However, I have already concluded that ethoxylated fatty alcohols are not included within the definition of a "wax" as used in the application in suit. Moreover, I would not consider them as synthetic waxes which seem to be confined to substances such as synthetic beeswax and synthetic sperm wax.
Ms Irani argues that the use of wax in the citation (as an emollient) is not for the same purpose (as an immobilizing agent) and in any case this feature is an inessential feature of the invention of the citation.
"Firstly, in respect of 'immobilizing agents', this reference teaches the use of C₁₄- C₂₂ fatty alcohols, C₁₂- C₂₂ fatty acids, and C₁₂- C₂₂ fatty alcohol ethoxylates having an average degree of ethoxylation ranging from 2 to about 30, and mixtures as suitable immobilizing agents. In contrast, the opposed application uses wax. This reference neither teaches nor implies the use of wax as an "immobilizing agent". Waxes are used in this citation purely as a nonessential ingredient, and not in any way performing the functional role which they have in the opposed application. Additionally, the immobilising agents used in this citation crystallise in a different fashion to the composition applied to the tissue product of the opposed application."
Ms Irani submitted that the cited documents state that immobilizing agents quickly crystallise (i.e. solidify) at the surface of the paper are advantageous and that this differs from the process of the current application.
"It is also advantageous to 'lock' the immobilizing agent on the surface of the paper. This can be accomplished by using immobilizing agents which quickly crystallize (i.e. solidify) at the surface of the paper."
I note that there is nothing in the claims that would give this indication. Staton in his declaration of 1 November 2001 also refers to the fact that the cited document does not disclose that the use of a wax as an "immobilizing agent" is essential and that the use of wax in the citation is functionally different to the use of wax in the cited document.
"Additionally, I note that the immobilizing agents used in this ...specification crystallise in a different fashion to the composition applied to the tissue product of the opposed application. The use of wax in the opposed application results in a uniform system of solidified deposits, whereas the immobilising agents will result in a non-uniform system of semi-solid deposits in the tissue product subject to this ...application."
Again Ms Irani pointed out that fatty alcohols do not work in the present invention and do not function as an immobilizing agents.
"Further, in the opposed application, fatty alcohols are incorporated and function to provide lubricity, body and opacity (page 3 line 25-26) in embodiments of the composition applied to the tissue products. In contrast to the teaching of this document, they do not function as "immobilizing agents" -only a wax is envisaged in the opposed application as functioning as an immobilising agent. Example 6 of the opposed application demonstrates the inferior performance of compositions which comprise fatty alcohol but NOT a wax." [emphasis in original]
However, in my view the claims are not functionally limited and I am not convinced that a composition that is produced according to the teachings of the citation would not be considered an infringement according to either of claims 1 or 29 of the current invention, especially noting that the lotion can consist of a wax at 10% and an oil at 20%-80% (AU28144/95) or at 20%-95% (AU 26466/95).
Ms Irani also points out that the citation does not teach the use of uniformly distributed solidified deposits. In fact Ms Irani suggested that the citation teaches away from this.
"In the tissue products of the opposed application, the lotion composition is applied as uniformly distributed solidified deposits. By providing such a large number of small deposits, the composition can be more easily controlled to remain on or near the tissue surface. The citation neither teaches nor implies anything about the importance of applying the composition as uniformly distributed solidified deposits. The method of 'gravure coating' is not taught by this reference to provide uniformly distributed solidified surface deposits. Extrusion coating, which is disclosed as an equally preferred application method of this reference, is not capable of producing uniformly distributed solidified deposits. This clearly shows that this reference provides no insights as to the importance of providing uniformly distributed deposits for the retention of the composition on the surface of a substrate."
Ms Irani submitted that the citation teaches away from the use of discrete solidified deposits of the composition as all the examples utilise hot melt spraying which is described in each of the four examples as follows:
"12 inch by 12 inch sheets of tissue paper substrate are spray coated to the desired lotion level on each side of the substrate. The lotioned tissue is placed in a 70°C convection oven for 30 seconds after each side is sprayed to remove volatile components and to insure a more even coating of the lotion onto the paper fibers".
The last point raised by Ms Irani relates to the uniformity of the product.
"Similarly, the citation states (page 26 lines 11 to 17) that "the lotion composition can be applied nonuniformly to the surfaces of the tissue paper web" thereby even more strongly indicating that it is no way considered essential or even a preferred feature of the tissue product of this cited application that the; composition be applied as discrete uniform solidified deposits."
However, the uniformity referred to is uniformity of application. There is nothing in either of claims 1 or 29 that discloses the degree of uniformity.
The compositions disclosed in the citation fall within the range claimed by claim 1 of the opposed application. Claim 29 of the opposed application is also disclosed.
b) AU 12958/95
While this document is almost identical to the above two cited documents it discloses in example VIII the use of a wax as a component of the lotion.
Example VIII
  Weight %
Petrolatum*  41.5
(POE-4) Sorbitan Stearate**              12.0
Stearth-10***  20.0
Sorbitan Stearate****             15.0
Paraffin*****  10.0
Aloe  1.0
Silicone emulsion******  0.5
* white protopetâ 1S from Witco
** Tweenâ 61 from ICI America
*** Brijâ 76 from ICI America
**** Glycomulâ S-CG from Lonza
***** Shellwaxâ 100 from National Wax
***** Dow Corningâ 65 additive from Dow Corning
It is clear that this example uses paraffin wax at 10% by weight and an oil petrolatum at 41%. Hence, the composition of claims 1 and 29 are clearly disclosed.
Decision on AU 28144/95, AU 26466/95 & AU12958/95
While it may be agreed that the specifications do not teach the functionality that the present invention ascribes to the presence of the wax, the issue is whether the combination of features of claims 1 and 29 are disclosed. The appropriate test is the reverse infringement test and the question to ask is whether a lotion composition of the cited documents would be an infringement of the present invention.
The lotions of the citations have a "soft, lubricious, lotion like feel", and "feel is particularly beneficial for those having more sensitive skin due to chronic conditions such as skin dryness or hemorrhoids, or due to more transient conditions such as colds or allergies." This is commensurate with the objects of the current invention. The lotions are solid at the ambient temperature. The lotions "do not have a tendency to flow and migrate into the interior of the tissue web" and this means that less lotion composition is required. Again these are characteristics of the present invention. The lotions of the citations have an emollient, which is a material that "softens, smoothes, supples, coats, lubricates, moisturizes, or cleanses the skin." The emollients of the citation are petroleum based emollients, fatty acid ester emollients, alkyl ethoxylate emollients, or mixtures thereof. The citations specifically mention mineral oil and petrolatum, which are used in the present invention. The lotions also contain an immobilizing agent whose function is to immobilize the emollient on the surface of the paper. This agent "counteracts the tendency of the emollient to migrate or flow by keeping the emollient primarily localized on the surface of the tissue web paper". While the melting point of the immobilizing agent is at least 40⁰C the lotion composition itself has a melting point of about 20⁰C. Immobilizing agents comprise polyhydroxy fatty acid esters, polyhydroxy fatty acid amides and mixtures thereof. The citations also disclose that up to 10% of the total emollient may contain other conventional emollients that include "spermaceti or other waxes". While there is no specific mention of the usefulness of wax, example VIII of AU 12958/95 clearly includes paraffin. I note that example VIII includes paraffin (a wax) at 10% and petrolatum (at 41.5%). Example VIII of AU 12958/95 clearly falls within the scope of the weight percentages defined by claim 1. The lotioned composition is disclosed as melting at 65⁰C. Hence, the only difference between what is claimed and disclose is the feature of "uniformly distributed solidified deposits".
In relation to the uniformity issue, the opponent correctly describes the citation as disclosing a "pattern of distribution". While there is no indication in the citation that the deposit is formed of a large number of very small deposits, it clearly discloses a uniformity of application.
Staton in his declaration of 1 November 2000 at paragraphs 34 to 39 discuss the advantages that the current invention possesses over that of the cited document. The position that Mr Staton takes is that there is no teaching in the cited document of the importance of having "uniformly distributed solidified deposits" to achieve retention of the composition on the surface of the tissue web". The functionality that the declarants for the applicant propose is not implicit or inferred from the expression of the term in claim 1. This is an issue that I already considered. Hence, for the above stated reasons, claim 1 is not novel.
The method used in AU 12958/95 includes any appropriate method and can include gravure coating and flexographic printing.
"Any of a variety of application methods that evenly distribute lubricious materials having a molten or liquid consistency can be used. Suitable methods include spraying, printing, (e.g. flexographic printing), coating (e.g. gravure coating), extrusion, or combinations of these application techniques."
Typically the lotion is applied in the melt condition which is allowed to cool and to form a "solidified coating or film on the surface of the paper". The citation does not discuss the nature of the solidified coating. However the present invention uses rotogravure printing and flexographic printing. Given this, I cannot see how the invention as defined by claim 1 is distinguishable from the citation. I cannot see how the use of flexographic printing using the contents of example VIII (even though example VIII is a spray coating). It is open to the skilled addressee to use any of the examples with any of the disclosed methods of application: following the principles enunciated in Nicaro Holdings Pty Ltd v Martin Engineering Co, 16 IPR 545 at page 570.
As uniformity of application does not necessarily require the production of "uniformly distributed solidified deposits" on the surface of the tissue web, claim 29 is not novel. The method of using flexographic printing (a preferred option) is clearly disclosed. Claim 29 is clearly not novel in view of the citations.
In relation to stearth-2 and whether it can be considered a "wax", I have already concluded that ethoxylated fatty alcohols are not within the ambit of the term as used in the specification in suit.
Reviewing the claims of the application in suit, I am of the view that claims 1-6, 8, 10-11, 13, 15-19, 29-30, 33-36 and 40 lack novelty in view of these citations but that AU 12958/95 is particularly relevant because of its example VIII. While claims 9 and 14 are not specifically disclosed I do not consider that they add anything inventive to the combination as they are mere alternative wax and fatty alcohol respectively.
c) AU 45101/95
This citation is similar to the previous cited documents but it contains some important differences.

100. Mr Burley submitted that the tissue paper product of the citation comprises the following features.
a)   the disclosure of this invention is clearly to optimize the volume of the composition applied to the tissue and maximize the availability of the composition to the user by applying it to the surface of the tissue in such a form that it "will not fully impregnate ... due to the inclusion of solid components which are miscible with, and can entrap, the liquid on the surface of the piles" - page 10, line 19. Page 9, line 8 notes that "at least a minor portion of the major surfaces must be void of therapeutic substance so that the portions may be mechanically embossed."Accordingly, the tissue may have solidified deposits applied in a uniform distribution.
b)   the preferred composition has 40 - 60% mineral oil.
c)   the preferred composition has 6 to 14% paraffin wax. In addition, it is to be noted that there is a preferred addition of 5 to 14% Steareth-2, which brings the accumulated proportion of "wax" (wide interpretation) to 11 to 30% and thereby are within claims 6 and 7 as well as claim 1.
d)   whilst AU 45101/95 does not expressly state the melting point of the composition, it is submitted by Mr Burley that the tests performed by Ms Tait demonstrated that a combination of mineral oil, cetyl-stearyl (fatty alcohol) and steareth 2 (an ethoxylated fatty alcohol but a wax according to Mr Burley) had melting points within the range claimed in claim 1. Mr Burley submitted that these test results provide ample basis for the conclusion that a combination containing more wax (paraffin wax) as well as mineral oil, cetearyl alcohol (a fatty alcohol) and steareth-2 would have a marginally elevated melting point, but would nevertheless be within the 30-70 degree range of the claim.
101. Mr Burley also submitted the method was disclosed. It is noted that the method of the citation uses any convenient technique.
"Therapeutic substance can be applied to substrate by any convenient technique such as spraying, dipping, padding or, in the case of the preferred lotion and other substances having similar physical properties, by extrusion of the melted lotion onto substrate."

102. In relation to claim 29, Mr Burley submitted that;
a)   the composition melts at a temperature corresponding to one determined as per the tests performed by Ms Tait.
b)   the composition of the pattern is "uniformly distributed ... over the entire portion of at least one major surface of the substrate". However, the distribution may be broken up by embossments, which, depending on their shape, could result in different deposits being located about the tissue, depending on the configurations of the embossing.
c)   the composition quickly crystallizes on the surface.
Decision on AU 45101/96
103. This citation clearly discloses a lotion composition comprising from 40% to 60% mineral oil, 6% to 14% paraffin wax, 15% to 25% cetearyl alcohol, 1% to 5% aloe extract and 5% to 14% stearth-2. As has been previously discussed the definition of “wax” excludes fatty alcohols and ethoxylated fatty alcohol. In relation to the melting point, I think it is implicit from the discussion in the specification that the lotion composition is a solid at ambient temperatures and is required to be melted in order to apply it to the surface of the tissue. The opponent has referred to the Tait declaration for indicating that the melting point is within the range defined by claim 1. I find that this is supportive of my conclusion. The purposes of the inventions are similar as the following quote illustrates.
"The solid components of the therapeutic substance can work in several ways, none of which are mutually exclusive. For example, they can form hydrogen bonds with the substrate and become localized on the surface of the plies. Also, it often is desirable to have a solid component that will quickly crystallize (i.e. Solidify) at the substrates surface during manufacture and have possible viscosity within the limits of processing capabilities which prevents the therapeutic substance from substantially flowing into the interior of the paper as it cools or when shear forces are applied during use."

Hence, I am of the view that the lotions of the citation have a melting point that would fall within the claimed range.
104. Therefore claims 1-8, 10-13, 15-21, 29, 31-35, and 40 lack novelty. In relation to claim 7, I consider that the percentage value of paraffin of 14 % falls within the scope of the term "about 15%".

d) US 4,481,243 & US 4513051
105. Both of these cited documents relate to a strong, soft absorbent tissue product having an emollient carried by the tissue paper substrate. The emollient can be a lotion, cream gel or a solid. While the emollient is to be "essentially uniformly distributed" over a major portion of at least one major surface of the substrate, it can be distributed over only a minor portion, or portions, of the substrate but such an arrangement is not preferred. The preferred emollient comprising from about 51% to 81% by weight mineral oil (which is within the range of claim 1 and appended claims 2-5) and about 14% to about 34% cetearyl alcohol (a fatty alcohol) and from about 5% to about 15% steareth-2 (which the opponent considers to be a wax) for which a formula is given.
106. The opponent's experts contend that steareth-2 is a wax within the meaning of claim 1 (see, e.g. Marshall paragraph 16.7). Mr Burley submitted that (a) the Croda product analysis of steareth-2 describes its "physical and chemical properties" to be solid, white wax, dispersible in water (Proctor, exhibit JP 8) and (b) that steareth-2 is an ethoxylated fatty alcohol and a lipophilic solid which falls within the numerous definitions of waxes given above and in the evidence (e.g. Marshall, 6/9/01, paragraph 4). This argument does not assist. The mere fact that the analysis refers to the product as a wax does not alter the use of the term "wax" in the present invention which is one that specifically excludes fatty alcohols and ethoxylated fatty alcohols.
107. While the specifications make no mention of the melting point, Mr Burley argued that if the compositions fall within the range defined by claim 1, then they must exhibit the melting point as defined by claim 1 as the melting point is a inherent characteristic of the composition: Merck & Co Inc v Sankyo Co Ltd (1992) 23 IPR 415 at 427. Mr Burley also submitted that the evidence of Ms Tait (declaration 17/12/99) shows that she conducted tests to determine the melting point of the composition disclosed in the US citation.
108. Mr Burley put this proposition as follows:
"The melting point was tested for the high range of each of mineral oil, cetyl-stearyl alcohol and steareth 2 and also the mid points, and on each occasion the melting point was within the range of this integer of claim 1. The tests conducted by Ms Tait also showed that even if a very large amount of oil is included in the oil/wax composition, the resulting melting point is within the range of claim 1. Further, Ms Tait's tests on the melting point ranges for each of Cetyl-Stearyl alcohol and Steareth 2 (page 2 of 2 of exhibit MT2) show that each of these products, which are lipophilic substances have high melting points and may properly be characterized as waxes."

On the basis of Ms Tait's tests, I would agree that compositions of the lotion disclosed in the citations would have a melting point in the range claimed.
109. It was also submitted that both of the US patents disclose the features of Claim 29. The emollient may be applied by any conventional technique such as spraying, dipping, padding, or in the case of the preferred embodiment, by extrusion of the melted emollient onto the substrate.
110. However, Ms Irani submitted that;
a)   The lack of a wax component reduces the ability of the oil component to remain at or near the surface of the tissue.
b)   Further, there is no teaching that, the emollient is formulated to stay on the surface of the tissue substrate, in fact at column 7 lines 8-13 it discloses the contrary that the retention of the emollient at or near the surface of the tissue is not a concern for the invention of the citations.
c)   "While emollient 4 and 5 are shown as a surface coating in FIGS 1 and 2, it is to be understood that the emollient will penetrate to a greater or lesser extent through the thickness of the first and second tissues 2 and 3 depending upon the exact nature of the emollient and of the tissues"
d)   There is also no mention of a uniform distribution of discrete solidified deposits of formulation on the tissue surface. To the contrary, the emollient in this US patent is coated on the surface of the tissue by "spraying dipping, padding or by extrusion onto the substrate" (co1umn 5 line 68 to column 6 line 2). All of these techniques of application would tend to lead to a continuous impregnated coating of the tissue substrate, rather than onto the surface of the tissue in discrete solidified deposits as is claimed in the opposed patent application. This patent does not teach the claimed method of making a soft tissue product.
e)   Neither of these US patents teach or imply the importance of retaining the emollient at or near the surface of the tissue. Neither teach nor imply any application methods for applying the emollient so it is retained at or near the surface of the tissue, and neither teach or imply any application methods for applying the emollient as uniformly distributed solidified surface deposits.
Decision on US 4,481,243 & US 4513051
111. Claims 1 and 29 are not disclosed because the cited documents do not disclose a "wax" as understood in the application in suit.
SELECTION
112. The question of "selection" arises when the invention claimed lies within a known field. The criteria for a "selection" patent are well known.
“a) the selection must be based on some substantial advantage gained or some substantial disadvantage avoided;
b) the whole of the selected members must possess the advantage in question; and
c) the selection must be in respect of a quality of a special character which may fairly be said to be peculiar to the selected group." I.G. Farbenindustrie A.G.'s Patents, (1930) 47 RPC 289 at 322 to 323.

113. It is also recognised that the specification must describe the advantage possessed by the selected members and upon which the selection is based.
"A mere selection among possible alternatives is not subject matter. A selection to be patentable must be a selection in order to secure some advantage or avoid some disadvantage. It must be an adaptation of means to ends impossible without exercise of the inventive faculty. It follows that in describing and ascertaining the nature of an invention consisting in the selection between possible alternatives, the advantages to be gained, or the disadvantages to be avoided, ought to be referred to". (Clyde Nail Company Ltd v Russell (1916) 33 RPC 291 at page 306.). See also I.G. Farbenindustrie A.G.'s Patents (supra) at page 323:

114. The basic level of disclosure required to anticipate a claim to a selection is the same as for any other claim. Thus, if the citation does not provide an enabling disclosure, there is no anticipation; and if any of the selected compounds have actually been made previously, a claim to that selection lacks novelty: I.G. Farbenindustrie AG's Patents, (supra).
115. As currently defined neither claim 1 nor claim 29 can be classed as a selection patent as neither necessarily possess the advantages described. Further, these claims do not uniquely identify the class of materials or its properties that would give rise to a proper selection.
Conclusions on novelty
116. The citations of group a) to c) collectively disclose the invention as defined by claims 1-8, 10-13, 15-21, 29-35, and claim 40. Furthermore, I have considered that the subject matter of claims 9 and 14 do not add anything inventive to the composition.
117. In relation to claims 25 to 27, which are directed to a "sink time", the specification indicates that this is known and is a measure of hydrophobicity.
"In some embodiments, the products of this invention can be characterized by their hydrophobicity, which helps prevent "wet-through" to the user's hands during use. This property can be objectively measured by the Sink Time, which is described in U.S. Patent No. 4,950,545 entitled "Multifunctional Facial Tissue" and issued August 21, 1990 to Walter et al., which is herein incorporated by reference. The Sink Time can be about 30 seconds or greater, more specifically about 40 seconds or greater, still more specifically from about 50 to about 150 seconds or greater. These Sink Times can be dramatically increased by a factor of 3-5 times by heating the treated tissues of this invention to temperatures of from about 100 to about 150°F. Heat treated tissues can exhibit Sink Times of about 150 or greater."

Hence, I consider that the subject matter of these claims do not add anything inventive to the composition.
118. Therefore, I consider that the subject matter of claims 9, 14 and 25 to 27 are not features that would confer novelty to the claimed product or method.
MANNER OF MANUFACTURE: CLAIMS 29-41
119. Mr Burley submitted that claims 29-41 are not directed towards a manner of manufacture because they are directed to the use of a known substance. It is common ground between the parties that the use of oil/wax compositions is known. However, Mr Burley submitted that method of depositing oil/wax compositions on a tissue substrate for the purpose of reducing skin irritation is known.
"...the invention claimed in claim 29 is nothing more than the use of known application of a combination of oil and wax for the known purpose of its application to tissues for the known advantage of enabling the composition to be used to reduce skin irritation (etc).

120. At best, according to Mr Burley, the invention is nothing more than the use of a known product (i.e. oil/wax) for a known purpose. Accordingly, it is not a manner of new manufacture within the test set out in Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232 at page 251.
"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".

121. Mr Burley argued that:
"Claim 29 is not limited either to a particular form of composition, or a particular manner of distribution, other than there be more than one "spaced apart" deposit of emollient. That deposit does not even have to be on the surface of the tissue substrate.
As is hardly surprising, it is conceded by the applicant that the use of oil/wax combination is known (Staton 29/6/00, paragraph 20). This is also noted in US 4481243 column 5, line 50."

122. While Ms Irani, on the other hand, acknowledges that wax/oil compositions are known she contends that claim 29 is not a mere recitation of the prior art.
123. In order to bring the case within the ambit of Microcell (supra), Mr Burley relies upon a problem/solution approach which posits that the problem identified in the patent application is the impregnation of liquid emollient into the tissue substrate and that the solution lies in the addition of a wax to increase the viscosity of the emollient and make it solid after application.
124. While this is an argument more appropriate to inventive step and is a ground that is not been pressed, I am of the view that Microcell (supra) does not apply as the claim is more than a mere recitation of the prior art.
125. Another way of considering Mr Burley's submission is to consider that claim 29 is not directed to a manner of manufacture because "on the face of it" the specification discloses that the method of claim 29 is known: NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd, 32 IPR 449. This line of argument also does not assist as "on the face" of the specification, the “PUFF Plus” comparison and example 6 teach away from a construction in which claim 29 is a mere recitation of the prior art.
126. Hence, claims 29-41 are directed towards a manner of manufacture.
OBSERVATION: S64(2)
127. While it is acknowledged that S64(2) is not a ground of opposition, I became aware during my considerations that AU 48610/96 (691093) [KCW], which has a priority date of 6 February 1995, contains claims similar to those of the current application. I note that this case is mentioned in the evidence of the inventor, Mr Krzysik. The claims of AU 48610/96 refer to a soft tissue product having one or more uncreped throughdried tissue plies and method of making the same. In comparison, the claims of the current application remain unrestricted. Yet it is clear that the invention of the specification in suit applies to one or more plies that can be "layered or blended (homogeneous), creped or uncreped, throughdried or wet-pressed". I also note, for example, that example 4 of AU 48610/96 bears a remarkable similarity to example 2 of the application in suit. While I do not consider that it is appropriate to deal with this issue in my decision, it may need to be considered as an ex parte matter prior to sealing.
DECISION
128. I have found that the opposition is successful in part. However, I consider that there is patentable subject matter and I allow the applicant 60 days from the date of this decision to propose suitable amendments. In relation to proposing suitable amendments, the applicant should note my observations on AU 48610/96 (691093) mentioned above.
COSTS
129. Costs normally follow the event. I see no reason for departing from this practice. Hence I award cost in this matter against Kimberly-Clarke Worldwide, Inc.
G.M.Cox
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Spruson & Ferguson, Sydney
Patent attorneys for the opponent :Baldwin Shelston Waters, Sydney

[2002] APO 44

19 November 2002