Pechiney Rhenalu v Corus Aluminium Walzprodukte GmbH
[2003] APO 17
•10 April 2003
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 690433 in the name of PECHINEY RHENALU
Title: Product for Obtaining Welded AlMgMn Alloy Structures with Improved Mechanical Resistance
Action: Opposition by CORUS ALUMINIUM WALZPRODUKTE GmbH under Section 59 of the Patents Act 1990
Decision: Issued 10 April 2003.
Abstract
The opponent pursued the grounds of section 40/Fair basis, novelty, inventive step and manner of
manufacture. The opponent has been unsuccessful on the grounds of novelty, inventive step and
manner of manufacture.
I have found that claims 12 to 19 of the opposed application lack fair basis and do not define the
invention described.
As I consider that the defects in the opposed specification could be overcome by suitable
amendments I grant the applicant sixty days from the date of this decision to file suitable
amendments.
Both parties had submitted that costs should follow the event. Accordingly I award costs against
the applicant Pechiney Rhenalu and in favour of the opponent Corus Aluminium Walzprodukte
GmbH.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 690433 by PECHINEY RHENALU and an opposition under Section 59 of the Patents act 1990 by CORUS ALUMINIUM WALZPRODUKTE GmbH.
BACKGROUND
Pechiney Rhenalu (hereafter Pechiney) filed patent application No. 690433 on 21 February 1996 under the Patent Cooperation Treaty. The application claims convention priority from FR 95 02387 and FR 95 12065 filed in France on 24 February 1995 and 9 October 1995 respectively. The application was examined and advertised accepted on 23 April 1998. The specification was twice amended after acceptance, the allowance of the amendments being advertised accepted on 26 November 1998 and 6 June 2002 respectively.
Corus Aluminium Walzprodukte GmbH (hereafter Corus) filed a notice of opposition on 21 July 1998. Corus was previously known as Hoogovens Aluminium Walzprodukte GmbH. A statement of grounds and particulars was filed on 21 October 1998. The statement of grounds and particulars was subsequently amended and the amendment was allowed on 21 September 2001. The service of evidence in support, evidence in answer and evidence in reply was completed on 5 March 2001.
The hearing to deal with the substantive opposition was held in Canberra on 17 and 18 September 2002. Ms Shahnaz Irani, patent attorney of Spruson & Ferguson, Sydney represented the applicant. Professor Ian Polmear and Mr. Ronan Dif attended as observers for the applicant. Mr. Ray Evans, patent attorney of Phillips Ormonde & Fitzpatrick, Melbourne represented the opponent. Dr. Kevin Brown, Dr. Clive Bennett and Mr. Mark Burgess attended as observers for the opponent.
EVIDENCE
Evidence in support consists of declarations made by:
· Kevin Brown, dated 7 April 1999 and exhibits KB-1 to 3. He states that he is a field engineer employed by the opponent company. He further states that he has an extensive knowledge of the aluminium industry worldwide, including Australia. He states that he possesses university degrees in metallurgy from the University of New South Wales.
· Clive Geoffrey Bennett, dated 20 April 1999 and exhibits CB-1 to 14. He states that he is the principal consultant and director of a company providing consultancy services to Australian and overseas companies in the aluminium and magnesium industries. He further states that he possesses an Honours Engineering (metallurgical) degree from the University of Queensland and has a PhD from the Department of Mining and Metallurgical Engineering of the University of Queensland.
· Erland Bade, dated 14 May 1999 and exhibits EB-1 to 3. He states that he is the Director of Export Sales with Hoogovens Aluminium Walzprodukte GmbH and has provided record of sales of aluminium alloy to an Australian customer.
· Raymond Lewis Evans, dated 20 April 1999 (with exhibits RLE-1 to 29) and 20 May 1999 (with exhibits RLE-1 and 2) respectively. He states that he is a registered patent attorney in the firm Phillips Ormonde & Fitzpatrick and that the exhibits of copies of documents he has provided will be relied on by the opponent in the proceedings.
· Michelle M. Hedges, dated 16 April 1999 and exhibits MMH-1 and 2. She states that she is a registered patent attorney in the firm Phillips Ormonde & Fitzpatrick and that the exhibits of copies of documents she has provided will be relied on by the opponent in the proceedings.
· Ian Peter Horak, dated 13 May 1999 and exhibits IPH-1 and 2. He states that he is an information researcher employed by the firm Phillips Ormonde & Fitzpatrick and that he has provided accession dates of various documents which will be relied on by the opponent in the proceedings.
Evidence in answer consists of declarations made by:
· Ian Polmear, dated 1 March 2000 and exhibits IJP-1 to 13. He states that he presently serves as Emeritus Professor in the Department of Materials Engineering at Monash University. He further states that he has an extensive knowledge of materials science and metallurgical engineering, particularly that relating to aluminium and its alloys, having worked in that field since 1951.
· Jean-Claude Mougeot, dated 30 May 2000 and exhibit JCM-1. He states that he is a qualified European patent attorney and has worked as a patent attorney at Pechiney for 10 years.
Evidence in reply consists of declarations made by:
· Henricus Matheus van der Donk, dated 9 October 2000 and exhibits ED-1 to 14. He states that he is currently employed as an intellectual property consultant for Corus Technology BV (an affiliate company of the opponent, Corus). He states that he possesses a Masters degree in Materials Science and Engineering from the Delft University of Technology, The Netherlands and worked for his current employer as a researcher in the research laboratories from 1991 to 1995.
· Clive Geoffrey Bennett, dated 5 December 2000 and exhibits CB-15 and 16.
· Kevin Brown, dated 2 December 2000 and exhibits KRB-1 to 11.
· Ian Peter Horak, dated 5 March 2001 and exhibits IPH-1 to 5.
THE SPECIFICATION
The specification under consideration is the specification as twice amended after acceptance. It commences by indicating that the invention relates to the sphere of rolled or extruded products such as sheets, profiles, wires or tubes made of AlMgMn-type aluminium alloy containing more than 3% by weight of Mg, intended for welded constructions having high yield stress, good resistance to fatigue and good toughness for structural applications such as ships, industrial vehicles or welded bicycle frames. The specification indicates that the defects in the prior art relate to the improvement in mechanical characteristics of the 5000 series AlMg alloys disappearing after welding. Attempts to increase the manganese content to overcome this problem lead to a reduction in the resistance to fatigue and in the toughness.
The specification indicates that the object of the invention is to improve the mechanical strength and fatigue resistance of welded structures made of AlMgMn alloy under predetermined welding conditions, without unfavourable consequences for other parameters such as toughness, corrosion resistance and cutting deformation, due to internal stresses.
A consistory statement of the invention is provided followed by the detailed description including examples. The specification ends with 21 claims of which claims 1 and 12 are independent claims directed to a product and a sheet respectively. Claims 20 and 21 are omnibus claims directly dependent on the description. Claims 1, 12, 20 and 21 read as follows:
1.Product for a welded construction made of AlMgMn aluminium alloy composed of (% by weight):
3.0< Mg < 5.0
0.5< Mn < 1.0
Fe< 0.25
Si< 0.25
Zn< 0.40
optionally one or more of the elements Cr, Cu, Ti, Zr such that:
Cr < 0.25
Cu < 0.20
Ti < 0.20
Zr < 0.20other elements < 0.05 each and < 0.15 in total, wherein Mn + 2Zn > 0.80%, and wherein the volumetric fraction of dispersoids is greater than 1.2%.
12.Sheet made of AlMgMn Aluminium alloy composed of (% by weight):
3.0< Mg < 5.0
0.5< Mn < 1.0
Fe< 0.25
Si< 0.25
Zn< 0.40
optionally one or more of the elements Cr, Cu, Ti, Zr such that:
Cr < 0.25
Cu < 0.20
Ti < 0.20
Zr < 0.20other elements < 0.05 each and < 0.15 in total, wherein Mn + 2Zn > 0.80%, and wherein said sheet is welded by fusion and has a hardness > 80Hv in the welded zone.
20.A product according to the present invention substantially as described herein with reference to the Example.
21.Use of a product according to the present invention substantially as described herein.
STATEMENT OF GROUNDS AND PARTICULARS
An amended statement of grounds and particulars filed by Corus was allowed on 21 September 2001. Corus raised grounds of novelty, inventive step, manner of manufacture and section 40/fair basis. At the hearing the opponent stated that they would pursue all the grounds listed in the statement of grounds and particulars.
DECISION
Both parties provided a copy of their submissions at the hearing. I shall refer to these submissions wherever relevant in my decision.
The opponent initially challenged the opposed application's priority claim through the first filed basic document, FR 95 02387, filed on 24 February 1995. The applicant conceded that they would not assert priority from that document. Both parties agreed that the earliest priority for the opposed application derived from the second basic document FR 95 12065 filed on 9 October 1995.
Claims Construction, Section 40/Fair Basis
The opponent indicated that their case on novelty was linked to the construction of the claims and that they would address this prior to arguing novelty.
The applicant has indicated that claim 1 requires a combination of features which defines the invention. While certain features are not in dispute I shall address those points where there is a difference between the opposing parties.
The first issue relates to whether or not "product for welded construction" places any limitation on what is claimed. The opponent has referred to Adhesive Dry Mounting Co. Ltd v Trapp & Co (1910) 27 RPC 341 at p 353. The Court’s teaching indicates that "a claim to a substance or composition for a particular use should be construed as relating to the substance or composition per se". The Court construed the claim as a claim to the material itself and found that the claim was anticipated by a prior disclosure of the material, notwithstanding that the prior disclosure did not suggest that the material could be used for the purpose suggested in the claim. Thus I find that "product for welded construction" does not place any limitation on the alloy claimed other than it must be suitable for the specified use.
The second issue relates to the content of Mn + 2Zn >0.8%. The opponent contended that this requirement did not prevent zinc from being absent. All the claim required was that the Zn be present up to <0.40%. Thus situations where only Mn was present and the above requirement was satisfied fell within the scope of claim 1. The applicant indicated that the claim required an upper limit for zinc and also that it satisfy the requirement Mn + 2Zn >0.8%. Looking at claim 1, I find that it has indicated that certain elements in the composition are optional. Zinc is not included in those elements. Further, there is nothing in the specification that indicates that zinc is an optional element. Both the claims and the description indicate an upper limit for the presence of zinc, but do not specify that zinc may be absent. Thus I conclude that the scope of claim 1 does not include compositions where zinc is absent.
The third issue related to the volumetric fraction of dispersoids exceeding 1.2% in the alloy composition. The expert witnesses (evidence in support) for the opponent were of the view that the level of dispersoids was an inevitable consequence of the claimed composition range. Dr. Brown for the opponent had stated (para 54):
"…the presence of such dispersoids is inevitable in such an alloy and for similar processing (my emphasis), the volumetric fraction is governed by the chemical content of the alloy."
Both Dr Brown (for the opponent) and Prof. Polmear (for the applicant) had apparently indicated that the dispersoid content was inherent to the composition but both made the qualification that the dispersoid content was dependent on homogenisation (and conditions thereof such as time and temperature levels) of the cast ingot prior to any further processing.
The applicant's attorney however submitted that "It is a consequence when taken together with the homogenisation requirements" and that these requirements were illustrated in the Example on page 5 of the specification. Further the attorney stated that the diagram (entitled "Typical Process for 5000 Alloys") they had submitted at the hearing clearly showed that the homogenisation step achieves the required level of dispersoids.
Prof. Polmear for the applicant indicates that the chosen level of dispersoids can be obtained if the specified composition in the form of ingots is subject to homogenisation prior to hot working (paras 9, 15, 16, 21, 46, 47 – evidence in answer). Dr Kevin Brown (evidence in reply) agrees that dispersoids form and grow during homogenisation (para 33). Looking at claim 1, on the face of the claim, the feature of the dispersoids is clearly a specified requirement. However the opponent pointed out that if this is an essential feature then the specification has not indicated how this may be achieved. The opponent states that a claim to this feature is not a limitation by result and further if the applicant regards this desirable result as providing a basis for selection among the defined composition then the claim is not fairly based and must be invalid under section 40.
The parties have no major dispute over the compositional aspects of the claim except in the matter of the presence of zinc, which I have resolved previously under the second issue. The major issue lies in whether or not the feature of “volumetric fraction of dispersoids >1.2%” constitutes an essential feature of the claim.
From a reading of the specification there is nothing to indicate that the feature of dispersoids is not essential to the invention. The consistory statement clearly requires the presence of dispersoids. Further, the description at page 3 states:
“The mechanical strength of the sheets depends both on the magnesium content in the solid solution and on the manganese dispersoids. It has been found that the volumetric fraction of these dispersoids, which is linked to the iron and manganese contents, should preferably be kept above 1.2%.”
I do not find anything in the specification which indicates that the presence of dispersoids are an inevitable consequence of the alloy composition irrespective of the processing (my emphasis) to which the alloy may be subjected during manufacture and further treatment prior to being converted to sheets, wires, etc. Hence, I consider that the feature of the dispersoids is an essential feature of the claim.
No-Fume Ltd v Frank Pitchford and Co Ltd (1935) 52 RPC 231 teaches that a claim defining the invention by reference to the result which is to be achieved can be a valid claim, but the specification must set out the means by which that result is to be obtained, or it must be attainable by the exercise of common general knowledge without the use of the inventive faculty.
The opponent had stated that the dispersoids would be produced in the normal course of processing. However the declarations of Prof. Polmear (evidence in answer) and Dr Brown (evidence in reply) indicate that the process of homogenisation is the key aspect for producing dispersoids and that choice of suitable process conditions including temperatures would produce the desired result. Neither declarant has indicated that the process of homogenisation required any special knowledge outside that of the usual knowledge possessed by the skilled addressee in Australia. In view of this evidence I consider that the feature of dispersoids clearly is one which is claiming by result. The knowledge/skill necessary to obtain that result has not been established as one that is inventive in nature. Thus the issue of lack of fair basis of claim 1 and the claims appended thereto does not arise.
The opponent had also stated with regard to claims 7 and 8 that:
· They merely define properties which are consequences of forming the claimed composition into sheets.
· Page 4 of the opposed specification teaches that sheets formed from the composition of the invention have the fatigue resistance and fissure propagation rate defined in these claims. Hence the statement of properties in the second part of the claims is redundant on the requirement that the product be in sheet form.
· If these are other than inherent features then the specification is insufficient for failure to describe how these properties are obtained. They amount to no more than a claim for desirable properties and are not fairly based.
However in light of the essential feature of the dispersoid content as established for claim 1, these properties do not merely arise from the composition but are also dependent on the physical structure including the dispersoid content. Accordingly, claims 7 and 8 are not redundant and also do not lack fair basis.
I have shown that the applicant is entitled to claim by result in the circumstances and accordingly the issue of fair basis of claims 1 to 11 does not arise.
I shall now consider claim 12. The opponents submit that the hardness in the welded zone is an inevitable consequence of the chosen alloy composition. It is not dependent on the processing technique and any conventional processing technique will give the same results. Prof. Polmear for the applicant states in para 21 of his declaration:
“Because of the control on the amounts of these elements, the volume fraction of dispersoids in the alloy claimed in the opposed application is maintained at greater than 1.2%. These dispersoids precipitate during homogenisation of the cast ingots prior to fabrication by rolling or extrusion. In the welded condition, the presence of such a greater density of Mn-containing dispersoids reduces the width of heat affected zones adjacent to welds and increases their mechanical strength when compared to conventional 5083. It is my opinion the AlMgMn alloys which are within the scope of the composition specification claimed in the opposed patent application do have special properties in the welded condition when compared with the conventional 5083 alloys having the same magnesium content. These properties arise as a direct consequence of the limitations placed on the manganese and iron contents which result (in) a volumetric fraction of dispersoids in the microstructure that exceeds 1.2%”
As I had stated previously Prof. Polmear has made it clear that the dispersoids result from the composition and the process of homogenisation. Dr. Kevin Brown for the opponent has indicated that the dispersoids form during homogenisation and that the process conditions including temperature determines the volume fraction of dispersoids.
The description of the opposed application has made it clear that dispersoids are an essential part of the invention. It also discloses that sheets possessing this feature when fusion welded have a reduction of the thermally affected region by about one third relative to a conventional 5083 alloy and that the hardness of the welded joint increases from about 75Hv to more than 80 Hv. Thus the description has disclosed the feature of 80Hv of a fusion welded sheet but that this goes in conjunction with the presence of dispersoids. A proper reading of the opposed specification does not indicate that the specified hardness in the fusion welded product is entirely dependent on the alloy composition and is independent of the dispersoid content formed as a result of homogenisation. There is no evidence which persuades me that the specified hardness of the welded joint may be achieved for the claimed alloy compositions by routine methods. The dispersoid content plays a role in this feature. Thus, clearly, claim 12 does not fall in the category of claiming by result. It does not define the features of the invention described in the specification. In Montecatini v Eastman Kodak, (1971) 45 ALJR 593, it was held that "open ended" claims were not fairly based, since claims directed to a process were wide enough to cover processes for producing polypropylene in a way completely unrelated to the method disclosed. Claim 12 appears to fall within this category of claims as it requires a specified hardness for a welded product but has not restricted itself to the feature whereby this may be achieved. Claim 12 thus encompasses any method whereby the specified weld hardness may be achieved. However, the description has only indicated that a specified dispersoid content of the alloy will allow this hardness to be achieved. Consequently, claim 12 lacks fair basis and does not define the invention described as it fails to define the feature of the dispersoid content. Accordingly, claims 13-19, which are appended to claim 12, lack fair basis and do not define the invention described.
Novelty
The opponent contended that the invention as defined in all the claims lacked novelty. They also submitted that if I found the compositions as lacking in novelty the applicant would claim that they had a selection patent based on the structure of the alloys. The opponent stated that they would also show that the patent in question did not satisfy the criteria for a selection patent. I shall first consider the issue of traditional novelty and if I find against the applicant I shall then consider the issue of selection.
At the hearing, the opponent raised six documents in support of their contention of lack of novelty. The opponent also submitted that the invention lacked novelty by virtue of prior use. The documents under consideration are:
1. Development of Superplasticity in 5083 Aluminum with Additions of Mn and Zr, C.A. Lavender et al, Materials Science Forum Vols. 170-172 (1994) pp. 279-286. (Exhibit CB-8, referred to as Lavender et al hereafter).
2. Effect of Precipitate Structure on Hot Deformation of Al-Mg-Mn Alloys, J.S. Vetrano et al, Advances in Hot Deformation Textures and Microstructures Edited by JJ Jonas et al, The Minerals, Metals & Materials Society, 1994, pp. 223-234. (Exhibit CB-7, referred to Vetrano et al hereafter).
3. Komatsubara et al, US Patent No 5189169. (Exhibit CB-15, referred to as Komatsubara et al hereafter).
4. The Deformation of Commercial Aluminum-Magnesium Alloys, D.J. Lloyd, Metallurgical Transactions A, Vol. 11A, August 1980, pp. 1287-94. (Exhibit CB-12, referred to as Lloyd hereafter).
5. Microstructure and mechanical properties of aluminium to steel friction welds, G. Reiners et al, Welding and Cutting 3/1988, E37-E40. (Exhibit CB-10, referred to as Reiners et al hereafter).
6. Composition affects tensile strength of welded aluminium-magnesium alloy, B.A. Cassie et al, Metal Construction and British Welding Journal, January 1973, pp. 11-19. (Exhibit CB-13, referred to as Cassie et al hereafter).
The applicant submitted that even though their alloy compositions fell within the 5083 alloy composition ranges their invention was novel by virtue of an improved structure over the prior art alloys. They stated that the description of the opposed application showed the inventive alloy:
1. Had improved yield stress over the 5083 alloy.
2. For a welded joint, the width of the thermally affected region is reduced by about one third relative to the conventional 5083 alloy and the hardness of the welded joint increases from about 75 Hv to more than 80 Hv.They stated that the feature of the dispersoids provided the improvement over the prior art.
The reverse infringement test from Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1976) 137 CLR 228 at 235 sets out the basic test for anticipation or want of novelty:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
It follows from the reverse infringement test that if a citation discloses all the features of the claim, the claim will lack novelty. If the citation does not disclose all the features of the claim, the claim will still lack novelty provided the citation discloses all the essential features of the claim; but if the essential features are not disclosed in the citation, the claim is novel (Nicaro Holdings v Martin Engineering 16 IPR 545 and Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183).
I shall now consider the issue of novelty of claims 1-21 against each of the prior art documents pursued at the hearing.
Lavender et al - Exhibit CB-8
This document looks at aluminium alloys suitable for superplastic applications, particularly for use in ground based vehicles. The study is directed to 5083 Al alloys with particular emphasis on additions of Mn and Zr. The opponent has drawn attention to the first four examples in Table 1 on page 280 which disclose alloy compositions falling within the ranges claimed in the opposed invention. The ranges disclosed in the citation (in weight %) are:
· Magnesium (Mg): 4.66 to 4.93
· Manganese (Mn): 0.80 to 0.83
· Zirconium (Zr): 0.001 to 0.190
· Chromium (Cr): 0.16 to 0.19
· Iron (Fe): 0.082 to 0.097
· Silicon (Si): 0.034 to 0.040
These ranges satisfy the compositional requirements of opposed claims 1 and 12 including the requirement that Mn+2Zn > 0.80%. The disclosure also mentions dispersoids but at no stage does it state a requirement that the dispersoid volume fraction must exceed 1.2%. Homogenisation of the ingot is also mentioned but there is no evidence to indicate that the temperature and time for which it is carried out would result in dispersoids formation in a volumetric fraction exceeding 1.2%. Dr Kevin Brown for the opponent (para 33 of the evidence in reply) indicates that "…it is not sufficient to state only the alloy composition to arrive at the volume fraction of dispersoid in the alloy. One must consider also the homogenisation temperature, and other processing parameters such as casting conditions." However both Drs. Brown and Bennett do not indicate if the alloy compositions of the citation would inevitably give a dispersoid content of 1.2%. No evidence, such as laboratory experiments, has been adduced to show that if the processing instructions of the citation are followed then the product would possess the specified dispersoid content. Thus Lavender et al does not disclose the requirement that the volume fraction of dispersoids must exceed 1.2%. I consider that claim 1 and the claims appended thereto (2 to 11) do not lack novelty in light of Lavender et al.
Claim 12 like claim 1, discloses compositions which fall within the disclosures of Lavender et al. I shall consider the feature of the hardness of the sheet in the welded zone. There is no disclosure of such a requirement in the citation. Further there is no evidence to show that sheets made from the specified composition inevitably possess the specified hardness when welded. Dr Brown has made assertions that the hardness inevitably arises from the composition claimed but has not adduced any proof (for example, laboratory tests or experiments checking the hardness of welded sheets of the composition specified) to support his assertions. Prof. Polmear for the applicant has indicated that the hardness arises after welding once the starting alloy material has a volumetric fraction of dispersoids exceeding 1.2%.
Given the above evidence I find that claim 12 and claims appended thereto (claims 13 to 19) do not lack novelty by disclosures of Lavender et al.
Claims 20 and 21 are omnibus claims and thus are restricted to the essential features as embodied in the example and description. Thus they would include the feature of the dispersoids and specified hardness. Hence, claims 20 and 21 do not lack novelty in light of Lavender et al.
Vetrano et al - Exhibit CB-7
This document looks at aluminium alloys suitable for superplastic applications. The study is directed to 5083 Al alloys with particular emphasis on additions of Zr and Mn. The opponent has drawn attention to the first two examples in Table 1 on page 226 which disclose alloy compositions falling within the ranges claimed in the opposed invention. The ranges disclosed (in weight %) are:
· Magnesium (Mg): 4.66 to 4.93
· Manganese (Mn): 0.81 to 0.83
· Zirconium (Zr): 0.19
· Chromium (Cr): 0.16 to 0.19
· Iron (Fe): 0.08
· Silicon (Si): 0.03 to 0.04
These ranges satisfy the compositional requirements of claims 1 and 12 including the requirement that Mn+2Zn > 0.80%. The disclosure also mentions dispersoids but at no stage does it state a requirement that the dispersoid volume fraction must exceed 1.2%. Homogenisation of the ingot is not mentioned though there is reference to thermo-mechanical processing of the alloy. There is no evidence to indicate that the thermo-mechanical processing would result in dispersoids formation in a volumetric fraction exceeding 1.2%. Also there is no disclosure in the specification or in the evidence of the opponent that the compositions disclosed would result in material which when welded would possess a hardness exceeding 80Hv in the welded zone. Hence, I consider that this citation does not render claims 1-21 of the opposed application as lacking in novelty.
Komatsubara et al - Exhibit CB-15
The citation discloses as an object of the invention the production of, "A rolled aluminium alloy which not only exhibits improved superplastic forming behavior, but is feasible to anodizing, thus showing improved properties of corrosion resistance and outer appearance after anodization as well as weldability, strength, fatigue resistance and toughness." The composition of the alloy has similarities to the 5083 type alloy. However the alloy claims specify the additional requirement, "…wherein intermetallic compounds have a size up to 20 mm, and the content of hydrogen present is up to 0.35 cc per 100 grams of the alloy." The method claims for making the alloy specify the requirement, "…heating the cast ingot at a temperature of 400o to 560oC for ½ to 24 hours, hot rolling and then cold rolling the material into a strip of a predetermined thickness, the cold rolling step including final cold rolling to a draft of at least 30%." The opponent has referred to the disclosure of Alloy No 1 at Table 1 as falling within the claims of the opposed application. The components disclosed (in weight %) are:
· Magnesium (Mg): 3.2
· Manganese (Mn): 0.82
· Iron (Fe): 0.12
· Silicon (Si): 0.08
These percentages satisfy the compositional requirements of claims 1 and 12 including the requirement that Mn+2Zn > 0.80%. The disclosure also mentions dispersoids but at no stage does it state a requirement that the dispersoid volume fraction must exceed 1.2%. Homogenisation of the ingot is not mentioned though there is reference to "heating the cast ingot at a temperature of 400o to 560oC for ½ to 24 hours". There is no evidence provided to indicate that this processing would result in dispersoids formation in a volumetric fraction exceeding 1.2%. Also there is no disclosure in the specification or in the evidence of the opponent that the composition disclosed would result in material which when welded would possess a hardness exceeding 80Hv in the welded zone. Accordingly I consider that claims 1-21 of the opposed application do not lack novelty in light of this citation.
Lloyd - Exhibit CB-12
This document indicates that it considers the deformation of three Al-Mg alloys over a range of strain rates and temperatures and that the major factors influencing their deformation are discussed. The opponent submits that the disclosure in Table 1 of alloy AA 5083 falls within the ambit of the opposed claims. Further Dr Brown states that "the document also discusses AA 5083 alloys and their dispersoid content. Fig. 1(a) and Fig. 2 show dispersoids in AA 5083 which are said to be (FeMn)Al6 particles." The components disclosed (in weight %) are:
· Magnesium (Mg): 4.46
· Manganese (Mn): 0.84
· Chromium (Cr): 0.08
· Iron (Fe): 0.25
· Silicon (Si): 0.15
These percentages satisfy the compositional requirements of claims 1 and 12 including the requirement that Mn+2Zn > 0.80%. The disclosure has mentioned dispersoids and their size ranges but at no stage does it state a requirement that the dispersoid volume fraction must exceed 1.2%. Homogenisation of the ingot is not mentioned though there is reference to "heating the cast ingot at a temperature of 400o to 560oC for ½ to 24 hours". There is no evidence provided to indicate that this processing would result in dispersoids formation in a volumetric fraction exceeding 1.2%. Also there is no disclosure in the specification or in the evidence of the opponent that the composition disclosed would result in material which when welded would possess a hardness exceeding 80Hv in the welded zone. Accordingly I consider that claims 1-21 of the opposed application do not lack novelty in light of this citation.
Reiners et al - Exhibit CB-10
The disclosure relates to the microstructure and mechanical properties of aluminium to steel friction welds. The following aluminium alloy composition (in weight %) is disclosed:
· Magnesium (Mg): 4.70
· Manganese (Mn): 0.82
· Chromium (Cr): 0.14
· Iron (Fe): 0.025
· Silicon (Si): 0.08
· Copper (Cu): 0.048
These percentages satisfy the compositional requirements of claims 1 and 12 including the requirement that Mn+2Zn > 0.80%. The disclosure has not mentioned dispersoids and their size ranges and at no stage does it state a requirement that the dispersoid volume fraction must exceed 1.2%. Homogenisation of the ingot is not mentioned. There is no evidence provided to indicate that the alloy is subject to processing that would result in dispersoids formation in a volumetric fraction exceeding 1.2%. Also there is no disclosure in the specification or in the evidence of the opponent that the composition disclosed would result in material which when welded would possess a hardness exceeding 80Hv in the welded zone. Accordingly in light of the above findings, I consider that claims 1-21 of the opposed application do not lack novelty in light of this citation.
Cassie et al - Exhibit CB-13
This study looks at the effects of composition on the tensile strength of welded aluminium-magnesium alloy. Declarants for the opponent have indicated that some of the chosen compositions fall within the ranges of the alloy of the opposed application. In the matter of dispersoids they state that the relatively high content of manganese and iron in the alloys disclosed would ensure a dispersoid content above 1.2%. The opponent has drawn attention to examples C, G, I, K in Table 1 on page 12. The ranges disclosed (in weight %) are:
· Magnesium (Mg): 4.0 to 4.72
· Manganese (Mn): 0.58 to 0.82
· Chromium (Cr): 0.09 to 0.102
· Iron (Fe): 0.17 to 0.28
· Silicon (Si): 0.1 to 0.16
· Zinc (Zn): 0.02 to 0.18
· Copper (Cu): 0.03 to 0.10
· Titanium (Ti): 0.01 to 0.07
· Other: 0.032 (total)
These ranges covered 4 alloys of which one (K) did not satisfy the requirement Mn+2Zn > 0.80%. One (I) was close in that it had Mn+2Zn = 0.79%. The others satisfied the compositional requirements of claims 1 and 12 except that alloy C had Fe=0.26%, alloy G had Fe=0.28% and alloy I had Fe=0.25%. The expert witness for the applicant had conceded that percentages equal to and slightly above 0.25% could be considered as falling in the ambit of the claim (Fe < 0.25%) by the skilled addressee. Thus one could consider alloys C, and I as falling within the ambit of the compositions of the opposed invention. However the feature of dispersoid content has not been disclosed. The opponent submitted that this was inherent in the composition. However from the evidence before me I had concluded that the dispersoid content was not inherent on the composition but arose as a result of the process of homogenisation and that this feature was a case of claiming by result. Homogenisation of the alloys is not mentioned. Also there is no disclosure in the specification or in the evidence of the opponent that the compositions disclosed would result in material which when welded would possess a hardness exceeding 80Hv in the welded zone. Hence, I consider that this citation does not render claims 1-21 of the opposed application as lacking in novelty.
As none of the cited documents have rendered the opposed claims as lacking in novelty I shall not be required to consider the issue of novelty on the basis of selection patents.
Novelty-Prior Use
I shall now consider the issue of lack of novelty by virtue of prior use.
Both parties agree that the onus is on the opponent to prove their case and that the standard of proof which applies is the civil standard, that is on the balance of probabilities. The standard of proof required to establish prior use was dealt with by the UK Appeal Tribunal in Seiller's Application [1970] RPC 103, where at 106 Graham J. stated:
"In my judgement it is necessary that proof of prior user in opposition cases should be very clear. Normally in the absence of cross-examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable. Such corroboration is often best found in documents contemporary with the fact to be proved. Each case, however, must be considered on its own facts and I say expressly that I am not attempting to lay down any rule as to what is or is not sufficient in any given case."
These comments were approved by the UK Court of Appeal in Dunlop Holdings Limited's Application [1979] RPC 523 at 548.
In the present situation I consider that Graham J.'s comments on the necessity of corroboration by documents contemporary with the facts to be proved are applicable to the present circumstances. The prior use case law (see Hood Computers v Online Furniture 28 IPR 347, Graham Armstrong v Joseph Larocac 26 IPR 362, Barrie Cooper v Sten-crete P/L 1997 APO 33) teaches that:
"… if no evidence of the sales relied on by the opponent has been provided, and there is no evidence to demonstrate that what was sold was in fact in accordance with this specification; then the opponent is NOT considered to have discharged its onus of clearly establishing the existence of prior use."
Documentation of events in Europe regarding dispatch of aluminium sheets to a customer in Australia has been provided. However there is no indication of receipt of the sheets in Australia and/or any documents that would establish this. Further, I would need to be satisfied that the material was actually used in Australia and that its use was such that it deprived the claimed invention of novelty. The composition on the test certificates issued in Germany make no disclosure of the volumetric fraction of dispersoids exceeding 1.2%. Thus there is no disclosure of the invention as the material and accompanying test certificates do not teach this feature. I have no corroborative evidence or evidence that is sufficiently persuasive to establish use and disclosure of the claimed invention in Australia. I do not consider that the opponent has established lack of novelty of the claimed invention by virtue of prior use.
Inventive Step/Obviousness
Subsections 7(2) and 7(3) of the Patents Act 1990 indicate that a claimed invention will lack an inventive step if it is obvious to a person skilled in the relevant art in the light of:
(a) common general knowledge in the art; or
(b) common general knowledge considered together with information publicly available 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 the person skilled in the art.
Aickin J set out the following test for obviousness in Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at page 286:
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
Application of this test in light of Subsections 7(2) and 7(3) of the Patents Act 1990, would require:
· a determination of the non-inventive worker in the field (or the person skilled in the relevant art) in Australia
· a determination of the common general knowledge in Australia at the priority date (4 May 1994)
The non-inventive worker in the field would be a metallurgist who specialised in the production of 5083 or similar AlMgMn aluminium alloys, alloy sheets/plates and welding of the same.
The common general knowledge relevant to the question of obviousness was described by Aickin J. in Minnesota Mining& Manufacturing Co v Beiersdorf (Australia) Limited, (1980) 144 CLR 253 at 292 as:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
The first step to applying the tests set out above for determining inventive step would involve the determination of those declarants who were persons skilled in the art of the direct reduction of iron and the production of iron carbide in Australia.
The opponent referred to the submissions of Dr Brown, Dr Bennett, Prof. Polmear and Mr Garry Martin in establishing what they considered to be the common general knowledge in Australia before the priority date of the first basic application of the opposed invention.
The applicant on the other hand submitted that only the evidence of Prof. Polmear and Dr Bennett could establish the common general knowledge (henceforth cgk) in Australia at the relevant priority date. In the matter of Dr Brown they state, "…he has worked outside Australia from 1980 onwards, therefore his evidence cannot actually say anything with respect to cgk in Australia at the priority date,…Further Dr Brown is in a senior management role at the opponent firm, therefore his impartiality is in question." They have also conceded that their expert Jean Claude Mougeot who has worked outside Australia could not be considered to be a skilled addressee in Australia.
I consider that Prof. Polmear and Dr Bennett are clearly persons skilled in the relevant art in Australia, as they have worked in the relevant field in Australia both prior to and at the relevant priority date. Accordingly I shall give maximum weight to their submissions regarding common general knowledge and the state of the art in Australia at the relevant date. In the matter of Dr. Brown I note that even though he has worked outside Australia since 1980 he has stated that:
From 1979 until the present, I have been a frequent visitor to Australia on business and for private reasons, and have maintained close connections with the Australian aluminium industry and have many friends and acquaintances in that industry. I have very frequently held discussions with colleagues in the Australian aluminium industry. I have attended conferences and given technical papers in Australia as described in the attached list of my publications."
There is nothing to indicate that Dr Brown was deeply involved in the aluminium industry in Australia. From the list of publications and conferences provided the most recent connection to Australia was in 1982. Hence I shall accord minimum weight to the submissions of Dr Brown with regard to the state of the cgk in Australia.
Mr Garry Martin's declaration (and exhibits GDM-1 to 10) appears in the evidence in reply as exhibit IPH-2 to the declaration of Ian Horak. Mr. Martin states that he is currently Technical Manager of Capral Aluminium Limited (Capral) in the extrusion manufacturing operation and has been employed by Capral (formerly Alcan Aluminium Ltd) since 1977. He further states that he possesses a Bachelor of Science degree in Metallurgy from the University of Newcastle. I consider Mr. Martin to be a person skilled in the relevant art in Australia as he has worked in the relevant field in Australia both prior to and at the relevant priority date.
I have summarised the opponent's submission regarding common general knowledge in Australia before filing of the first basic document, as follows:
1. 5000 series alloys specifically 5083 are widely used for welded construction including truck bodies, large tanks, pressure vessels, Marine application and other applications requiring a weldable moderate strength alloy of good corrosion resistance. [Polmear in answer at para 10, exhibit RLE-19, Clive Bennett para 13, Garry Martin (IPH-2) paras 10-14.]
2. The presence of high manganese content in AA 5083 improves strength. Australian manufacturers such as Comalco and Capral/Alcan routinely produced AA 5083 sheet or plate having Manganese levels of over 0.7 and over 0.8%. [Brown para 52, Bennett para 11, 12, Garry Martin exhibit includes details of commercial production of 5083 plate and sheet having high manganese levels]. Polmear (para57) for Pechiney agrees that it was well known that within the 5083 designation higher manganese levels in the 5083 increases hardness and strength. Polmear (para 49) does not contest these assertions but merely states they don't recognise iron-manganese interaction.
3. Iron and Silicon are impurities are to be minimised. They are "tramp" elements and deleteriously effect ductility, formability, strength and fracture toughness. [Brown para 38 to 41 and 49, Bennett paras in support 20 and 21, Brown para 12 in reply and Hess page 326 (KRB-4), Polmear (in answer) does not dispute this but argues that there was no understanding of the effect on welded joints (see para 40).]
Typical content of Iron and Silicon in clean metal produced by Australian smelting operations was 0.05%-0.08% silicon and 0.1 to 0.13% iron. The presence of higher amounts of these elements was caused by scrap aluminium or material picked up during processing. They are not deliberately added but are a contamination.
The only difference between the invention and the AA5083 sheet and plate routinely produced on a commercial scale in Australia is a reduction in the level of undesirable iron impurity. This reduction in iron has therefore long been known to be desirable.
4. A person skilled in the art in Australia at the priority date wishing to improve strength with good fracture toughness and corrosion resistance would recognise the benefit of using manganese levels at the upper end of the 5083 range and a low level of iron. The only impediment to the use of low iron levels in large scale commercial production is the need for greater quality control measures to exclude the pick up of impurities.
The applicant agreed with items 1 and 2 of the opponent. In the matter of item 3 the applicant stated the cgk as:
· that there was NO metallurgical reason to actively control levels of Fe and Si (Bennett para 16, Polmear 59).
· Fe and Si levels were detrimental to formability (and ductility and fracture toughness) properties of the wrought alloy (Bennett, 20 and Polmear 60) and it was therefore desirable to reduce their content.
· Fe, Zn, Si and Cu levels in 5083 and other alloys were determined by levels of these in the base aluminium (Bennett para 20).
In addition the applicant stated that types of dispersoids and their sizes formed part of the cgk.
Considering the submissions before me and on reviewing the relevant evidence, I find the cgk regarding the presence of Fe and Si in Al alloys indicated that:
"subject to commercial constraints the skilled addressee would attempt to minimise the presence of Iron (Fe) and Silicon (Si) in 5083 type aluminium alloys in order to minimise their effects on ductility, formability, strength and fracture toughness of the alloy." [See Prof. Polmear declaration, para 39; Dr Brown declaration (evidence in support) paras 39 and 40 and Dr Bennett declaration (evidence in support) paras 20 and 21.]
The applicant further submitted that:
· The specific control to reduce the level of Fe and thereby its effect on Mn dispersoids and the resulting strengthening effect on welded sheets has not been established as cgk. Dr Bennett at paras 15, 16 makes it abundantly apparent that the cgk in respect of Fe levels was that their levels was dictated by the base aluminium and that any control exerted was due to economical reasons or because they were detrimental to formability. It was never attempted to remove Si and Fe from external scrap to keep the values low for these elements
· Dr Bennett argues that it was within the cgk of a person skilled in the art that dispersoid content of an alloy is determined by the composition of the alloy and inherent to the composition. The effect of Fe on the volumetric fraction of dispersoids was not known (as evidenced by Bennett's statement at para 27) and also it was not stated that the effect of homogenisation is an important contributing factor. Page 3 of the specification states the volumetric fraction of dispersoids is linked to iron and manganese contents but this does not mean that it is totally determined by Fe and Mn contents. It is consequential to the content but not inherent.
I am in agreement with the applicant that there is no evidence to show the link between the reduced Fe levels and an increase in the dispersoid content.
The opponent had claimed that:
· the dispersoid content was an inevitable consequence of the claimed composition range.
· the fusion welded sheet hardness of >80 Hv in the heat affected zones is an inevitable consequence of the claimed composition.
· The level of dispersoids and hardness requirements are not dependent on processing. Any conventional processing technique can be used and will give the same dispersoids for a given composition.
I had addressed this issue under Claims Construction, Section 40/Fair basis and my conclusion was that:
"… the declarations of Prof. Polmear (evidence in answer) and Dr Brown (evidence in reply) indicate that the process of homogenisation is the key aspect for producing dispersoids and that choice of suitable times and temperatures would produce the desired result."
Thus I do not find any evidence to show that requirement of the presence of dispersoids to the value >1.2% was part of the cgk in Australia at the relevant date. Also I do not find any evidence to show that the requirement that fusion welded sheet hardness should exceed 80 Hv in the welded zones was part of the cgk in Australia at the relevant date. Thus given the features constituting the cgk in Australia (5083 alloy composition, high Mn content, Fe and Si to be minimised) there is no evidence to show that the dispersoid content was part of this stock of knowledge in Australia. Accordingly I do not find the invention as claimed in claims 1-21 lacking an inventive step in light of the common general knowledge in Australia at the relevant date.
Another aspect I have to consider is if the feature of dispersoid content could be arrived at as a matter of routine. Both the applicant and the opponent had indicated that the process of homogenisation of the known 5083 alloy compositions was part of the cgk in Australia. The opponent has not produced evidence to show that, known 5083 alloy compositions undergoing routine homogenisation would possess a volumetric fraction of dispersoids exceeding1.2%. I cannot conclude that the claimed invention would have been arrived at as a matter of routine when applying the cgk in the art at the relevant date.
I shall now consider the issue of inventive step on the basis of the citations raised against novelty when combined with the cgk in Australia at the relevant date.
I shall first have to determine if the documents raised could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
The applicant contended that:
"No evidence exists as to the nature and extent of the search effort required to identify from electronic databases the various patents using search terms that the nature of the work in the relevant art in the patent area would suggest should be used. The opponent has failed to establish that the patents were reasonably ascertainable in the sense required by s7(3) of the Act. We submit that any search exercise was likely to have been influenced by knowledge of the result sought to be achieved-as is clear from the Bennett declaration, and not such as would reasonably be expected to be undertaken by the hypothetical skilled worker."
I note that all the documents were listed in the statement of grounds and particulars. All the documents refer to the 5083 type of aluminium alloys and disclose compositions falling within the claimed ranges of the opposed invention. I consider that in the circumstances all the documents raised were ascertainable by the skilled addressee. Further there is no evidence to show that either party had difficulty in understanding the documents listed. Also I have no evidence to show that the documents were not relevant to the claimed invention. The documents raised are clearly directed to 5083 type alloys arising from which the applicant has submitted that they have a selection patent. In light of the above I consider that the documents raised are such that they could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
I shall now consider the documents on an individual basis, but before I do so I shall indicate the test to be applied in the circumstances. The teaching of the Courts in this matter, in particular in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Limited (1980) 144 CLR 253 at page 293 it stated:
"The proper question is not whether it would have been obvious to the hypothetical addressee who was presented with an ex post facto selection of prior specifications that elements from them could be combined to produce a new product or process. It is rather whether it would have been obvious to a non-inventive skilled worker in the field to select from a possibly very large range of publications the particular combination subsequently chosen by the opponent in the glare of hindsight and also whether it would have been obvious to that worker to select the particular combination of integers from those selected publications. In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious. …The opening of a safe is easy when the combination has been already provided."
Lavender et al - Exhibit CB-8
The problem which the opposed application seeks to solve is an improvement in the mechanical strength and fatigue resistance of welded structures made of AlMgMn alloy under predetermined welding conditions, without unfavourable consequences for other parameters such as toughness, corrosion resistance and cutting deformation, due to internal stresses. Thus I have to determine if it would have been obvious to choose/try a dispersoid content exceeding 1.2% on a volumetric basis as a solution to the problem. The opponent has not shown that the cgk has this feature as part of its stock of knowledge. Further there are no directions in the Lavender document itself suggesting that this be a requirement of the alloy. Thus the combination of cgk with this document does not render the opposed invention as claimed in claims 1 to 11 as lacking an inventive step.
Considering claim 12, and the claims appended thereto, the feature which is not disclosed in the document is the requirement that the alloy sheet, when welded by fusion possess a hardness >80Hv in the welded zone. This feature is not shown to be part of the cgk and there is no suggestion in the document that such a feature would lead to a solution of the problem faced by the opposed application. I conclude that the combination of cgk with this document does not render the opposed invention as claimed in claims 12 to 21 as lacking an inventive step.
Vetrano et al - Exhibit CB-7, Komatsubara et al - Exhibit CB-15,
Lloyd Exhibit CB-12, Reiners et al - Exhibit CB-10, and Cassie et al - Exhibit CB-13.All these documents are similar to Lavender et al - Exhibit CB-8, in that they do not define the requirements of:
· Volumetric fraction of dispersoids to exceed 1.2%, and
· Alloy sheet welded by fusion has a hardness >80Hv in the welded zone.
As I stated previously, these features have not been shown to be part of the cgk in Australia and also the relevant documents have not suggested that these features would either provide a solution or were something worth trying when facing the problem set out in the opposed application. I conclude that the combination of cgk with each of these documents individually, does not render the opposed invention as claimed in claims 1 to 21 as lacking an inventive step.
Manner of Manufacture
The opponent submitted the following in the statement of grounds and particulars:
"The invention alleged lacks any quality of inventiveness. The product claimed in each of the claims lacks any inventive merit, is not novel or is obvious, when compared with conventional compositions such as those disclosed in the specification including alloy 5083. Features of the claims not specifically referred to in the prior art are inherent in the composition as disclosed.'
The opponent has failed to show that the claims are lacking in novelty. They have been unable to establish the opposed invention as being obvious in light of conventional compositions. The opponent has also failed to show that the features of dispersoids and weld hardness are inherent in the claimed compositions. For all the above reasons I consider that the opponent has been unable to show that the opposed invention does not constitute a manner of manufacture.
SUMMARY
I have found that claims 12 to 19 lack fair basis and do not define the invention described in the specification.
The opponent has been unsuccessful on the grounds of novelty, inventive step and manner of manufacture.
As I consider that the defects in the opposed specification could be overcome by suitable amendments I grant the applicant sixty days from the date of this decision to file suitable amendments.
COSTS
Both parties submitted that costs should follow the event. The opponent has been unsuccessful on the grounds of novelty, inventive step and manner of manufacture. However the opponent has established that claims 12 to 19 of the opposed specification lack fair basis and do not define the invention described. Accordingly I award costs against the applicant Pechiney Rhenalu and in favour of the opponent Corus Aluminium Walzprodukte GmbH.
Jacob Elijah
Delegate of the Commissioner of PatentsPatent attorneys for the applicant : Spruson & Ferguson, Sydney
Patent attorneys for the opponent : Phillips Ormonde & Fitzpatrick, Melbourne
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