Nippon Steel Corporation v BHP Steel (JLA) Pty Ltd
[2000] APO 1
•5 January 2000
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : Nos. 674783 in the name of NIPPON STEEL CORPORATION
Title: Thin cast piece and thin sheet of straight carbon steel containing large quantity of copper and tin and method of manufacturing the same
Action: Opposition under section 59 of the Patents Act by BHP STEEL (JLA) PTY LTD
Decision: Issued .
Abstract
Since the specification is not fairly based on the earlier Japanese document alleged by the opponent to be the earliest disclosure, it is entitled to its earliest claimed priority of 25 February 1994.
None of the claims are novel.
None of the claims exhibit an inventive step over what was known or used in Australia before the priority date.
There is no patentable subject matter present, application refused.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 674783 by NIPPON STEEL CORPORATION, and opposition under Section 59 by BHP STEEL (JLA) PTY LTD.
BACKGROUND
Nippon Steel Corporation [Nippon] filed Patent Application 674783 as an international application on 1st September 1994, and claimed priority from International Patent Application No. PCT/JP94/00313 made on 25 February 1994 The application was advertised accepted on 9th January 1997. BHP Steel (JLA) Pty Ltd [BHP] filed a notice of opposition on 7th April 1997 to the grant of a patent on the application. The company subsequently filed a statement of grounds and particulars on 17th April 1997. Following several extensions of time and two decisions of the delegate the various stages of filing and serving evidence were completed on 26th August 1999.
A hearing was held in Sydney on 30th and 31st August. Dr Annabelle Bennett SC of counsel and Dr Colin Bodkin of Spruson and Ferguson represented Nippon Mr David K Catterns QC of counsel and Mr Geoff Mansfield of Griffith Hack , represented BHP.
SPECIFICATION
There is some discussion of the background art in the production of thin sheet steel. Previously used methods have included making thick or thin slabs of steel by continuously casting and then cutting the steel into discrete slabs for subsequent hot or cold rolling.
This specification on the other hand describes a thin cast strip of common carbon steel that is then fit for any downstream processing as a single piece rather than being cut into discrete pieces or slabs. The strip, of the present specification, contains large amounts of copper and tin. It is usually obtained from refining scrap material, from dismantled automobiles or electric appliances, which itself contains high levels of copper and tin.
Traditionally such scrap steel material has been added to more pure steel to dilute its effect since it is difficult to remove the copper and tin from the steel melt. This material which still contains relatively high levels of copper and tin is said to be difficult to hot roll in to thin strip successfully. Surface cracking of the strip usually results. This problem is referred to in the art as "red shortness" or "hot shortness". One earlier method of overcoming this problem has been to add nickel to the steel according to a well known formula mentioned in the specification. This is costly and sometimes impractical due to the large amounts of nickel needed.
The present invention overcomes this problem of red shortness by making thin cast steel strip from this high copper and tin containing material, and rapidly cooling it to alter its primary dendrite spacing at its surface. It is then possible to hot roll this strip successfully. This overcomes the difficulties associated with the prior art of using nickel additions to overcome red shortness.
A thin cast strip with high copper and tin content, and the method of making it are claimed in 14 claims, four of which are independent. They read as follows:
1. A thin cast strip of a common carbon steel having a thickness of 0.1 to 15mm, characterized by comprising 0.3 to 10% by weight Cu and 0.03 to 0.5% by weight Sn, the primary dendrite spacing of the cast strip in its surface layer portion being in the range of from 5 to 100mm, which layer has a depth of up to about 2mm from the surface of the strip.
4. A common carbon steel sheet comprising a cold-rolled steel sheet produced by cold -rolling a thin cast strip having a thickness in the range of from 0.1 to 15mm, said thin cast strip comprising 0.3 to 10% by weight of Cu and 0.03 to 0.5% by weight of Sn and having a primary dendrite spacing of 5 to 100mm on a surface layer portion in a depth of 2mmm from the surface of the cast strip.
6. A process for producing thin cast strip of a common carbon steel having a thickness of 0.1 to 15mm, characterized by comprising of rapidly solidifying a molten steel comprising .3 to 10% by weight Cu and 0.03 to 0.5% by weight Sn, with the balance consisting of ingredients constituting a common carbon steel at a cooling rate of 1 to 104 °C/sec to a cast thin strip, which cooling rate provides an average cooling rate at the surface of the cast strip of 102 to 104 °C/sec.
10 A process for producing thin cast strip of a common carbon steel having a thickness of 0.1 to 15mm, characterized by comprising of rapidly solidifying a molten steel comprising .3 to 10% by weight Cu and 0.03 to 0.5% by weight Sn, with the balance consisting of ingredients constituting a common carbon steel at a cooling rate of 1 to 104 °C/sec to a cast thin strip, which cooling rate provides an average cooling rate at the surface of the cast strip of 102 to 104 °C/sec; and cold rolling said thin cast strip to prepare a cold rolled sheet
GROUNDS OF OPPOSITION
BHP's grounds for opposing the application are, that the claimed invention is not novel and does not involve an inventive step when compared with information available or known at the date of the present application, that the claimed invention is not a manner of manufacture and that the specification does not comply with section 40 of the Patents Act 1990.
EVIDENCE
BHP has served evidence consisting of statutory declarations and accompanying exhibits by Dr Lazar Strezov, Mr Iain Farr, Professor Alan Cramb, Ms Sherry Quinn and Mr Jonathon Wood. Dr Strezov is and Mr Farr was an employee of BHP. Professor Cramb holds an academic appointment.
Ms Quinn's and Mr Wood's evidence consists solely of declarations as to the publication date of certain non patent literature relied on by BHP in this opposition.
Nippon has served evidence consisting of statutory declarations and accompanying exhibits by Dr Roy Southin and Mr Toshiaki Mizoguchi. Mr Mizoguchi is an employee of Nippon. Dr Southin is a retired consulting metallurgist.
Additional Material
The applicant sought to rely on a USPTO re-examination report relating to the family equivalent of the opposed specification. This was filed with the Australian Patent Office after the completion of the hearing and not particularised. I considered the matter and decided that the provisions of regulation 5.11 were applicable. The regulation reads as follows:
5.11 (1) The Commissioner may inform himself or herself of a fact by reference to any document available in the Patent Office.
(2) If the Commissioner proposes to refer to a document under subregulation (1), he or she must:(a) notify the parties accordingly; and
(b) give the parties a copy of or access to the document; and
(c) give the parties an opportunity to give evidence or make representations with respect to the fact or document.
(3) In subregulation(2) “document” does not include a document filed under regulation 5.4 (“filing of statement”), 5.8 (“time for giving of evidence”) or further evidence referred to in subregulation 5.10 (4)(“conduct of proceedings to which this Chapter applies”).
The document in question is a document to which I might refer to inform myself of a fact. I therefore ensured that both parties had a copy of it. I also wrote to both parties on 22 October 1999 and informed that this was a document to which I might have regard and was going to do so. I gave them both one month to make any written response they wished to it.
Since I have given both parties the opportunity to respond to the material and they have done so; I propose to deal with it as though it were properly presented evidence.
The re-examination report states that the equivalent US claims [whose wording is not given in the report] are novel under US law in the light of 3 non patent literature documents and one patent, all of which are in evidence in this current opposition. As the opponent has correctly submitted, the proper consideration for me is to determine whether the present application complies with Australian law. The US re-examination report adds nothing to the arguments presented by the applicant at the hearing and I do not propose to consider it any further.
PRIORITY DATE
The opponent argued that although the application claimed priority from International Patent Application No. PCT/JP94/00313 made on 25 February 1994 this application could not be used to claim priority because it was not an application made in a convention country .Also since No. PCT/JP94/00313 itself claimed priority from JP 5/37164 it was not the first application made in a convention country. There was also the issue that JP 5/37164 was filed on 26 February 1993 more than twelve months before the application in suit.
On the first issue the law is quite clear, since the PCT application being relied for priority designated at least one convention country, it may properly be regarded as an application made in a convention country for priority purposes.
On the second matter it then becomes a matter of fact as to what is disclosed in JP 5/37164. If the claims of the present application are fairly based on JP 5/37164 then it is not entitled to its claimed priority.
On examination of this document it clearly overlaps the claimed ranges of both copper and tin in the claimed steel but does not disclose a tin in steel range as high as 0.5%. It also discloses cooling rates that overlap the claims but not as low as 1°C/sec. There is absolutely no disclosure of the primary dendrite spacing on the surface layer portion of the cast strip. Thus the claims of the opposed specification are not fairly based on JP 5/37164 and so they are entitled to their claimed priority date of 25 February 1994.
NOVELTY
The test for determining whether the invention lacks novelty is the " reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at page 235 where Aiken J stated:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask whether the alleged anticipation would, if the patent were valid, constitute an infringement."
Infringement occurs when "each and every one of the essential features" of the claim have been disclosed in the prior document: See Rodi and Wienenberger AG v Henry Showell Ltd (1969) RPC 367 at page 391. However, the claim will still lack novelty even if the citation does not disclose all of the features of the claim provided all essential features are disclosed: See Nicaro Holdings v Martin Engineering (1990) 16 IPR 545 and Catnic Components Ltd v Hill and SmithLtd (1982) RPC 183.
Mr Catterns submitted that any earlier documents should be construed in the light of the common general knowledge at the date of publication of the earlier documents. [Acme Bedsteads vNewlands, 58 CLR 689 at 704]
There is nothing specific in any of the declarations stating what the declarants believed to be the state of the common general knowledge at the priority date of the claims.
However there is a Japanese textbook and a number of Japanese steel standards and their American equivalents acknowledged at various places in the opposed specification which I am of the clear view are common general knowledge. (see Winner v Ammar Holdings Pty ltd (1993) 41 FCR 205,215). The Japanese textbook referred to in the original Japanese application merely recites the prior art of adding nickel to overcome red shortness. I have no problem with the concept that internationally published standards for steel, referred to in the specification, were also part of the common general knowledge in the steel making art in Australia at the priority date of the claims.
In addition to the limited common general knowledge contained in the opposed specification, I can also rely on the principle that if something is referred to a number of patent specifications it may be part of the common general knowledge.
| As a general rule: "... it is clear that individual patent specifications and their contents do not normally form part of the relevant common general knowledge .." |
Mr Farr has made it clear in his declaration that the opponent was in the habit of regularly referring to patent specifications. A number of such patents were referred to by the opponent. From the information available to me it appears that the state of the common general knowledge in Australia that I can ascertain is the following:
Increased use of scrap steel due to pressure of recycling of automobiles has resulted in significant quantities of scrap which contain high levels of tin and copper becoming available.
This steel needs treating so that it can be reused and this re-treatment gives rise to significant. problems
One of the problems is that if molten steels containing high levels of copper and tin are allowed to cool naturally, the copper and tin comes out of solution to form a low melting film at the grain boundaries. If this steel is subsequently hot rolled this film at the grain boundaries causes the rolled steel to develop cracks. This is known as red shortness or hot shortness. If nickel is added to the molten steel before casting this problem can be overcome but the cost is high.
If the steel is cooled sufficiently quickly then the copper and tin does not come out of solution and the problem of red shortness does not arise.
Twin roll continuous casting of steel is known. By its very nature this requires rapid cooling of the steel in order to ensure that although molten steel enters the rolls, solid steel leaves them. This cooling rate is sufficiently high to ensure tin and copper does not come out of solution at the grain boundaries of the steel.
On cooling steel forms a dendrite crystal structure. This structure has primary, secondary and sometimes even tertiary dendrites and the spacing of them can be measured. The way the metal is cooled affects the dendrite spacing, with faster cooling producing finer dendrite spacing.
In the light of this I will consider each of the alleged prior art documents in turn.
Japanese Patent publication J04-162943 to Nippon Steel Corporation . Published 8 June 1992
This specification is clearly directed to solving the problem of hot shortness in steels having high levels of copper and tin. Indeed it is entitled "A method of preventing cracks in the hot working of continuously cast slab". It says that slab of not more than 50mm is envisaged. It clearly discloses twin roll continuous casting. This citation clearly teaches a thin cast strip of up to 9% copper, up to 15% tin and a thickness of 10mm [see page 5 of the citation and figure 2 ] which is within the scope of claim 6. There is disclosed a formula for the cooling rate which clearly discloses the cooling rate of claim 6 of the opposed specification. Thus claim 6 is not novel in the light of this citation. Since the citation also discloses twin roll casting claims 8 and 9 are also not novel.
It discloses that the cooling rate during solidification is "inferred " from structural observation of the secondary dendrite arm spacing and does not specifically suggest the primary dendrite arm spacing of the claimed invention..
However the comments of the Court of Appeal in General Tire & Rubber Company v. FirestoneTyre & Rubber Company Limited, 1972 RPC 457 at pages 485, 486 are apposite:
"If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee's claim if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor's publication will inevitable result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated.
In my view anyone using the process of the citation, because of the cooling rate essential for twin roll continuous casting, will as an inevitable result end up with steel strip having the primary dendrite spacing between the ranges claimed by the specification in suit. Consequently none of the claims are novel in the light of this citation.
The Microstructure of Strip-Cast Low -Carbon Steels and their Response to Thermal Processing by L.T.Shiang and P.J.Wray. Metallurgical Transactions A Volume 20A, July 1989
This document discloses a relationship between cooling rates of steels and both primary and secondary dendrite spacing. The cooling rates and dendrite spacings are the same as the claims of the opposed specification as are the strip thickness and the use of twin roll strip casting. However the type of steel used does not contain significant quantities of tin or copper. There is no teaching of using this method to overcome the problem of hot shortness due to high levels of tin and copper and thus all the claims are novel in the light of this document.
Japanese Patent publication J04-289136 to Sumitomo Metal Industries Limited . Published 14 October 1992
Although this citation teaches that copper and tin containing scrap are a problem in steelmaking it has only exemplified an alloy with no tin. It has no disclosure of dendrite spacing at all and thus does not anticipate claims 1 to 5. Whilst the thickness of the sheet is within the limits of the claims [4.55mm] there is no disclosure of cooling rates. Without specific cooling rates there is no way to deduce the dendrite structure and thus the citation does not anticipate claims 6 to 14.
Direct Casting of Thin Steel sections-A Tutorial Review by D Apelian and MR Ozgu
Modelling of Casting and Welding Processes IV edited by AF Giamei and G J Abbaschian: The Minerals, Metals & materials Society, 1988.
This publication describes the development of casting thin section steel. In particular it establishes the normal range of primary dendrite spacing on thin cast steel as being between 1 and 150mm for sections from 0.2 to 40mm over a wide range of steel compositions. As it does not specifically disclose steels of high copper and tin content, all of the claims are novel in the light of it.
United States Patent 4,851,052 assigned to Nippon Steel Corporation
Published 25 July 1989
Although this publication has disclosures of steel containing copper in the claimed amount nowhere does it have any disclosures relating to steel having both copper and tin. Since all the claims in suit have at least 0.03% Sn they are all novel in the light of this disclosure.
Japanese Patent JP61-206506 by Ishikawajima-Harima Heavy Industries Company limited
Published 12 September 1986
This publication merely teaches producing steel strip from scrap using a twin-roll type continuous caster. There is no specific disclosure of copper or tin content of the steel, no teaching of strip thickness and no teaching of dendrite spacing. Consequently all the claims are novel in the light of this document.
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 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, 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 a skilled addressee.
I have already found the opponent has not proved to my satisfaction what the state of the common general knowledge was, but I have found from the documents in evidence that the limited extent of the common general knowledge in Australia at the priority date of the claims was:
Increased use of scrap steel due to pressure of recycling of automobiles has resulted in significant quantities of scrap which contain high levels of tin and copper becoming available.
This steel needs treating so that it can be reused and this re-treatment gives rise to significant. problems
One of the problems is that if molten steels containing high levels of copper and tin are allowed to cool naturally, the copper and tin comes out of solution to form a low melting film at the grain boundaries. If this steel is subsequently hot rolled this film at the grain boundaries causes the rolled steel to develop cracks. This is known as red shortness or hot shortness. If nickel is added to the melt this problem can be overcome but the cost is high.
If the steel is cooled sufficiently quickly then the copper and tin does not come out of solution and the problem of red shortness does not arise.
Twin roll continuous casting of steel is known. By its very nature this requires rapid cooling of the steel in order to ensure that although molten steel enters the rolls, solid steel leaves them. This cooling rate is sufficiently high to ensure tin and copper does not come out of solution at the grain boundaries of the steel.
On cooling steel forms a dendrite crystal structure. This structure has primary, secondary and sometimes even tertiary dendrites and the spacing of them can be measured. The way the metal is cooled affects the dendrite spacing, with faster cooling producing finer dendrite spacing.
The advance the applicant asserts that they have made is to produce thin cast steel strip containing high quantities of copper and tin that does not suffer from red shortness, without the need to add expensive alloying elements. It is well known that the problem of red shortness is caused by the copper and tin coming out of solid solution at the grain boundaries, during slow cooling, and allowing the grains to slide over one another causing tearing during hot working of the steel.
Since twin roll continuous casting is part of the common general knowledge, and by its very nature results in extremely rapid cooling, it would be obvious to anyone seeking to overcome this problem that twin roll continuous casting would both produce thin cast strip and also prevent the problem of red shortness from occurring. The applicant's specification claims a very broad range of particular cooling rates. The specification also claims the thin steel strip with a fine dendrite crystal structure resulting from this rapid cooling. Since both of these characteristics are an inevitable result of using twin roll continuous casting all of the claims lack an inventive step in the light of the common general knowledge.
MANNER OF MANUFACTURE
The opponent argued that the claims of the opposed patent were not a manner of manufacture; but were "a claimed use that is nothing but a new use of an old substance which is not a proper subject of letters patent."
In Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 40 IPR 243 the High Court expressly preserved the interpretation of this ground in Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232 at 5-6. It regarded NV Phillips Gloeilampenfabrieken vMirabella International Pty Ltd (1995) 183 CLR 655 as continuing authority (at least for new act patents) for the proposition that a claimed use that is nothing but a new use of an old substance is not a proper subject of letters patent: [see p 255]
The opponent's argument has all been that because the alleged invention is not a manner of new manufacture it is not a manner of manufacture at all. Since I have already found that a number of claims lack novelty and that none of the claims exhibit an inventive step, then in my view the real issue is inventive step and not manner of manufacture.
SECTION 40
INVENTION NOT FULLY DESCRIBED
The opponent submitted that the specification does not give the best method of performing the invention.
However since twin roll continuous casting is part of the common general knowledge, the specification in my view provides sufficient information for a skilled addressee to perform the invention.
FAIR BASIS
The Mond Nickel Rules (in Mond Nickel Company Ltd.'s Application,(1956) RPC at page 194) give guidance in determining questions of fair basis. Although originally expressed in relation to fair basis with regard to provisional or basic documents ( see the HC decision in the Hoffman-La Roche & Co. AG. V Commissioner, (1971) AOJP 819 at page 822, and (1973) RPC), they may be expressed as:
a) Is the alleged invention as claimed broadly described in the specification?
b) Is there anything in the specification which is inconsistent with the alleged invention as claimed?
c) does the claim include as a characteristic of the invention a feature as to which the specification is wholly silent?
I have already found that there is no invention in the specification as a whole there cannot be any special feature on which the claims are silent. The issue is not fair basis, but inventive step. I have already decided that all the claims and the specification as whole all lack an inventive step.
CONCLUSION
Since the claims are not fairly based on JP 5/37164 as argued by the opponent the specification is entitled to its earliest claimed priority date of 25 February 1994.
All the claims are not novel in the light of Japanese Patent Publication J04-162943.
Anyone seeking to overcome the problem of hot shortness in thin cast strip steel, without recourse to expensive alloying additions, would use twin roll continuous casting which will inevitably cool the steel rapidly enough to prevent the copper and tin coming out of solution. Consequently none of the claims exhibit an inventive step over what was part of the common general knowledge in Australia before the priority date.
I am of the clear view that the is no patentable subject matter present and thus, subject to any appeal, refuse the application.
COSTS
Both parties asked that costs should follow the event. However Mr Catterns conceded that if the opposition succeeded only on matters which relied on evidence submitted as a result of the allowance of further evidence then perhaps costs should be split accordingly.
None of this material or the US Examination report has had any effect on the outcome of this opposition. Consequently I award costs against the applicant
R.A Melvin.
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Spruson and Ferguson Sydney»
Patent attorneys for the opponent : Griffith Hack Melbourne
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