Nippon Steel Corporation v BHP Steel (JLA) Pty Ltd
[1999] APO 69
•28 October 1999
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 675388 in the name of Nippon Steel Corporation
Title: Method of Production of thin strip slab.
Action: Opposition under section 59 by BHP Steel (JLA) Pty Ltd
Decision: Issued .
Abstract
The specification is directed to a manner of manufacture as it is a true combination.
The specification is entitled to its priority date as claimed.
Although the opponent has failed to establish the common general knowledge in Australia, the hearing officer was able to establish from a number of patent specifications the limited extent of the common general knowledge. Consequently all prior art documents were read in the light of this.
The specification is novel over the prior art, as although the earlier documents collectively disclose the parts of the claimed process, no single document discloses the combination.
The specification does not lack an inventive step.
The opposition succeeds on some section 40 matters.
The claims are not fairly based on the description as they fail to claim some of the features that the specification clearly indicates are essential.
Cost awarded against the applicant.
Patentable subject matter believed to be present. Applicant given 60 days to amend.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 675388 by NIPPON STEEL CORPORATION and opposition under section 59 by BHP STEEL (JLA) PTY LTD.
BACKGROUND
Nippon Steel Corporation (Nippon) filed patent application 675388, as an international application, on 24 March 1995, claiming priority of 25 March 1994 based on four earlier Japanese documents. The application was advertised accepted on 30 January 1997. BHP Steel (JLA) Pty Ltd (BHP) filed a notice of opposition on 30 April 1997 to the grant of a patent on the application. BHP subsequently filed a statement of grounds and particulars on 24 July 1997. Following a number of extensions of time and two decisions of the delegate of the commissioner the evidenciary stages were completed on 22 February 1999.
A hearing took place in Sydney on 16th and 17th August 1999. Dr Annabelle Bennett SC and Dr Colin Bodkin and Mr Andrew Lee of Spruson and Ferguson represented Nippon. Mr David K. Catterns QC and Mr Geoff Mansfield of Griffith Hack, represented BHP. Mr Tetsuya Nomoto of Nippon Steel, and Mr Udo Beucher and Mr Michael Kilpatrick of BHP and also Mr Ian Farr one of the declarants and a former employee of BHP, attended as observers.
SPECIFICATION
The applicant has proposed amendments during the opposition process. These were advertised accepted on 11 February 1999 and have not been specifically opposed. Thus the specification as it now stands describes a process for producing a thin cast strip of carbon steel by a continuous casting process in which the mould walls are moved in synchronization with the cast strip. In particular it relates to a process wherein the properties of scale formed on the cast strip are carefully controlled. In particular the prior art processes were said to result in the formation of a thick scale of FeO on the cast strip surface. When this is pickled a rough surface appears. When the strip is cold rolled, defects are formed impairing the surface properties. When the strip is press worked or bent, the scale is peeled off which impairs the surface properties of the product.
Prior art processes are known which completely inhibit scale formation by casting and cooling to 150°C in a sealed chamber containing inert gas prior to coiling. This requires a long and large cooling apparatus, resulting in poor productivity and large inert gas consumption.
The present specification describes a process which makes the scale formed very thin, and its composition controlled to make it suited to cold rolling or pressing after continuous casting. It also provides a simplified apparatus for inhibiting scale formation on the cast strip, which reduces the consumption of inert gas. The strip is then coiled above 450°C, that is higher than the prior art temperatures for coiling.
However I note that controlling scale seems to fall into two distinct categories. The first control is to form scale "excellent in the ability of being descaled" ie it is easy to remove prior to cold rolling. The second control is to form a scale "excellent in press-peeling properties" prior to press working ie it is difficult to remove.
I note that the specification teaches a different kind of inert gas to form each type of scale.
The specification ends with twelve claims of which three are independent.
The claims read as follows.
1. A process for producing a thin cast strip wherein carbon steel comprising up to 0.5% of C and less than 0.1% of Cr or Cu is cast directly into a cast strip having a thickness up to 10mm by a continuous casting machine having mould walls which move in synchronization with the cast strip, and the cast strip is coiled by a coiler, wherein said cast strip has a reduced surface scale, said process consisting of the steps of:
a)cooling the cast strip in an atmosphere comprising up to 5% oxygen and the balance an inert gas to a temperature of from 1200 to 1000°C;
b)removing the cast strip from said atmosphere
c)cooling the cast strip at a rate of at least 10°C/sec to a temperature of from 800 to 750°C; and
d) coiling the cast strip, while at a temperature of not less than 450°C.
2. The process according to claim 1 for producing thin cast strip having a scale excellent in the ability of being descaled, wherein Ar is used as the inert gas, and wherein then cooling step (c) is carried out down to a temperature of 800°C.
3. The process according to claim 1 for producing thin cast strip having a scale excellent in the ability of being descaled, wherein Ar is used as the inert gas, and wherein then cooling step (c) is carried out down to a temperature of 800°C and the coiling of step (d) is carried out while the thin cast strip is at a temperature of at least 500°C.
4. The process according to claim 1 for producing thin cast strip having a scale excellent in press peeling-resistant properties, wherein nitrogen is used as the inert gas, and wherein then cooling step (c) is carried out down to a temperature of 750°C.
5. The process according to claim 1 for producing thin cast strip having a scale excellent in press peeling-resistant properties, wherein nitrogen is used as the inert gas, and wherein then cooling step (c) is carried out down to a temperature of 750°C and the coiling of step (d) is carried out while the thin cast strip is at a temperature of from 600°C to 450°C.
6. The process according to claim 1 for producing thin cast strip having a scale excellent in press peeling-resistant properties, wherein exhaust gas having a dew point up to 40°C is used as the inert gas, and wherein then cooling step (c) is carried out down to a temperature of 750°C.
7. The process according to claim 1 for producing thin cast strip having a scale excellent in press peeling-resistant properties, wherein exhaust gas having a dew point up to 40°C is used as the inert gas, and wherein then cooling step (c) is carried out down to a temperature of 750°C, and the coiling of step (d) is carried out while the thin cast strip is at a temperature of from 600°C to 450°C.
8. A process for producing a thin cast strip wherein carbon steel comprising up to 0.5% of C and less than 0.1% of Cr or Cu is cast directly into a cast strip having a thickness up to 10mm by a continuous casting machine having mould walls which move in synchronization with the cast strip, and the cast strip is coiled by a coiler, wherein said cast strip has a reduced surface scale, said process consisting of the steps of:
d)cooling the cast strip in an atmosphere comprising up to 7% oxygen and the balance an inert gas to a temperature of from 1200 to 1000°C;
e)removing the cast strip from said atmosphere
f)cooling the cast strip at a rate of at least 10°C/sec to a temperature of from 800 to 750°C; and
d) coiling the cast strip, while at a temperature of not less than 450°C.
9. The process according to clam 8 for producing thin cast strip having a scale excellent in press peeling-resistant properties, wherein nitrogen is used as the inert gas.
10. The process according to clam 8 for producing thin cast strip having a scale excellent in press peeling-resistant properties, wherein nitrogen is used as the inert gas and the coiling of step (d) is carried out while the thin cast strip is at a temperature of from 600°C to 450°C.
11 A process for producing thin cast strip , substantially as hereinbefore described with reference to any one of the Examples but excluding the Comparative Examples.
12. Thin cast strip when produced by the process of any one of claims 1 to 11."
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 the information available or known at the date of the present application; that the claimed invention is not a manner of new manufacture and that the specification does not comply with section 40 of the Act.
EVIDENCE
BHP have served evidence consisting of statutory declarations and accompanying exhibits by Dr Massoud Assefpour, Mr Iain Farr, Professor Neil Birks, Ms Pettitt-Young and Ms Elizabeth Swann.
Mr Farr was, and Dr Assefpour still is an employee of BHP. Professor Birks holds an academic post at the University of Pittsburg in the U.S.A.
Ms Pettit-Young and Ms Swann's evidence merely consists of declarations of the publication dates of certain documents relied on by BHP in this opposition.
Dr Assefpour's evidence relates both to his own experimental work on strip casting before the priority date of the claims and to the relevance of earlier mainly patents in field of the invention. He refers to some 27 exhibits .
Mr Farr's evidence says that the opposed specification lacks inventive merit in the light of earlier patents and earlier practical work conducted by BHP. He also challenges whether the opposed specification claims too broadly. He refers to some 10 exhibits.
Professor Birks' evidence refers to a commentary prepared by him and supports Dr Assefpours declaration.
Nippon have served evidence consisting of a statutory declaration by Mr Yamamura, who is an employee of Nippon. His evidence says that he disputes some of the assertions made in the evidence in support. He refers to only four exhibits.
I will refer to the evidence and the parties' submissions where appropriate in my decision.
DECISION
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 contention is that shrouding thin cast strip with inert gas was known, and indeed admitted as such in the specification. It is also alleged that twin drum continuous casting was also known as was the mechanism of scale formation.
The opposed specification does admit all this. However the invention is said to reside in shortening the length of the inert gas shroud by removing the cast strip from the shroud at a higher temperature, then cooling it at a specified rate and coiling the strip hot. The applicant argued that the specification taught that all these process steps in combination result in reduced surface scale, which was an unexpected result. In particular the specification discusses how the scale composition of FeO was maintained and how this was prevented from turning into Fe3O4.
The opponent's declarants were of the opinion that the Nippon process would not result in reduced scale. They were of the view that the scale forming mechanism continued throughout the cooling process. Dr Assefpour in several paragraphs of his first statutory declaration indicates that he believes that the teaching of the opposed specification is erroneous. He asserts that regardless of the conditions under which scale is formed, in a controlled manner, that subsequent cooling will result in the FeO changing into Fe3 O4.
Mr Farr in his declaration also states that he believes the scale would be transformed to Fe3O4 after coiling.
In my view what the applicant has come up with is a combination of steps, some of which they themselves admitted were known, which control scale formation. I am however satisfied that the steps have a synergy with each other and thus are a true combination. Since the result is even admitted by the opponent to be unexpected it can hardly be argued that this is nothing but a new use of an old apparatus.
The specification is directed to the use of a known [or at least partially known] apparatus in a different way to achieve a new and unexpected result. This is backed up by the opponent's evidence that they do not believe it would work. Thus I find that the specification is directed to a manner of manufacture.
PRIORITY DATE
Mr Catterns submitted that two earlier Japanese patents by Nippon Steel [ applications Nos. 05-128605 and 05-128606] rather than the alleged priority documents, were in fact the first applications for this invention made in a convention country. Since they were made more than twelve months before the present application, it is not entitled to the claimed priority date of 25 March 1994. If this is the case the publication date of these documents would be before the priority date of 675388 and will render it not novel. [This date is however after the earliest claimed priority date of the application in suit.] To render the claims not novel the opponent must first demonstrate that the present application has claims fairly based on these earlier patents, and thus is not entitled to its claimed priority date.
The relevant law is well summarised in the Manual of Practice and Procedure
11.4.10
A Convention application invoking sec 94(2) may only be made within twelve months from the date of the earliest of the basic applications. Note that there is no provision in sec 94 for an applicant to disown an earlier application - when an applicant makes a Convention application all applications previously made by the applicant for the same invention(s) in Convention countries become "basic applications" regardless of whether they are nominated as such or whether priority is claimed from them.
If one of the basic applications was made outside the 12 month limit, and is not validly the subject of a request under sec 96, a claim which is fairly based on that basic has its priority date determined by reg 3.12(1)(a). This remains true even if the claim is also fairly based on a basic which is within the 12 month limit. Provided that there are two or more basic applications, both made within the 12 month period, sec 94(2) has been properly invoked.
There has been no request under section 96 to disregard an earlier basic document.
I will deal with each of the earlier documents in turn.
Japanese Patent application 05-128606.
This application was filed on 31 May 1993 [more than 12 months before the present application] and published as Japanese Patent publication 06-339752 on 13 December 1994.
This specification clearly discloses that its purpose is to reduce scale on cast steel slab in twin roll continuous casting [as in the opposed specification] by the use of an inert gas chamber or chambers, having an oxygen content the same as the opposed application. It also discloses hot coiling at not less than 500°C [cf 450°C of the opposed application]. Although lower carbon contents of the steel, than in the opposed specification, are envisaged [0.02% to 0.05% C] they do fall within the scope of the claims of the opposed specification [up to 0.5%]. What it does not disclose is removing the cast strip, from the low oxygen atmosphere, at a temperature at 1000°C or higher. Thus I am of the view that the claims of the opposed specification are not fairly based on Japanese Patent application 05-128606.
Japanese patent Application 05-128605
This application was filed on 26 May 1993 [more than 12 months before the present application] and published as Japanese patent publication 06-335706 on 6 December 1994.
This specification is directed to a method for the manufacture of hot rolled steel sheet. The process starts with casting thin ingots of not more than 10mm and cooling these in an atmosphere having a low oxygen content [as in the opposed specification] down to a temperature for the commencement of hot rolling [said to be 900°C to 1200°C]. This part is within the scope of the opposed specification. However the divergence from the opposed specification is that a hot rolling step is performed prior to coiling at not more than 650°C. The opposed specification is directed to forming a sheet with controlled scale and coiling it whilst hot so that it is suitable for subsequent cold rolling.
There were submissions at the hearing that what Nippon has claimed is merely a known process with the naturally occurring cooling step labelled with cooling rate data. There was also a submission that hot coiling was somehow an inessential integer and thus its absence in prior art documents was of no importance.
I cannot agree, as I have already explained in my comments on manner of manufacture the opposed specification is a combination and thus all integers are essential. Thus I am of the view that the claims of the opposed specification are not fairly based on Japanese Patent Application 05-128605.
Thus the specification is entitled to its claimed priority date of 25 March 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 Smith Ltd (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, 58CLR 689at 704] This is indeed the case but I have very little evidence to assist me in determining the state of common general knowledge at the publication date of each of the documents relied on for attacking the novelty of the patent in suit. Japanese Patent Publication 59-199152 is alleged to be part of the common general knowledge as it is acknowledged at page 2 of the opposed specification (see Winner v Ammar Holdings Pty ltd (1993) 41 FCR 205,215). Whilst it may be that a Japanese document referred to in the original Japanese application was well known to the Japanese applicant, I have no evidence to support the proposition that this same Japanese document, when referred to in an Australian specification, was part of common general knowledge in Australia, before the priority date of the opposed specification. Also it only discloses totally preventing scale, by cooling in an inert atmosphere down to 150°C, rather than controlling its composition by removing the steel from the inert atmosphere at 1000°C.
The declarations of Dr Assefpour and Mr Farr do not help much either. Mr Farr at paragraph 12 of his declaration states that "as at 24 February 1994, the common general knowledge of steel strip casting in Australia comprised the knowledge of all members of the Project M team, the researchers supporting same at both laboratories of BHP, and the IHI personnel who had been seconded to the pilot plant up until that time". Whilst I am quite prepared to accept that only BHP employees were able to declare to the state of the common general knowledge in Australia, the problem is that Mr Farr does not say what the extent of that knowledge was. There is also evidence from BHP that Project M was a highly confidential project within BHP. The documents produced by the team are all marked "strictly confidential". To me this is a clear indication that BHP did not consider them to be common general knowledge. Thus Mr Farr's assertion that information contained in his exhibit IWF-8 [a paper by K.M.Brown which although dated January 1994 is marked strictly confidential] is part of common general knowledge is one that cannot be supported.
Dr Assefpour's declarations are again of little assistance. He was seconded to Project M only in January 1995 [after the priority date of the specification]. His comments seem to be mainly directed to explaining why the Nippon invention will not work [going to inutility not a ground of opposition] and lack of novelty. He does not appear to address the matter of common general knowledge at all.
Professor Birks' declaration does not indicate anything about the state of the common general knowledge in Australia at all.
Consequently I have no evidence directly before me from the opponent establishing what was, or was not, part of the common general knowledge in Australia at the publication date of the respective citations except perhaps the reference to Japanese Patent Publication 59-199152. I have already explained why this is not part of the common general knowledge in Australia. In essence all I have is some kind of suggestion from Mr Farr that BHP employees were likely to know what the common general knowledge was.
In my opinion the opponent has failed to establish that any of the documents presented as evidence were part of the common general knowledge in Australia at the priority date of the claims. Thus I am unable to refer to any of them in conjunction with any of the specifications relied on for lack of novelty. [see Bausch & Lomb v Allergan Inc 24 IPR 310 ]
Although there is no direct evidence that any of the other documents referred to were part of the common general knowledge in the art at the time, I find it hard to believe that the prior art documents must be read in a total vacuum in this particular case. Steel making is after all a widespread art
I feel I must therefore 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 .." However, as was stated in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd, (1980) 144 CLR 253 at page 294: "There may be some fields of endeavour in which those who work therein study and make themselves familiar with all patent specifications as they become available for inspection in one or in many countries so that what was contained therein becomes common general knowledge in that particular trade or field of manufacture in the country in question. Examples are provided by Vidal Dyes Syndicate Ltd v Levinstein Ltd.** ** (1912) 29 RPC 245 at pages 279-280 |
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 these it appears to me that the limited state of the common general knowledge in Australia that I can ascertain is the following:
· Continuous twin roll strip casting of steel.
· Casting under some kind of inert atmosphere to reduce scale.
· Coiling strip
I will thus read the alleged anticipating specifications in the light of this information.
There was argument from counsel that two specifications [Japanese Patent Publications 05-128606 and 05-128605] each possess all of the essential integers of the claims. I have dismissed these because they were published after the priority date of 25 March 1994.
Japanese Patent Publication 59-199152 issued on Japanese Patent application No.58-073879 by Mitsubishi Heavy Industries Limited published 12 November1984.
Counsel argued that some of the integers of the claims were irrelevant to the operation of the process, or mere desiderata, or a mere parameter which occurs naturally or were a simple operational choice with no advantage established. (see Populin v HB Nominees Pty Ltd (1982) 41 ALR 471,476-477).This meant that they were non-essential integers. The opponent's point being that each of the above specifications differed only from the claimed invention in respect of non-essential integers and thus still rendered it not novel. My finding in respect of manner of manufacture leads me to believe that all the integers of the claims are essential.
Japanese Patent Publication 59-199152 confines the cast strip in a vessel charged with inert gas down to 150°C. It does not have the essential feature of removing the cast strip from the inert gas atmosphere at 1000°C and on that basis does not render the claims of the opposed specification not novel.
Japanese Patent Publication 62-077151 issued on Japanese Patent applications No. 60-218291 by Nippon Steel Corporation published 9 April 1987.
This document is directed to twin roll continuous casting of steel . It describes the use of inert gas [argon and helium are exemplified] to control the oxidation of the cast strip. What it does not specify is the temperatures and cooling rates of each of the process steps. Mr Catterns argued that they must necessarily fall within the broad requirements of the claims of the opposed specification. I disagree. I have already found that the opposed specification is to a combination in which the exact parameters of the process steps are specified. This earlier specification does not give the exact temperatures, nor the strip thickness, nor the steel composition, nor indeed the hot coiling. These are all essential features of the opposed specification. Consequently Japanese Patent Publication 62-077151 does not anticipate the claims of the opposed specification.
Japanese Patent Publication 62-050008 issued on Japanese Patent applications No. 60-189799 by Mitsubishi Heavy Industries Limited published 4 March 1987.
This document discloses only some of the steps of the opposed specification. It is mainly directed to a rolling mill designed to hot roll thin cast strip. It discloses holding the thin cast strip in what is described as a holding device, to prevent oxidation, while adjusting the temperature of the thin strip to between 800°C and 1200°C. There is no disclosure of removing the strip from the inert atmosphere, cooling and then coiling. On the contrary there is teaching to hot roll the strip, a step which the opposed specification aims to avoid altogether. There are no clear and unmistakable directions to do what the opposed specification teaches. This Mitsubishi specification does not disclose all the essential integers of the opposed specification. Consequently Japanese Patent Publication 62-050008 does not anticipate the claims of the opposed specification
Japanese Patent Publication 62-009753 issued on Japanese Patent applications No. 146800 of 1985 by Mitsubishi Heavy Industries Limited published 17 January 1987.
This publication discloses the use of an inert gas shroud, to maintain a non oxidising atmosphere round a twin roll cast thin strip, down to a temperature in the order of 850°C to 1200°C. It discloses the use of furnace exhaust gas, to provide the non oxidising atmosphere. It does not disclose the forced cooling prior to coiling of the strip, but again discloses the same hot rolling step that the opposed specification seeks to avoid. It does not disclose all the essential integers of the claims of the opposed specification and thus does not render it not novel
Japanese Patent Publication 1-166864 issued on Japanese Patent applications No. 62-327686 by Ishikawajima-Harima Heavy Industries Company Limited published 30 June.
This document discloses using an inert gas chamber to both control oxidation and cool thin cast strip. The inert gas chamber uses inert gas which is itself cooled. The inert gas chamber is said to prevent scale. The cast strip exits the chamber at about 750°C which is lower than the present invention. It does disclose hot coiling of the cast strip. The document does not disclose removing the strip from the inert gas chamber at 1000°C and forcibly cooling it. It is silent as to the strip thickness. Thus the document does not disclose all the essential features of the claimed invention and so does not render it not novel.
Australian Patent Application No AU-A-96/42235 by Ishikawajima-Harima Heavy Industries Company Limited and BHP Steel (JLA) Pty Ltd Published 14 August 1996.
This document was raised as a possible whole of contents objection. However it has a priority date of 10 February 1995 which is after the priority date of the opposed specification that I have determined and thus needs no further consideration.
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 ascertained, understood and regarded as relevant to work in the relevant art in the patent area.
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 that the limited extent of the common general knowledge in Australia at the priority date of the claims was
· Continuous twin roll strip casting of steel.
· Casting under some kind of inert atmosphere to reduce scale.
· Coiling strip
This common general knowledge alone is not sufficient to enable me to find that the claims of the opposed specification lack an inventive step. I must therefore consider the documents relied on by the opponent. They fall into two distinct groups.
The first group consists of the following Japanese patents
26240
62-69501
63-30159
63-30158
55-16752
There is evidence from Mr Farr of BHP's patent watch so I am satisfied that the opponent could reasonably be expected to have ascertained these documents. Because of the subject matter I am also satisfied that they could have reasonably be expected to have would have understood them from the English language abstract. However the translations of these Japanese documents into English, which were filed as evidence are all dated 1996. Since this is after the priority date of the claimed invention I am of the view that the opponent would not have regarded them as relevant at the priority date of the claims, otherwise why wait so long before getting them translated. I am therefore satisfied that the claims do not lack an inventive step in the light of them.
The second group consists of two English language patents. I am satisfied that the applicant could reasonably be expected to have ascertained, understood and regarded each of them as relevant to work in the relevant art in the patent area. I will deal with each of them in turn.
United States Patent 2,058,448 to C.W.Hazlett published 27 October 1936.
This document discloses continuous twin roll casting, plus the use of a reducing gas shroud up to the rolling mill. To this I may add the common general knowledge of the coiler. This disclosure still lacks step of removing the cast strip from the reducing atmosphere at 1200°C to 1000°C and the cooling rates and the step of coiling the strip above 450°C. I do not believe that a non inventive skilled addressee would come up with these process steps as a means of preventing scale in cast coiled strip, as an inevitable consequence of reading the Hazlett document. Thus it does not rob the claims of an inventive step.
Australian Patent Specification No. 600391 by John Lysaght (Australia) Limited (now BHP Steel (JLA) Pty Ltd, the opponent herein)) Published 9 August 1990
This document also discloses continuous twin roll casting, plus the use of a reducing gas shroud up to the rolling mill. To this I may add the common general knowledge of the coiler. This disclosure still lacks step of removing the cast strip from the reducing atmosphere at 1200°C to 1000°C and the cooling rates and the step of coiling the strip above 450°C. In solving the problem of reducing scale on coiled cast strip, I am not of the view that the non inventive skilled addressee would inevitably come up with these process steps as a means of solving the problem. Thus this document does not rob the claims of an inventive step.
Thus overall I find that the opposed specification does not lack an inventive step.
SECTION 40
INVENTION IS NOT FULLY DESCRIBED
The opponent submitted that the specification does not give the best method of performing the invention. In particular their declarants submitted that the invention as claimed simply will not work. They argue that the mechanism of scale formation formulated is based on incorrect scientific facts. This appears to go to only to the grounds of false suggestion or inutility [ grounds of revocation only, not grounds of opposition].
There were also some submissions that the chemical mechanism of the scale formation were not scientifically credible, in particular that some of the results presented in the figures did not clearly indicate how they were obtained.
The applicant submitted [correctly in my view] that it was not a requirement of the act that the exact scientific basis of their invention was comprehensively or even accurately explained. It is enough that the applicant teaches what to do in such a manner that a skilled addressee could follow the instructions and without invention end up with the result claimed. There is no requirement that they should be able to understand why what they have been instructed to do works. I am of the view that Nippon have shown what to do without acccurately explaining why it works. This in my view is enough. I also note that the exact scale forming chemistry is not the subject of any claims.
I therefore find that the invention is fully described and gives a best method of performance.
FAIR BASIS
| The Mond Nickel Rules (in Mond Nickel Company Ltd.'s Application, (1956) RPC 189 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 Hoffman-La Roche & Co. AG. v Commissioner, (1971) AOJP 819 at page 822, and (1973) RPC 34), 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? |
Mr Catterns submitted that the claims were not fairly based since they contained no credible teaching or instruction enabling scale of differing scaling and press peeling-resistant properties to be produced following coiling. He also submitted that there was no support in the description for certain broad ranges of parameters. I note that in this regard the amendments to the specification are very relevant.
At acceptance claim 1 only claimed that the cooling in an inert atmosphere part of the process is carried out down to 1200°C; and no particular coiling temperature was claimed. On this basis the opponent argues that there is no fair basis for cooling in the inert atmosphere down to 1000°C nor for the specific requirement to coil above 450°C.
In the specification at page 11 there is a clear disclosure of cooling in an inert atmosphere down to 1000°C. However this is only directed to using nitrogen as the inert gas. There is clear teaching in the specification at page 9 line 6 that if cooling in an inert gas atmosphere when using argon, that cooling lower than 1200°C results in a chamber that is too long. i.e. it teaches away from the 1000°C claimed.
On a fair reading of the specification as a whole [see Populin v HB Nominees Pty Ltd, (1982) 41 ALR] it is readily apparent that a feature that is clearly essential is not claimed. At many places in the specification it is clear that the scale must be no thicker than 10mm [see for example page 6 line 24, page 8 line 30 and following]. The tables of results page 20 and following all show scale thicknesses of 10mm and below for the invention and higher values for the so called comparative examples. Although the comparative examples have much higher scale thicknesses indicated, they only show only slightly changed properties. For example in Table 6, comparative example 15, shows a scale thickness well above 10mm at 17mm, but its properties are described as slightly peeled [cf no peeling of the invention]. From this it is clear to me that the restrictions in the claim, on temperature, inert atmosphere, cooling rate and coiling temperature, will not always necessarily result in a scale thickness of less than 10mm. I am therefore of the view that this is a situation where the patentee should be claiming by result and has not done so. (See No-Fume Ltd v Frank Pitchford and Co. Ltd., (1935) 52 RPC 231).
It is also apparent that the types of scale formed with different inert gases behave in a completely different fashion to one another. The specification admits that prior art processes are known which completely inhibit scale. These are very cumbersome and costly.
It seems to me that the invention does not only lie in making scale that is sufficiently thin. On a fair reading the opposed specification appears to be directed to controlling both the thickness and the nature of the scale. It appears to me that claims 1 and 8 in particular do not specify that the scale must be below 10mm. Neither do claims 1 and 8 claim that scale must be easy to descale or press peeling-resistant, either specifically or even are inherently, as a result of restricting the so called inert gas to argon, nitrogen or furnace exhaust gas.
In this regard I find that claims 1 and 8 are not fairly based. They appear to me not to fulfil part (b) of the Mond Nickel rules (supra) in that there is something in the specification which is inconsistent with the alleged invention as claimed. I also note that none of the other claims are fairly based, as they also are completely silent as to the scale thickness.
I also note that claim 1 is directed to the use of an atmosphere of up to 5% oxygen and the balance an inert gas. The specification clearly teaches that two types of scale are possible and that their properties differ markedly. There is also some discussion as to the chemical composition of the scale and how it is affected by the type of so called "inert" gas used. It seems to me, that in these circumstances, the so called inert gas is not truly inert. The only gases which are described in the specification are argon, nitrogen and exhaust gas having a particular dew point.
I am therefore of the view that any claim which includes an atmosphere containing the specified oxygen content and a gas merely described as "inert" is claiming as a characteristic of the invention a feature as to which the specification is wholly silent, namely gas other then nitrogen, argon or exhaust gas. Thus claims 1 and 8 are also not fairly based in this regard also.
I also note that if claims 1 and 8 were to be amended to include scale thickness and to restrict the inert gas to argon, nitrogen or exhaust gas then they, and the appended claims would be fairly based.
CLARITY
Mr Catterns addressed me on the clarity matters raised in the statement of grounds and particulars. I will decide on each of the terms still alleged not to be clear; (some of the terms have been removed by the amendments advertised accepted on 11 February 1999).
(a) a reduced surface scale
Initially I would have said that this term was well known in the art and referred to a scale of reduced thickness. Arguments about the exact chemical nature of the scale from the opponent have led me to consider the possibility that the term might refer to a scale that was chemically, rather than physically, reduced. My comments above about whether the so called inert gas was truly inert add to the confusion. However on a fair reading of the specification it is perfectly clear that the term reduced refers to the physical thickness of the scale and not any kind of chemical properties. On balance I find that this term is clear.
(d) scale excellent in the ability of being descaled
Whilst this term is cumbersome I am of the view that a skilled addressee would take this to mean a scale which is easy to remove. It is not therefore unclear.
(e) Scale excellent in press peeling-resistant properties
Again whilst cumbersome I am of the view that the skilled addressee would take this term to mean a scale which resists removal when subjected to pressing or bending. It is not therefore unclear.
(f) Exhaust gas having a dew point up to 40°C
The opponents own declarant, Dr Assefpour, uses the term "exhaust gas" in his declaration in a manner which suggests that it is well known. Merely defining its dew point does not render the term unclear.
CONCLUSION
I have determined that the specification is entitled to its claimed priority date of 25 March 1994. I have found that the claims are not fairly based on the description. I have found that all of the claims are now clear following the amendments of 11 February 1999. I have found that all the claims are novel. The opponent has not established to my satisfaction that any of the claims lack an inventive step.
I am of the clear view that there is patentable subject matter in the specification and I therefore allow the applicant 60 days from the date of this decision to file suitable amendments to overcome the defects in the specification.
COSTS
Both parties submitted that costs should follow the event. Mr Catterns did make submissions that if the opposition were not to succeed due to amendments made during the course of proceedings I should apportion cost. Since I have found that the opposition succeeds, there is no need for this and so I award costs against Nippon.
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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