L'Oreal v Bristol-Myers Company
[1991] APO 51
•15 November 1991
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Application No. 547036 by L'OREAL and opposition by BRISTOL-MYERS COMPANY under section 59 of the Patents Act 1952.
Background
The Office advertised acceptance of application number 547036 on 3 October 1985. Bristol-Myers Company (Bristol-Myers) opposed the grant of the patent. The Notice of Opposition was lodged on 24 December 1985 and the normal evidence stages completed on 25 May 1989.
On 23 July 1990 a Delegate of the Commissioner granted an application for special leave under regulation 59 to lodge further evidence in answer to Bristol-Myers evidence-in-reply (see L'Oreal V Bristol-Myers (1991) AIPC 90-736). The further evidence stages were completed on 22 November 1990.
The hearing was set down for 20 February 1991 in Melbourne. Mr Louis Gebhardt, patent attorney of Watermark represented L'Oreal and Mr Paul Jones, patent attorney of Phillips, Ormonde & Fitzpatrick represented Bristol-Myers.
The Notice of Opposition lists the usual grounds available under section 59 and says "notwithstanding the generality of ground 8, that the invention is not fully described". At the hearing Mr Jones relied on grounds 8 and 9 of the Notice of Opposition, that is, of non-compliance with section 40.
At the hearing Mr Gebhardt sought permission to adduce further evidence. Mr Jones refused to agree to the lodgement of this evidence under regulation 59(1)(a). Mr Gebhardt decided to leave the matter to a later time.
An application for special leave to lodge further evidence was lodged on 7 May 1991. I refused the application. My reasons for refusing the application for special leave are contained in a separate decision issued concurrently with this decision.
Specification
The lodgement date of application 547036 was 24 December 1980. The application claims earliest priority based on French applications numbered 79 32078 and 80 26421 of 28 December 1979 and 12 December 1980 respectively.
The subject matter of the invention relates to an improvement in a two stage hair-perming process consisting of a reduction and an oxidation stage characterised in that the reduction stage is carried out using a reducing composition containing at least one cationic polymer and the oxidation (neutralisation) stage is carried out in the presence of at least one anionic surface-active-agent.
At page 2 line 32 the specification states "The present invention constitutes an improvement in the hair-perming process, which makes it possible to impart more softness to the touch, easier combing-out of the hair and an improvement in its aesthetic appearance."
There are 19 accepted claims, including two independent claims and two omnibus claims. Independent claims 1 and 13 are as follows:
1. A process for waving or straightening hair which comprises, in a first stage, reducing the disulphide bonds in the keratin of the hair by applying a reducing composition containing at least one cationic polymer, and then, in a second stage, re-forming the said bonds by applying an oxidising composition in the presence of at pleast one anionic surface-active agent.
13. A two part pack in which the first part comprises a reducing composition containing at least one cationic polymer, and the second part comprises an oxidising composition containing at least one anionic surface-active agent, when used in a process as claimed in claim 1.
Prior to the hearing, L'Oreal lodged a request to amend the complete specification under section 77 (on 13 February 1991). The proposed amendments have not, as yet, been allowed. Although the proposed amendments have been referred to in submissions (although only briefly), I will consider the specification as accepted, not as proposed to be amended.
Evidence
Evidence-in-support was served on 25 May 1987.
This consists of a statutory declaration by Leszek January Wolfram and one exhibit.
Dr Wolfram declares he is "presently employed as Vice President and Research Director of Clairol Inc., a subsidiary company of Bristol-Myers Company" and he has a "Ph.D. in protein chemistry from the University of Leeds, England". He provides , in the declaration, details of relevant experience and a selected list of his publications in the field of protein chemistry in general and keratin chemistry in particular.
Dr Wolfram also declares, in paragraph 8, that a series of comparative experiments, in accordance with the teachings of the invention and utilizing a number of different cationic polymers, were carried out under his supervision and describes the experiments in detail. The cationic polymers used in these experiments were Merquat 550, Cartaretin F4, Crotein Q, Clairquat and Merquat 100.
Dr Wolfram declares in paragraphs:
9. "THAT I conclude from the results of the foregoing experiments that the teaching of the opposed specification in relation to the selection of the (sic) at least one cationic polymer which feature is described as an essential characteristic of the invention is not sufficient for me to put the invention into practice.
I consider that accordingly those claims of the opposed specification which refer to a cationic polymer are not fairly based on the description of the invention in the opposed specification. Of the four cationic polymers tested all of which fall within the scope of the definition of the term on page 5 of the opposed specification, only two, Clairquat and Merquat 100, provided an increased degree of combability that is it provided easier combing out of the hair after treatment than before."; and
10. "THAT I note in particular that the foregoing experiments show that the cationic polymer Merquat 550 did not provide such easier combing out of the hair as specified as one of the improvements provided by the hair perming process described therein. This is despite the fact that Merquat 550 is specifically exemplified as a cationic polymer on page 8 of the opposed specification."
Evidence-in-answer was served on 25 February 1988.
This consists of a statutory declaration by Jennifer Kidd of Camberwell, Victoria and an exhibit consisting of copies of material from two textbooks on cosmetic science and chemistry.
Ms Kidd declares she is the "Manager, Pharmaceutical and Medical Division, of the Institute of Drug Technology Australia Limited" and describes her qualifications and her experience relevant to the field of the invention.
Ms Kidd provides, in paragraphs 6 to 9 of her declaration, an analysis of Dr Wolfram's testing procedures and methodology. She says, in paragraph 6 that "I observe that the tests set out in his declaration are not reproducible and/or not significant for a variety of reasons as follows" and then details her reasons. She is similarly critical about Dr Wolfram's methodology.
Evidence-in-reply was served on 24 May 1989 and consists of a further declaration by Dr Wolfram plus a number of exhibits. The exhibits are a copy of GB patent application number 1603321, a copy of a paper published in the J. Soc. Cosmet. Chem., 27, 379-398 (September 1976) and a copy of French patent number 2383660 (untranslated).
Evidence-in-reply also consists of a statutory declaration from Michael Peter Squires, of Phillips Ormonde & Fitzpatrick, patent attorneys attesting to the publication dates, in Australia, of Dr Wolfram's exhibits.
Dr Wolfram disagrees with the statements made by Ms Kidd in her declaration but in paragraph 17 of his declaration provides details of further comparative experiments carried out under his supervision designed to overcome Ms Kidd's criticisms. These experiments use cationic polymers Merquat 100 and Cartaretin F4 as before and two previously unused cationic polymers, Polymer JR 400 and Delsette 100.
In paragraph 20 Dr Wolfram says
"It is seen that, for a 0.25% level of polymer, neither Polymer JR 400 nor Cartaretin F4 nor Delsette 100 provided softening that was different than that perceived for the composition 6, the control not containing any hair conditioner at all!".
In paragraph 21 he describes in detail how "The combability of the waved hair was assessed both subjectively (the same panelists were used) and objectively ...".
In paragraph 24 Dr Wolfram states
"having conducted this further series of experiments, I repeat my conclusion in my earlier declaration that the teaching of the opposed specification in relation to the at least one cationic polymer, which feature is described as an essential characteristic of the invention, is not sufficient for me to put the invention into practice."
In paragraph 25 Dr Wolfram reaffirms his view that
"not all cationic polymers are suitable for providing a conditioning effect to hair. Thus, of the four cationic polymers selected from the British L'Oreal specification, only Merquat 100, in fact provides any beneficial conditioning effect. While there may be other cationic polymers that could be useful in providing a conditioning effect other than those specifically enumerated in the opposed specification I can locate no teaching in the opposed specification to assist me in making a selection, or even to suggest that a selection is necessary."
Dr Wolfram also comments on British patent specification 1,603,321 which he says, in paragraph 27, "is a substantially identical document in English to French patent specification 2,383,660.".
In paragraphs 32-36, Dr Wolfram declares that:
"32. ..... I note that Example 188 does not include an anionic surface active agent. However, the composition does include the anionic polymer Flexan 130.
33. ..... it is disclosed in the preamble to the Examples on page 44 that
'The anionic polymers can also be solubilised beforehand in an anionic surface-active agent or a solvent of the type mentioned above.'
Accordingly, the use of an anionic surface active agent is disclosed as an option.
34. ..... in the case of the anionic polymers resin 26.13, resin TV 242, P1, P2 and O3, Quadramer 5, Gantrez ES 225, Gantrez 425, resin 28.29.30 and EMA 1325, it is essential either to neutralise these polymers or to treat them with an anionic surface active agent in which case neutralisation is superfluous.
35. ..... the use of anionic surface active agents is discussed in detail on pages 35 to 39 inclusive of the British L'Oreal specification.
36. ..... accordingly I consider that the British L'Oreal specification discloses all the features described as essential in the process of the opposed specification."
Further evidence was served by special leave on 27 August 1990.
It consists of a statutory declaration by Do Le Trung of Paris, France who declares he is a laboratory supervisor of the research laboratories of L'Oreal and has "a degree in Superior Technical Studies in the field of chemistry from the Conservatoire National des Arts et Metiers of Paris, France". The evidence also consists of a number of exhibits. They are a copy of the opposed specification, photographs and a drawing of apparatus used by Do Le Trung and a copy of British specification 1,603,321.
Do Le Trung declares in paragraph 7 that
"Dr Wolfram.....asserts that the opposed specification does not sufficiently describe the invention for it to be put into practice...".
In paragraph 9 he declares that
"Dr Wolfram's assertion is manifestly unsupported since he cannot logically extrapolate his results to conclude that 'not all cationic polymers are suitable', after having limited the concentration of the cationic polymers to 1%, when the specification teaches in essence that each cationic polymer will provide the desired result at a respective concentration within the range 0.2 to 5%."
He goes on to say in paragraph 10
"that Dr Wolfram's tests are thus obviously insufficient to support a general conclusion of inoperability of the cationic polymers tested by him ...".
He also declares in paragraph 14 that the results of tests carried out under his supervision
"show that the tested cationic polymers do provide a significant improvement over the controls at least when they are used at a concentration of 3%, it being understood that the tests were not intended to determine the minimum concentration which is effective for each tested cationic polymer."
The cationic polymers tested were Polymer JR 400, Cartaretin F4, Delsette 101 and Onamer M.
In paragraphs 18 to 23 Do Le Trung disagrees with Dr Wolfram's conclusions about British patent specification number 1,603,321. He reaches a conclusion that is "diametrically opposite" Dr Wolfram's conclusion, in his declaration of 17 May 1989, that "the British patent discloses all the features described as essential in the process of the opposed specification".
Evidence-in-reply to the further evidence was served on 20 November 1990.
This consists of another statutory declaration by Dr Wolfram who disagrees with Do Le Trung's conclusions and provides a further series of tests to support his contentions. This time he tests Merquat 200, Polymer JR 400, Cartaretin F4 and Delsette 101.
At paragraph 14 Dr Wolfram declares
"....accordingly I reiterate my conclusions in my second declaration that the teaching of the opposed specification in relation to the cationic polymer is not sufficient for me to put the invention into practice. In particular, I can locate no teaching in the opposed specification to assist me in making a selection of those cationic polymers which would provide a conditioning effect or the amount of the cationic polymer which may be required. Indeed the opposed specification does not even suggest that a selection is necessary".
Submissions
The major points of Mr Jones' submission are as follows:
The description is insufficient in that it is not possible to perform the invention from the description given.
In summary, Mr Jones argued that:
.the specification neither teaches how to select those cationic polymers which will work from those which will not nor suggests a selection has to be made. The applicant has failed to describe how the cationic polymers work. There is nothing in the specification to suggest the polymer is selected because of particular characteristics or if assistance is required what that assistance is. There is no proper description to allow the invention to be put into practice. They have not fully described the invention;
.an objection of lack of utility may be appropriate in other circumstances but not in this case. The opponent has to the best of his ability tried to put the invention into practice. Dr Wolfram states he has attempted to overcome the difficulties with cationic polymers other than the preferred embodiments and failed.
Fair basis.
Mr Jones argued that:
.the claims are not fairly based on the description, inter alia, in that they do not fulfil the promise of the invention;
.the Opponent has no dispute with the cationic polymers selected by the applicant as preferred embodiments. The dispute is with the breadth of the claims. Formulations containing other cationic polymers falling within the scope of the claims perform no better than formulations without cationic polymers;
What L'Oreal has done is legitimate. They have found a process that works with specific polymers. However, they want to extrapolate it to the whole class of polymers. The claims go beyond the consideration and claim matter the specification does not teach.
Further, claim 1 is not fairly based because there is no restriction on amounts of either the reducing agent, the cationic polymer, oxidising agents or the surface active agents. There is also no restriction on the nature of the cationic polymers or anionic surfactants used;
The claims are not fairly based as they are not restricted to specific cationic polymers such as those which will produce the improved effect.
Also stretching is described as an essential feature of the invention on page 3 of the specification.
Mr Jones argued the claims are not clear and succinct as they stand or as proposed to be amended.
Claims 15 and 16 (shown below) are fatally flawed and should be dropped.
Mr Jones argued these claims are flawed because:
Claim 1 contains two possibilities. One is both the oxidising agent and the anionic surfactant are in the one composition as is contemplated by claim 4 and the other is they are in two parts as contemplated by claim 5.
Claim 13 is restricted to one of the two permutations in claim 1. That is, the first of the two possibilities. Firstly there is a pack containing the reducing composition and the cationic polymer and secondly there is a pack containing the oxidising composition and the surface-active agent.
Claim 16 (appended to claim 13) claims the oxidising formulation packaged in two parts. This does not make sense (ambiguous, not clear and succinct) because the wording of claims 1 and 13 means the oxidising composition and the anionic surface-active agent must be in the same pack. This argument also applies to claim 15.
Claim 13 is shown earlier in this decision. Claims 14, 15 and 15 are as follows:
A pack according to claim 13 or 14 in which the said first part is itself in two parts, one part comprising the reducing composition and the other comprising a composition containing the cationic polymer, the two said parts being intended to be mixed at the time of use.
A pack according to claim 13 or 14 in which the said second part is itself packaged in two parts, one part comprising the oxidising composition and the other comprising a composition containing the anionic surface-active agent, the two said parts being intended to be mixed at the time of use or to be applied successively to the hair.
A pack according to claim 13, in which the anionic surface-active agent is defined as in claim 9 or claim 10 and the cationic polymer comprises units of the formula (1a) (1b) or (111) as identified herein."
Mr Jones said he would not pursue the prior art issues at this time due to the proposed amendment to exclude anionic polymers. He was also not relying on the British L'Oreal patent as an anticipation.
Mr Jones cited the following authorities to support his case:
.Graham, J. in Olin Mathieson v Biorex, (1970) RPC 157, where at page 193 he states:
"If it is possible for a patentee to make a sound prediction and to frame a claim which does not go beyond the limits within which the prediction remains sound, then he is entitled to do so. Of course, in doing so he takes the risk that a defendant may be able to show that his prediction is unsound or that some bodies falling within the words he has used have no utility or are old or obvious or that some promise he has made in his specification is false in a material respect; but if, when attacked, he survives this risk successfully, then his claim does not go beyond the consideration given by his disclosure, his claim is fairly based on such disclosure in these respects, and is valid."
The evidence of Dr Wolfram shows, Mr Jones said, the applicant has not made a sound prediction. The applicant falls at the first hurdle, he said, because we are not in an area where sound prediction is possible.
.Romer L.J. in No-fume v Pitchford 52 RPC 243 where at page 243 he states:
"Be it observed from the very words I have used, that the patentee fulfils his duty if in his complete specification he describes and ascertains the nature of the invention, and the manner in which the invention is to be performed sufficiently and fairly. It is not necessary that he should describe in his specification the manner in which the invention is to be performed, with that wealth of detail with which the specification of the manufacturer of something is usually put before the workman who is engaged to manufacture it. Specifications very frequently contain mistakes; they also have omissions. But if a man skilled in the art can readily rectify the mistakes and can readily supply the omissions, the patent will not be held to be invalid. The test to be applied for the purpose of ascertaining whether a man skilled in the art can readily supply the omissions has been stated to be this: Can he rectify the mistakes and supply the omissions without the exercise of any inventive faculty? If he can, then the description of the specification is sufficient. If he cannot then the patent is void for want of sufficiency."
Mr Jones said Dr Wolfram has not been able, through innumerable tests, to overcome mistakes or supply omissions.
.He also referred to Fuji Photo Film Co Ltd (Kiritani's) Application 1978 RPC 413, Proctor v Gamble 1982 RPC 473, Olin v Supercartridge 51 ALJR 525, Montecatini Edison 1972 RPC 639 and Mullard Radio Valve Co. Ltd v Philco Radio and Television Corp. of Great Britain 53 RPC 323.
In summary, the major points of Mr Gebhardt's submission are as follows:
The specification is sufficient.
Mr Gebhardt argued there is no selection of cationic polymers to be made as they are all useful. The invention relates to a combination of a cationic polymer, within a certain range, with an anionic surface active agent. It is up to the person skilled in the art, he argued, to select a polymer and exercise reasonable trials to determine the concentration at which the particular polymer is to be used.
He argued a "skilled cosmetic chemist would have no difficulty in carrying out the testing necessary" to put the invention into practice.
Mr Gebhardt argued Dr Wolfram's methodology of testing the invention in both the first (evidence-in-support) and second series of experiments (evidence-in-reply) is questionable.
This argument is supported, he said:
in the first instance in that Dr Wolfram tested unusual concentrations of cationic polymers and redid his experiments in the light of comments from Ms Kidd and Do Le Trung;
in the second series of experiments in that Dr Wolfram consistently used low concentrations in his tests. Mr Gebhardt argued it is normal to test the extremities of the range claimed for a material used in a process when testing the performance or lack thereof of the material in the process, that is, both low and high concentrations.
Mr Gebhardt also argued the opponent's attack is couched in terms of insufficiency but is really to lack of utility.
Mr Gebhardt argued the invention is fully described and the best method of performance has been provided.
Mr Gebhardt mentioned a number of authorities to support his case. Among them were:
Edison v Swan 6 RPC 243 where Cotton L.J. said on page 278 "it is not necessary that such a person (an ordinary workman)(sic) should be able to do work without any trial or experiment, which when it is new or especially delicate, may frequently be necessary, however clear the description may be."
"Patents for Inventions" by T. A. Blanco White (3rd Edition), where he said on page 159, citing Osram v Pope 34 RPC 369 at 392, No-fume v Pitchford 52 RPC 231 at 238 and
British Ore v Minerals Separation 26 RPC 124 at 139, "A specification is not insufficient merely because some experiment of a routine character is necessary in each particular case; nor because it fails to give detailed instructions as to matters which a "practical person ... would naturally settle, and would expect to have to settle ... himself," provided he "would find no difficulty in so doing"; nor merely because it fails to give detailed instructions as to matters not forming part of the invention",
and also British Dynamite v Krebs 13 RPC 190, Otto v Linford (1882) 46 L.T. 35 (C.A.) and Leonhardt v Kalle 12 RPC 103.
Clarity
He argued claims 15 and 16 were clear and were a further particularisation of 13, that is, a modification of the kit pack wherein the oxidising or reducing components came in two parts. Mr Jones was nitpicking on the words of claim 13, he said, without using a "wishing or willing" approach to interpreting the claim.
Decision
Section 40 matters
a. Sufficiency
In his declarations lodged as evidence-in-support and evidence-in-reply Dr Wolfram shows, in further experiments, he can perform the invention, at least for some cationic polymers, from the description given, while with other cationic polymers, he concludes, the invention cannot be performed from the opposed specification.
The opponent does not suggest the skilled addressee cannot perform preferred embodiments of the opposed specification from the description of the invention.
Ms Kidd and Do Le Trung cast doubt on Dr Wolfram's conclusions. Consequently, I am not persuaded by Mr Jones' argument that the specification is insufficient because it does not teach the skilled addressee how to make a selection of the cationic polymers which provide improved combability from those which don't as it has not been proved a selection is necessary.
One test is from Valenci v British Radio Corporation Ltd. (1972) FSR 273 at page 311 where it was said
"While the addressee must be taken as a person with a will to make the instructions work, he is not to be called upon to make a prolonged study of matters which present some initial difficulty: and, in particular, if there are actual errors in the specification - if the apparatus really will not work without departing from what is described - then, unless both the existence of the error and the way to correct it can be quickly discovered by an addressee of the degree of skill and knowledge which we envisage, the description is insufficient:"
The opponent has not proved the specification to be insufficient in the light of this test.
b.Fair basis, clarity and succinctness
Mr Jones argued the claims are not fairly based on the description, inter alia, in that they do not fulfil the promise of the invention.
In considering sufficiency I have decided the opponent has not proved the specification to be insufficient.
Therefore, I cannot conclude the claims are not fairly based because they do not fulfil the promise of the invention. Further, on this basis I cannot also conclude the claims go beyond the limits within which the applicants prediction remains sound.
Mr Jones also argued claim 1 is not fairly based because there is no restriction on amounts (minima and maxima) of either the reducing agent, the cationic polymer, oxidising agents or the surface active agents. There is also no restriction on the nature of the cationic polymers or anionic surfactants used and the claim is not restricted to specific cationic polymers which produce the improved effect. Further, the definition of cationic polymer in the description is not clear.
I find the claims to be fairly based in all these aspects.
The invention relates to an improvement in a conventional hair-perming process characterised in that the composition used in the reducing stage contains at least one cationic polymer and the neutralisation stage is carried out in the presence of at least one anionic surface-active agent.
Two stage processes of waving or straightening hair involving reduction and reforming of the sulphur bonds in keratin are well known to the skilled addressee. (see "Encyclopedia of Chemical Technology" Third Edition by Kirk-Othmer (available in the Patent Office Library on 1 April 1981) Volume 12 pages 110 to 113)(Kirk-Othmer).
The invention clearly requires the presence of both the cationic polymer and surface-active agents. The evidence does not conclusively show that these materials have upper or lower limits beyond which the invention cannot be properly performed. Also, the specification does not describe these materials as having upper or lower limits in hair waving compositions. However, I am persuaded by the evidence provided in paragraph 11 of Dr Wolfram's declaration of 31 October 1990 that limits on the proportion of cationic polymer, in the composition, are an essential feature of the invention.
Dr Wolfram declares that
"...Waving composition containing 3% of Polymer JR had a consistency of a highly viscous liquid. This presented some difficulty in rinsing off the excess of the mixture after neutralisation...".
The claims should be limited to the proportion of cationic polymer disclosed on page 5 of the specification, that is 0.2-5%.
The specification defines the term cationic polymer, on page 5 lines 24-28, as follows:
The expression "cationic polymer" designates polycationic polymers in which a substantial proportion of the units comprise secondary or tertiary amine or quaternary ammonium groups, either in the chain or in a substituent.
This definition is clear and the specification describes a large number of examples of cationic polymers falling within this definition.
In AMP v Utilux, 45 ALJR 123 McTiernan J, at page 131, said:
"... Section 40(1)(a) merely requires a full description of the embodiment of the invention around which the claims are drawn, ... The second half of Section 40(2) requires that the claims be fairly based not only upon the description of the invention, but also upon the description of the method of performing it; in fact, the claims must be fairly based on all matter contained in the specification. In practice this requirement of Section 40(2) means that if there is some feature claimed in the claim to which no reference is made in the body of the specification or if a claim is not limited by its terms to what the patentee has stated in the body of the specification to be an embodiment of the invention, then the requirement of Section 40 has not been complied with ... Section 40(2) is concerned with ... what is referred to in other fields as internal inconsistency."
The term cationic polymer used in claim 1 meets this requirement and is therefore fairly based.
iii.I agree with Mr Jones stretching appears to be described as an essential feature of the invention (see page 3). Ms Kidd, however, declares, in paragraph 4 of her evidence, "..... It is perfectly clear that stretching, smoothing, etc is used during such processes. Because this requirement is so clearly implied, it is unnecessary to specify stretching and so on in the claim ......". I accept the skilled addressee would expect stretching, smoothing, etc to be used as part of the process and as such it does not need to be in the claim.
I also agree with Mr Jones that accepted claim 15 and 16 are not clear.
Claim 13 is limited to a two part pack "when used in a process as claimed in claim 1" and claims "A two part pack in which the first part comprises an reducing composition containing at least one cationic polymer, and the second part comprises an oxidising composition containing at least one surface active agent ...". I also construe claims 15 and 16 as being limited to a pack when used in the process of claim 1, but with the reducing or oxidising compositions respectively further packaged in two parts. I construe the word "containing", in claim 13, as meaning the reducing agent and cationic polymer or the oxidising agent and anionic surface-active agent, respectively, are contained in the same pack or composition and not in separate packs or compositions. Claims 15 and 16 are therefore not clear in their appendency to claims 13 and 14.
Further the specification as it stands is not clearly drafted. For example, parts of Examples 4, 5 and possibly 6 on pages 18-21 appear to have been omitted.
Anticipation
Although, Mr Jones said in the light of the proposed amendments, he would not pursue prior publication and novelty at this stage, I will consider this issue.
Dr Wolfram referred to the anticipation of the invention by French patent number 2383660 which became open to public inspection in the Australian Patent Office on 30 January 1979. Dr Wolfram declares the French specification is substantially identical to British patent specification No. 1,603,321, open to public inspection on 3 March 1982. This is not contested by Bristol-Myers.
For convenience I will consider the disclosures in the British specification which in a preferred embodiment comprise straightening or waving the hair using compositions containing cationic and anionic polymers (at least some of which appear to be surface active). The use of anionic surface active agents in combination with these polymers is also disclosed.
The specification includes the following specific disclosures:
page 3 lines 6-14, "It is thus possible successively to apply a lotion or a shampoo containing the cationic polymer and then a shampoo containing an anionic polymer, which treatment can include, if necessary, an intermediate rinsing stage, or to affect permanent waving using a cationic polymer in the first, reducing, composition and the anionic polymer with the fixing agent for the permanent wave in the second composition. This procedure carried out in two stages, likewise makes it possible to work under different pH conditions,....."
Page 41 lines 35-38, "The combination of polymers according to the invention can, finally, be used in compositions which are intended to straighten or wave the hair and which contain, in addition to the polymers, reducing agents such as sulphites and thioglycollates used cojointly with the neutralising compositions";
Page 44 lines 2-5, "A further embodiment of the invention consists in the application, in a first stage, of a composition containing a cationic polymer and a reducing agent and, in a second stage, the application of a neutralising composition containing an anionic polymer, in order to straighten or wave the hair";
Example 188 on page, 80.
"The following compositions intended for permanent waving are prepared:
Composition S11:
Reducing liquid
thioglycollic acid 3 g
thiolactic acid 2 g
ammonia of 22o Be strength 4 g
triethanolamine 3.5 g
Cartaretine F 8 1 g
perfume
colourant
water, q.s.p 100 g
Composition S12:
Fixative liquid:
potassium bromate 9.5 g
Flexan 130 1 g
tartaric acid pH 6.5
perfume
colourant
water, q.s.p 100 g
The reducing liquid can be applied very easily to sensitised hair and penetrates deeply into the hair.
After rinsing, and applying the fixative liquid, very pronounced and very regular curls are observed.
After drying, the hairstyle holds particularly well."
The British specification also discloses a host of preferred cationic polymers including those sold under the trade names JR-400 by Union Carbide Corporation, by Merck under the name Merquat 100 and Merquat 550, by Onyx Chemical Co. under the name Onamer M, by Sandoz under the name Cartaretin F4 by Hercules under the name Delsette 101. A variety of preferred anionic polymers are also disclosed, for example, Flexan 130 (a sodium salt of polystyrene-sulphonic acid, of molecular weight of the order of 100,000 sold under the name Flexan 130 by Messrs. National Starch) is disclosed on pages 48.
The skilled reader of this British specification would recognise Flexan 130 is surface active and understand it includes, by virtue of Example 188 and the disclosures mentioned above from pages 3, 41 and 44, the use of anionic polymers which are surface active. A well known textbook of surface active agents, that is, "Surface Active Agents and Detergents", Volume II, by Anthony M Schwartz, James W Perry and Julian Berch, published by Interscience Publishers, Inc., New York in 1958 (Schwartz and Perry), discloses on page 158-159
"A wide variety of sulfated and sulphonated polymers having surface-active properties has been described in the patent literature ...".
The textbook goes on to describe how
"Water-soluble sulphonates of polystyrene", of which Flexan 130 is an example, "can readily be prepared by treating a non-cross-linked polystyrene with the SO3 - dioxane complex" and "The degree of sulphonation can be varied, but products with considerably less than one sulfo group per styrene unit appear to be optimum for dispersing and emulsifying purposes".
The difference between the British patent specification and claim 1 of application 547036 is a matter of common general knowledge. (see General Tyre & Rubber Company v Firestone Tyre & Rubber Company Limited (1972) RPC 457).
The British specification therefore discloses an example which falls within the ambit of claim 1 of application No 547036.
Claim 1 would therefore be prior published by British specification No 1,603,321 if it was published before the priority date of the application. However, as mentioned earlier French patent specification No. 2383660 is the equivalent of GB 1,603,321 and was published before the priority date of claim 1. Claim 1 is therefore prior published by the French specification.
I cannot find a disclosure, in the British specification, of the features of the other claims of application no 547036.
Obviousness
I have no evidence to clearly show what was common general knowledge, in this art, in Australia at the priority date of the claims. The statements made in Schwartz and Perry (supra) and Kirk-Othmer (supra) do not provide a sufficient basis for me to decise that claim 1 or other claims are obvious in the light of what was known in Australia on or before the priority date of the claims.
Conclusion
I have found the opposition succeeds because the specification does not comply with the requirements of section 40, since Claim 1 is not fairly based in relation to the proportion of cationic polymer in the hair waving composition and claims 15 and 16 are not clear, and because of the prior publication of claim 1.
I consider these deficiencies can be readily overcome by amendment.
Amendments have already been proposed under section 77 of the 1952 Act. I afford the applicant 60 days from the date of this decision to seek further amendment of the specification.
I award costs against the applicant.
Bob Sawyer
Delegate of the Commissioner of Patents
Patent Attorneys for the applicant: Watermark, Melbourne
Patent Attorneys for the opponent : Phillips, Ormonde & Fitzpatrick, Melbourne
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