Philip John Poole v Hunter Douglas Limited

[1995] APO 27

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application        :    No. 628384 in the name of PHILIP JOHN POOLE

Title:    WINDOW BLINDS 

Action: Opposition under Section 59(1) Patents Act 1952 by HUNTER DOUGLAS LIMITED

Decision:    Issued            .

Abstract:    That the opposition failed on the grounds of manner of manufacture, novelty and inventive step and succeeded only on the basis of minor section 40 grounds. 

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 628384 by PHILIP JOHN POOLE and an opposition by HUNTER DOUGLAS LIMITED under section 59 (1) Patents Act 1952.

BACKGROUND

Patent application No. 628384 by Philip John Poole (Poole) was filed on 17 May 1989 under the provisions of the Patent Cooperation Treaty as PCT/GB89/01005.  That application was published under the PCT as WO 90/02240, and in Australia was allocated the application number of 41907/89.  The application entered the national phase of processing on 27 March 1991, having undergone Preliminary Examination under the PCT.  The application was advertised accepted on 17 September 1992, and on 16 December 1992 the opponent Hunter Douglas Limited (Hunter) filed a notice of opposition.

The opposition is proceeding as provided for in section 234(3) of the 1990 Act.  All evidence stages were completed by 17 May 1994 and the matter heard in Canberra on 16 November 1994.

The grounds relied on in the Notice of Opposition are those available under section 59(1)(f), (g), (h) and (i) of the Patents Act 1952.

Hunter was represented by Mr Peter Heathcote of Shelston Waters (Patent Attorneys) Sydney. 

Poole was represented at the hearing by Mr Ron Haliday of Cullen & Co (Patent Attorneys) Brisbane. 

Mr Haliday requested that I allow Poole to present submissions of a technical nature about the evidence.  After some discussion, Mr Heathcote agreed to Poole making submissions on the basis that they did not include further evidence.  I advised Mr Haliday that I would allow Poole to make submissions provided they did not include new evidence, that is, any material in the nature of criticism of existing evidence, or the addition of new material, based on his own knowledge and experience.

Mr Heathcote objected, after Poole had made a number of submissions, on the basis that submissions contained many instances of new evidence.

I agreed and advised Mr Haliday the I could either adjourn the proceedings to allow Poole to request the service of further evidence if it was important to his case or I could continue with the hearing but not have any regard to Poole's submissions up to this point.  Poole did not wish to serve further evidence and agreed to continue with the hearing. 

I allowed the opponent 21 days within which to comment on Poole's submissions up to that point in the hearing if they wished and added that if they wished to take the opportunity to comment then I would have regard to all Mr Poole's submissions and decide what was admissible.  The opponent decided not to comment.

I advised Mr Poole that any further submissions he wished to make should not include any material of an evidentiary nature.

EVIDENCE

Evidence-in-support consists of declarations by:

-James Herbert Mayo of Lugano NSW Managing Director of Australian Window Furnishings (NSW) Pty Ltd together with Exhibit JHM-1..

-Peter Rex Heathcote, Patent Attorney, of Shelston Waters, Sydney NSW together with Exhibit PRH-1..

-Dr Shantha K. David, of the Department of Textile Technology, University of NSW together with Exhibits SKD-1 and SKD-2.

-Dr Michael T. Pailthorpe, of the Department of Textile Technology, University of NSW together with Exhibits MTP-0 and MTP-1 to MPT-27.

-Bernard John Young of Winsor Products Pty Ltd, Carringtion NSW together with Exhibits BJY-1 to BJY-4.

Evidence-in-answer consists of declarations by:

-Philip John Poole of Halifax, West Yorkshire, England together with Exhibits PJP-0 and PJP-1 to PJP-11.

-Manfred Reinhard of Dieburg/Hessen, Germany, a textile technologist who is part owner of textile manufacturer SGK Textilvertriebsgesellschaft G.m.b.H together with Exhibits MR-0 and MR-1.

-David Christopher Thompson of Brookdate, Alderley Edge, Cheshire, England, Managing Director of Vertika International Limited, a company in the window blinds field together with Exhibit DCT-0.

-Christopher John Pearson of Todmorden, Lancashire, England, Operations manager or Production Manager of Hunter Douglas Limited together with Exhibit CJP-0.

-Victor James Bones of Goostrey, Crewe, England, now retired but was until February 1993 Sales Director of Vertika International together with Exhibit VJB-0.

-Albert Walmsley, Managing Director of Westral Sunshades, Canning Vale, Perth, Western Australia together with Exhibit AW-0.

-David Harris, Managing Director of Suntex Pty Limited, Mansfield, Queensland, Australia.

Evidence-in-reply consists of declarations by:

-James Herbert Mayo of Australian Window Furnishings (NSW) Pty Ltd who made an earlier Statutory Declaration on behalf of Hunter Douglas Limited in evidence-in-support together with Exhibit JHM-2.

-Bernard John Young of Winsor Products Pty Ltd who made an earlier Statutory Declaration on behalf of Hunter Douglas Limited in evidence-in-support together with Exhibit BJY-5.

-Julie Somerfield of Hunter Douglas Limited, Rydalmere NSW together with Exhibits JS-1 to JS-4.

-Peter Rex Heathcote who made an earlier Statutory Declaration on behalf of Hunter Douglas Limited in evidence-in-support together with Exhibits PRH-2 to PRH-4.

-Dr Michael T. Pailthorpe, of the Department of Textile Technology who made an earlier Statutory Declaration on behalf of Hunter Douglas Limited in evidence-in-support together with Exhibit MTP-28.

THE SPECIFICATION

The accepted specification describes window blinds comprising yarn-based fabrics which are given a heat treatment to improve their shape stability, the heat treatment melting a first component but not a second component of the fabric.

On page 1 the problem to be overcome is described in the following terms:

"Window blind fabrics require to be shape stable.  This is difficult to achieve. It is particularly difficult to achieve with louvre blinds, in which the blind comprises a number of narrow vertical strips of fabric.  If the fabric lacks stability the strips of fabric will twist and curve.  Shape instability of window blind fabrics is aided by the high temperatures adjacent to windows.  For this reason window blind fabrics, in particular louvre blind fabrics, are generally coated, to stiffen them, typically using polyvinyl chloride or polyvinyl alcohol ... Furthermore, the coating process is expensive, the capital outlay on a production coating machine being very large.  Moreover, the process is not wholly successful;  the blinds frequently have to be weighted at the bottom to additionally hinder twisting or curving.
Conventional blind fabrics of the type described are not readily cleanable;  they cannot be machine washed or dry cleaned.  The synthetic coating may degrade in light conditions, causing yellowing."

On page 2 the invention is described in the following terms:

"According to the present invention there is provided a window blind comprising a fabric, wherein the fabric comprises a monofilament yarn and/or a yarn made up of a plurality of staple fibres or filaments, said yarn providing a low melt component of the fabric, which low melt component melts at a temperature of at least about 110oC, the fabric further comprising a high melt component which is stable against melting or degradation at the temperature at which the low melt component melts, the fabric having been subjected to a temperature above the melting point of the low melt component but below the melting or degradation point of the high melt component, so as to cause the low melt component to adhere to the high melt component."

The accepted specification contains ten claims with claims 1 and 9 being independent.

1.   A window blind comprising a fabric, wherein the fabric comprises a monofilament yarn and/or a yarn made up of a plurality of staple fibres or filaments, said yarn providing a low melt component of the fabric, which low melt component melts at a temperature of at least about 110oC, the fabric further comprising a high melt component which is stable against melting or degradation at the temperature at which the low melt component melts, the fabric having been subjected to a temperature above the melting point of the low melt component but below the melting or degradation point of the high melt component, so as to cause the low melt component to adhere to the high melt component.

9.   A method of making a window blind, the method comprising the steps of forming a fabric therefore from a monofilament yarn and/or a yarn made up of a plurality of staple fibres or filaments, said yarn providing a low melt component of the fabric, which low melt component melts at a temperature of at least about 110oC, the fabric further comprising a high melt component which is stable against melting or degradation at the temperature at which the low melt component melts, the method comprising: forming the fabric from the yarn; subjecting the fabric to a temperature above the melting point of the low melt component but below the melting or degradation point of the high melt component, so as to cause the low melt component to adhere to the high melt component; subjecting the fabric to a temperature below the melting point of the low melt component, to cause the low melt component to set; and incorporating the fabric into the window blind hardware.

SUBMISSIONS

In summary, the major submissions of the opponent were as follows.

1. The alleged invention is that the fabrics described in the specification are useful in making window blinds.  The only alleged novel aspect of the described invention is the discovery that such fabrics can be used as window blinds.  This is not an invention but a mere discovery.  The fabrics used are well known, their properties are well known and the applicant is merely using those well known properties for an alleged new purpose.  Given that the fabrics are well known, what has the applicant invented?  What problem has he overcome or solved?  What inventive step has he made?

The applicant has not discovered any new, previously unknown property of such materials which make them particularly useful for window blinds.  The applicant points to washability and soft handling, however, neither of these features was new in relation to these fabrics and even if it were, the alleged invention is in no way limited to fabrics having such characteristics.

1. The alleged invention is not for a manner of new manufacture.

See Commissioner of Patents v Microcell 1958 CLR 232 and NV Philips Gloeilampenfabrieken and Anor. v Mirabella International Pty Ltd 26 IPR 513. The applicant's alleged invention sits squarely within the parameters set down in the Microcell and thus does not constitute a manner of new manufacture within the meaning of the Act.

1. The claimed invention is not novel as all the essential features of the claimed invention were published by the use of the fabrics exhibited to the Bernard Young declaration, namely, the Suntex, Spectra Shade and Sheer wave in Blind Products prior to the priority date of the present application.

US Patent No. 3654819 discloses all the essential features of the fabric claimed and further refers to the use of such fabrics in screens.  It is submitted that the term "screen" is the mechanical equivalent of a window blind, and thus the claimed invention lacks novelty.  It was submitted that the common use of these fabrics in insect and shade screen prior to 1988 is analogous to use in a window blind.

In respect of claims directed to a method of making a window blind, there is no novelty in applying well known fabrics to an alleged new purpose.  It is a well known tenet of patent law that there is no novelty in novelty of purpose.

1. It was submitted that the alleged invention as claimed does not involve the exercise of inventive ingenuity in the light of common general knowledge in Australia at the priority date.

The fabrics of the invention were common general knowledge in Australia at the priority date of the claims.  Their properties and characteristics were clearly defined and well known.  The applicant is seeking to monopolise their use for a purpose to which they are well suited.  The specification of the present application is wholly silent as to making the window blind apart from commonplace steps such as cutting and slitting.  The applicant clearly considers that a person skilled in the art, once given the fabric, could easily make, without further instruction, a window blind according to the invention.

The subsidiary claims add nothing which could be considered inventive.  They merely define features which were common general knowledge in the art.

1. Submissions were made on a number of clarity issues referred to in the statement of grounds and particulars.

In summary, the applicants submissions were as follows:

1. The applicants invention is solely concerned with a window blind and the applicant is the first person to have produced or to even have considered producing a window blind from such a fabric.

1. The applicant will demonstrate from the evidence that such an invention was not an obvious step to make as considerable time and experimentation and endeavour was involved in producing this commercially successfully product.

1. The opponent is confusing the question of what constitutes "manner of manufacture" as required by subsection 59(1)(f) with what constitutes a manner of new manufacture with the emphasis here being on the word new.  The statements appear to be directed wholly to the question of novelty and not to manufacture with which this particular subsection is concerned with. Referred to NRDC Application 102 CLR 253 where it was stated that the correct question to ask is "is this a proper subject of letters patent according to the principles which have been developed for the application of sect 6 of the Statute of monopolies". The applicant says that if the manufacture offers some advantage which is material in the sense that it belongs to a useful art as distinct to a fine art and its value to the country is in the field of economic endeavour then a patentable invention is disclosed.

The advantage of the applicants blinds made from the selected fabrics relate to the washability aspect, the shape retention aspect, the stiffness, the textile feel and so forth.  These are all described in the applicants specification such as at page 2 lines 15 to 26. 

Blinds relate to a useful art and the production and sale of such blinds is in the field of economic endeavour, consequently the basic requirements of manufacture as laid down in the NRDC case are met.

The allegation that the invention involves "the utilization of known properties of a known material" is not correct.  Firstly, the applicant is not claiming a fabric but a window blind, that is a product made from a fabric.  Secondly, the fabric itself was not prior to the invention known to have the properties of being "shape stable" and "stiff", (see page 2 line 16 of the specification) having "a textile feel rather than the feel of a synthetic polymer" (see page 2 line 18), being "washable under normal or commercial conditions without shrinkage or stretching" (see page 2 line 23 to 24) and that "all washing can be generally carried out without damage to the fabrics" (see page 2 lines 25 to 26).  It must be stressed that these properties were not known prior to the applicants invention and the opponents evidence does not show that these properties were previously known.

Even if it could be proved that some of these properties were known prior to the applicant's invention then the applicant maintains that there would still be patentability in blinds made from these fabrics.

Referred to Muntz v Foster 2 WPC 93 and L & G's Application 58 RPC 21.

1. Subsection 59 (1)(g).  The opponent recites 26 patent specifications only 2 of which are Australian applications.  The leading case in Australia dealing with obviousness is Minnesota Mining & Manufacturing Co v Beiersdorf 1969 FSR 671. Here the question of obviousness was formulated as follows

"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."

The majority of the cited specifications are from different field's of technology to the blind industry and there is no reason what so ever why the hypothetical addressee should look at these specification let alone combine their teachings in some way.  The applicant submits that even if the disclosures of citations could be combined one would still not be in the position of saying the applicants fabric would be suitable for manufacturing blinds and have the peculiar properties the applicant has found.

The question of obviousness and lack of inventive step has not been established.

1. Sub-section 59(1)(h).  The applicant submits that none of the documents cited provides a clear specific disclosure or even remote suggestion that window blinds had previously been made or even contemplated to be made from the particular fabric chosen by the applicant.

The test for novelty set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, (1977) CLR 228 at page 235 (see also 13 ALR 605 at page 611), 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 oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."

It follows from this test that, a. If a citation discloses all the features of a claim the claim will lack novelty, however, b. if the citation does not disclose all the features of the claim, the claim will still lack novelty if the citation discloses all the essential features of the claim, but c. if a citation does not disclose an essential feature of the claim the claim is novel.

Since no citation raised by the opponent, a. discloses all the feature of the applicants claim 1, that is, a window blind made from the blind fabric and b. it is clear that the concept of the fabric being used as a blind is an essential feature of the applicant's claim 1 and c. the applicant's claim 1 is, ipso facto, novel.

The opponent has made specific reference to three prior art specifications.  These are US patents 3645819, 3616149 and 3618141.  Presumably out of all the citations these are the only ones the opponent thinks are significant.

Firstly, US patent 3645819 is concerned with manufacturing multicore yarn filaments.  The filaments can be used to make bow strings, fishing nets, etc.  These filament yarns are stated to have a rough surface.  it cannot therefore possibly be alleged that the product can be suitable for manufacturing blinds where a smooth textile feel is required.  This patent teaches away from the applicants invention. 

US patent 3616149 discloses high melt low melt fabrics and various uses of same, such as for hats wall panellings, screens, shirt collars and so forth.   However, once again there is no teaching that the fabric can be used unsupported in window blinds as in the applicants case.  There is no suggestion that this product has properties of washability or textile feel as does the applicants product.

US patent 3618141 is concerned with fabric for stiffening garments such as waist bands, collars and cuffs.  Yet again there is no disclosure of use as a window blind or any suggestion that the fabric can be used unsupported or have the properties of the applicant's window blinds.

Consequently none of these citations establish lack of novelty of the applicant's invention.

1. The opponent alleges that given the well known properties of the yarn and the fabric its use as a blind does not confer novelty particularly having regard to the fact that a person skilled in the relevant art could consider any fabric to be a candidate for use in a blind and a dimensionally stable fabric to be particularly so.  The applicant submits that a person skilled in the art may consider any fabric to be a candidate for use as a blind but this does not mean that the person skilled in the art would select the applicants particular fabric in the absence of any knowledge of the useful properties of that fabric.  Any suggestion that the applicant's fabric would have been selected would be no more than an ex poste facto analysis and the courts have long held that to be an untenable action.  See British Westinghouse Electric & Manufacturing Co v Braulik 27 RPC 209 where at page 230 the following statement was made

"When it has been established that it is easy to show how it might be arrived at by starting from something known and taking a series of apparently easy steps this ex poste facto analysis of inventions is unfair to the inventor and is in my opinion not countenanced by English patent law".

The applicant therefore believes that the opponent's position in this regard is also untenable.

1. The opponent alleges that the alleged invention is a workshop variant of matter which was known in Australia before the earliest priority date of the opposed specification.  The applicant understands a workshop variant as something a workman working along previous lines would have come to.  The test has been said to be whether the invention would in effect suggest itself, eg. see Patents for Inventions by TA Blanco White 4th Edition at section 4-212.  The answer to this test is no. 

Workers in the blind industry were almost totally concerned with finding better liquids or solutions to cope with fabric instability.  The aim was to overcome the problem of yellowing, stiffness to feel and so on, thus the worker in the field was blinkered in his outlook.  Emphasis had been totally placed on improvement of coatings and the skilled artisan did not step back from the problem and think about the significance of employing a fabric with the inherent qualities. 

What the applicant did was to take a completely new direction and by doing so achieved a very successful result.  Also evidenced by the applicant is that Hunter Douglas was extremely keen from the outset when they learned of the development to obtain a license from the applicant so that they could fully exploit the product.  The reason why it did not take out a license was because of its disagreement with the applicant, not because of any dissatisfaction with the product.  The presence of Hunter Douglas today in these proceedings gives testimony to continued interest in the product.

The correct questions to ask were put by Lord Russell in Non Drip Measure Coy Ld v Strangers Ltd 60 RPC 135 at page 142

"It is always pertinent to ask as to the article which is alleged to be a mere workshop improvement and to have involved no inventive step has it been  a commercial success, has it supplied a want."

The applicant can say without qualification that the product has been a commercial success and has supplied a want.

As the requirements stated by Lord Russell have been met there has been a true invention and not a mere workshop variation as the opponent alleges.

1. The opponent alleges that following the well established doctrine of novelty of purpose the invention lacks novelty as it the mere application of a known material.  The applicant submits that such a conclusion by the opponent is irreconcilable with the case law previously referred to wherein there is a new product having new unexpected properties.  It is not a mere question of novelty of purpose but of novelty of product.

9. Subsection 59(1)(i) - Section 40. 

a.The applicant submits that the expression "and/or" does not result in a lack of clarity in claims 1 and 9 when "and" is operative. 

b.In a proper construction of claim 5 one would not take an alternative meaning given in claims 1, 2 or 3 if that meaning was quite clearly and obviously illegitimate.  Provided that a proper clear meaning can be found in one of the alternatives then it is that meaning which is operative.

c.The phrase "in association with" in claim 5 means "together".

d.One would not construe a claim to give it an absurd meaning.  Claim 6 can be properly construed.

e.Claims preceding claim 9 do within their scopes define a fabric.  Claim 9 is referring to the fabric within the scope of those claims.

f.Claim 9 defines what the applicant considers to be the essential integers of the invention.  The method by which the high melt component is placed within the fabric is not considered to be an essential feature of the invention.  It is therefore not included in the claim.

g.A sensible interpretation of claim 10 is that the high melt component is already stabilized.  This would be apparent to the skilled addressee or any other reader of the specification.

DECISION

Section 59(1)(h) - Novelty

The basic test for anticipation is set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (supra) at page 235. That is

"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)

In my view the essential features of claim 1 are as follows:

a.   a window blind comprising a fabric.

b.the fabric comprising a monofilament yarn and/or a yarn made up of a plurality of staple fibres or filaments, said yarn providing a low melt component of the fabric, which low melt component melts at a temperature of at least about 110oC.

c.the fabric further comprising a high melt component which is stable against melting or degradation at the temperature at which the low melt component melts.

e.the fabric having been subjected to a temperature above the melting point of the low melt component but below the melting or degradation point of the high melt component, so as to cause the low melt component to adhere to the high melt component.

Claim 9

a.A method of making a window blind comprising

b.a fabric made from a monofilament yarn and/or a yarn made up of a plurality of staple fibres or filaments, said yarn providing a low melt component of the fabric, which low melt component melts at a temperature of at least about 110oC, the fabric further comprising a high melt component which is stable against melting or degradation at the temperature at which the low melt component melts,

c.the method comprising forming the fabric from the yarn;

d.subjecting the fabric to a temperature above the melting point of the low melt component but below the melting or degradation point of the high melt component, so as to cause the low melt component to adhere to the high melt component;

e.and subjecting the fabric to a temperature below the melting point of the low melt component, to cause the low melt component to set; and

f.incorporating the fabric into the window blind hardware.

Before beginning my analysis I must examine the meaning of the term "window blind".

According to Websters Third New International Dictionary (Websters) "Window blind" means "a screen used to deflect or redirect light or to restrict observation from without". 

The applicant describes "window blind", on page 6 of the specification, in the following terms

"Window blinds in accordance with the invention may, for example, be roller blinds or louvre blinds.  The invention is particularly useful in the context of louvre blinds, where the demands on the narrow, vertical fabric strips, in particular in terms of their stability, are extreme."

On page 2, the properties and advantages of the window blind fabrics are describes as:

"The fabrics of the window blinds in accordance with the invention are shape stable and stiff, relative to equivalent untreated fabrics, and resistant to humidity, but retain a textile feel rather then (sic) the feel of a synthetic polymer, which results from the present coating processes which are required with existing fabrics.

Fabrics used for window blinds of the invention are generally water washable under normal domestic or commercial conditions, without shrinkage or stretching.  Boil washing may generally be carried out without damage to the fabrics."

It seems to me from the evidence that the skilled worker has a clear understanding of what constitutes a window blind.

Consequently, I believe the term "window blind" of claim's 1 and 9 to be a screening device attached in some manner to a window and used to deflect or redirect light or to restrict observation from without.

Only two of the documents presented as particulars, 4 309 472 and AU 32078/84, describe a window blind.  The others describe a variety of uses for the fabrics disclosed, including wall hangings, screens and clothing, but do not disclose window blinds.  Consequently, they do not disclose one of the essential features, that is, a window blind, and do not deprive the claims of novelty. 

Hunter Douglas submits that the "screen" disclosed in US Patent No. 3654819 is the mechanical equivalent of a window blind.  The texture of the yarn used to make the screen is described as being "provided with a rough surface during manufacture" (column 6 of the US specification).

The word "screen", according to Websters includes a variety of devices used to shield, shelter, protect, conceal or exclude, for example, a device for protection from the heat of a fire in a fireplace, a device placed in a door or window to exclude insects,  a device that shelters and protects from injury, a device used to separate coarser particles from finer particles.  The use of screens as a device placed in windows to deflect or redirect light is not specifically defined. 

In my view a window blind is a particular type of screen.

The specific use of the screen of the US patent is not stated, consequently, there is nothing to suggest that the word "screen" is used in the "window blind" sense.  That is, a "window screen" used to deflect or redirect light or to restrict observation from without.  Therefore the question of mechanical equivalence does not arise in this instance.

Also, the invention is all about window blinds and "window blind" is an essential feature of the claims.  The doctrine of mechanical equivalents only applies if a feature is inessential.  See e.g.  R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd, (1989) 13 IPR 513.

US 4 309 472 discloses window blind slats made from linear synthetic polyester fibres which, in one embodiment, are exposed to "plastification in thermofixation means, for example a flat tenter frame" to render the articles stiff.  It does not disclose the use of a low melting component (melting point at least about 110oC) and a high melting component to stiffen a fabric by heating the fabric to a temperature between the melting points of the two components.  This document does therefore not deprive the claims of novelty.

AU 32078/84 (equivalent to EP A 134150) discloses window blind "strips knitted, woven or otherwise produced using a textile thread manufactured by coating a filament with molten synthetic plastic material and causing textile fibres to adhere to the molten coating, the strips being heated after production to cause stiffening thereof."  This document does not deprive the claims of novelty because it does not disclose the feature of heating high and low melt components to a temperature between their melting points cause the low melt component to adhere to the high melt component to produce the fabric.

Obviousness

The law in Australia in regard to obviousness under the 1952 Patents Act, was laid down in the High Court decision in Minnesota Mining and Manufacturing Company and Another v. Beiersdorf (Australia) Limited, 144 CLR 253. This required that in order that an allegation of obviousness be made out it must be established that the information relied upon had become part of the common general knowledge in Australia of those engaged in the particular art to which the invention belongs, at the priority date of the application in suit. At page 292, Aicken J. stated:

"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."

Further, in Allsop & Another v. Bintag Ltd., (1989) AIPC 90-615 at page 39-331,

"Would the hypothetical non-inventive person skilled in the art faced with the problem have taken as a matter of routine whatever steps might have led from the prior art to the invention claimed?"

The problem addressed by the specification is to produce a window blind consisting of a fabric that is shape stable, that feels like a textile product rather than a synthetic polymer and is washable.  The problem is described at page 1 of the complete specification in the following terms:

"Window blind fabrics require to be shape stable.  This is difficult to achieve.  It is particularly difficult to achieve with louvre blinds, in which the blind comprises a number of narrow strips of fabric.  If the fabric lacks stability the strips of fabric twist or curve.  Shape instability of window blind fabrics is aided by the high temperatures adjacent to windows.  For this reason window blind fabrics, in particular louvre blind fabrics, are generally coated, to stiffen them, typically using polyvinyl chloride or polyvinyl alcohol.  The result is a fabric which feels like a synthetic polymer rather than a textile product.  Furthermore, the coating process is expensive, the capital outlay on a production coating machine being very large.  Moreover, the process is not wholly successful;  the blinds frequently have to be weighted at the bottom to additionally hinder twisting or curving.

Conventional blind fabrics of the type described are not readily cleanable;  they cannot be machine washed or dry cleaned.  The synthetic coating may degrade in light conditions, causing yellowing."

The process of claim 9 is designed to produce the window blind of claim 1, which overcomes these problems.

I must determine who is the "non-inventive worker in the field of technology".  That is, a skilled but non-inventive worker in the relevant field of technology in Australia who knows the common general knowledge in the art in Australia  (American Cyanamid v Ethicon, (1979) RPC 215 and Sunbeam Corp v Morphy-Richards (Aust) Pty Ltd, (1961) ALJR 212).

The specification is directed to window blinds made from fabrics of a particular structure and to a process of making the window blind fabric.  The "person skilled in the art" in this case is a non-inventive worker skilled in the technology of making window blind fabrics with all the particular knowledge and skills that this entails.

In examining the evidence I find relevant statements about common general knowledge as follows:

.Mr James Herbert Mayo who has experience, in Australia, of making window blinds says, in his evidence in support, that "Composite fabrics had been used in Australia for many years prior to 1988 and such fabrics were common general knowledge in Australia prior to August 1988."  In referring to specific fabrics he says "It was also commonly known to coat fabrics and use heat-setting techniques."  He gives no other specific details of the art;

.Mr Bernard John Young of Winsor Products Pty Ltd is experienced in making window blinds in Australia.  In his evidence in support, Mr Young provides exhibits of composite materials which he says "have been used in blind products under the names SUNTEX, SPECTRA SHADE and SHEER WAVE, respectively.  "Each of these fabrics" he says "comprises a high melt component and a low melt component in that the inner core of the yarns are a high melt fibre (e.g fibreglass) and the outer core of the yarns is a low melt fibre (e.g PVC).  These fabrics are heat set to retain stability. "Mr Young does not describe heating fabrics to a temperature between the melting points of the low and high melt components to melt the low melt fabric to produce a stable window blind fabric with good textile feel and washability.

In comparing claim's 1 and 9 of the applicant's specification and the evidence, I find that the feature of heating the fabric to a temperature between the melting point of the high melting component and that of the low melting component (melting at least about 110oC) so as to cause the low melt component to adhere to the high melt component, is not disclosed in the evidence as part of the common general knowledge.  I think that some inventive ingenuity has been demonstrated in overcoming practical difficulties to arrive at the final form of the invention. (Gadd & Mason v Manchester Corp (1892) 9 RPC 516.

Further, there is also evidence from Mr David Harris of Suntex Pty Limited, and Mr Albert Walmsley of Westral Sunshades, who although they are not "workers skilled in the art" by my definition, provide a picture of the advantages of the fabrics of the present invention over previous fabrics.  Mr Harris says that "I know of the earlier attempts to avoid the need for coating materials for the window blind trade such as Bobtex fabric, PVC coated filament known as Suntex, Spectra Weave, and Sheer Weave, and also of the 100% Trevira Polyester fabric which is heat treated but in which the threads are not melt bonded like that in Mr Poole's patent ... the fabric described in Mr Poole's patent is superior to any of the uncoated fabrics mentioned above as well as ordinary coated fabrics, because it has the rigidity associated with a louvre blind fabric while having the softness of touch ...The biggest advantage of the fabric described in Mr Poole's patent is that it is the only truly machine washable window blind fabric on the Australian market."  These statements are generally confirmed by Mr Walmsley.

Given these advantages, I have no evidence that suggests to me that Mr Poole's invention involves an obvious selection of the claimed two component fabric to make window blinds.

In conclusion, I have nothing before me to suggest that it would have been obvious to the worker of ordinary skill in the art to heat fabrics to a temperature between the melting points of low and high melt components in the manner claimed, to produce a stable window blind fabric with good textile feel and washability.

Section 59(1)(i) - Section 40

In summary, Hunter submits that:

a.claims 1 and 9, at least, are not clear pursuant to the use of the term "and/or".  When "and" is operative the claim defines forming a fabric from a monofilament yarn and a yarn made of a plurality of staple fibres or filaments.  Accordingly, it is not clear which yarn is being referred to as "said yarn".

Poole submits that the expression "and/or" does not result in a lack of clarity in claims 1 and 9 when and is operative. 

Although the opponent is correct that the antecedent to "said yarn" is not clear, it seems to me that a fair reading of the claim would include yarns in the case where "and" is operative as being "said yarns".  Perhaps the matter could be put beyond doubt with a reference to "said yarn or yarns".

b.claim 5 is not clear when appended to claim 1 in that whilst claim 5 defines the yarn comprising the low melt component in association with the high melt component, the "or" operator in claim 1 defines a construction where a monofilament yarn provides the low melt component of the fabric.

Poole submits that in a proper construction of claim 5 one would not take an alternative meaning given in claims 1, 2 or 3 if that meaning was quite clearly and obviously illegitimate provided that a proper clear meaning can be found in one of the alternatives when it is that meaning which is operative.

Claim 5 seems perfectly clear to me, at least in so far as the "or" operator in claim 1 is concerned as this operator is merely concerned with providing an alternative yarn as the low melt component.

c.claim 5 is unclear in respect of the term "in association with".

Poole submits that the phrase "in association with" in claim 5 means "together".

I find the term "in association with" in claim 5 unclear.  Describing the meaning of the term as "together" does not make it clearer.  For instance, does the term refer to the alignment of the yarn or to the proximity of the low melt to the high melt component and how does the choice change the character of the fabric? 

d.pursuant to (a) above, the term "yarn" in claim 6 lacks a clear antecedent.  Furthermore, two additional yarns, the warp yarn and the weft yarn, are defined in claim 5 to further render the claim ambiguous when appended to claim 5.

Poole submits that one would not construe a claim to give it an absurd meaning.  Claim 6 can be properly construed and each of its appendices.

Claim 6 has a number of possible meanings.  If "yarn" refers to a particular yarn it should be identified.

e.claim 8 refers to "a fabric as defined in any preceding claim".  The preceding claims define a "window blind".

Poole submits that claims preceding claim 9 do within their scopes define a fabric.  Claim 8 is referring to the fabric within the scope of those claims.

Claim 8 refers to "a fabric defined in any preceding claim" rather than "a fabric defined by any preceding claim".  I think the meaning of the claim as it stands is clear.

f.claim 9 is unclear in that the steps of the method do not define how the high melt component is placed in the fabric.

Poole submits that claim 9 defines what the applicant considers to be the essential integers of the invention.  The method by which the high melt component is placed within the fabric is not considered to be an essential feature of the invention.  It is therefore not included in the claim.

The applicant does not rely on the placement of the high melt component with in the fabric for its inventive step or novelty.  It seems to me that this aspect of the fabric is adequately described.  In my view, a skilled addressee would be able to understand how to construct the fabric and it is therefore clear.

g.Claim 10 is unclear in that it is unclear whether the stabilization is a step of the method or whether the high melt component is already stabilized.

Poole submits that a sensible interpretation of claim 10 is that the high melt component is already stabilized.  This would be apparent to the skilled addressee or any other reader of the specification.

The paragraph in the description overlapping pages 5 and 6 says that "Optionally, a heat treatment is employed which may cause heat setting of the high melt component.  Such a heat treatment may be a step additional to the heat treatment which melts the low melt component, or one step may cause both effects."  The description goes on to give a number of methods for heat treatment.

The meaning of claim 10 is clear to me.

Section 59(1)(f) - Manner of manufacture

Poole submits that "the opponent is confusing the question of what constitutes "manner of manufacture" as required by subsection 59(1)(f) with what constitutes a manner of new manufacture with the emphasis here being on the word new.  The statements appear to be directed wholly to the question of novelty and not manufacture with which this particular subsection is concerned with."

The question of the distinction between manner of manufacture, novelty and obviousness has been considered in the Federal Court in the majority decision in NV Philips v Mirabella 26 IPR 513. In this case Northrop and Lockhart JJ (Burchett J dissenting) found that the question of the application of known characteristics of a material to a new purpose could be considered under the ground of manner of manufacture.

In CCOM Pty Ltdv Jiejing 28 IPR 481 a Full Court of the Federal Court of Australia traced the development of the concept of "manner of new manufacture". They referred to the decision in the NRDC case, supra, in which Dixon C.J. Kitto and Windeyer JJ. said:

"The word "manufacture" finds a place in the present Act [Patents Act 1952], not as a word intended to reduce a question of patentability to a question of verbal interpretation, but simply as the general title found in the Statute of Monopolies for the whole category under which all grants of patents which may be made in accordance with the developed principles of patent law are to be subsumed."

In CCOM the court continued:

"Accordingly, the phrase "any manner of new manufactures" has been interpreted over time in such a way to contain within it distinct principles or doctrines concerned with patentability ... They include the necessity for a manner of manufacture itself, for novelty, and for inventiveness.  Objections such as lack of utility may have been derived from the prohibition upon manufactures which are "generally inconvenient".  Others such as false suggestion, derived from the general law attending the writ of scire facias to recall Crown grants and the Chancery jurisdiction in respect of fraudulent grants ... The essential point is that the grounds of revocation were capable of development by common law and did so develop ...

Particular grounds of invalidity, derived from the case law, were added to the modern statutes.  Lack of inventiveness, as distinguished from anticipation, obtained a distinct statutory recognition only in this century and, in Australia, in the 1952 Act ... As this development continued, the phrase "manner of new manufactures" came to represent the residuum of the central concept with which NRDC was concerned, namely what the High Court called the relevant concept of invention."

In CCOM it was submitted that all that had been done was to select a desirable characteristic of a computer program, the ability to search, in the manner described, a data base of the type described, and to claim all computers present and future possessing that characteristic.  On this submission the court said:

"That submission should not be accepted.  It may be that such a claim lacks novelty, is obvious, or lacks utility, or there is a failure to comply with one or other of the limbs of s. 40 because, for example, the invention is not fully described or the claim is not clear and succinct.  But if such hurdles all are surmounted, then in our opinion in a case such as the present there does not remain an independent ground of objection to patentability, within the sense of para 18(1)(a) of the 1990 Act."

In the present case I believe "the hurdles are all surmounted" or can be surmounted, in the case of section 40, by amendment.  I am satisfied that window blinds, of the type contemplated by this invention, constructed using high melt and low melt components (melting above at least 110oC) by heating to a temperature between the melting points of both components to adhere the low melting component to the high melting component involves the requisite degree of inventiveness.  

Therefore, I find that the invention defined by the claims is a manner of manufacture.

CONCLUSION

I have found the opposition succeeds only in relation to section 40 matters. 

I afford the applicant 60 days from the date of this decision to propose amendments to overcome the section 40 deficiencies.

COSTS

Normally in actions of this nature costs follow the event.  I have found that the opposition has failed on the manner of manufacture, novelty and inventive step grounds and has succeeded only on the basis of some minor section 40 grounds.  Consequently, I believe that the opposition has failed to achieve its major objectives and has for all, in effect, lost its opposition.  Therefore, I award costs against Hunter Douglas.

R J Sawyer
Delegate of the Commissioner of Patents

Patent attorneys for the applicant:  Cullen & Co., Brisbane

Patent attorneys for the opponent :  Shelston Waters, Sydney.