Peerless Plastics Packaging Ltd v Smith & Nephew Plastics (Australia) Pty Ltd

[1993] APO 36

official notice

decision of a delegate of the commissioner of patents

Application        :   No. 597667 in the name of PEERLESS PLASTICS PACKAGING LIMITED

Title:   Improvements in the Manufacture of Moulded Plastics Articles

Action: Opposition under s.59 of the Patents Act 1952 by SMITH & NEPHEW PLASTICS (AUSTRALIA) PTY LTD

Decision:   Issued            .  Opposition grounds of lack of novelty and non-compliance with section 40 have not been established.  Opposition dismissed.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 597667 by PEERLESS PLASTICS PACKAGING LIMITED and an Opposition under s.59 of the Patents Act 1952 by SMITH & NEPHEW PLASTICS (AUSTRALIA) PTY LTD.

BACKGROUND

Patent application 597667 (73698/87) "Improvements in the Manufacture of Moulded Plastics Articles" by Peerless Plastics Packaging Limited (PEERLESS) was advertised accepted on 7 June 1990. On 29 June 1990 Smith & Nephew Plastics (Australia) Pty Ltd (SMITH) lodged a notice of opposition to the application under section 59 of the Patents Act 1952.

Evidence in support of the opposition was served in part on 27 March 1991 and was completed on 26 April 1991, after Smith had obtained a number of unopposed extensions of time.  After itself obtaining a number of unopposed extensions of time, Peerless served part of the evidence-in-answer on 17 January 1992 which was completed on 26 March 1992.  Evidence-in-reply was completed on 28 September 1992.

The matter was heard in Melbourne on 16 February 1993.  PEERLESS was represented by Mr B J Hess of Counsel and Mr S Wilson, patent attorney of Griffith Hack & Co, and SMITH was represented by Mr L Gebhardt, patent attorney of Watermark.

SPECIFICATION

The specification commences by indicating that the invention relates to improvements in the manufacture of moulded plastics articles which have a blank of sheet material incorporated in them as they are moulded.  The blank may for example be a label and/or serve as a diffusion barrier.

This is followed by a discussion of the prior art which states that hitherto the sheet material of the blank has had sufficient body to enable it to, remain flat while being handled, be easily stacked, and be delivered to the mould by a chute or rollers.  The specification goes on to state that plastic films are now available which have improved resistance to water vapour, air penetration, etc. and may be used to advantage in moulded plastics containers as diffusion barriers.

The specification then discusses the problems associated with handling these plastics films.  It indicates that blanks made from these plastics films are flimsy and if they are stacked together are then difficult to separate for use, and if a blank is removed it will cause the other blanks in the stack to be disturbed which may make it impossible to manoeuvre the blanks for accurate location in the mould.

The specification also states that the blanks of the plastic film may be unable to retain a flat form by themselves and may curl or roll, and are highly prone to becoming charged with static electricity.

A consistory statement follows, equivalent to claim 1.  The text then states that because the blanks are cut from the strip individually in the invention there is no problem of storing them until required, and as they are cut and fed individually from the strip to the mould there is no risk of the blanks coming in contact with one another and clinging.  Then follows a number of optional features and a second consistory statement equivalent to claim 13.

The description then describes a preferred embodiment.  One paragraph of particular interest occurs on page 10 which states that:

"It will be appreciated from the foregoing that each blank is positively held as it is cut from the strip and transferred to the mould, and its location in the mould is fully controlled so that correct positioning of the blank for incorporation into a container is assured."

The specification ends with fifteen claims, claim 1 defines a method of manufacturing a moulded plastics article, claim 13 defines apparatus adapted for manufacturing a moulded plastics article in accordance with the method as claimed in any one of the preceding claims, and claim 14 defines a moulded plastics article being manufactured by the method as claimed in any one of claims 1 to 12.  Most of the discussion at the hearing centred around the features of claim 1 which defines:

"1.  A method of manufacturing a moulded plastics article having a blank of a flimsy plastics film material applied to a surface thereof as the article is moulded in a mould having relatively movable mould halves defining a mould cavity, including the steps of feeding a strip of the plastics film material to cutting means comprising a die component having a cutting edge defining the required shape of the blank and a flat pad component of larger size then the blank, the die and pad components being relatively movable to bear on opposite sides of the strip and cause the die component to cut out the blank from the strip, supporting the blank by one of the components and moving that component to a transfer position in which the blank is spaced from the strip, collecting the blank from said component at the transfer position and feeding it to the mould by transfer means comprising a carrier having a flat surface larger than the blank at which suction is applied to pick up and hold the blank flat against said surface, moving the carrier into a position between the separated mould halves, removing the suction from the blank at the surface of the carrier when the carrier is in said position and simultaneously causing the blank to be urged way from the carrier and located on an adjacent surface of the mould cavity at one of the mould halves, withdrawing the carrier from between the mould halves, subsequently closing the mould halves together and introducing plastics material into the mould cavity against the blank to produce the moulded plastics article."

EVIDENCE

The evidence in support of the opposition consists of a statutory declaration by Graham Harold Edward accompanied by six exhibits, and statutory declarations by Louis Charles Gebhardt, a patent attorney, and Marion Elizabeth Dormer, a librarian, to establish the dates of publication of various exhibits.

The evidence in answer consists of statutory declarations by Paul James Howard Bagnall, Peter John Robert Heasman, and Ramon Glenny Waycott.

The evidence in reply consists of a single statutory declaration by Graham Harold Edward.

I will refer to these declarations at appropriate points in my decision.

SUBMISSIONS

Although the notice specified the grounds of opposition as those listed in paragraphs (c) to (i) inclusive of subsection 59(1) of the Patents Act 1952, Mr Gebhardt made it clear at the hearing that the opponent would rely only on the grounds specified in paragraphs (h) and (i), ie. lack of novelty and non-compliance with section 40.

With respect to section 40, Mr Gebhardt submitted for the opponent that the description of the invention was not clear because:

.Some of the terms used in the specification such as "composition" on page 1A line 12 and "coextended" on page 6a line 3, and some of the paragraphs such as the last part of page 2, are not clear or are incorrect.

.It is not clear how the "transfer means" in figure 3 operates as only one position of the transfer means has been shown in the figures and it is not clear how it transfers the blank from the cutting means to the mould.

.It is not clear how the airstreams force the extremities of the blank onto the mould wall as the transfer means appears to be in the way.

.There is no definition of the thickness of film used in the invention and it is not clear what constitutes the "flimsy film" defined in the claims eg. a film is defined as 0.25mm or less in thickness and is therefore flimsy.

Mr Gebhardt submitted that the US patent 3324508 discloses most of the features defined in the claims of the opposed specification.  He submitted that:

.The US patent uses flimsy film for the blanks like the opposed specification, as it discloses the use of thin plastics film material for the blanks, and as any film may be called flimsy.  The US patent also discloses the use of film of 1 mil (0.024mm) thickness.  This lies in the range of thicknesses given in the declaration by Peter John Robert Heasman for flimsy film with the characteristics on page 2 of the present specification.  The US patent does not disclose any extra problems encountered with this thickness of film.

.The US patent discloses a two step cutting process for the film blanks whereas the invention uses a one step cutting process.  However the method of the invention is merely a mechanical equivalent of the US patent or involves a small workshop variation only.  The result of both cutting processes is the same but they simply achieve this result in slightly different ways, therefore they must be mechanical equivalents or workshop variations.

.The US specification discloses accurate positioning of the labels and that the labels are positively held through the whole operation except possibly when the labels descend down to the mould but the timing of this is so small that this makes no difference in the handling of the blank.  In any case the opposed specification does not disclose that the blank is held positively all the time as the blank is not held when it is lying in the shallow dish of the cutting means.

.The US patent uses a curved carrier for the blank rather than a flat carrier as defined in the invention, but this is only because of the shape of the container being made in each specification.  The skilled addressee would use the best carrier shape for the job.

.The process of the invention provides no significant advantage over the process used in the US patent.

Mr Gebhardt also discussed the novelty of each of claims 2-15.

Mr Gebhardt referred to a number of decided cases in his submissions.  The main points he made were:

.Griffin v Isaacs [1942] AOJP 739 gives the following test for novelty; where differences between the claim and prior devices consist in matters which make no substantial contribution to the working of the device or involve no ingenuity, and the merit of the two is the same then these differences cannot confer novelty to the claim.

.Werner v Bailey [1989] 85 ALR 679 teaches that if the differences between the claim and prior devices are mere mechanical equivalents or workshop variations these differences do not confer novelty to the claim.

In the present case, he submitted, the differences between the alleged invention and the US patent are merely workshop variations or mechanical equivalents and therefore the alleged invention is not novel.

Mr Hess submitted that the clarity problems raised by Mr Gebhardt were not raised in the evidence in support and there was no evidence that Dr Edward did not fully understand the specification.  He also stated that on a fair reading of the specification all of the clarity objections raised by Mr Gebhardt would be easily overcome by the skilled addressee.  The flimsy plastic film used in the invention was adequately defined by the well stated properties of the film on page 2 of the specification not by its dimensions.

With reference to the US patent Mr Hess submitted that:

.The US patent uses thin flexible films whereas the invention uses flimsy films having the properties on page 2 of the opposed specification.  The manner of handling these flimsy films is different to handling thin films.  There is no evidence that the US patent can use flimsy film.

.The two step cutting method of the US patent is completely different to the one step process of the invention and is therefore not a mechanical equivalent.

.The US patent does not disclose the positive holding of the film which is an essential feature of the invention.  In the method of the invention the film blank is always in contact with a supporting plate whereas in the US patent at one stage the film blank moves independently of the apparatus and is gravity fed to the mould.

.The US patent uses a curved carrier whereas the invention uses a flat carrier.  There is no evidence that the skilled addressee would change the curved carrier to other shapes for other shaped articles.  The flat carrier of the invention is always flat to hold the blank securely and avoid distortion of the blank.

.Dr Edward in his evidence-in-reply at paragraphs 2.2, 3.3, 4.1, 4.5, 4.6, 4.7, and 4.18 states that the process of the invention has advantages over the US patent and is not a mechanical equivalent or workshop variation.

.The US patent only needs limited accuracy to register the labels in the correct place whereas the invention provides the greater accuracy needed to locate a diffusion layer in the article.  It does this by positively holding the blank through the whole process.

Mr Hess also discussed the novelty of claims 2-15.

Mr Hess referred to a large number of decided cases in his submissions.  The main points he made were:

.Commissioner of Patents v Microcell [1958] 102 CLR 232 teaches that unless there is a clear case of invalidity the burden is on the opponent to prove that the patent cannot be granted.

.Griffin v Isaacs (supra) as well as Werner v Bailey (supra) and Nicaro Holdings v Martin Engineering (1990) AIPC 90-670 give a test for novelty as set out in Mr Gebhardt's submissions.

.Asahi KKKK v W R Grace 22 IPR 491 teaches that the test for novelty is the same as the test for infringement, ie would the method or apparatus disclosed in the US patent constitute an infringement of the claimed invention.

In the present case, he submitted, the US patent would not constitute an infringement of the claimed invention as there are many differences between the US patent and the invention, ie. the US patent has, no flimsy film, no flat carrier of larger size than the blank, no constant support for the blank, does not have one step cutting of the blank, the carrier does not collect the blank by a one step process, etc.

He also stated that the notion of mechanical equivalents or workshop variations applies when most but not all of the features of the invention are in a prior publication.  The test is to see if the integer which is not disclosed is a mechanical equivalent to one in the citation.  The test is not whether the whole device is a mechanical equivalent to another.  Therefore this is not relevant to the present case.

Finally he stated that Dr Edward in his evidence-in-reply conceded that the present invention can handle flimsy film, is an improvement on the US patent, and can handle more complex film blanks.  Therefore the merit of the two devices is not the same, the invention is a substantial improvement over the US patent, and consequently the invention is novel.

DECISION

Section 40

The first point raised by Mr Gebhardt with respect to section 40 concerns terms and parts of the description which he considered are lacking in clarity or are incorrect.  The second and third points raised by Mr Gebhardt concern omissions in the description of the preferred embodiment.  I am satisfied that from a reading of the whole specification the skilled addressee would easily be able to overcome any of the clarity problems or errors, or supply the omissions, without using any inventive faculty (Amp v Utilux [1971] 45 ALJR 123 at 128). In any case all of these matters are minor and do not affect the full description of the invention.

Concerning the last point raised by Mr Gebhardt, I agree with Mr Hess that on a fair reading, the specification is directed to blanks made of flimsy plastics film of the type having the disadvantages listed on page 2, and therefore it is not necessary to specify thicknesses.

No other section 40 problems were referred to in the evidence in support or at the hearing.  Therefore I find that the specification complies with section 40.

Novelty

Heerey J in Asahi KKKK v W R Grace (supra) at 520 quotes the test for novelty given by Aickin J in Meyers Taylor v Vicarr Industries [1977] 137 CLR 228 at 235 as follows:

"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."

It is well established that in applying this test I must ascertain whether each and every one of the essential features of the claimed invention are provided by the prior disclosure (Rodi Wienenberger AG v Henry Showell Ltd [1969] RPC 367, Flour Oxidising Co Ltd v Carr & Co Ltd (1908) 25 RPC 428).

In Nicaro Holdings v Martin Engineering (supra) at 36,282 Gummow J refers to the decision in Werner v Bailey (supra) and states:

"I accepted the proposition, drawn from his Honour's reasoning, that where the alleged anticipation discloses all the essential integers of the claimed combination, the conclusion as to lack of novelty which would follow therefrom was not avoided and the invention claimed would not be saved "merely because there were differences which might be described as mere mechanical equivalents or workshop variations" (see 85 ALR 679 at pp. 708, 716)."

He also goes on to say that:

"Where in a case such as the present, the question is whether one or more integers of a claimed combination is not disclosed in an alleged anticipation, and it is said that what is disclosed does sufficiently reveal that integer within the principles of Hills v Evans (supra), it will not be helpful to ask whether variations between the anticipation and the claimed combination answer the description "workshop improvement".  Perhaps recognising this, in reply counsel for the appellants put his case simply on the alternative basis that the differences represented no more than the substitutions of mechanical equivalents, thereby bringing his case back to the legal mainstream.  But, as will later appear, to add an essential integer otherwise missing from a claimed combination would not ordinarily be to supply a "mechanical equivalent".  The reasoning in the infringement cases, to which I have referred, suggests the contrary."

It follows that, whether considering novelty in terms of the reverse infringement test or with respect to "mechanical equivalents" or "workshop improvements", it is a requirement that to establish lack of novelty the document cited must disclose each and every essential feature of the invention as claimed.

The only citation relied on by SMITH for the ground of lack of novelty is United States patent specification 3324508.  The differences between the matter disclosed in the US patent and the invention claimed in the opposed specification, which were identified by Mr Hess at the hearing, are:

.The claimed invention uses "flimsy film" whereas the US patent discloses using "thin, flexible extensible film".

.The claimed invention cuts the film blank in a one step process whereas the US patent discloses a two step process of first cutting out the shape of the blank and then cutting the blank from the strip after the blank has advanced to the transfer region.

.The claimed invention supports the blank at all times whereas the US patent does not support the blank as it is gravity fed to the mould.

.The claimed invention uses a flat carrier to carry the blank to the mould whereas the US patent discloses a half-cylindrical carrier.

I will make the following comments on the above differences:

.As I stated previously the opposed specification read as a whole is directed to blanks made of flimsy plastics film of the type having the disadvantages listed on page 2.  The US patent on the other hand discloses using thin, flexible extensible film.  There is no evidence before me that the device disclosed in the US patent is capable of handling blanks of film of the type having the disadvantages listed on page 2.

.The one step cutting process defined in the present claims is clearly very different to the two step process of the US patent.  Dr Edward in his evidence in reply at paragraph 4.18 admits that the alleged invention can use a wider variety of blank shapes than the US patent such as circular or elliptical shapes.

.The claimed invention supports the blank as it is fed to the mould whereas the US patent uses a gravity feed.  It is clear from the opposed specification on page 10 that this feature is designed to allow more accurate positioning of the blank in the mould.

.The flat carrier defined in the claims would appear to have advantages over the half-cylindrical carrier of the US patent, such as the advantages stated by Mr Hess in his submissions.

Each of these differences relate to features which I consider to be essential to the invention as claimed.  Therefore I can only conclude that the invention claimed in the opposed specification is novel in the light of the US patent.  Given the absence in the US patent of features which are clearly essential, it is inappropriate to discuss these features in terms of mechanical equivalents or workshop improvements.

I would have come to a similar conclusion on the novelty of the claims if I had considered the Griffin v Isaacs test for novelty, as I believe these differences make a substantial contribution to the working of the invention and the merit of the two is not the same.

I am therefore of the opinion that the invention claimed in claims 1-15 is novel in the light of the US patent specification.

CONCLUSION

I have found that the opposition grounds of lack of novelty and non-compliance with section 40 have not been established. As I am satisfied that no ground of opposition mentioned in subsection 59(1) has been made out I consequently dismiss the opposition.

COSTS

In accordance with the general principle that costs follow the event, I award costs against the opponent.

(P. Spann)
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Griffith Hack & Co, Melbourne.

Patent attorneys for the opponent   :  Watermark, Melbourne.