Kornelis' Kunsthars Producten Industrie B.V. v W.R. Grace & Co.,-Conn
[1992] APO 40
•4 August 1992
official notice
decision of a delegate of the commissioner of patents
Application : No. 580751 in the name of Kornelis'
Kunsthars Producten Industrie B.V.
Title : Closure Cap
Action : Opposition by W.R. Grace & Co,-Conn
under Sec 82
Decision : Issued . Opposition
dismissed
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 580751 by KORNELIS' KUNSTHARS
PRODUCTEN INDUSTRIE B.V. and opposition by W.R. GRACE
& CO.,-CONN under Section 82 of the Patents Act 1952
background
Patent application 580751 by Kornelis' Kunsthars Producten Industrie B.V. (Kornelis') was advertised accepted on 2 February 1989. On 17 March 1989 W.R. Grace & Co.,-Conn (Grace) lodged a notice of opposition to the application under sec 59(1) of the Patents Act 1952. Evidence in support was served on 22 March 1990 and evidence in answer on 22 November 1990.
On 11 October 1990 Kornelis' lodged a request to amend under sec 77 of the Patents Act 1952 and, following examination, particulars of the request were advertised on 7 February 1991. Grace subsequently lodged a notice of opposition under sec 82 and served its evidence in support of the opposition on 16 September 1991 (after four unopposed extensions of time). On 9 March 1992 Kornelis' advised the Office that it did not wish to serve evidence in answer.
A hearing to determine the sec 82 opposition took place in Canberra on 25 May 1992. Kornelis' was represented by Mr Fred Schilling, patent attorney with F.B. Rice & Co, and Grace was represented by Mr Paul Jones, patent attorney with Phillips Ormonde & Fitzpatrick.
The sec 82 notice sets out the following grounds of opposition:
"That the amendments as sought are not allowable under
the provisions of Section 78 of the Patents Act in
that the result of the amendments, if allowed, would
be that(a) the specification of the opposed application would
claim matter not in substance disclosed in the
specification as lodged;(b) a claim or claims of the specification of the
opposed application would not in substance fall
within the scope of the claims of the
specification as it existed before amendment;(c) the specification would not comply with the
requirements of section 40."
THE SPECIFICATION AS LODGED
The specification as lodged opens by stating that it relates to a process for making a closure cap provided with a gasket in which the gasket is formed by adding plastisol material to an annular space within the closure cap, preheating the closure cap after addition of the plastisol, causing the plastisol to melt completely by the application of further energy and then cooling same to form the gasket.
The specification ends with nine claims, of which claims 1 to 4 read as follows:
"1. A process for making a closure cap provided with a
gasket from a polypropylene material for a
container, said closure cap comprising an end wall
and a circumferential side wall, in which process
the gasket is formed in the closure cap via a
melting and a cooling operation by applying in the
closure cap an amount of plastisol which is shaped
therein into a gasket configuration at an
elevated temperature adjusted after the plastisol
addition; causing the plastisol shaped into the
gasket configuration to melt completely by further
energy supply and then cooling same to form the
gasket, characterized by starting from an
integral combination of the closure cap with a
sealing ring which is connected with the closure
cap by means of a number of frangible bridges
capable of being broken on the first opening of the
container and, to form the gasket, carrying out
the melting operation by heating the closure cap
after addition of the plastisol to a temperature of
50-110oC and by exposing the resulting plastisol
shaped into the gasket configuration subsequently,as is known per se, to microwave energy until the
plastisol has been completely molten.
2. A process according to claim 1, characterized by
using a closure cap the end wall of which is
thinner by 20-50% at the position where the
gasket is to be formed.
3. A process according to claim 1, characterized in
that the melting operation is carried out by
exposing the resulting plastisol shaped into the
gasket configuration, after heating to 50-110oC,
to microwave energy having a frequency of 10-200 MHz.
4. A process according to claim 3, characterized in
that the melting operation is carried out by
heating the closure cap after addition of the
plastisol to 100oC within 15-30 sec. and
completely melting the resulting plastisol
shaped into the gasket configuration by 3-15 sec.
exposure to microwave energy having a frequency
of 27.10-27.15 MHz."
Claims 5 to 8 relate to a closure cap provided with a gasket formed from a plastisol material, and claim 9 relates to a process for closing and sealing a container using the closure cap according to claim 8. However none of these claims specify the manner in which the gasket is formed.
THE SPECIFICATION AS ACCEPTED
The specification as lodged was amended during examination, the most significant changes being to the claims. The amended specification contains three claims which read as follows:
"1. A closure cap for a container made from an
olefin polymer comprising an end wall, a
circumferential side wall and a sealing ring
with which the container can be sealably
closed in conjunction with a locking collar
disposed around the neck of the container,
which sealing ring is integrally connected
with the side wall of the closure cap via
frangible bridges capable of being broken
on the first opening of the container,
characterized in that the end wall is
internally provided with an annular space
bounded by two undercuts, said annular
space is provided with a gasket made from
a plastisol material and said gasket is
sealing on the edge of the container neck,
said end wall having a wall thickness
decreased by 20-50% at the gasket while the
closure cap is obtained starting from an
integral combination of the closure cap with
the sealing ring, adding an amount of the
plastisol material to the annular space and,
to form the gasket, carrying out the melting
operation by heating the closure cap after
addition of the plastisol to a temperature of
50-110oC and by exposing the resulting
plastisol shaped into the gasket configuration
subsequently to microwave energy until the
plastisol has been completely molten.2. A closure cap according to claim 1, characterized
in that the inner undercut is tapered in cross-
section and resilient and has a largest diameter
to have the sealing of the gasket on the edge of
the container neck partly in combination with the
said undercut.3. A closure cap according to claims 1-2,
characterized in that the inner diameter of the
closure cap is up to 100mm."
THE SPECIFICATION AS PROPOSED TO BE AMENDED
The amendments proposed to the specification in the sec 77 request seek to replace the claims as accepted with a new set of claims and to make corresponding changes to the description. The only claims which I need consider for the purposes of this decision are proposed claims 1 and 2 which read as follows:
"1. A closure cap for a container made from an olefin
polymer comprising an end wall, a circumferential
side wall and a sealing ring with which the
container can be sealably closed in conjunction
with a locking collar disposed around the neck of
the container, which sealing ring is integrally
connected with the side wall of the closure cap
via frangible bridges capable of being broken on
the first opening of the container, characterized
in that the end wall is internally provided with an
annular space bounded by two undercuts, said
annular space is provided with a gasket made from a
plastisol material and said gasket is sealing on
the edge of the container neck, said end wall
having a wall thickness decreased by 20-50% at the
gasket, the closure cap produced by a method
comprising:starting from an integral combination of the
closure cap with the sealing ring, adding an amount
of the plastisol material to the annular space, andforming the gasket by heating the closure cap after
addition of the plastisol to a temperature of
50-110oC and by subsequently exposing the resulting
plastisol shaped into the gasket configuration to
microwave energy of a frequency in the range of
10 to 200 MHz until the plastisol is completely
molten.2. A closure cap as defined in claim 1 wherein said
microwave energy is of a frequency in the range of
27.10 to 27.15 MHz, said exposing of plastisol is
for a period of 3 to 15 seconds and said heating of
the closure cap is to a temperature of about 100oC
within a period of 15 to 30 seconds."
EVIDENCE
The evidence in support of this opposition consists of a statutory declaration by Kenneth Martin Sinnot. As I have indicated above, no evidence in answer was lodged.
Mr Sinnot is currently a consultant to a British subsidiary of Grace, having been employed by that company since 1967. In his declaration, Mr Sinnot makes an analysis and comparison of the original, accepted and amended specifications and comes to the conclusion that the amendments proposed "radically alter the scope and nature of the claims, render the claims confusing and unclear and are not supported by the description". He bases this conclusion on the assertion that proposed claim 1 refers to "microwave energy of a frequency in the range of 10 to 200 MHz" whereas the term "microwave energy" as used in the specification as lodged and accepted refers to microwave energy within the range 300 to 300,000 MHz. Also he declares that the wording "microwave energy of a frequency in the range of 10 to 200 MHz" is a contradiction in terms, since a frequency range of 10 to 200 MHz is not a microwave frequency range. Finally Mr Sinnot asserts that proposed claim 1 is characterized by a combination of features not disclosed in the specification as lodged.
SUBMISSIONS
The major submissions presented to me by Mr Jones and Mr Schilling are for convenience summarised below.
On behalf of Grace, Mr Jones opposed the amendments on the grounds available under sec 78(1), 78(2)(a) and 78(4). In taking Mr Sinnot's declaration further, he submitted that:
1) As a result of the amendments, the specification would claim
matter not in substance disclosed in the specification as
lodged because:
a) the specification as lodged qualified the step of
exposing the plastisol gasket material to microwave
energy as "as is known per se" which, in the context of
the specification and as understood in the art, means
microwave energy in the range of 300 to 300,000 MHz;
b) the disclosure in the specification as lodged of the use
of microwave energy in the range of 10 to 200 MHz is
unrelated to the total disclosure of the invention by the
original specification in which microwave energy is
defined by reference to the known process as being
microwave energy in the range of 300 to 300,000 MHz;
c) energy in the frequency range 10 to 200 MHz is radio-
frequency electromagnetic radiation, not microwave energy
(a viewpoint apparently shared by Kornelis' own expert in
the substantive opposition);
d) proposed claim 1 is a juxtaposition of a number of
features which may have been independently disclosed in
the specification as lodged, but which are now rearranged
in a manner not taught by the specification to form a new
combination; and
e) proposed claim 1 refers to sealing of the gasket on the
edge of the container neck for which there is no basis in
the specification as lodged.
2) As a result of the amendments, the claims of the specification
would not in substance fall within the scope of the claims
before amendment because exposure of the plastisol material to
microwave energy having a frequency of 10 to 200 MHz is not
covered by the claims before amendment in which the plastisol
material was exposed to microwave energy "as is known per se",
i.e., to microwave energy having a frequency of 300 to 300,000
MHz.
3) As a result of the amendments, the specification would not
comply with the requirements of section 40 because:
a) the amendments take a perfectly clear and unambiguous
term in "microwave energy" and render it unclear;
b) the passage "said gasket is sealing on the edge of the
container neck" at line 12 of proposed claim 1 is unclear
as regards what is meant by the "edge" of the container
neck, and as a matter of construction appears to be
suggesting that the proposed claims are to a combination of
a closure cap and a container; and
c) the wording "completely molten" at the final line of
proposed claim 1 is unclear and perhaps should read
"completely melted" or "rendered completely molten".
Mr Jones also submitted that Kornelis' had not shown the utmost good faith (Bolesto's Application 20 IPR 469 refers) since it is attempting to claim a different invention under the guise of restricting the claims, and has taken a perfectly clear term and rendered it ambiguous.
In reply, Mr Schilling submitted on behalf of Kornelis' that:
1) It is clear from the specification as lodged when taken as a
whole that the term "microwave energy" is to be construed in a
broad sense since:
a) there is no suggestion that the term as used in the context
of the specification is to be assigned any strict upper and
lower levels of frequency since the specification has
described more than one frequency range as falling within
the microwave energy band;
b) microwave energy is not defined in the specification by
reference to the prior art: the expression "as is known per
se" has nothing whatsoever to do with any particular range
of microwave energy but instead is simply a general
reference to the technique of applying heat by microwave
energy as used in the prior art process described by the
specification;
c) the specification clearly is not confined to a particular
range of frequencies of microwave energy since it specifies
microwave energy as encompassing a frequency range of 10 to
200 MHz which is now put forward as a specific limitation
of claim 1;
d) further to the above there is no support in the
specification for a definition that microwave energy is
energy solely within the range of 300 to 300,000 MHz; and
e) the specification is internally consistent as regards this
broad meaning of microwave energy.
2) For the purposes of sec 78(1) the issue to be decided is
whether what is claimed is in substance disclosed in the
specification as lodged in terms of the total disclosure of
the invention, not whether what is claimed is supported by a
statement in the description which corresponds precisely word-
for-word with the language of the proposed claims: in the
present situation this issue should be decided in favour of
Kornelis' since all the individual elements of the combination
of proposed claim 1 are disclosed in the original
specification.
3) Mr Sinnot is not a person skilled in the art in Australia and
consequently his evidence is not conclusive as to the meaning
of "microwave energy" in the context of the specification.
4) Kornelis' would be prepared (if so-directed) to clarify or
delete the passage appearing at line 12 of proposed claim 1 to
which Mr Jones has referred, and to amend the wording
"completely molten" in the manner suggested by him.
DECISION
The first ground of opposition advanced on behalf of Grace is that the proposed amendments contravene sec 78(1).
In AMP Incorporated v Commissioner of Patents (1974) AOJP 3224 at page 3227, the High Court, in dealing with the expression "in substance fall within the scope" stated that:
"The substance must appear from the language itself
interpreted in accordance with ordinary rules of
interpretation with a knowledge of the prior state
of the art to which the claim relates."
Under sec 78(1) the question of allowance is related to matter in substance disclosed. I agree with the view taken in Robertshaw Controls Companyv GSA IndustriesLtd (1991) AIPC 90-784 that the comments of the High Court are equally pertinent to the meaning of the term "substance" in the context of sec 78(1).
Thus in considering the disclosure of the specification as lodged, I firstly need to take account of the declaration of Mr Sinnott. Mr Sinnott declares that he has gained qualifications in chemistry up to the Ph.D. level, majoring in microwave spectroscopy, and subsequently undertook post-doctoral research in this field. He has had substantial industrial experience in polymer physics, and is the author or co-author of a number of scientific publications in both fields mentioned above. He is also the inventor or co-inventor of several overseas patents.
However, while I am prepared to assume that Mr Sinnott is skilled in the art in question, I am unable to conclude from his declaration that he is aware of the prior state of the art in Australia. I would note in this regard that Mr Sinnott's qualifications and experience were obtained in the United Kingdom and the United States, and not in this country.
Nevertheless the specification as lodged specifically directs attention to a known process in which the closure cap is preheated after addition of the plastisol to a temperature 5-35oC below the melting point of the olefin polymer material from which the cap is made (typically of the order of 120-160oC), and then exposed at this temperature in an oven to microwave energy having a frequency which is not critical from a technical viewpoint but is effectively 300-300,000 MHz.
The specification alleges that this known process cannot be used to produce closure caps which incorporate anti-theft means of the type comprising a sealing ring integral with the cap and connected to its circumferential side wall via a number of frangible bridges, since the high temperatures maintained during the preheating step and subsequently upon exposure to microwave energy soften and deform the sealing ring and the frangible bridges.
The invention primarily seeks to address this problem and on pages 5 and 6 is described in the following terms:
"According to the invention there is provided
a process of the type specified in the opening
paragraph, which is characterised by starting
from an integral combination of the closure cap
with a sealing ring which is connected with the
closure cap by means of a number of frangible
bridges capable of being broken on the first
opening of the container, and, to form the
gasket, carrying out the melting operation by
heating the closure cap after addition of the
plastisol to a temperature of 50-110oC and by
exposing the resulting plastisol shaped into
the gasket configuration subsequently, as is
known per se, to microwave energy until the
plastisol has been completely molten."
The step of exposing the resulting gasket-shaped plastisol to microwave energy is also qualified in original claim 1 as being "as is known per se".
In Mr Schilling's opinion this expression when read in the context of the specification as lodged simply indicates that the invention utilises the known technique of completely melting the plastisol by exposure to microwave energy, and does not confine the invention to the use of microwave energy within the frequency range employed in the known process, or any other particular range, for this purpose.
However I do not agree with this view. The main thrust of the invention is to provide a process for making an anti-theft closure cap of known construction whereby deformation of certain specified features of the cap is avoided. In my view the specification as lodged does not treat the exposure of the plastisol to microwave energy as playing a significant role in achieving this result. Rather, the specification leads me to conclude that the required result is achieved by preheating the closure cap after addition of the plastisol to a temperature of 50-110oC which is considerably less than the range of temperatures employed in the known process. No information is provided by the specification on whether the effectiveness of the lower preheating temperature might be enhanced through the choice of a particular microwave frequency range. The role attributed to the step of exposing the plastisol to microwave energy is in fact so incidental to the main thrust of the invention that I am unable to conclude that the original disclosure envisages the use of microwave energy for this purpose in a frequency range outside the range described with reference to the known process. Consequently I do not agree with Mr Schilling's view that "as is known per se" simply qualifies the step of heating the plastisol as one which utilises the known application of microwave energy. I therefore interpret the expression "microwave energy" in the context of the specification to mean microwave energy in the known range of 300-300,000 MHz.
In reaching this conclusion, I have not overlooked Mr Schilling's further submission that the specification as lodged discloses the step of exposing the plastisol to microwave energy having a frequency of 10-200 MHz and that, as a consequence, the specification when read as a whole (as per Welch Perrin & Co Pty Ltd v Worrel 106 CLR 588) provides a basis for the microwave frequency range which Kornelis' now seeks to import into claim 1 by way of amendment.
The use of microwave energy in the range 10-200 MHz is mentioned only briefly in the specification and is not specifically picked up even by the discussion of the illustrated embodiments of the invention. As I have intimated above, nowhere does the specification attempt to suggest that the invention lies in the discovery that exposure to microwave energy in a frequency range which is substantially lower than the known range effectively avoids deformation of the closure cap, or foreshadow any advantages which may be attributed to the use of this lower frequency range over the known range. The range of 27.10-27.15 MHz now sought to be inserted into claim 2 is clearly open to a similar objection.
I would add one further comment in this matter. According to its dictionary meaning (see, for example, Van Nostrand's Scientific Encyclopaedia (5th Ed.) at pages 921 and 1540), the expression "microwave energy" refers to electromagnetic radiation having a frequency within a range which lies well beyond 10-200 MHz. This latter range is in fact generally understood to refer to electromagnetic radiation within the radio frequency spectrum, a view evidently shared by Mr Sinnott and also Prof. Beard, Kornelis' own expert in the substantive opposition. Based upon my earlier interpretation of the specification as lodged, the invention as originally disclosed does not in my opinion contemplate the use of radio-frequency electromagnetic energy.
Accordingly I am satisfied that the proposed amendments are not allowable under sec 78(1) since their effect is to change the nature of the invention to something not asserted as the invention by the specification as lodged (International Playtex Corporation's Application (1969) RPC 362).
Mr Jones contended that the proposed amendments also fail to satisfy sec 78(1) on the grounds that they seek to extract certain individually disclosed features and use them to formulate a new combination not taught by the specification as lodged. I have already found that the step of exposing the plastisol to energy in the range 10-200 MHz is matter not originally disclosed. The other features to which Mr Jones drew my attention essentially relate to constructional details of the closure cap which I consider are properly disclosed as optional features in the specification as lodged.
The second ground of opposition advanced on behalf of Grace is that the proposed amendments contravene sec 78(2).
In considering whether the claims as amended in substance fall within the scope of the claims before amendment, the High Court held in AMP's Application (supra) that the reference to substance imports the kind of test which is appropriate to the question of whether the amendment would bring into infringement anything that was not an infringement prior to the amendment (see also W.J. Voit Rubber Corp's Application (1965) AOJP 1752).
In the present case the claims as they existed before amendment in the context of sec 78(2) are the claims in their accepted form. Claim 1 as accepted refers to exposure of the plastisol to microwave energy but no longer carries the qualifier "as is known per se". However in my view this does not alter my earlier finding that when properly interpreted "microwave energy" means microwave energy in the range 300-300,000 MHz, and I am assisted in this conclusion by the fact that the accepted specification describes the invention in precisely the same terms used in the specification as lodged, and that there is no reference in the later accepted claims to a specific frequency range. Thus the claims before amendment do not embrace the frequency range 10-200 MHz in proposed claim 1 or the range 27.10-27.15 in proposed claim 2. Accordingly, and having regard to the test for infringement, I am satisfied that the proposed amendments are not allowable under sec 78(2).
The final ground of opposition advanced on behalf of Grace is that the proposed amendments contravene sec 78(4).
In my view Mr Jones is correct in his submissions that the amendments to the claims result in the specification not complying with sec 40, particularly insofar as proposed claim 1 refers to microwave energy having a frequency range which is well below the commonly recognised microwave frequency spectrum. As a result I think that the expression prevents claim 1 from defining with precision the monopoly claimed, so that others may know the exact boundaries of the area within which they will be tresspassers (E.M.I. v Lissen 56 RPC 23). The High Court considered that it is a sufficient ground to refuse an amendment if the amendment introduces uncertainty or ambiguity into the specification (Fabwerke Hoechst AG Vormals Meister Lucius and Bruning v Commissioner of Patents 124 CLR 654). Accordingly I am satisfied that the proposed amendments are not allowable under sec 78(4). I would add however that the alleged deficiency in proposed claim 1 relating to the passage "said gasket is sealing on the edge of the container neck" at line 12 is also present in claim 1 before amendment. Therefore this alleged deficiency is not introduced as a result of the amendment.
CONCLUSION
I have decided that the opposition succeeds on all grounds relied upon. I therefore refuse to allow the amendments, and I award costs against Kornelis'.
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : F.B. Rice & Co.,
Sydney
Patent attorneys for the opponent : Phillips Ormonde & Fitzpatrick,
Melbourne
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