Machinery Developments Limited v Sealed Air Corporation - [2003] APO 22

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No 686608 in the name of MACHINERY DEVELOPMENTS LIMITED

Title: Packaging Apparatus

Action: Opposition under Section 59 of the Patents Act 1990 by SEALED AIR CORPORATION

Decision: Issued 23 May 2003.
Abstract
The opposition is partially successful. The section 40 grounds were not made out. The claims are entitled to the earliest priority date.
Several of the apparatus claims were found to lack novelty and an inventive step in light of a previous patent application by the same applicant and inventor. The method claims were found to be novel and inventive. The ground of manner of manufacture was not made out.
The applicant was given 60 days to overcome these deficiencies in the application.
Costs were awarded against the applicant.

PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 686608 by MACHINERY DEVELOPMENTS CORPORATION and opposition thereto by SEALED AIR CORPORATION

BACKGROUND

Patent application 63872/94 was filed as PCT application PCT/NZ94/00024 with international filing date 24 March 1994. It claims priority from NZ 247267, filed on 26 March 1993. The application was advertised accepted on 12 February 1998 with serial number 686608.
A notice of opposition was lodged on 12 May 1998. The evidentiary stages were completed on 20 June 2002. The matter was set for a hearing in Canberra on 3 December 2002. At the hearing, the applicant was represented by Mr David Catterns QC, instructed by Mr John Forster, a patent attorney from Baldwin Shelston Waters, and Mr Paul Zawa, a solicitor from Allens Arthur Robinson. The opponent was represented by Mr Glenn McGowan of Counsel, instructed by Dr Brett Lunn of F B Rice & Co.
STATEMENT OF GROUNDS AND PARTICULARS
The statement of grounds and particulars alleges that the invention as claimed is not a manner of manufacture, is not novel, does not possess an inventive step, and that the claims are neither clear nor fairly based on either the basic document or on what is described in the specification.
THE SPECIFICATION
The invention relates to an apparatus for producing packages such as plastic bags. The apparatus is able to vary the length of each bag to suit the dimensions of the product to be packaged. The invention finds particular application in the area of bag making machines installed at a workstation where goods are packaged at the same time as the bags are made or dispensed. A major area where it is envisaged that the invention will be used is in packaging cuts of meat, wherein each individual cut has different dimensions from the others. A principle advantage is in minimising wastage of packaging material.
The inventor, Richard Archer Melville, provided an insight into the background to his invention in his evidence in answer. The inventor had already developed an earlier machine (known in the industry as Bagger I) which allowed the user to adjust the bag length to suit the length of individual cuts of meat. It also opened the bags and held them open for the operator. However, it took up more floor space than some packaging plants were willing to use, and it did not hold the open bags in a very convenient location for the user. The present invention (Bagger II) overcomes these deficiencies. Bagger II does not have the bag opening means (which many users were disabling anyway), providing a smaller apparatus without losing any significant functionality. In addition, this allows the machines to be installed overhead, and holds the unopened bags in a more convenient location.
It is somewhat surprising given this history that the discussion under the "Background of the Invention" heading in the complete specification does not acknowledge Bagger I. It is clearly a highly relevant piece of prior art which was well known to the applicant. Instead, the specification gives the impression that Bagger II is a conceptually new invention, rather than an improvement over an earlier invention by the same inventor. The specification acknowledges some other prior art devices in which the bag length can be varied. However, these apparatuses differ markedly from Bagger I, and do not facilitate fast changes of bag length.
The specification as accepted includes a consistory statement that recites claims 1 and 14 as accepted (the two independent claims). These accepted claims read as follows:
1. Apparatus for producing packaging elements of individually variable length from a stock of flexible laminar packaging material in the form of a tube in successive cycles in each of which a single packaging element is produced by feeding a leading portion of the packaging material from the stock and separating such leading portion from the stock, the apparatus being provided with feed means for feeding each said leading portion to a location where it hangs suspended without being opened and with one end unsealed until such leading portion is removed from said location, control means which can be set to cause the operation of the feed means to be interrupted after each said leading portion has been fed to said location so that the timing of each cycle can be controlled by an operator, and length determining means capable of being adjusted by the operator to cause the feed means to vary the length of each said leading portion so that the length of each packaging element can be selected by the operator to suit the length of an article to be packaged therein.
14. A method of producing packaging elements of individually variable length from a stock of flexible laminar packaging material in the form of a tube including the steps of providing apparatus which produces the packaging elements in successive cycles in each of which a single packaging element is produced by feeding a leading portion of the packaging material from the stock and separating such leading portion from the stock, the apparatus being provided with feed means which are caused to feed said leading portions to a location where each such leading portion is suspended without being opened and with one end unsealed until such leading portion is removed from said location, control means which are set to cause the operation of the feed means to be interrupted after each said leading portion has been fed to said location so that the timing of each cycle is controlled by an operator, and length determining means capable of being adjusted by the operator to cause the feed means to vary the length of each said leading portion so that the length of each packaging element can be selected by the operator to suit the length of an article to be packaged therein.
The specification provides definitions for some of the terms in the claims. On page 4, the term "operator" is discussed; it "may either be a human operator or a device (or combination of devices)". On page 5a, the term "separate" is discussed; it includes severing, scoring or perforating the film or tube, or otherwise creating a line of weakness. The specification then goes into more detailed embodiments of the invention, giving several examples of the feed means, the control means, and the length determining means. It contains three pages of drawings, and the specification describes in detail the embodiments that these drawings illustrate. It ends with 26 claims. Claims 1 and 14 are independent claims, reproduced above. Claims 13 and 26 are omnibus claims. The remainder are dependent claims.
EVIDENCE
The evidence in support consists of statutory declarations from William Terrence Furnival (who has worked in the area of bag making machines for about 30 years), Richard B Frost (an Associate Professor in the School of Mechanical and Manufacturing Technology at the University of New South Wales), and Ronald Bentley Ward (a lecturer in the School of Mechanical Engineering at the University of Technology, Sydney), together with copies of the patent specifications US 4 674 268 and AU 23269/92. These three declarants appear to be independent of the opponent. These three declarations are virtually word-for-word in agreement with one another.
The evidence in answer consists of two statutory declarations from Richard Archer Melville (the inventor and managing director of the applicant company), a statutory declaration from Alexander Graham (a chartered professional engineer who has been an engineering consultant to the meat processing industry for over 20 years), and a statutory declaration by Barry Hill (from the School of Engineering, University of Newcastle). The last two declarants appear to be independent of the applicant.
The evidence in reply consists of further statutory declarations from Richard B Frost and Ronald Bentley Ward, and a copy of the applicant's response to the first examination report.
Applicant's informally proposed amendments
In his first declaration, the inventor stated that he was willing to amend claims 1 and 14, and attached proposed amendments to his declaration. Essentially, these proposed amendments incorporated the features of claims 3 and 5 into claim 1, and the features of claims 16 and 18 into claim 14. In his second declaration, the inventor withdrew these informally proposed amendments. Nevertheless, I will comment briefly on these amendments below.
SUBMISSIONS
Both parties' submissions are reproduced, where appropriate, in the decision below.
DECISION
Comments on the construction of the claims
The apparatus defined by claim 1 has three main features, a feed means, a control means, and a length determining means. It is plain that the preamble of claim 1 (the clause following "Apparatus for") does not of itself limit the apparatus to one possessing all of the features in that clause (Thurston Catton's Application (1978) AOJP 3666). Therefore, for example, the claimed apparatus is not limited, at least by virtue of the preamble, to one in which the apparatus itself separates the leading portion from the stock. In the definition of the feed means in claim 1, the word "for" similarly does not limit the apparatus defined by claim 1 to one in which the leading portion is fed to a location where it hangs suspended without being opened and with one end unsealed until it is removed from the location. It simply limits the feed means to being one which is intrinsically capable of feeding the leading portion in such a manner to such a location. Whether in any particular realisation of the apparatus the leading portion is actually fed to such a location would depend on other aspects of the apparatus. In a similar vein, the phrase "without being opened" in claim 1 does not limit the apparatus to one in which the bag does not get opened. Obviously, either end of the bag may remain unsealed. The claims incorporate the definition of "operator" given in the body of the specification. However, claim 1 does not define the apparatus in combination with any particular operator. It simply defines an apparatus in which the timing of each cycle and the length of each package are capable of being adjusted by an operator.
Regarding the phrase "hangs suspended", the opponent submitted that this implies that "absolute freedom is required of all restraints below the point from which suspension is secured". I note that the Macquarie Dictionary defines "hang" as "… to fasten or attach a thing so that it is supported only from above; suspend", and "suspend" as (inter alia) "… to hang by attachment to something above". (Similar definitions were tendered at the hearing.) The phrase "hangs suspended" seems to define a leading portion which is supported from above, and only from above, and to require freedom of support from below. However, this is not the same as requiring freedom from all restraint below the point of suspension.
In contrast, the method claim 14 explicitly includes the step of separating the leading portion from the stock. Claim 14 is not limited to a particular integer which performs this step. At the hearing, it was pointed out that claim 14 refers only to the leading portion being "suspended", and does not mention "hangs". The Macquarie dictionary additionally defines "suspend" as "to cause to cease, or bring to a stop or stay ". Thus claim 14 could be construed as not requiring the leading portion to be hanging at all. However, I note that claim 22 as accepted reads as follows:
22. A method according to claim 21, in which said leading portion is suspended from said sealed end in said location.
It is clear that, in this claim, the word "suspended" is used in the same sense as hanging. (This is vastly preferable to a construction in terms of the leading portion being suspended or stopped "from said sealed end".) Therefore I am satisfied that in claim 14 "suspended" implies hanging. The use of the expression "are caused" in the definition of the feed means implies that the leading portion is actually fed to the claimed location, and that the bag is not opened, at least until it has been removed from the location where it is suspended. Therefore claim 14 has a somewhat narrower scope than claim 1.
Priority date of the accepted claims
Under section 43 and regulation 3.12, the priority date of the accepted claims will be the filing date of the priority document NZ 247267, provided that the claims are fairly based on matter disclosed in this document. This is subject, relevantly, to regulation 3.14.
The High Court, in Kimberley-Clark (Aust) Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 (15 February 2001), endorsed the test for fair basis as expressed by Barwick CJ in Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236 at 240:
The question whether the claim is fairly based is not to be resolved, in my opinion, by considering whether a monopoly in the product would be an undue reward for the disclosure. Rather, the question is a narrow one, namely whether the claim to the product ... as expressed, travels beyond the matter disclosed in the specification.
Other decisions have used expressions such as "real and reasonably clear disclosure" (e.g. Rehm v Websters 11 IPR 289) and whether "the claim is broader than the invention as described in the specification" (e.g. ICI Chemicals & Polymers v Lubrizol Corp Inc (2000) 106 FCR 214, 49 IPR 513).
Mr McGowan made several submissions in relation to the law of fair basis. One submission related to Mullard Radio Valve v Philco (1936) 53 RPC 323 at 346-7. This decision pre-dates the presently enacted statutory ground of fair basis. The Full Court of the Federal Court in CCOM Pty Ltd v Jiejing Pty Ltd (1994) 122 ALR 417, (1994) AIPC 91-079, (1994) 51 FCR 260 noted that "in applying Mullard to what since 1952 are express statutory provisions, some caution is needed lest the history swamp the new text". In any event, I do not believe that these submissions advanced the issue significantly beyond the tests outlined in the cases cited above.
Another submission related to whether the test for fair basis on "matter disclosed" in a priority document differs from the test for fair basis on "the matter described" in the specification. This point was discussed, although not settled, in Rehm v Websters (supra). In The International Paint Company Limited's Application (1982) RPC 247, on similarly worded UK legislation, it was held that the words "described" and "disclosed" in the UK Patents Act 1949 meant precisely the same thing in relation to a document which was being considered as a whole. This approach was followed in a decision of a delegate of the Commissioner in Jarvis v Doman [1985] APO 23 (18 September 1985); 6 IPR 36; 1986 AIPC 90-281. This seems to address this submission.
Another submission relied on the House of Lords decision Biogen v Medeva (1996) 36 IPR 438. In American Telephone and Telegraph Company v Krone Aktiengesellshaft [1997] APO 31 (26 June 1997); 38 IPR 582, the delegate of the Commissioner said of this decision that it "recognises that in a new and largely unexplored field the discovery of one way of achieving a highly desirable goal does not justify a monopoly of every way of doing it … However the present claims are not of this character. The technology applied is well understood in the art …". The same considerations apply to the present claims, and the Biogen v Medeva is not appropriate in the present case.
In other submissions, Mr McGowan asserted that:
· the test for fair basis for combination patents is stricter than that for other types of patents, and that it is not sufficient simply to find all of the features of the combination disclosed in either the body of the specification or in the basic application in order to establish fair basis. Instead, the features must be found in the particular combination claimed, and that
· the feature of the stock hanging suspended was the "central inventive concept" of the invention, and that this was admitted by the applicant in the response to the first report. However, this feature was not claimed in the application as originally filed, nor discussed in any great detail in the accepted application.
I do not find either of these approaches persuasive. No decisions were cited to support these arguments, and they appear to require more than what is required from the decisions cited above.
The main point of contention regarding entitlement to the claimed priority date was whether the basic application included a sufficient disclosure of the feature of the leading portion hanging suspended. The basic application NZ 247267 relates to (per page 2 lines 20 to 26) an:
apparatus for forming discrete packages of variable length from a stock of flexible laminar packaging material, the apparatus comprising feed means which can be actuated to feed a flat tube formed from the stock past a cut-off means arranged to effect a cut across the tube so that a portion thereof is detached, and programmable means for determining the length of the tube which is fed past the cut-off means so that the length of the portion which is cut-off can be readily varied.
The feed means feeds the bag stock in successive cycles, between each of which the feed means is interrupted (for example, the paragraph at page 3 lines 11 to 25). The feed means feeds a portion of the packaging material from the roll 12 and separates it from the stock using the cutting means (located on head 52). Thus the basic application discloses an apparatus that is suitable for the purpose identified in the preamble of claim 1.
Figure 1 of the basic application illustrates the packaging material 14 exiting the opening of the machine 17. It also refers to the apparatus being mounted in an overhead configuration (from pages 6 to 8):
When the machine is positioned overhead, as described below, the bag hangs down from the assembly 26. This could cause the bag to slip out of the assembly 26 under its own weight. … One of the advantages of the machine shown in the drawing is that it is compact and can be mounted overhead so that it takes up less floor space in a packaging plant. In this case, the machine can be mounted with the face 70 of the cabinet horizontally disposed and facing downwards. The bags are thus fed downwardly out of the opening 27.
Figure 1 does not include a face labelled with the reference numeral 70 or an opening labelled with the reference numeral 27. However, it is reasonably clear from the description that the "opening 27" is the point in figure 1 where the bag labelled 14 emerges from the machine (this is the only opening from which the bags are fed from the machine). As this embodiment describes the bags being fed downwardly from the opening 27, it is reasonable to conclude that the overhead configuration that is being described in this portion of the specification consists of the machine disclosed in figure 1 rotated clockwise through 90 degrees. As such, in this configuration, the bag 14 emerging from the opening would be expected to hang from the opening until removed from the machine. Therefore the bag will hang "down" from the machine when positioned in this overhead configuration, and the bag will not be supported other than from the opening of the machine (thus leaving it liable to slipping out under its own weight). There is no disclosure in the basic application of any apparatus for opening the bag. Page 2 lines 28 to 31 refers to the bag sealing means "for sealing the cut-off portion along a line adjacent the cut". This is a disclosure of the bag being sealed on one end, equivalent to the requirement of "with one end unsealed" of accepted claim 1. Therefore the feed means is capable of feeding the bags to a location where they hang suspended without being opened and with one end unsealed. When the apparatus is in the overhead configuration, the feed means will actually feed the leading portion to this location.

The basic document refers to a "programmable means for determining the length of the tube which is fed past the cut-off means so that the length of the portion which is cut-off can be readily varied". This operates in the same manner as the length determining means of the accepted claims. There is also disclosed a control means that interrupts the feed means. In conclusion, I find that there is a real and reasonably clear disclosure of the invention as claimed in claim 1 of the accepted application in the basic application.
The other independent claim, claim 14, is a method claim. The basic application did not explicitly disclose a method, only an apparatus. However, in Farbenfabriken Bayer A.G. (Zirngibl's) Application [1973] RPC 698 it was held that if an apparatus described in the basic document would operate according to the method claimed in the complete specification, the claims would be entitled to the earlier priority date. Claim 14 reproduces the features of the apparatus of claim 1 almost exactly (as was conceded by Mr McGowan). This will therefore operate according to the method of claim 14. Hence I find that there is a real and reasonably clear disclosure of the features of the method claim 14.
The effect of reg 3.14 and s 114 was considered in Grove Hill Pty Ltd v Great Western Corporation Pty Ltd 55 IPR 257, in which Dowsett J commented:
Section 114 operates where a claim is based upon matter which was disclosed as the result of amending the specification. Where, as here, all of the matter upon which the claims are based was disclosed in the provisional application, it cannot be asserted that any matter upon which a claim depends was disclosed as a result of amendment to the specification in the complete application in question. Section 114 has no relevance for present purposes. (original emphasis)
This applies to the present situation. In any event, the specification as originally filed contained, inter alia, all of the details that were present in the basic application, plus an illustration in figure 3 of the apparatus mounted in the overhead configuration with the plastic bag hanging downwardly from it. Hence I find that reg 3.14 does not operate to provide a later priority date. The opponent did not specifically direct any arguments towards the features of the appended claims. I find that claims 1 to 26 are entitled to the claimed priority date of 26 March 1993.
NOVELTY
The test for lack of novelty is the "reverse infringement" test as expounded in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at 235. Essentially, if a piece of prior art information discloses each and every essential feature of a claim, that claim will not be novel. The pieces of prior art information relied on by the opponent are discussed below.
US patent 4674268 ("Gavronsky")
Gavronsky discloses an apparatus for forming foam filled cushions which are used for packaging purposes. The lengths of the packages can be varied by using a "means for selectively varying the predetermined incremental length of plastic tubing advanced from the stock supply" (from the sentence bridging columns 7 and 8). The apparatus works in successive cycles, in each of which a bag is drawn through the machine, formed, and then severed from the stock (see for example claim 1 of Gavronsky). The apparatus contains a feed means consisting of rollers 11, 12, 13 and 14 and advancement belts 15, driven by motor 18. The feed means of Gavronsky feeds the predetermined incremental length of the bag to a location at which it hangs suspended, for filling with foam (illustrated in figure 1). Figure 3 of Gavronsky illustrates the bag hanging with one end unsealed (the trailing end). However, the bag is opened for filling at this stage. By the time the filled bag is ready for removal, it has been closed, and both ends have been sealed.
Therefore the feed means, as arranged in the apparatus of Gavronsky, does not "feed said leading portions to a location where each such leading portion is suspended without being opened and with one end unsealed until such leading portion is removed from said location". Hence Gavronsky does not anticipate the method of claim 14. However, the feed means of Gavronsky appears to be intrinsically capable of meeting the requirements of the feed means of claim 1. I accept the submissions of Mr McGowan on this point, which were not rebutted by the applicant.
The length determining means of the opposed claim 1 is capable of adjusting the length of "each packaging element" (emphasis added), which implies that each bag length can be individually varied. Gavronsky discloses a "means for selectively varying the predetermined incremental length of plastic tubing advanced from the stock supply", but does not provide any further details regarding this feature. In particular, Gavronsky does not make it clear that the apparatus will be capable of varying each bag length individually. The declarations filed in the evidence provide contrasting views as to whether Gavronsky will be capable of achieving the claimed result. The three declarants for the opponent (e.g. Frost at paragraph 13) notes that Gavronsky:
does not provide a detailed description of the mentioned "means for selectively varying the predetermined incremental length of plastic tubing advanced from the stock supply" … The specification at Column 8, lines 15-25 does indicate that this could be accomplished mechanically or through use of automated means such as computer or microprocessor or equivalent devices … shaft encoders as were well known in 1987 would have been immediately recognised by any person having any interest in bag-making machinery as being eminently suitable for this purpose of allowing selective variation of the predetermined incremental length of plastic tubing advanced from the stock supply.
However, Graham (for the applicant) asserts at paragraph 19:
Although [Gavronsky] refers to a means for selectively varying the predetermined incremental length of plastic tubing advanced from the stock supply, it is apparent that this would typically be done between production runs of the machine … and that [Gavronsky] is not designed for producing bags of varying length on a bag to bag basis.
This evidence does not establish that, in implementing Gavronsky, a person skilled in the art would inevitably select a shaft encoder or similar device that allowed selection of bag length on an individual basis, only that they could. It appears to be at least as likely that they would select a length determining means that would allow for variation of bag length only between production runs. This is not enough to anticipate the claimed invention. Following General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1972) RPC 457 at 485-6, as there is no clear and unmistakable direction to anticipate the apparatus of claim 1, this claim is novel in light of Gavronsky. The appended claims are likewise novel.
Australian patent application AU 23269/92 ("Bagger I")
Bagger I has been discussed briefly above already. The Bagger I specification discloses a feed means comprising drive rollers 24, 25 etc which are arranged so as to feed the bag stock along the substantially horizontal belt 17. The opponent's declarants (e.g. Frost at paragraph 26) assert that removal of this belt would cause the leading portion of the tube to hang downwardly. Although Hill for the applicant asserts that removal of the belt will not result in the apparatus of claim 1, he does not specifically contradict this statement by Frost. I am satisfied that the feed means of Bagger I is intrinsically capable of feeding the bag to a location where it will hang suspended without being opened and with one end unsealed.
Bagger I uses a length determining means that can be adjusted by an operator (namely, by movement of the proximity sensor 46). This causes the feed means to cease the feeding of the bag stock, thus varying the length of each leading portion. The length of each packaging element can thus be selected to suit the length of an article to be packaged. The applicant's evidence indicates that, in the Bagger I apparatus, the length determining means functions quite differently from the length determining means used in the embodiments of the opposed application. However, the length determining means as claimed in claim 1 is required only to be capable of adjustment by the operator (which the Bagger I length determining means is ‑ this is the whole point of the length determining means in Bagger I), that this causes the feed means to vary the length of each leading portion (this much is clear from the Bagger I specification), and that the operator will be able to select the length of the bag to suit the length of the article to be packaged (which again is clear from the specification as well as from the evidence). Therefore Bagger I uses a length determining means with all of the features as claimed in the opposed claim 1. The differences the applicant alluded to are not in respect of claimed limitations, and are thus not relevant to the question of novelty.
The Bagger I specification does not identify any feature specifically as a "control means". The feed means of Bagger I is interrupted when the leading edge reaches the proximity sensor 46. This implicitly requires Bagger I to have some kind of means which causes the operation of the feed means to be interrupted when the leading portion reaches the sensor 46. The Graham declaration at paragraph 22 states that the sensor 46 is part of the length determining means of Bagger I, and not part of the control means. However, at paragraph 21, Graham states that "the proximity sensor 46 is used to detect the presence of the leading edge of the tube and to stop the tube feed when the leading edge reaches a predetermined position set by the operator to determine the length of the next bag." This statement seems to accept that there is a control means of some kind that interrupts the feed means, whether or not the proximity sensor itself forms part of this means. Therefore Bagger I discloses each and every feature of claim 1, and thus claim 1 lacks novelty in light of Bagger I.
Claim 14, in which the leading portion is suspended, is novel in light of Bagger I. The opponent's arguments that removal of the belt 17, or mounting Bagger I overhead, would produce this result are not persuasive. Bagger I does not contain "clear and unmistakable directions" to do either of these steps. The claims appended onto claim 14 are likewise novel. The following of the claims appended onto claim 1 also lack novelty in light of Bagger I, because their features are disclosed in the Bagger I specification:
·    Claim 2 - the kick switch 56 discloses the additional feature of this claim.
·    Claims 3 and 4 - the above discussion establishes this feature.
·    Claim 8 - Bagger I utilises cut-off and sealing means, e.g. in figure 4.
The South Burnett Meatworks in Murgon, Queensland
This alleged prior use was not pleaded in the Statement of Grounds and Particulars. It arose from statements made in the applicant's evidence in answer. The basis for this is described in paragraph 2 of the Graham declaration:
In 1995 one of my clients, the South Burnett Meatworks, Murgon, Qld., installed one of the first Machinery Developments Series II bag making machines in Australia. … The Machinery Developments Series II bag making machines are similar to that described and claimed in Australian Patent Application No. 686608
There are no other details provided. This statement on its own does not address whether this installation was available to the public. Nor does it make it clear how "similar" the "Machinery Developments Series II bag making machines" are to the invention defined in the present claim 1. Therefore the opponent has not established a prima facie case either that this installation is part of the prior art base, nor that it makes use of each and every essential feature of the opposed claims. In any event, I have already found that the priority date of the accepted claims is 26 March 1993. For this reason also, the doing of the described act in 1995 does not form part of the prior art base. Therefore this does not render the claims not novel.
Prior self-publication by the basic document or the specification as originally filed
This basis for lack of novelty was contingent on my finding that the claims are not entitled to their earliest priority date. As I have found that the priority date of the accepted claims is the filing date of the basic application, no question of prior self-publication arises.
Other comments regarding novelty
During the hearing, submissions were made by Mr McGowan on the basis of Griffin v Isaacs (1938) 12 AOJP 739. However, Mr McGowan did not address decisions such as Nicaro Holdings v Martin Engineering (1990) AIPC 90-670, Werner v Bailey Aluminium Products (1987) AIPC 90-368, and Cooper Industries Inc v Metal Manufactures Limited [1994] APO 10 (27 January 1994); 29 IPR 106; (1994) AIPC 91-051, which indicate that the Griffin v Isaacs test no longer applies.
Regarding the informally proposed amendments, as I have found claim 5 to be novel, and as the proposed amended claim 1 combines accepted claims 1, 3 and 5, I conclude that the proposed claim 1 would be novel. I note that the opponent (e.g. in the second Frost declaration at paragraph 16) does not allege that the feature of claim 5 is disclosed in Bagger I. The method claims as proposed to be amended build on accepted claim 14, and are similarly novel.
INVENTIVE STEP
Under s 7(2), an invention is taken to involve an inventive step when compared to the prior art base unless it would have been obvious to a person skilled in the art, in light of common general knowledge considered, inter alia, together with a single piece of prior art information. The onus is on an opponent to establish lack of inventive step. The standard of proof required in an opposition proceedings was recently expressed by a delegate of the Commissioner in the Patent Office decision Micromass Limited v Varian Inc [2002] APO 31 (4 September 2002) as that I should be "clearly satisfied that the patent if granted would not be valid".
The "problem-solution" approach is often used in assessing inventive step ‑ e.g. see the Patent Office decision American Home Products Corporation [1994] APO 58 (28 September 1994). In this decision, the delegate of the Commissioner expressed the test in terms of the following four questions:
1.   What is the problem confronted by the application?
2.   Can the information in the document be considered for inventive step purposes?
(a)Is it part of the prior art base?
(b)Is it reasonable to expect it to have been ascertained, understood and regarded as relevant to work in the art?
3.   What does the citation disclose? and
4.   Is the solution obvious to the person skilled in the art in the light of the disclosure of the citation?
At the hearing, and in the evidence, the "problem-solution" approach was not discussed. In particular, there were no submissions specifically directed at identifying the problem confronted by the application. However, as the present invention is aimed at solving a clearly identifiable problem, this approach finds easy application. The problem can be inferred on the basis of the specification as a whole and the surrounding facts: American Home Products Corporation (supra). The present problem is directed towards providing an apparatus for producing packages, particularly bag-like packages, in which the length of each package can quickly and easily be varied to suit the length of individual products to be packaged. This problem is consistent with the discussion in the "Background of the Invention" section in the specification, and is one that is solved by the claimed invention. I note that the claims are not limited to plastic bags, but refer to "packaging elements", which can be construed somewhat more broadly. However, it is not appropriate to broaden the statement of the problem to correspond to the breadth of the claims. This expression of the problem is not inconsistent with some statements by the opponent's declarants (e.g. Ward at paragraph 34, "if what was desired was simply a device that produced variable lengths of unopened tubular feedstock").
The alleged prior user and self-publication do not fall within the prior art base for inventive step. The only issue that needs to be addressed is lack of inventive step in light of common general knowledge when considered together with either Gavronsky or Bagger I.
Gavronsky
Gavronsky is directed towards an apparatus for producing packaging elements consisting of foam filled plastic bags. It is not directed towards the production of empty plastic bags into which objects can be packaged. The specification is entitled "Apparatus and method for forming foam cushions for packaging purposes". There is no discussion in the Gavronsky specification of the foam filling mechanism being deactivated and the empty bags being used for general packaging purposes. In light of the problem expressed above, I have some hesitancy in concluding that a person skilled in the art, in seeking to solve the identified problem, could reasonably be expected to have regarded Gavronsky as relevant. It is at least as reasonable to expect that the person skilled in the art, having ascertained this document, would have regarded it as relating to a different type of packaging element altogether, and not relevant to creating unopened plastic bags of variable length.
The disclosure of the Gavronsky patent, and the relevant evidence, has already been considered above in the discussion of novelty. It was found that Gavronsky does not disclose a length determining means that allowed the operator to vary the length of each package. The opponent's argument was basically that provision of such a means would have been obvious.
Essentially, claim 1 will lack an inventive step in light of Gavronsky if:
·    length determining means such as shaft encoders were common general knowledge,
·    it would have been obvious for a person skilled in the art, in solving the identified problem, to use such length determining means in the Gavronsky apparatus, and
·    any problems involved in using this length determining means would be easily solved by anyone skilled in the art (Tetra Molectric Ltd v Japan Imports Ltd (1976) RPC 541 at 581).
Regarding the first point, the evidence discussed above included three declarants for the opponent stating that devices such as shaft encoders were well-known in 1987. The applicant does not appear to have challenged this statement. Hence I am satisfied that such devices were part of the common general knowledge at the relevant time.
Regarding the second point, the test for obviousness involves concepts such as "a matter of routine" (Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 286) and "directly be led as a matter of course" (Olin Mathieson v Biorex (1970) RPC 157 at 187). The opponent has not led any evidence as to what sorts of things would constitute a matter of routine in the present industry. Instead, the declarants simply state that the substitution of the new length determining means would have been obvious. This evidence is not wholly satisfactory. It is certainly conceivable that a person skilled in the art, in attempting to produce a machine that produces packages of variable length, would utilise a well-known device that enables individual bag lengths to be selected. However, whether it would have been a matter of routine to utilise such a device in the Gavronsky apparatus may be a different story. As mentioned earlier, Graham for the applicant stated that the Gavronsky apparatus is not designed for producing bags of an individually variable length. It is not clear whether this implies that simply using a shaft encoder or similar device would overcome this problem, or whether it instead implies that further re-designing would be needed. This gives rise to some doubt as to whether this step would be no more than a matter of routine in a device such as the Gavronsky apparatus. Graham's evidence could be an indication of the presence of some additional problems or that would be faced when using devices such as shaft encoders in Gavronsky. The opponent has failed to lead any evidence in reply to Graham's statements. In light of all of this, I am unable to conclude that I am "clearly satisfied that the patent if granted would not be valid" in terms of lacking an inventive step over Gavronsky (Micromass Limited v Varian Inc supra). The remainder of the claims are inventive over Gavronsky for similar reasons.
Bagger I

This document is clearly one that could have been ascertained, understood, and regarded as relevant. It is directly concerned with the same problem being addressed by the present invention, was freely available before the priority date of the present application, and could have been readily found by a person skilled in the art by doing a straightforward search of patent literature.
The disclosure of this citation has been considered above. Claims 1 to 4 and 8 were found to lack novelty in light of Bagger I. These claims also lack an inventive step in light of Bagger I. Regarding the appended claims, the opponent's declarants have provided detailed comments, and the applicant's declarants have not provided very much evidence in answer to this. As such, I consider the opponent's evidence to be relatively weighty. My conclusions regarding the inventive step of the appended claims is as follows. Claim 5 - this claim includes as part of the control means a sensor that detects removal of the leading portion to cause the feed means to feed a further leading portion from the stock. The second Frost declaration says that "[i]t has long been standard for machines to be capable of operating in a repeatable manner to produce a plurality of items with each item only being produced when the preceding item has cleared the mechanism that makes or acts on the item." I accept this submission. It appears that this would have been a matter of routine, and there is no suggestion that implementation of this would give rise to any difficulties. Consequently, claim 5 lacks an inventive step.
Claims 6 and 7 - these claims state that the length determining means includes a "preselector means" and a keying device by means of which the operator can input the length of the bag. Paragraph 28 of the Frost declaration (for the opponent) identifies a shaft encoder as a simple length determining means that was commonly available prior to 1993. Paragraph 39 then asserts that inclusion of this shaft encoder would be an obvious addition, and would disclose the additional feature of claim 6. This conclusion was not disputed by the applicant's evidence. There is no evidence to indicate that use of this length determining means would be problematic in Bagger I. Therefore I find claim 6 to lack an inventive step. Frost also holds that the feature of claim 7 (the keying device) is "exceedingly common". I find that claim 7 lacks an inventive step.
Claim 10 - the opponent's declarants have concluded that this claim is obvious, but have not led any evidence to establish this. This claim relates to the use of an electronic processor capable of receiving and storing information, which is used to determine the length of the leading portion. The description of the opposed invention on page 12 refers to this feature, apparently implying that the functionality defined in claim 10 is achieved when the length adjustment is carried out by turning a knob or punching a key pad. As I have found the addition of a keying device to be obvious, and the further feature of claim 10 is simply specifying in more detail a the results of this feature, I find that claim 10 lacks an inventive step.
Claims 11 and 12 - paragraphs 44 and 45 of the Frost declaration state that the shaft encoder and keypad of the prior art will achieve the results of these claims. This evidence has not been disputed. I have found that the addition of a shaft encoder or a keypad lacks an inventive step, in relation to claims 6 and 7. Therefore claims 11 and 12, simply defining the result of the operation of these features, also lack an inventive step.
Claims 9 and 13 to 26 - the features of these claims would not be obvious. All of these claims are limited to an apparatus in which, inter alia, the leading portion is fed to a location in which it is actually hanging or suspended. The addition of this feature would not have been obvious in view of Bagger I. The opponent submitted that this feature would be provided by either removing the belt 17 of Bagger I, or by suspending Bagger I overhead, and that these modifications would be obvious. It is true that either of these steps would achieve the result of the leading portion hanging suspended. However, Graham comments that:
What is required to advance the machine described in [Bagger I] to the machine described and claimed in 686608 is not just a removal of the conveyer 17, but a total rearrangement of the way the length control for each bag is achieved and the operation of the machine such that the next bag is removed from the machine by the operator.
I find this submission to be more convincing. If the belt 17 of Bagger I were removed, and the machine were not further modified, the leading portion would simply hang into the body of the machine. The apparatus would then not be capable of producing packages as per the preamble of claim 1. The method of claim 14 would similarly not work. Therefore removal of belt 17 would need to be accompanied by several other alterations. The question then is whether the steps of removing the belt 17, and performing any and all subsequent changes, would have been no more than a matter of routine to a person skilled in the art. No evidence has been led to establish this. Therefore I find that claims 9 and 13 to 26 possess an inventive step in light of Bagger I.
Other comments on inventive step
The informally proposed amended claim 1 combines the features of accepted claims 1, 3 and 5. As these claims were found to lack an inventive step, claim 1 as proposed to be amended would also lack an inventive step. Claim 14 as proposed to be amended builds on accepted claim 14, and similarly possesses an inventive step.
SECTION 40
The clarity issues raised by the opponent were of a minor nature, and did not prevent me from construing the claims. Counsel and the declarants for the opponent criticised the clarity of some terms in the claims at some length. Many of the issues that were raised were either resolved in the declarations satisfactorily, or were addressed above in my comments relating to construction of the claims. The applicant referred to Welcome Real-Time SA v Catuity Inc 51 IPR 327, wherein Heerey J applied the reasoning of the High Court in Upper Hunter County District Hospital v Australian Chilling and Freezing Co Ltd (1968) 118 CLR 429, and concluded essentially that the possibility of two or more meanings to a claim will not necessarily render a claim unclear; uncertainty, as opposed to absence of meaning, can be resolved. Heerey J then concluded that the claims in question were clear because none of the witnesses had said they were unable to make something fall within the claims of the specification. This is similar to the present situation. The construction eventually settled on by the declarants is essentially the same as the construction that I have reached myself. Furthermore, as the opponent has successfully argued lack of novelty and inventive step, it is clear that they were, in fact, able to construe the claims quite adequately. It is therefore difficult to find for them that the claims are not capable of a clear construction.
On the question of sufficiency, the High Court stated, in Kimberly-Clark Australia Pty Ltd v Arico Trading InternationalPty Ltd (2001) ALR 460; 50 IPR 513:
The question is, will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?
This is essentially a question of fact (Universal Oil Products Co. v Monsanto Co (1973) 46 ALJR 658). The opponent has not led any evidence to establish this ground. Hence I find that the case under s 40(2)(a) has not been made out. Mr McGowan asserted, without citation, that a full description must include a discussion of advantages and, in the case of a combination patent, the interrelationships between the known integers and how they combine together to create heretofore unexpected advantages their parts alone do not have. However, later in the hearing this was toned down to that it is "highly desirable" or a "jolly good idea" that the specification identify the inventive step.
There was discussion at the hearing of Sami S Svendsen Inc v Independent Products Canada Ltd (1968) 119 CLR 156. I do not consider that this principle applies to the present case. Although the genesis of the present invention was Bagger I, I find it difficult to conclude that Bagger II is simply "facilitating the use of an old thing in the old way for the old purpose".
Fair basis has been adequately dealt with above in establishing the priority date of the accepted claims. The specification as accepted contains all of the material that was contained in the priority document. In view of the above affirmative finding of fair basis on the priority document, it follows that the accepted claims are fairly based on the matter described in the specification. One passage of the specification was discussed at some length during the hearing, allegedly being inconsistent with the invention as claimed. This section of the description discusses the advantages, in the best method of performing the invention that is illustrated in the drawings, of the feeding means being inclined at 20 degrees to the horizontal. When the machine is mounted in the overhead configuration of figure 3, this prevents the bag stock coming out of alignment with the belt assembly (page 12 line 32 to page 12 line 2):
It is in this application that the aforementioned inclination of the bag making mechanism 20 is important. If the mechanism was not inclined the leading edge of the tube 14 between the belt assembly 22 and the cutter of the mechanism 24 would tend to hang freely with an increased likelihood of being out of alignment as it approached the belt assembly 26. When the apparatus 20 is inclined the tube remains in contact with the plate 50 and is accurately guided towards the belt assembly.
This is, it was argued, the only mention in the description of the bag hanging freely (i.e. suspended), and instead of discussing advantages of the configuration, it teaches away from it, by employing the 20 degree inclination. I do not find any conflict. The location at which the bag hangs suspended is simply not the location discussed in this passage.
MANNER OF MANUFACTURE
Mr McGowan submitted that the claims were to a mere collocation of known integers which have been used in a manner and for a purpose analogous to known uses of the integers. Mr Catterns submitted that this ground had not been made out, as no evidence had been adduced to support the assertion. He also noted that Mr McGowan himself referred to the opposed application as a "combination patent" on more than one occasion.
The invention is plainly not a collocation of the type discussed in British Celanese Ltd v Courtaulds Ltd 52 RPC 171 at 193-194, as the parts of the invention interact with one another. I am of the view that the opponent's submissions on this point appear to suggest an inventive step argument, as opposed to manner of manufacture. They have been dealt with as such above. Therefore I find that this ground has not been made out.
CONCLUSION
I have determined that the claims are entitled to the claimed priority date of 26 March 1993, and that the claims are clear and fairly based on what is described in the specification. I have found that claims 1 to 4 and 8 are not novel, and that claims 1 to 8 and 10 to 12 lack an inventive step. The claims relate to a manner of manufacture.
There is clearly patentable subject matter in the specification. I allow the applicant 60 days from the date of this decision to file suitable amendments to overcome the defects in the specification. If no amendments are filed by then, subject to any appeal, I will refuse the application.
COSTS
The opponent has been partially successful, succeeding in some, but not all, grounds of opposition. The successful grounds were substantive issues. The Commissioner's usual practice in such a situation is for costs to follow the event. Both parties' submissions were consistent with this approach. Therefore I award costs against the applicant.
Michael O'Rourke
Delegate of the Commissioner of Patents
23 May 2003
Patent attorneys for the applicant : Baldwin Shelston Waters
Patent attorneys for the opponent : F B Rice & Co