Labelmakers Wine Division Pty Ltd v Avery Dennison Materials Pty Ltd and Collotype International Holdings Pty Ltd
[2008] APO 23
•16 September 2008
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 2004200614 in the name of AVERY DENNISON MATERIALS PTY LTD and COLLOTYPE SERVICES PTY LTD
Title: Label for Wet Applications
Action: Opposition by LABELMAKERS WINE DIVISION PTY LTD under section 59 of the Patents Act 1990
Decision: Issued 16 September 2008.
Abstract
On the evidence provided, claims 1–7, 9, 15, 16, 18–20 lack an inventive step in light of the common general knowledge in Australia.
Based on an undertaking by the applicant that they would make certain amendments to the claims, the opposition does not succeed on the grounds that that the claimed invention was not a manner of manufacture, lacked novelty and did not satisfy section 40(2) or (3) of the Act. In addition, the evidence filed does not show a lack of inventiveness for claims 8, 10–14 and 17.
The specification clearly contains patentable subject matter in light of the evidence. The applicant was given 60 days from the date of the decision in which to propose suitable amendments to overcome the adverse findings.
Costs awarded against the applicant.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 2004200614 by AVERY DENNISON MATERIALS PTY LTD and COLLOTYPE SERVICES PTY LTD and an opposition under section 59 of the Patents Act 1990 by LABELMAKERS WINE DIVISION PTY LTD
BACKGROUND
Avery Dennison Materials Pty Ltd and Collotype Services Pty Ltd (“Avery”) filed patent application No 2004200614 on 18 February 2004. The application claims priority from AU 2003901771 filed on 14 April 2003. The application under opposition was examined and advertised accepted on 12 May 2005.
Precision Labels Pty Ltd filed a notice of opposition on 11 August 2005. Precision Labels Pty Ltd has subsequently changed its name to Labelmakers Wine Division Pty Ltd (“Labelmakers”). A Statement of Grounds and Particulars was served on 11 November 2005.
After part evidence in support was served on 10 February 2006, Avery filed amendments to the application. These amendments were allowed on 8 September 2006 and the serving of evidence in support was completed on 9 November 2006. Evidence in answer was completed by 9 July 2007 and evidence in reply was served on 9 October 2007.
For completeness, I mention here that another opposition was filed on 11 August 2005 by Raflatac Oceania Pty Ltd and evidence in support was completed on 10 February 2006. This opposition was withdrawn by Raflatac Oceania Pty Ltd on 10 May 2006 and they played no further part. I also mention for completeness that I have considered the evidence filed by Raflatac Oceania Pty Ltd and, on the evidence they supplied, I do not believe that they would have been successful in their opposition.
A hearing was held in Canberra on 25 June 2008. Mr John Nicholas of counsel, assisted by Dr Don Angus, patent attorney of Collision & Co, Adelaide, represented Avery. Mr Barry Hess of counsel, assisted by Mr Alun Thomas, patent attorney of Madderns, Adelaide, represented Labelmakers. Representatives from Labelmakers also attended.
THE SPECIFICATION
The present invention relates to an uncoated label which is used on containers (wine bottles are exemplified), where the containers are used in what are termed “wet applications”. The label, being composed of uncoated paper, is susceptible to damage when the wine bottle, for example, is placed in an ice bucket because the moisture infuses the uncoated paper and it “puckers” and becomes fragile. In addition, as the uncoated paper is saturated it loses opacity, which makes the label difficult to read and unattractive.
Avery solves this problem by providing a label composed of at least two layers. The label has a top layer of uncoated paper which is under–laminated by a layer of plastic which remains opaque when wet.
The specification, as amended during the opposition, ends with 20 claims as follows:
1. A label of laminate construction, having
at the least, an outer layer,
and an under layer,wherein the outer layer is an uncoated paper susceptible to losing opaqueness when wet and the under layer is made from a plastics material that remains opaque when wet.
2. A label as in claim 1 wherein the outer layer is adhered to the under layer.
3.A label as in either one of claims 1 or 2, wherein the under layer is a plastics material which is white.
4.A label as in any one of claims 1–3, wherein the outer layer is secured to the outer layer by a permanent adhesive.
5.A label as claimed in any one of the preceding claims wherein the under layer is adapted to be a stable laminate base.
6.A label as in claim 5 wherein the inner layer provides an innermost surface adapted to facilitate adhesion to an outer surface of a container.
7. In combination a label as in any one of the preceding claims and a container further characterized in that the label is attached to the outer surface of the container by self-adhesive.
8.In combination a label as in any one of the preceding claims 1–6 and a container further characterized in that the label is attached to the outer surface of the container by a glue which is applied to the label when wet and allowed to dry when in situ on the container.
9.The combination as in either one of preceding claims 7 or 8 wherein the container is a glass bottle.
10.A label in accordance with any of the preceding claims1–6, characterized in that the plastics material is selected from the group of biaxial polyethylene, non-orientated polypropylene or PET.
11.A label in accordance with any one of the preceding claims 1–6 wherein the under layer is a biaxial polypropylene plastic.
12.A label as in the immediately preceding claim where the biaxial polypropylene plastic has opaqueness greater than 0.54 as measured by a Tobias densitometer.
13.A label as in claim 12, wherein the under layer is a five layer extruded film.
14.A label as in claim 13, wherein the under layer has a cavitated inner core.
15.A label as claim 3, wherein the outer layer is joined to the under layer by being applied directly onto a sheet of extruded plastics material.
16.A label for a bottle where the label is a laminate where an outermost layer upon which there is printed indicia is an uncoated material susceptible to losing opaqueness when made wet, and where there is a lower or more inner layer of the laminate which is an inner layer behind this first layer which is a plastics material that is opaque, and such that it will maintain substantial opaqueness when wet.
17.A label as in claim 16 further characterized in that the lower or inner layer is in fact an innermost layer.
18.A label as in any one of claims 16 or 17 further characterized in that the laminate has each layer of the laminate joined to adjacent layers by water insoluble means or materials.
19.A label as in claim 18 further characterized in that the water insoluble means are a fusion of plastics material with a respective adjacent layer.
20.A container having a label secured to an outermost surface thereof where the label is as characterized in anyone of claims 16–20, where an or the inner most layer of the laminate is adhered directly onto an outer surface of the container with substantially water insoluble means or material, and where the outer most layer is positioned to be outermost with respect to the container so a to display the printed indicia thereon.
It is clear from the claims that there are two minor issues that were also identified by Labelmakers. Firstly, claim 4 has the outer layer being adhered to itself. Secondly, claim 20 is appended to itself. At the hearing I also noted that, while the submissions in relation to novelty and inventive step were proceeding on the basis that one layer of the label was uncoated paper, claim 16 defined this layer to be composed of uncoated material. Avery indicated that they would make the necessary amendments following issuance of my decision. Consequently, I have proceeded on the basis that one “outer layer” of claim 4 is an “under layer”, claim 20 is appended to any one of claims 16–19 and the reference to uncoated material of claim 16 is a reference to uncoated paper. This approach was agreed to by Labelmakers.
EVIDENCE
Evidence-in-support
The evidence in support consists of the following statutory declarations and accompanying exhibits:
·A declaration by Graeme Lang, Group Technical Manager of Labelmakers, with exhibits GL1 to GL11
·A declaration by Donald James Woolman, former executive chairman and managing director of Labelmakers, with exhibits DJW1 to DJW3
·A declaration by Frank Farchione, Market Development Manager of Amcor Functional Coatings, with exhibits FF1 to FF9
·Two declarations by Alun William Thomas, patent attorney of Madderns, with exhibits, AWT–1 (x2), AWT–2 and AWT–3, putting into evidence three patent specifications (JP 10–180970, JP 2000–141576, US 5318817), translations for the two JP specifications and a letter from IP Australia setting out that dates that these three specifications became open to public inspection in the Patent Office, Canberra.
Evidence-in-answer
The evidence in answer consists of the following statutory declarations and accompanying exhibits:
·A declaration by John Frankhuisen, group technical director of Collotype Services Pty Ltd (one of the applicants) and listed inventor of the present application, with exhibits JF–01 and JF–02
·A declaration by John W. Cornell, associate patent counsel for Avery
·A declaration by Scott B. Bates, regional technical manager for Fasson Roll North America, a division of Avery
Evidence-in-reply
The evidence in reply consists of the following statutory declaration:
·A second declaration by Graeme Lang
DECISION
GROUNDS OF OPPOSITON
The grounds for opposition alleged by the opponent in their Statement of Grounds and Particulars were that the claimed invention was not a manner of manufacture, lacked novelty and inventiveness, lacked utility, was secretly used in the patent area and did not satisfy section 40(2) or (3) of the Act.
At the hearing Labelmakers indicated that they no longer relied upon lack of utility and secret use.
SECTION 40
At the hearing Labelmakers did not make detailed submissions on all the matters associated with Section 40, but, nevertheless, did press them as they were particularised.
The matters raised in the Statement of Grounds and Particulars relate to fair basis, clarity and sufficiency. In each case, I cannot see any merit in Labelmaker’s particulars. All are matters which appear to have been easily understood by the declarants for Labelmakers. While Mr Hess (for Labelmakers) directed me to certain paragraphs of the first Lang declaration and the Woolman declaration as supporting some of the contentions raised by Labelmakers, I do not read them as indicating any confusion with the terms identified by the Statement.
For the other contentious terms listed in the Statement, it is clear that the declarants had no problems at all. As Mr Hess indicated, while Labelmakers might have problems, their declarants did not. The meanings of these terms are quite apparent from their described functionality. It must be borne in mind that a specification is addressed to people skilled in the art and not the casual reader. I am of the opinion that the person skilled in the art would have no problem with the specification.
MANNER OF MANUFACTURE
The opponent submitted that the invention was not for a manner of manufacture because there clearly is no invention disclosed on the face of the specification. That is, it fails the “threshold of inventiveness” test.
The “threshold of inventiveness” test was set out in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd 32 IPR 449, and was confirmed by Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd (1998) 152 ALR 604, (1998) AIPC 91-401.
The High Court in NV Philips Gloeilampenfabrieken v Mirabella International Ltd (supra) stated that manner of manufacture can be a threshold question:
“if it is apparent on the face of the specification that the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent, one need go no further”
In Bristol-Myers Squibb Co v FH Faulding & Co Ltd (2000) 46 IPR 553, the majority summarised the effect of the Philips case as follows:
“Philips stands for the proposition (as a matter of construction of the 1990 Act) that if, on the basis of what was known, as revealed on the face of the specification, the invention claimed was obvious or did not involve an inventive step - that is, would be obvious to the hypothetical non-inventive and unimaginative skilled worker in the field (Minnesota at CLR 260 per Barwick CJ) - then the threshold requirement of inventiveness is not met.”
I asked Mr Hess during the hearing what the phrase “on the face of the specification” meant. Mr Hess indicated that, while Bristol-Meyers (supra) said it had to be obvious on the face of the specification, it was also clear from the authorities that the specification also had to be read in the light of the common general knowledge. Mr Hess pointed to Labelmaker’s evidence which, he concluded, showed that what was disclosed was no more than analogous use. Mr Hess put it that the specification was not to be read as a dry document, but was to be read by a person skilled in the art in the light of common general knowledge and, therefore, evidence of the common general knowledge was permissible in considering the issue of lack of manner of manufacture. Mr Hess drew comfort from the fact that Bristol-Meyers (supra) relied extensively on the decision of Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232 where it was quite plain that the court relied on evidence external to the specification. In Mr Hess’s opinion, evidentiary references relevant to common general knowledge could be used when considering whether or not the invention lacked subject matter having regard to what was disclosed on the face of the specification.
I am not convinced by the opponent's arguments.
As noted above, in Bristol-Myers an invention does not pass the “threshold of inventiveness” test if, in light of what was known in the art “as revealed on the face of the specification”, the invention is obvious. While Mr Hess was encouraging me to draw on extrinsic evidence as to the common general knowledge in deciding whether the invention was obvious, it must be noted that the court in Bristol-Meyers continued on from the above passage to say:
“Some elaboration, however, is required in relation to what the specification reveals as “known”. If a patent application, lodged in Australia, refers to information derived from a number of prior publications referred to in the specification or, generally, to matters which are known, in our view the Court - or the Commissioner - would ordinarily proceed upon the basis that the knowledge thus described is, in the language of s 7(2) of the 1990 Act, part of “the common general knowledge as it existed in the patent area”. In other words, what is disclosed in such terms may be taken as an admission to that effect. In substance, we think, that is what happened, both in Microcell and in Philips.”
As I understand this statement, the assessment of whether the invention passes the threshold of inventiveness is done in light of the prior knowledge (which can be considered to be the “common general knowledge”) as revealed by the specification. Evidentiary references would seem to play no part in this assessment. It seems apparent that the range of the enquiry cannot be extended beyond the content of the specification. To introduce extraneous evidence as to common general knowledge seems to trespass into the decision to be made in relation to section 18(1)(b)(ii).
This approach is supported in Apotex Pty Ltd (formerly GenRx Pty Ltd) v Sanofi‑Aventis [2008] FCA 1194 where it was said (in [119]–[120]):
“[119] … In NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 183 CLR 655 at 664 the High Court quoted with approval the following passage from the NRDC Case 102 CLR 252 at 261–262 per Dixon CJ, Kitto and Windeyer JJ:
“the Commissioner may properly reject a claim for a process which is not within the concept of a “manufacture”. But the case cited [ie Microcell] shows also that even if the process is within the concept the Commissioner is not bound to accept the allegation of the applicant that it is new, if it is apparent on the face of the specification, when properly construed, that the allegation is unfounded”.
[120] The latter decision has subsequently been discussed by the High Court in Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 194 CLR 171, particularly at [36]–[40] per Brennan CJ, Gaudron, McHugh and Gummow JJ and in Lockwood Security Products 235 ALR 202; (2007) 81 ALJR 1070 at [106]–[107]. It is made clear that external evidence cannot be relied upon.” (my emphasis)
Taking only what is described in the application as “known” I cannot find any lack of inventiveness. The application thus passes this “threshold of inventiveness” test as developed in the above cases. Therefore, it is directed to a manner of manufacture.
NOVELTY
Labelmakers pressed lack of novelty in light of:
(i)Japanese Patent application JP 10–180970
(ii)a carton manufactured by Amcor to package produce (e.g. fruit)
(iii)a bag manufactured by Amcor to package cooked chickens
(iv)a product known as Hydroshield White Liner
(v)three liners used in fruit and produce cartons known as Correx 190 WL, Correx Plus 179WL and Recycle White Liner
(vi)a product known as Labelmakers Block Out
(vii)a product known as Print–O–Tape Air Baggage Label
(viii)a product known as Labelmakers Promotional Label Material
(ix)a product known as Arconvert OPP EMB–TER 100
While the opponent provided a copy, and translation, of (i), samples of (ii)–(iv) and (vi)–(viii), as well as data sheets for (v), there was no discussion of the construction of item (ix) (the Arconvert material) and no samples provided. Consequently, it is impossible to determine whether the claims lack novelty in light of item (ix). I will not consider this item any further.
Notwithstanding that only the publication date of JP 10–180970 was established, there was no dispute raised as to the availability of the other items before the priority date of the claims. There was also no dispute as to what the priority date of the claims of the present application was. Consequently, I am prepared to proceed as if the items were publicly available before 14 April 2003.
Law
The Federal Court of Australia has extensively reviewed the law regarding novelty in judgements. The judgements indicate that the basic test for anticipation is that set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at page 235; that is:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”.
It follows that if a citation discloses all the integers of the claim, the claim will lack novelty. If the citation does not disclose all the integers of the claim, the claim will still lack novelty provided the citation discloses all the essential integers of the claim, but if the essential integers are not disclosed in the citation, the claim is novel–Nicaro Holdings v Martin Engineering 16 IPR 545 and Catnic Components Ltd v Hill and Smith (1982) RPC 183.
In this case there appeared to be no suggestion from either side that any of the features of the claims was not an essential feature.
Looking at claim 1, I note the following essential features:
(1) A label of laminate construction, having;
(2) an outer layer;
(3) an under layer;
(4)the outer layer is an uncoated paper susceptible to losing opaqueness when wet; and
(5)the under layer is made from a plastics material that remains opaque when wet.
Looking at claim 16, I note the following essential features:
(6) A label for a bottle where the label is a laminate;
(7)an outermost layer upon which there is printed indicia is an uncoated material susceptible to losing opaqueness when made wet;
(3)a lower or more inner layer of the laminate which is an inner layer behind this first layer which is a plastics material that is opaque, and such that it will maintain substantial opaqueness when wet;
Discussion – “Label”
Of importance in this opposition is the meaning of the term “label” as it is used in the claims. As can be seen from the list of documents above, some of them are called “labels” while other are said to be “liners”, “cartons” and “bags”. The question to be answered was – were these “labels”?
In this regard, the applicant relied upon the definition of “label” as given in the Macquarie Dictionary. In that dictionary, the definition was:
“Label: 1. a slip of paper or other material for affixing to something to indicate its nature, ownership, destination, etc.
2. a short word or phrase of description for a person, group, movement, etc.
3. a strip or narrow piece of anything.
4. Architecture a moulding or dripstone over a door or window, especially one which extends horizontally across the top of the opening and vertically downwards for a certain distance at the sides.
5. a trade name, especially of a recording company in the music industry.
--verb (t) (labelled or, US, labeled; labelling or, US, labeling)
6. to affix a label to; mark with a label.
7. to designate or describe by or on a label: the bottle was labelled poison.
8. to put in a certain class; to describe by a verbal label.
9. Physics to replace (a stable atom) in a compound by a radioactive isotope of that atom so that its path through a mechanical or biological system can be traced.”They pointed out that the first definition given was the “label” of the claims.
In response Mr Hess indicated that the first definition did not cover all the points in relation to labels and labelling. He questioned whether claim 1 was restricted to definition 1, or whether it was extensive enough to include something which is “labelled” in the sense that existed in the definitions 6 and 7 of the Macquarie dictionary. Mr Hess pointed out that if a bottle was labelled as poison, it could have “poison” printed directly onto it or it could carry a piece of paper with “poison” printed on it. In the case of something directly printed on the container, it was Mr Hess’s submission that a container which carried information directly on its surface was a “labelled” container and that, if a container had a laminate construction and carried information indicating its nature, ownership, destination, etc, it was a label as required by claim 1.
I cannot agree with Mr Hess’s arguments. I do not see how they apply in this case. While it is certainly true that one can “label” (in the sense of definitions 6 and 7 above) a container, I cannot see how that would fall within what is claimed in claim 1, unless I was prepared to accept that the container is the label – and I do not accept that. Even Mr Hess did not seem to accept that during his submissions, when he exemplified a wool bale carrying a stencil as a labelled wool bale, but did not accept, in response to my question, that the wool bale was the label. In my opinion what is being claimed is something that falls within definition 1 above. That is, what is required to anticipate claim 1 is a slip of paper or the like which is to be affixed to something.
Please note that I am not saying that every time the word “label” appears in a patent specification it must be interpreted to fall within definition 1 above – far from it. It is just that in this case it is clear that the “label” of claim 1 is something which is to be affixed to something to indicate its nature, ownership, destination or the like. Clearly if a claim defined “a container labelled to indicate the top”, then the submissions made by Mr Hess would be an excellent summary in deciding whether this meant the container had to carry a slip of paper or have the information directly printed on it.
JP 10–180970 (JP ‘970)
As submitted by the opponent, this document discloses a paper product which consisted of a layer of uncoated paper laminated to a support layer which was composed of an opaque plastic film. In their opinion it was a novelty citation.
The applicant submitted that this document was not relevant for novelty since (i) it did not disclose a label and (ii) the uncoated paper layer was not “susceptible to losing opaqueness when wet” as it was described as being transparent.
Turning to the applicant’s first point, Mr Hess submitted that if the paper of JP ‘970 was manufactured, it would infringe the claims of the present application and, therefore, from the “reverse infringement test” JP ‘970 must be a novelty–destroying citation. I do not see how this could be. The claim does not define a “piece of paper” having certain features; it defines a “label”. Taking definition 1 from the Macquarie dictionary, I think it can be safely said that JP ‘970 does not disclose a label as required by claim 1. As pointed out by the applicant it discloses paper that “can be used to advantage as an image recording medium for recording the output from electronic equipment, such as office computers, PCs, … , and so on” (see paragraph 16 of JP ‘970), but not a label. There is no disclosure of the paper carrying something to indicate nature, ownership and/or destination. Indeed, Mr Hess described the paper of JP ‘970 as a “potential label”. While it is probably true that a label could be made from the paper of JP ‘970 using “electronic equipment, such as office computers, PCs, … and so on”, that does not equate to a disclosure of a label or instructions to create a label.
If I am wrong and, because it is a separate entity that could be affixed to something else, the paper of JP ‘970 can somehow be called a label, then the applicant’s second point needs to be considered. In response to the applicant’s assertion that the uncoated paper layer is transparent, the opponent stated that, while there was no explicit disclosure in this document that the uncoated paper lost opaqueness when wet, it was incontrovertible that it would have some level of opacity that would be lost when it was wet.
I do not agree with the opponent. In my opinion the uncoated paper of JP ‘970 is transparent. In this regard I note that paragraph 15 of JP ‘970 states:
“In the laminated body of this invention, transparent pulp paper is used as the surface layer, and a body with a high degree of whiteness is used as the opaque support body layer. In this way, a laminated body that exhibits a high degree of whiteness, in accordance with the degree of whiteness of the support body layer can be obtained. The laminated body appears to have a high degree of whiteness because the surface layer is transparent pulp paper and the lower layer, the highly white support body, can be seen through it” (my emphasis)
To me this seems to quite clearly indicate that the uncoated paper layer is transparent. There seems to be nothing in JP ‘970 to support the opponent’s assertions that it is incontrovertible that the uncoated paper had some opacity.
JP 10–180970 does not anticipate the claims.
Carton manufactured by Amcor to package produce (e.g. fruit) – “Fruit Box”
The Fruit Box was constructed by folding a cardboard blank. The cardboard was built up from layers. The cardboard had a central layer composed of corrugated material with brown kraft paper layered either side of this material. On both layers of the kraft paper was laminated a product known as Hydroshield White Liner. This liner was composed of a layer of plastic material on which was laminated a layer of uncoated paper. The cross-section of the cardboard could be represented in a block structure as follows:
Uncoated White Paper White Pigmented Plastic Kraft paper Corrugated Material Kraft Paper White Pigmented Plastic Uncoated White Paper
It seemed to be accepted that the plastic material remained opaque when wet and the uncoated paper lost opacity when wet. Information was printed on the outer uncoated paper layer. It was the opponent’s submission that, as the printed material was “labelling information” this Fruit Box was a label within the scope of the claims.
For the reasons given above, I do not accept that submission.
Using Mr Hess’s example of a wool bale which has labelling information stencilled on its outer surface, if, as accepted by Mr Hess, the wool bale is not the label, then the “label” must be what is printed on the surface. In a similar way, what is printed on the outer surface of the Fruit Box is the “label”. While it is clear that the information on the Fruit Box is the same information that would appear on a label (in the sense of the present application), the box is not a “label” as required by the present claims.
The Fruit Box does not anticipate the claims
Bag manufactured by Amcor to package cooked chickens – “Chicken Bag”
The Chicken Bag has the same problem as the fruit box.
The bag is constructed from uncoated white paper which overlies a white pigmented plastic layer. Labelling information is printed on the uncoated paper. However, the bag is not a label as required by the present claims.
The Chicken Bag does not anticipate the claims.
Hydroshield White Liner, Correx 190 WL, Correx Plus 179WL and Recycle White Liner
These products were all composed of a layer of plastic material on which was laminated a layer of uncoated paper. It follows that they contain most of the features of the independent claims at least.
However, it also follows from the discussions above that none of these liners anticipates the claims. As pointed out by the opponent, these liners were used as “inner and outer liners on fruit and produce cartons depending on the particular application requirements” (Farchione declaration). In other words, they were not used as labels. Instead they formed part of the finished product (i.e. a “Fruit Box”) and were not used as a label to be affixed to the finished product.
These liners do not anticipate the claims
Labelmakers Block Out
This product was used to create labels that were affixed to containers. As such it could be argued that it is, at least, a label as required by the claims. This product can be represented in a block structure from outside to inside as follows:
Uncoated Paper Adhesive Aluminium Foil Adhesive Release Liner
Clearly this product does not anticipate the claims. The claims require an under layer made from a plastics material and this product has an under layer of aluminium foil.
The claims do not lack novelty in light of this product.
Print–O–Tape Air Baggage Label and Labelmakers Promotional Label Material
The structure of the Air Baggage Label from outside to inside was as follows:
Heat Activated Coating Paper Laminating Adhesive White HDPE (Plastic) PSA (Adhesive) Release Liner
The structure of the Promotional Label from outside to inside was as follows:
Clay Coating Paper PSA (Adhesive) Clear OPP (Plastic) White OPP PSA Release Liner
In seeking to equate the outer most layers of the prior art labels with the outer most layers of the label of the claim, Mr Hess submitted that the opponent’s evidence showed that the outer most layers of these prior art labels lost opacity when wet. His submission seemed to be that, since this was the only property required of the outer layer, it followed that the outer layers of the prior art labels were equivalent to the outer layer of the claims. I do not agree with this submission. While it is true that the outer layer of the claim must lose opacity when wet, it is also the case that the outer layer must be uncoated paper. It is quite clear that these prior art labels do not have an outer layer of uncoated paper. As pointed out by the applicant, the paper layer of the Air Baggage Label has a heat activated coating, and the paper layer of the Promotional Label is clearly coated with clay.
Therefore, the claims are not anticipated by these labels.
However, I have reached this decision assuming that a particular amendment to claim 16 had been made. As noted earlier in this decision, the parties agreed that I should consider the grounds of the opposition as if the “uncoated material” of claim 16 was, in fact, a reference to uncoated paper. The applicant undertook to amend the claim to make this change. Unless the applicant makes that amendment, it is quite clear that these labels have all the features of claim 16 as it currently exists. Each label has an outermost layer composed of a “material” which has nothing else deposited upon it and, therefore, is an “uncoated material”. Each label also has an inner layer of a plastics material. The opponent supplied evidence that showed that, for each label, the outer layer lost opacity when wet but the inner layer remained opaque or substantially opaque. Therefore, if the applicant does not amend claim 16, it will be completely disclosed by these two labels. It is also clear that these labels also have the features of claims 17, 18 and 20.
INVENTIVE STEP
According to subsections 7(2) and 7(3) of the Patents Act, a claimed invention will lack an inventive step if it is obvious to a person skilled in the relevant art in the light of:
(a)common general knowledge, or
(b)common general knowledge considered together with information in a single document or through doing a single act, or a combination of any 2 documents, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art and, if applicable, combined.
Mr Hess submitted that the test for obviousness is whether, when faced with the same problem, it would have been a matter of routine to proceed to the claimed invention. This test is set out in Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd (1981) 148 CLR 262 at 286 as follows:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
However, Mr Nicholas directed my attention to Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21 where it was stated (in [65]):
“This Court rejected confining the question of obviousness to a “problem and solution” approach, particularly with a combination patent. This should not be misconstrued. The “problem and solution” approach [106] may overcome the difficulties of an ex post facto analysis of an invention, which may be unhelpful in resolving the question of obviousness [107]. However, it is worth repeating that the “problem and solution” approach may be particularly unfair to an inventor of a combination, or to an inventor of a simple solution [108], especially as a small amount of ingenuity can sustain a patent in Australia.”
Mr Nicholas submitted that, given that the present application was directed to a combination patent, the problem/solution approach advocated by Mr Hess could not be used.
I disagree. I do not read the above passage as prohibiting the test set out in Wellcome (supra). I read it as advocating caution. As stated in the passage, the problem/solution approach can be useful. Indeed, in Lockwood (supra), the High Court stated (at [127]):
“However, the idea remains that the prior disclosures to be taken into account, even as enlarged by s 7(3), are being considered for a particular purpose. That purpose is the purpose of looking forward from the prior art base to see what a person skilled in the relevant art is likely to have done when faced with a similar problem which the patentee claims to have solved with the invention.” (my emphasis)
In my opinion, this shows that the Wellcome (supra) test is appropriate and I will apply it.
The Problem
In the present case the problem that the hypothetical addressee is confronting is a label that, when it is exposed to moisture, loses its opacity resulting in an unattractive appearance.
Inventive Step – Common General Knowledge Only
In determining what is the common general knowledge, all that I have to rely upon is the declarations filed in this opposition. However, both parties had criticisms of the other side’s evidence.
In his submissions, Mr Nicholas noted (following the decision of F.Hoffmann -La Roche AG v New EnglandBiolabs, Inc. (2000) 99 FCR 56) that I could only find that something lacked an inventive step if that conclusion was “clearly shown” or “practically certain” and was supported by clear and convincing proof. He submitted that I had to give close consideration to the nature and cogency of the evidence that was relied upon, having regard to what is sought to be proven, the character of the evidence that was relied upon, and the presence or absence of other evidence of a corroborative kind. He invited me to give little weight to evidence that amounted to just mere assertions that something was well known at an earlier time, having no relevant detail or elaboration that might reasonably be expected to be provided.
Mr Nicholas then took me through the opponent’s evidence noting that, since Mr Lang had been responsible for developments which had become industry standards, he was not a non-inventive person skilled in the art. Similar submissions were made about Mr Woolman. Mr Nicholas also sought to have the evidence of Mr Farchione ignored since he was an inventor and, therefore, not an unskilled person in the art. He also mentioned on several occasions the lack of evidence supporting the assertions made by the declarants for the opponent.
In response Mr Hess indicated that each of the opponent’s declarants stated positively that they knew certain things and, where there was no countervailing evidence, that evidence should be accepted. Mr Hess’s submission was that the absence of corroboration did not mean that the evidence was not good in the first place.
In my opinion it is a matter of what weight should be given to the evidence. As has often been said in decisions of the Commissioner:
“In determining this matter, the standard of proof required in proceedings before the Commissioner is the civil standard, i.e. the balance of probabilities (see e.g. Dunlop Holdings Ltd's Application [1979] RPC 523). The Commissioner, while functioning as a Tribunal, is not bound by the rules of evidence but nevertheless must reach a decision on rationally probative material, i.e. material which tends rationally to show the existence or non-existence of facts relevant to the decision. It is for the Commissioner to determine the weight to be given to material of probative value.”
(See CSR Building Products Limited v Boral Montoro Pty Ltd [2005] APO 29 for example)
For example, while naming Mr Farchione as an inventor may affect the weight given to his evidence, I note that it was said in Aristocrat Technologies Australia Pty Ltd v Konami Australia Pty Ltd [2004] APO 1:
“the evidence of one of the inventors of the opposed application was taken into account, and the delegate noted that “[e]vidence by an inventor is admissible provided that it satisfies the well known requirements of relevance”. In the more recent Federal Court decisions Aktiebolaget Hassle v Alphapharm 44 IPR 593 and on appeal 51 IPR 375, the evidence of a witness who was named as the inventor and co-inventor on several patents was also taken into account, and it was held that the witness “was qualified to give evidence as to common general knowledge in Australia at the priority date and as to the practice of formulators in Australia at that time”. This finding was not overturned on appeal to the High Court, Aktiebolaget Hässle v Alphapharm Pty Limited [2002] HCA 59.”
Clearly, if the evidence is relevant it can be accepted. If there is direct conflict between the evidence of experts, weight will have to be assigned.
Considering the independent claims for the moment, from the evidence I am satisfied that the following were individually relevant common general knowledge in the art in Australia at the priority date:
(a)labels of laminate construction having an outer layer and an inner layer;
(b)uncoated paper as the outer layer;
(c)uncoated paper lost opacity when wet;
(d)under layer made from plastics material that remains opaque (i.e. does not lose opaqueness) when wet; and
(e)the under layer prevented the label from puckering when wet;
The question is, when faced with the problem of a loss of opacity in an uncoated paper label, would the person skilled in the art have combined these features in the manner as claimed?
Mr Lang and Mr Woolman for the opponent said that if they had been approached before the priority date to solve this problem, they would have suggested placing a layer of plastic on the back of the uncoated paper. They stated that this practice was well established when looking to enhance the dimensional stability of paper labels. Mr Farchione also stated that he would have suggested the same thing.
On the other hand, Mr Bates stated that, notwithstanding that it was known to provide plastic backing to improve the structural integrity of a paper label, the person skilled in the art would not employ an opaque plastic under layer because of the difficulty in processing these layers, the belief that they would compromise other desired properties of the label (e.g. tensile strength) and the cost effectiveness of making such a label. He stated that the wine industry’s primary concern was that of the structural integrity of paper labels and to provide the backing as required would not have been contemplated. In other words, the concerns of the wine industry taught away from placing a plastic backing on the paper label.
Contrary to first impressions, these conclusions are not in direct conflict with each other. Mr Bates’s evidence that, in his experience, the wine industry’s primary concern was the structural integrity can be accepted. So too can the evidence of Messers Lang, Woolman and Farchione that the wine industry’s primary concerns was the dimensional stability of labels (so that they did not pucker when wet) and loss of opacity when wet.
However, of crucial importance, as pointed out by Mr Lang in his evidence in reply, is the fact that Mr Bates is making his statements based upon his experience in America. Mr Lang, Mr Woolman and Mr Farchione, on the other hand, are making their statements based upon their experiences in Australia. Such was indicated by Mr Hess in his submissions. Mr Nicholas conceded that, while the evidence of Mr Bates served to make the argument that solving the problem was not as simple as the opponent had made out, Mr Bates was not a worker in the patent area.
It cannot be said that there is no label industry in Australia and that evidence of the common general knowledge overseas must be taken as evidence of the common general knowledge in Australia. Clearly there is a large label industry in Australia and evidence of the common general knowledge in Australia is more relevant than evidence of what is common general knowledge overseas. The opponent has made a prima facie case of lack of inventive step on the basis of what was known in Australia. There is simply no evidence from the applicant as to what the practice was in Australia.
Therefore, on the evidence which I have before me (i.e. the evidence from the opponent as to what would have been done in Australia and the evidence from the applicant of what would have been done in America), it seems clear that, in Australia, a person skilled in the art, when faced with the problem of an undesirable loss of opacity, would, as a matter of routine, have taken the well-known step of placing a layer of plastic material on the back surface of a paper label.
As a result, independent claims 1 and 16 lack an inventive step in light of the common general knowledge.
As to the dependent claims, from the evidence before me I am satisfied that the following were relevant common general knowledge in the art in Australia at the priority date:
(f)attaching the plastic under layer to the outer layer using adhesive or by directly extruding the plastic under layer onto the outer layer;
(g)the under layer being white;
(h)the under layer carrying a layer of pressure sensitive adhesive to allow it to be attached to the outer surface of a container, such as a wine bottle; and
(i)the outer layer carrying printing.
Therefore, it follows that dependent claims 2–7, 9, 15, 18 and 19 lack an inventive step in light of the common general knowledge in the art in Australia. These claims define nothing more than the common general knowledge.
It also follows that claim 20, which defines the label of claim 16 when attached to a container, lacks an inventive step in light of the common general knowledge.
However, on the evidence before me, I cannot say that the features of claims 8, 10–14 and 17 are common general knowledge.
There is no discussion in the evidence of applying glue to the label and letting it dry in situ when the label is on the container. There is only discussion of pressure sensitive adhesive. Therefore, I do not have the evidence to conclude that claim 8 lacks an inventive step. Similarly for claims 10 and 11, while there is discussion of polypropylene being used for the plastic film, there is no evidence that the use of biaxial polyethylene, biaxial polypropylene, non-oriented polypropylene or PET as an under layer is common general knowledge. Additionally, the use of a biaxial polypropylene plastic having an opaqueness greater than 0.54 when measured by a Tobias densitometer, the use of a five layer extruded film as the under layer, or the use of a cavitated inner core in the under layer have not been established as being common general knowledge. Therefore, I cannot find claims 12, 13 and 14 as lacking an inventive step. Finally, there is no disclosure of a label where the under layer is the innermost layer of the label. In the evidence supplied, it is common general knowledge to have other layers “underneath” the under layer prior to its use. The arrangement defined in claim 17 (which seems to be limited to a label prior to its use) does not seem to lack an inventive step.
Inventive Step – Common General Knowledge + Piece(s) of Prior Art Information
The opponent has not established a lack of inventive step based upon the combination of the common general knowledge identified above with one or more pieces of prior art information. They have not provided any evidence as to whether the person skilled in the art would have ascertained, understood and regarded as relevant the patent specifications they identified in their evidence. Furthermore, there seemed to be no submissions as to whether the items exhibited in the evidence in support were prior art information falling within the terms of section 7(3) of the Patents Act and whether they would have been ascertained, understood and regarded as relevant.
It follows that I cannot decide a lack of inventive step on this ground
CONCLUSION
I have found that, on the evidence provided, claims 1–7, 9, 15, 16, 18–20 lack an inventive step in light of the common general knowledge in Australia.
However, the opposition does not succeed on the grounds that that the claimed invention was not a manner of manufacture, lacked novelty and did not satisfy section 40(2) or (3) of the Act. In addition, the evidence filed does not show a lack of inventiveness for claims 8, 10–14 and 17. However, it must be noted that this decision is based on an undertaking by the applicant that they would make certain amendments to the claims.
As the specification clearly contains patentable subject matter in light of the evidence, I allow the applicant 60 days from the date of this decision in which to propose suitable amendments to overcome the above findings. If suitable amendments are not proposed within that time, I will refuse the application.
COSTS
It is a general principle in matters such as these that costs follow the event, and I see no reason to depart from this practice. I have found that the opponent has been partly successful in respect of the obviousness of the claims. I therefore award costs against the applicant according to Schedule 8.
GREG POWELL
Delegate of the Commissioner of Patents16 September 2008
Patent attorneys for the applicant : Collison & Co, Adelaide
Patent attorneys for the opponent : Madderns, Adelaide
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