Qingdao Bellinturf Industrial Co., Ltd v CoCreation Grass Co., Ltd

Case •

[2023] APO 11

•

15 February 2023

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Qingdao Bellinturf Industrial Co., Ltd v CoCreation Grass Co., Ltd [2023] APO 11

Patent Application:                2017414195

Title:Entirely recoverable artificial turf and manufacturing method thereof

Patent Applicant:                   CoCreation Grass Co., Ltd

Opponent:  Qingdao Bellinturf Industrial Co., Ltd

Delegate:  S.E. Howard

Decision Date:  15 February 2023

Hearing Date:  No written submissions were filed by either party

Catchwords:  PATENTS – opposition to the grant of patent – s 59 – clear enough and complete enough disclosure – clarity – claims are clear – support – claims are supported – novelty – claims are novel – inventive step – claims are inventive – subsection 60(3) – opposition unsuccessful on all grounds.

Representation:  Patent attorney for the applicant: Remarkable IP

Patent attorney for the opponent: Baxter Patent Attorneys Pty Ltd

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                2017414195

Title:Entirely recoverable artificial turf and manufacturing method thereof

Patent Applicant:                   CoCreation Grass Co., Ltd

Date of Decision:                   15 February 2023

DECISION

The opposition is unsuccessful.  Subject to appeal, I direct this application to proceed to grant.

I award costs according to Schedule 8 against Opponent Qingdao Bellinturf Industrial Co., Ltd.

REASONS FOR DECISION

BACKGROUND

  1. This matter relates to patent application 2017414195 (the application), filed in the name of CoCreation Grass Co., Ltd (the Applicant) on the 12th of December 2017. The application is a national phase entry of PCT/CN2017/115542 (publication number WO 2018/209931) which claims priority from convention application CN 201710337490.8 with a priority date of 15th of May 2017.

  2. After one examination report, the Applicant filed amendments and the application was accepted on the 22nd of June 2020.  On the 8th of October 2020, Qingdao Bellinturf Industrial Co., Ltd (the Opponent) filed a notice of opposition to the grant of the application under s59 of the Act.

  1. A Statement of Grounds and Particulars (SGP) was filed on the 8th of January 2021. On the 11th of March 2021, the Opponent filed a request to extend the time to file the Evidence in Support (EIS) until the 8th of July 2021 under Regulation 5.9(2), the request was allowed on the 16th of March 2021.  The Opponent filed the EIS on the 7th of July 2021. The Applicant filed the Evidence in Answer (EIA) on the 1st of October 2021.  Evidence in Reply (EIR) was filed on the 3rd of December 2021.

  1. I also note that the Applicant filed s104 voluntary amendments for the application on the 1st of October 2021.  An examiner issued an adverse report on the 10th of November 2021.  The amendments were subsequently refused as no further response was received.  For clarity, the subject of this hearing is in relation to the application as accepted on the 22nd of June 2020.

  1. On the 11th of November 2022, I wrote to the parties asking for submissions in chief on whether omission of a bottom layer base fabric in certain claims resulted in a lack of support. The Applicant provided submissions on the 24th of November 2022; no further submissions were filed by the Opponent.  

APPLICABLE LAW

  1. The present application is governed by the Patents Act 1990 (the Act) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (RTB Act) as the application was filed after 15 April 2013.

  2. The Opponent has the onus to satisfy me, on a balance of probabilities, that a ground of opposition to the grant exists.  Then, once satisfied, I may refuse the application or, where appropriate, give the Applicant a reasonable opportunity to amend the relevant specification to remove any ground of opposition, as per Section 60(3A) & (3B) of the Act.

GROUNDS OF OPPOSITION

  1. In the SGP, the Opponent opposed the application arguing a lack of novelty, lack of inventive step, that the specification does not comply with s40(2)(a), lack of clarity and lack of support under s40(3).      

THE EVIDENCE

Evidence filed by the parties comprises the following.

Evidence in Support

  • Declaration by Qi Zhang (‘Zhang1’) dated 7th of July 2021 with supporting Exhibits 1-4 (referred to within this decision as QZ-1 to QZ-4).

Evidence in Answer

  • Declaration by Chungui Zhao (‘Zhao’) dated 29th of September 2021 with Exhibits 1-3 (referred to within this decision as CZ-1 to CZ-3).

Evidence in Reply

  • Declaration by Qi Zhang (‘Zhang2’) dated 3rd of December 2021.

  1. Notably, the EIA and EIR are largely directed to the s104 voluntary amendments that were refused.

Further submissions in response to request to file submissions in chief

  • Applicant submissions dated 24th of November 2022 (‘Applicant’s submissions 1’).

THE SPECIFICATION 

  1. The alleged invention relates to a recyclable artificial turf and a preparation method.  The specification describes various problems with the conventional artificial turf at [0003]:

    “For the artificial turf of the above-mentioned structure, i.e. the conventional artificial turf most widely used at present, because of the presence of the Latex or the PU adhesive, it cannot be recycled after reaching service life, and can only be landfilled or incinerated. In this way, the environment is polluted on the one hand, and a lot of raw materials are wasted on the other hand.  Under the background of facing exhaustion of resources and promoting recycling, with the rapid growth of usage amount of artificial turf, the problem of recycle utilization and reuse thereof already becomes a problem required to be solved immediately, and all artificial turf manufacturers try to find methods to solve the problem, wherein the development of recyclable artificial turf already becomes a main breakthrough to solve this problem.”

  1. The specification discusses prior art which discloses a recyclable back adhesive.  This is achieved by replacing the traditional Latex or PU back adhesive with thermoplastic material.  Patent CN102808368A provides a recyclable artificial turf and preparation method including heating EVA hot melt adhesive to 160-180C which is coated onto a PP base fabric on which artificial yarn is tufted in a molten state.  The EVA hot melt adhesive fixes the artificial yarn to the PP base fabric allowing for the artificial turf to be recycled.[1]  Another example of recyclable artificial turf discussed in the specification is patent CN104060518A.  CN104060518A prepares recyclable artificial turf by tufting artificial yarn on a PP base fabric then, using a cast coating process, coating thermoplastics such as TPR, TPE and TPU onto the back side of the base fabric.[2]  CN104727202A provides a recyclable artificial turf prepared by tufting artificial yarn on a base fabric including non-woven fabric to form a semi-finished product.  An additional layer of non-woven fabric is then added to the bottom of the semi-finished product before heating the root of the artificial yarn.  Hot melt adhesive is then added between the two non-woven fabric layers and heated to adhere the root of the artificial yarn to the hot melt adhesive powder and fixing the two non-woven fabric layers.[3]

    [1] Application at [0004].

    [2] Application at [0004].

    [3] Application at [0007].

  2. The specification then further describes the problems with current methods of producing recyclable artificial turf.  To briefly summarise, current problems with recyclable artificial turf includes that the turf is too loose or easy to remove, poor drainage and poor appearance.[4]  The present invention aims to provide a recyclable artificial turf that ‘solves the problem of difficult tufting of existing artificial turf, has high tufting efficiency, has high strength, and is capable of being integrally recycled’.[5]  Additionally, the present invention aims to provide a preparation method of producing recyclable artificial turf that ‘is simple, saves labour, saves cost, is convenient to operate, and is beneficial to industrialisation’.[6]

    [4] Application at [0004]-[0009].

    [5] Application at [0011].

    [6] Application at [0012].

  3. The broadest summary of the invention is provided at [0014]:

“The completely recyclable artificial turf of the present invention, comprising artificial yarn and base fabric, wherein the base fabric includes woven fabric, the artificial yarn is tufted on the base fabric including woven fabric, the root of the artificial yarn is melted or locally melted, and the artificial yarn is integrated with the base fabric into a whole after cooling and shaping, wherein the material of the artificial yarn has a melting point lower than that of the material of the base fabric. Of course, the woven fabric itself may be base fabric.”

  1. Paragraphs [0015]-[0040] describe the various preferred features.  The described features are largely similar to the dependent claims.  The specification then describes the various advantages of the alleged invention.  Firstly, the specification suggests that by having a base fabric and artificial yarn with different melting points, the base fabric is not affected while the root of the artificial yarn is partially melted.[7] A, second described advantage is that the woven fabric of the base fabric has a high mechanical strength achieved via a method of wire drawing, heat treating, warping and weaving.[8]  Thirdly, thermal shrinkage performance of the base fabric is said to be improved by spreading a layer of hot melt adhesive powder on the surface of the base fabric.  This also strengthens the fix between the base fabric and the artificial yarn.[9]  The fourth advantage is achieved by adding a heat-treated mesh fabric into the tufted base fabric structure. The specification claims this reduces thermal shrinkage and improves the strength of the artificial turf.[10]  Lastly, the bottom-layer fabric is thermally compounded to protect the bottom of the artificial turf.[11]  The specification suggests that ‘by adding a layer of base fabric at the bottom of the artificial turf, the friction between the root of the artificial yarn and the foundation is effectively avoided, thereby reducing requirements for the field foundation, saving labour and financial resources, and reducing pavement costs’.[12]

    [7] Application at [0042].

    [8] Application at [0044].

    [9] Application at [0047].

    [10] Application at [0050].

    [11] Application at [0053].

    [12] Application at [0055].

  2. The preparation method for the artificial yarn is described at [0065]-[0067]:

    (1)   Uniformly mixing 50 shares of 5000S resin, 40 shares of 7042 resin, 8 shares of colour master batch, and 2 shares of processing aid (including stabilizer, antioxidant, antistat, anti-blocking agent and dispersing agent); and

    (2)   Controlling the extrusion temperature to be 190-230℃, setting the draw ratio to be 5-6, controlling the oven temperature to be 95-100℃, extruding by a single screw extruder, performing wire drawing, and preparing the artificial yarn.

  3. The specification describes 4 modes for heat treatment of the mesh fabric, the non-woven fabric or the compound fabric. This includes heating by oven at either a temperature between 170-175℃ and a linear speed of 13m/min, a temperature of 180-185℃ and a linear speed of 15m/min, a temperature of between 185-190℃ and a linear speed of 4.5m/min or a temperature of 195-200℃ and a linear speed of 7m/min.[13]

    [13] Application at [0068]-[0072].

  1. Preparation method for the control sample (CN104727202A) is then disclosed. This includes making a base fabric by adhering a non-woven fabric and mesh fabric together by spreading and melting a hot melt adhesive powder. The control sample includes two different base fabrics A and B of different compositions. Base fabric A comprises 100g/ of PET non-woven fabric and 80g/. Base fabric B comprises 80g/ of PET non-woven fabric and 120g/. The artificial yarn is tufted on base fabric A before it passes through a heating roller with base fabric B.[14]

    [14] Application at [0073]-[0076].

  1. The specification then describes 23 preferred embodiments and methods of producing each in paragraphs [0078]-[0176]. The embodiments are summarised in Table 1 below:

THE CLAIMS

  1. There are 22 claims, of which claim 1 and 17 are independent.  The claims are directed to recyclable artificial turf and are provided in Annexure A.  Independent claims 1 and 17 are reproduced here:

1. A completely recyclable artificial turf, comprising artificial yarn and base fabric, wherein the base fabric includes woven fabric, the artificial yarn is tufted on the base fabric including woven fabric, the root of the artificial yarn is melted or locally melted, and the artificial yarn is integrated with the base fabric into a whole after cooling and shaping, wherein the material of the artificial yarn has a melting point lower than that of the material of the base fabric, wherein for the base fabric, before the artificial yarn is tufted, hot melt adhesive powder is spread on the bottom surface of the base fabric through a powder spreading procedure and wherein the base fabric includes mesh fabric.

17. The preparation method for the completely recyclable artificial turf according to any one of claims 1-16, comprising the following steps:
(1) spreading hot melt adhesive powder on the woven fabric and the mesh fabric simultaneously through a powder spreading procedure to prepare base fabric, or spreading powder on the woven fabric first and then combining the woven fabric with the mesh fabric to prepare base fabric;
(2) tufting artificial yarn on the base fabric to prepare same into a semi-finished product; and
(3) heating the bottom of the semi-finished product through a thermal compounding procedure, so that the root of the artificial yarn is melted or locally melted and is melted with the hot melt adhesive powder, and the artificial yarn is integrated with the base fabric into a whole after cooling and shaping, thus obtaining the completely recyclable artificial turf.

CLARITY AND CONSTRUCTION

  1. The claims must be clear and succinct according to s40(3) of the Act. The requirement for the claims to be clear does not mean that terms used in claims must be precise or absolute, as noted in Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890 at [81]; (2001) 49 IPR 331 at 349 (and cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121; (2008) 77 IPR 229) (Austal Ships):

    “Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to the intended use...The consideration is whether, on any reasonable view, the claim has meaning...In determining this, the expressions in question must be understood in a practical, common sense manner... Absurd constructions should be avoided...and mere technicalities should not defeat the grant of protection...”

  1. In particular, the claims are considered to provide a workable standard if a third party could, without difficulty, determine whether an act falls within the scope for the claim; see Monsanto Company v commissioner of Patents (1974) 48 ALJR 59 (Monsanto) at 60-61:

“There will, I think, in the present case be no difficulty in a third party ascertaining whether or not what he proposes to do falls within the ambit of the claim… For these reasons I do not regard the use of the adjective “substantial” as giving rise to any uncertainty.”

  1. Guidance on how to construe the claims is found in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 (Lundbeck) at [118]-[120]:

    “…the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear.  Words used in a specification, including the claims, are to be given the meaning which the person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification… construction of a specification, including the claims, is ultimately a question of law for the Court… While the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole… It is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification… However, terms in the claim which are unclear may be defined or clarified by reference to the body of the specification...”

  1. While the Opponent did not provide written submissions, they identified several claims as lacking clarity in the SGP.  

Clarity of claim 1

  1. The Opponent argued that claim 1 lacked clarity because it was directed to a product but is defined by a method. The Opponent and Zhang1 also argued that claims 3, 11, 12 and 14 lack clarity for similar reasoning.  I do not agree with this reasoning.  Defining a product by the process in which it is produced does not render the claim unclear.  It is clear that the claims are directed to artificial turf only when produced by the claimed method.

  1. The Opponent and Zhang1 submitted that it is not clear from claim 1 or 2 where to spread the hot melt adhesive powder because ‘bottom surface’, as used in the specification, refers to either ‘the surface with hot melt adhesive powder’ or the ‘surface of the mesh fabric’ Therefore, they argued that it is not clear what the ‘bottom surface’ refers to before the hot melt adhesive powder is spread and the artificial yarn tufted.

  1. Claim 1 is reproduced below:

1. A completely recyclable artificial turf, comprising artificial yarn and base fabric, wherein the base fabric includes woven fabric, the artificial yarn is tufted on the base fabric including woven fabric, the root of the artificial yarn is melted or locally melted, and the artificial yarn is integrated with the base fabric into a whole after cooling and shaping, wherein the material of the artificial yarn has a melting point lower than that of the material of the base fabric, wherein for the base fabric, before the artificial yarn is tufted, hot melt adhesive powder is spread on the bottom surface of the base fabric through a powder spreading procedure and wherein the base fabric includes mesh fabric.

  1. When reading the claim as a whole, the ‘hot melt adhesive powder is spread on the bottom surface of the base fabric’.  Therefore, the bottom surface is the lower surface of the base fabric.  The base fabric is further defined in the claim as including woven fabric and, later, also a mesh fabric.  As discussed above in Lundbeck while the specification should be read as a whole it is not permissible vary the words by reference to the specification.  In this instance the claims are clear. The ‘bottom surface’ refers to the bottom surface of the base fabric which includes woven fabric and mesh fabric.

  1. I conclude claim 1 is clear.  

Clarity of claim 7

  1. In Zhang1 it is argued that claim 7 lacks clarity because it is not clear if the base fabric is the same as that referred to in claim 1. 

  1. Claim 7 recites:

7. The completely recyclable artificial turf according to claim 1, wherein an additional layer of base fabric is thermally compounded on the bottom surface of the base fabric on which the artificial yarn is tufted.

  1. Claim 7 includes ‘an additional layer of base fabric’ which indicates this is distinct from ‘the base fabric’ of claim 1.  Claim 7 is clear.  

Clarity of claim 8

  1. Zhang1 argued that claim 8 lacked clarity because it is not clear what the term ‘one surface’ refers to.  They also argued that it is unclear if ‘the hot melt adhesive’ is the same as that of claim 1.

  2. Claim 8 is as follows:

8. The completely recyclable artificial turf according to claim 7, wherein the material of the base fabric thermally compounded on the bottom surface of the base fabric on which the artificial yarn is tufted has a melting point higher than that of the material of the artificial yarn, and for the base fabric before being thermally compounded, hot melt adhesive powder is spread on one surface thereof through a powder spreading procedure.

  1. The ‘one surface’ is referring to a surface of the base fabric.  As described in claim 8, before the ‘base fabric’ and the ‘base fabric thermally compounded on the bottom surface of the base fabric’ are thermally compounded, hot melt adhesive powder is spread on a surface of the base fabric.  It is evident that the ‘one surface thereof’ is referring to the base fabric described in the previous sentence.  Thus, I do not consider this to render claim 8 unclear.  

  2. With regards to ‘hot melt adhesive powder’, claim 8 further defines the process of preparing the base fabric wherein hot melt adhesive is spread on a surface of the base fabric prior to being thermally compounded.  It is of no consequence if the ‘hot melt adhesive powder’ is the same as that of claim 1 as it used as an adhesive and may be used on multiple locations.

  3. I conclude that the scope of claim 8 is clear for the reasons provided above.

Clarity of claim 13 and 14

  1. Zhang1 submits that claims 13 and 14 lack clarity because it is not clear whether ‘the mesh fabric’ in these claims refers to the mesh fabric in the base fabric or the compound fabric.

  2. Claims 13 and 14 are below:

13. The completely recyclable artificial turf according to claim 9 or 12, wherein the gram weight of the non-woven fabric is 50-150g/m2, the gram weight of the mesh fabric is 80-150g/m2, and the material of the non-woven fabric or the mesh fabric is polyethylene terephthalate.

14. The completely recyclable artificial turf according to claim 13, wherein the material of the non-woven fabric or the mesh fabric is polyethylene terephthalate, the heating temperature thereof during heat treatment ranges from 170℃ to 200℃.

  1. Claim 14 is appended to claim 13 which is in turn appended to claim 9 or 12.  I consider ‘the mesh fabric’ to be referring to the mesh fabric of the base fabric as defined first in claim 1.  If it was intended to refer to the gram weight of the compound fabric, I believe this would have been explicitly referred to in the claim.  

  1. Claims 13 and 14 are clear and comply with s 40(3).

Clarity of claim 17

  1. With regards to claim 17, the Opponent argued it is unclear whether the two occurrences of ‘base fabric’ is intended to refer to the same or different features.  Furthermore, they submitted that it is not clear when to perform the ‘cooling and shaping’ step.

  2. Claim 17 recites:

17. The preparation method for the completely recyclable artificial turf according to any one of claims 1-16, comprising the following steps:

(1) spreading hot melt adhesive powder on the woven fabric and the mesh fabric simultaneously through a powder spreading procedure to prepare base fabric, or spreading powder on the woven fabric first and then combining the woven fabric with the mesh fabric to prepare base fabric;
(2) tufting artificial yarn on the base fabric to prepare same into a semi-finished product; and
(3) heating the bottom of the semi-finished product through a thermal compounding procedure, so that the root of the artificial yarn is melted or locally melted and is melted with the hot melt adhesive powder, and the artificial yarn is integrated with the base fabric into a whole after cooling and shaping, thus obtaining the completely recyclable artificial turf.

  1. When reading the claim as a whole it is clear that the ‘base fabric’ of claim 17 includes ‘the woven fabric’ and ‘the mesh fabric’. This would indicate that this is the same woven fabric and mesh fabric of claim 1. Therefore, it is clear that the ‘base fabric’ in claim 17 is intended to refer to the same base fabric of preceding claims. Since any ambiguity is easily resolved by reading the claim as a whole, the scope of ‘base fabric’ in claim 17 is clear.  

  1. According to the claim, the ‘cooling and shaping’ refers to the step that occurs after the root of the artificial turf is melted or locally melted in order to integrate the artificial turf with the base fabric. I consider this feature to be sufficiently clear.

  1. Therefore, claim 17 does not lack clarity.

Clarity of claim 18

  1. The opponent Argued that claim 18 lacks clarity when appended to claims 1-8 as claim 18 includes process steps for non-woven fabric and claims 1 to 8 include products without non-woven fabric.  The also argued that claim 18 is not succinct because a feature of claim 18 is the same as that for claim 17 and that it lacked clarity because the relationship between the features “bottom-layer base fabric”, “base fabric”, the “other base fabric” and “the grass root” is unclear.

  2. Claim 18 is as follows:

18. The preparation method for the completely recyclable artificial turf according to claim 17, comprising the following steps:

(1) spreading a layer of hot melt adhesive powder on one surface of the non-woven fabric or the compound fabric of non-woven fabric and mesh fabric through a powder spreading procedure, to prepare bottom-layer base fabric;
(2) spreading powder on the woven fabric and the mesh fabric simultaneously through a powder spreading procedure to prepare base fabric, or spreading powder on the woven fabric first and then combining the woven fabric with the mesh fabric to prepare base fabric for tufting;
(3) tufting artificial yarn on the base fabric to prepare same into a semi-finished product, and covering the other base fabric on which powder is spread on the bottom surface of the semi-finished product, the surface with hot melt adhesive powder of the base fabric coming into contact with the grass root; and
(4) heating the surface without hot melt adhesive powder of the bottom-layer base fabric through a thermal compounding procedure, so that the root of the artificial yarn is melted or locally melted and is adhered together with the melted hot melt adhesive powder, and the artificial yarn is integrated with the two layers of base fabric into a whole after cooling and shaping, thus obtaining the completely recyclable artificial turf.

  1. Claim 18, in addition to preparing a base fabric, includes the preparation of a bottom-layer base fabric which comprises a non-woven fabric or a compound fabric of non-woven fabric and mesh fabric.  It is clear that the bottom-layer base fabric is distinct from the base fabric described in preceding claims.  Firstly, there is nothing in the previous claims that exclude the addition of a bottom-layer base fabric comprising non-woven fabric, as defined in claim 18.  While ‘the bottom-layer fabric’ of claim 18 lacks antecedents when appended to claims 17 and further any of 1-8, in my opinion this does not amount to a lack of clarity as any ambiguity is easily resolved by reading the claim as a whole.  

  2. I also note Zhang1 argued that claims 11, 19 and 20 lack clarity because they are appended to claims that do not include non-woven fabric. However, for similar reasoning above these claims are clear.

  3. Secondly, I do not consider the presence of a redundant feature is sufficient to render a claim unclear unless there is difficulty in ascertaining the scope according to the principles of Monsanto and Austal Ships discussed above. 

  1. With respect clarity of ‘other base fabric’, I made the following observations.  Paragraphs [0033]-[0037] describe a preparation method which includes both a base fabric and a bottom-layer base fabric.  There is reference to ‘the other base fabric’ in paragraph [0036] which similarly to claim 18, is referring to the ‘base fabric on which powder is spread on the bottom surface of the semi-finished product’.  From both claim 18 (as appended to claim 1) and paragraph [0036], it appears that ‘the other base fabric’ is the semi-finished product with hot melt adhesive powder spread on a bottom surface.  The semi-finished product is the base fabric with tufted artificial yarn and, consistent with claim 1, a method step includes spreading hot melt adhesive on a bottom surface of the base fabric comprising tufted artificial yarn.  Therefore, any ambiguity regarding ‘other base fabric’ is easily resolved by reading the term in context of the claims and specification.

  1. Regarding ‘the grass root’, according to claim 18 feature (4) the artificial yarn is adhered to the base fabric via hot melt adhesive.  Given that ‘the grass root’ of feature (3) comes into contact with the hot melt adhesive of the base fabric it would be absurd to construe ‘the grass root’ as anything other than the root of the artificial yarn already defined.  

  1. For the reasons provided above claim 18 does not lacks clarity.

Clarity of claims 21 and 22

  1. Zhang1 argued dependant claims 21 and 22 are not clear because dependent claims 21 and 22 include a thermal compounding process that is not defined in claims 17 or 18.

  1. Claim 21 and 22 are provided below:

21. The preparation method for the completely recyclable artificial turf according to claim 17 or 18, wherein the powder spreading procedure is performed by heating the hot melt adhesive powder in the mode of thermal radiation by an oven or direct heating by a heating roller, so that the hot melt adhesive powder is melted to produce adhesiveness and then is adhered to the surface of the woven fabric or the non-woven fabric, or the woven fabric and mesh fabric, or the non-woven fabric and the mesh fabric are adhered together, to form a whole after cooling and shaping.

22. The preparation method for the completely recyclable artificial turf according to claim 17 or 18, wherein the thermal compounding procedure is performed by heating the root of the artificial yarn or the surface without hot melt adhesive powder of the base fabric in the mode of thermal radiation by an oven or direct heating by a heating roller, so that the root of the artificial yarn and the hot melt adhesive powder are melted to produce adhesiveness and then are combined with each other, and the artificial yarn is firmly fixed onto the base fabric through cooling and shaping.

  1. Both claims 21 and 22 further define the powder spreading procedure.  The powder spreading procedure is present in each of claims 1, 17 and 18.  Therefore the claims are clear.

Clarity of claim 19

  1. In the SGP the Opponent argued that dependent claim 19 is not clear as the method steps only occur in claim 19 and the paragraph [0038] of the specification without clarification within the context of any embodiments.

  1. Claim 19 is provided below:

19. The preparation method for the completely recyclable artificial turf according to claim 18, wherein the mesh fabric, the non-woven fabric or the compound fabric of the non-woven fabric and the mesh fabric has been heat-treated, wherein the heat treatment method for the mesh fabric or the nonwoven fabric is as follows: heating the mesh fabric or the non-woven fabric in the mode of thermal radiation by an oven or direct heating by a heating roller, controlling the heating temperature between the glass transition temperature and the melting point of the material, and completing heat treatment of the non-woven fabric or the non-woven fabric after shaping; there are two heat treatment methods for the compound fabric of the non-woven fabric and the mesh fabric, one method is as follows: performing heat treatment on the non-woven fabric and the mesh fabric respectively in the mode of thermal radiation by an oven or direct heating by a heating roller, controlling the heating temperature between the glass transition temperature and the melting point of the material, and thermally adhering the two together through a powder spreading procedure to form compound fabric; and the other method is as follows: stitching the non-woven fabric and the mesh fabric together first through a stitching process, then heating the compound fabric in the mode of thermal radiation by an oven or direct heating by a heating roller, controlling the heating temperature between the glass transition temperature and the melting point of the material, and completing heat treatment after and shaping.

  1. Claim 19 provides two alternative heat treatment methods.  The first method involves using an oven or a roller and the second method involves stitching the non-woven fabric and the mesh fabric first before heat treatment using an oven or a roller.  The scope of claim 19 is clear.  

Antecedent issues

  1. I also note the Opponent pointed out several antecedent issues within the claims which I have listed below:

Claim 1: “the root”, “the material”, “the bottom surface”
            Claim 5: “the material”
            Claim 6 or 13: “the gram weight”
            Claim 16: “the powder spreading amount”
            Claim 17: “the bottom” and “the root”
            Claim 18: “the other base fabric” and “the grass root”

  1. While I agree that some features outlined above lack antecedent, the Opponent provided no reasoning for why this would amount to a lack of clarity.  It is evident that the features described above do not result in any ambiguity when read in the context of each claim.  For example, ‘the material’ in claim 1 is referring to material used to form the artificial yarn and subsequently material used to form the base fabric.  A further example is that there is no prior reference to ‘the bottom surface’ in claim 1 however it is clear this is referring to a bottom surface of the base fabric.

Clarity Conclusion

  1. I conclude that the claims are clear and therefore comply with s40(3) of the Act.  This ground of opposition has been unsuccessful.

CLEAR ENOUGH AND COMPLETE ENOUGH DISCLOSURE

  1. The requirement for clear enough and complete enough disclosure was introduced into the Act as part of the RTB Act. S40(2)(a) reads as follows:

    “(2) A complete specification must:

    (a)   Disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.”

  2. As explained in the Explanatory Memorandum (‘EM’) to the RTB legislation at Schedule 1, item 2, enablement amounts to a requirement that “...sufficient information must be provided to enable the whole width of the claimed invention to be performed by the skilled person without undue burden, or the need for further invention”. As per Schedule 1, item 8, of the EM, the intention is for s40(2)(a) be given the same effect as corresponding provisions of UK legislation and the European Patent Convention. 

  3. In CSR Building Products Limited v United States Gypsum Company [2015] APO 72 (‘CSR’) a Delegate of the Commissioner considered a number of relevant UK and EPO to arrive at the following approach to s40(2)(a) at [95]:

    “In order to decide whether a specification provides a disclosure as required by section 40(2), it is necessary to:

    i.construe the claims to determine the scope of invention as claimed,

    ii.construe the description to determine what it discloses to the person skilled in the art, and

    iii.decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.”

  4. In the SGP the Opponent broadly suggested that the application did not comply with s40(2)(a) because ‘terminologies used in the specification are not consistent, structural features of the product(s) are not described and defined clearly, and method steps are not described logically’.

  5. Further detail on how, according to the Opponent, the application lacks clear enough and complete enough disclosure can be found in Zhang1 in Table 3. Zhang1 argues the specification does not comply with s40(2)(a) for the following reasons:

    (1)None of Figures 1 to 8 is described with reference to any of the Embodiments 1 to 23.

    (2)Figures 6 to 8 include a mesh fabric separate from the base fabric, while the specification describes the base fabric as including woven fabric and the mesh fabric.

    (3)Zhang1 argues that there is not clear enough and complete enough disclosure of the structure of the bottom-layer base fabric. This is because paragraph [0063] suggests Figure 8 includes a bottom-layer base fabric, however Figure 8 omits this feature.

    (4)The specification appears to use different terms to refer to the bottom-layer base fabric. For example, a bottom-layer of base fabric, an additional layer or base fabric or the other base fabric. Furthermore, they argued that none of these terms was used in describing Embodiments 20 to 23.

  6. I note that the arguments raised appear to be related to inconsistencies within the body of the specification and the figures.  None of the arguments assert that a person skilled in the art could not perform the invention across the entire scope of the claims nor is there evidence to establish that there is insufficient disclosure.  In light of the arguments presented, there is insufficient evidence to conclude that there is not clear enough or complete enough disclosure of everything that falls within the scope of the claims. 

  7. Therefore, there is clear enough and complete enough disclosure of the claims. This ground of opposition has not been made out.

SUPPORT FOR THE CLAIMS

  1. Sub-section 40(3) as amended by the RTB Act requires that the claims must be supported by matter disclosed in the specification.

  2. In CSR Building Products Limited v United States Gypsum Company (CSR) [2015] APO 72 at [115], the delegate took the following approach to determine whether the claimed matter is supported by the matter disclosed in the specification:

    (a) Construe the claims to determine the scope of the invention claimed.

    (b) Construe the description and the technical contribution to the art, that is how far the concept has carried forward the state of the art.
    (c) Decide whether the claims are supported by the technical contribution to the art.

  3. This approach was approved in Merck Sharp & Dohme Corporation v Wyeth LLC (Merck Sharp) (No 3) [2020] FCA 1477 at [546]-[547]:

“In CSR Building Products Ltd v United States Gypsum Company [2015] APO 72, Dr S D Barker adopted the summary provided by Aldous J in Schering Biotech at 252 – 253, which has been often followed in the United Kingdom (emphasis added):

...to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification.  Thereafter the court’s task is to decide whether the invention in the claims is supported by the description.  I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support.  The word “support” means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.

That approach encapsulates broadly the claim support obligation under s 40(3).  To it may be added the requirement that the technical contribution to the art must be ascertained.  Where it is a product, it is that which must be supported in the sense that the technical contribution to the art disclosed by the specification must justify the breath of the monopoly claimed”.

  1. The Opponent argued several claims lacked support. Before discussing each of the claims, I have made the following observations about the technical contribution.

  2. The specification states that conventional artificial turf, comprising latex or PU adhesive, cannot be recycled after reaching service life and must be disposed of.[15]  Furthermore, the specification suggests current recyclable artificial turf is too loose or easy to remove, has poor drainage and poor appearance.[16]  Therefore, it is an object of the invention to provide a recyclable artificial turf that ‘solves the problem of difficult tufting of existing artificial turf, has high tufting efficiency, has high strength, and is capable of being integrally recycled’.[17] 

    [15] Application at [0003].

    [16] Application at [0004]-[0009].

    [17] Application at [0011].

  1. The invention achieves the described advantages by including the following features or method steps:

(1)Having a base fabric and artificial yarn with different melting points;[18]

(2)The base fabric comprising a woven fabric with high mechanical strength;[19] and

(3)Adding a mesh fabric into the tufted base fabric structure.[20]

[18] Application at [0042].

[19] Application at [0044].

[20] Application at [0050].

  1. Therefore, I would characterise the features or method steps above as forming the Applicant’s technical contribution to the art.

Identical Breadth of the woven and mesh fabric

  1. In Zhang1, it was argued that claim 1 lacked support because Embodiments 10 to 15 and 20 to 23 explicitly require that the woven fabric and the mesh fabric have identical breadth, while claim 1 does not disclose this feature.

  2. While the specification describes the woven fabric and the mesh fabric having an identical breadth in paragraphs [0115], [0119], [0123], [0128], [0131], [0135], [0158], [0163], [0168] and [0173], the technical contribution, as outlined above, is not directed to this feature.  Furthermore, given the nature of artificial turf, it is implied that the woven fabric and the mesh fabric have identical breadths such as to form the base fabric.

Mesh fabric and woven fabric adhered together through melting hot melt adhesive   

  1. The Opponent further argued that Embodiments 10 to 15 and 20 to 23 require the mesh fabric and the woven fabric to be adhered together through melting hot melt adhesive, however the structural relationship between the mesh fabric and the woven fabric is not included in claim 1.

  1. In paragraph [0052] the specification says that the mesh fabric and the woven fabric can be combined to create the base fabric using the following methods.  The first method involves combining the mesh fabric with the woven fabric by spreading hot melt adhesive powder on the two simultaneously.  The second combines the two by spreading hot melt adhesive powder on a surface of the woven fabric and melting the hot melt adhesive powder before combining the mesh fabric.  Lastly, the two may be combined during the process of tufting the artificial yarn, as demonstrated in Embodiment 13.[21]  It does not appear to be critical to the invention how the woven fabric and the mesh fabric are combined to form the base fabric nor is using hot melt adhesive the only method supported in the specification. There is no evidence before me that demonstrates that this feature is essential. Therefore, omission of the above feature does not result in a lack of support.

Hot melt adhesive in a point shape configuration

[21] Application at [0127]-[128].

  1. Zhang1 stated paragraphs [0041]-[0054] of the specification describe how the hot melt adhesive is distributed on a surface of the base fabric in a point shape configuration to provide good drainage.  Zhang1 argued omission of this feature results in a lack of support.

  1. As determined above, the technical contribution includes an artificial turf comprising a base fabric including a woven fabric and a mesh fabric wherein the base fabric has a different melting point than the artificial yarn.  Therefore, the configuration of the hot melt adhesive does not form part of the technical contribution, nor does it appear to be essential to the working of the invention.  Furthermore, the Opponent has not provided sufficient reasoning for why this feature is critical to the invention nor is there any evidence that the invention, as claimed, would not provide the required drainage.

  1. Omission of this feature does not result in a lack support. 

Powders

  1. Zhang1 suggests that claims 17 and 18 lacks support as the only powder disclosed in the specification is ‘hot melt adhesive powder’ which is not included in the claim.

  2. Firstly, I note that claim 17 and 18 both describe the use of hot melt adhesive, see in particular paragraph (1) of claim 17 and paragraph (1) of claim 18.  However, both claims 17 and 18 then describe ‘…or spreading powder on the woven fabric first and then combining the woven fabric with the mesh fabric to prepare base fabric’.  It appears that the Opponent is arguing that the use of ‘powders’ can be interpreted more broadly than the ‘hot melt adhesive’ described throughout the specification.  However, it would be absurd to construe the powder as anything other than an adhesive.  According to each of claims 17 and 18, the ‘powder’ is used to combine the woven fabric with the mesh fabric to prepare the base fabric.    

  1. Omission of the above feature does not result in a lack of support for the reasons stated above.

Claim 2

  1. Zhang 1 provided the following submissions with regards to support of claim 2:

“This feature is only recorded in the “Summary” section of the specification, particularly, paragraph [0015], without further description in other parts of the specification. Therefore, claim 2 is not supported by the specification.”

  1. Claim 2 is as follows:

2. The completely recyclable artificial turf according to claim 1, wherein the root of the artificial yarn is tufted artificial yarn located below the bottom surface of the base fabric.

  1. I consider claim 2 to be supported by matter disclosed in the body of the specification.  Tufting is a process of passing the artificial yarn through a primary base material.  It is therefore implied that during the process of tufting a portion of the artificial yarn would be located below the bottom surface of the base fabric.  

  2. Claim 2 features described above are supported by matter disclosed in the specification.

Claim 7

  1. Zhang1 submitted that claim 7 lacked sufficient support for the ‘additional layer of base fabric’ present in the claim.

  2. Having an additional layer of base fabric is supported by the description.  Method steps for producing a base fabric are well defined in the specification and the specification describes the use of an additional base layer thermally compounded on the bottom surface of the base fabric, see paragraph [0020] and Embodiments 19-23.  There is nothing before me that would suggest that an additional layer of base fabric would not be at the disposal of the person skilled in the art after reading the specification.

  1. I conclude that these features of claim 7 are supported.  

Claim 9

  1. In the SGP, the Opponent argued that claim 9 is not supported by the specification. The submissions were as follows:

    “Dependent claim 9 is not supported by the specification when “the material of the base fabric thermally compounded on the bottom surface of the base fabric on which the artificial yarn is tufted is non-woven fabric”.  Claim 9 indirectly depends on independent claim 1, which requires that the base fabric include the woven fabric and the mesh fabric.  Therefore, claim 9 only covers Embodiments 20 to 23 (paragraphs [0157] to paragraph [0176]) where the base fabric includes both the woven fabric and the mesh fabric.  However, Embodiments 20 to 23 only support PET compound (woven or non-woven) fabric of PET non-woven fabric and PET mesh fabric, and no other material is supported by these Embodiments.”

  1. Claim 9 is appended to claim 7 which is in turn appended to claim 1.  Claim 9 reads as follows:

9. The completely recyclable artificial turf according to claim 7, wherein the material of the base fabric thermally compounded on the bottom surface of the base fabric on which the artificial yarn is tufted is non-woven fabric or compound fabric of non-woven fabric and mesh fabric.

  1. Claim 9 is further defining the composition of the ‘additional layer of base fabric’ introduced in claim 7.  According to claim 9, the additional layer of base fabric is either non-woven fabric or a compound fabric of non-woven and mesh fabric.  Paragraph [0020] describes the additional layer of base fabric including either non-woven fabric or a compound fabric of non-woven fabric and mesh fabric.  As Zhang1 highlighted, paragraphs [0157] to paragraph [0176], only discusses the use of a compound fabric of non-woven fabric and mesh fabric as forming the basis for the additional base fabric.  However, I consider the specification to sufficiently enable a person skilled in the art to use non-woven fabric without the mesh fabric as the additional layer of base fabric.  There is nothing before me that would suggest using non-woven fabric would not be at the disposal of a person skilled in the art after reading the specification.

  2. I conclude the features described above are supported.

Claim 11

  1. Zhang1 suggests claim 11 is not supported as there is no mention of direct heating by a heating roller in the specification. However, there are several paragraphs in the specification where heating either the non-woven or compound fabric by a heating roller is described, see in particular [0020]. This feature is supported by the specification.

  2. Additionally, Zhang1 argued that there is a lack of support since the heat treatment method for the mesh fabric or the non-woven including the step of controlling the heating temperature between the glass transition temperature and the melting point of the material is not provided for in paragraphs [0068] to [0072].  

  1. I consider this feature to be sufficiently supported.  Paragraph [0038] of the specification describes the step of controlling the heating temperature between the glass transition temperature and the melting point of the material.  The same paragraph also provides desirable temperature ranges to achieve this.  

  1. The above features of claim 11 are supported.

Claim 12

  1. Zhang1 argues claim 12 lacks support for the following reason:

“Neither of the two heat treatment methods is provided in paragraphs [0068] to [0072]. Therefore, claim 12 is not supported by the specification.”

  1. Paragraph [0038] describes the heat treatment methods of claim 12.  There is sufficient information for a person skilled in the art to perform the claimed method steps. 

  2. Claim 12 features, outlined above, are supported by the specification.

Claim 16

  1. With regards to support of claim 16, Zhang1 stated the following:

“The Embodiments 10 to 15 and 20 to 23 do not provide any hot melt adhesive powder including a specific combination of PE, EVA and TPU. Therefore, claim 16 is not supported by the specification.”

  1. Claim 16 requires that hot melt adhesive powder is prepared of one or a combination of PE, EVA and TPU. Support for this feature can be found in paragraph [0021]. I also note that each of the Embodiments 10 to 15 and 20 to 23 have hot melt adhesive powder comprising PE, as required by the claim, see in particular [0115], [0119], [0123], [0127], [0135], [0159], [0163], [168] and [0173].

  2. I conclude these features are supported.

Claim 17

  1. The Opponent argued that claim 17 does not specify how the second heating step is done when Embodiments 10 to 15 disclose that the second heating step includes heating the bottom of the semi-finished product.

  1. Claim 17 discloses that heating of the bottom of the semi-finished product occurs.  This feature is sufficiently supported.

Claim 18

  1. In the SGP the Opponent submitted that claim 18 lacked support because there is no heating step by an oven.  In particular, as described in each of Embodiments 20 to 23 (paragraphs [0157] to paragraph [0176]) when the method applies to the compound fabric of non-woven fabric and mesh fabric, there should be a heating step by an oven to bond the non-woven fabric and mesh fabric.  Furthermore, it is argued that Embodiments 20 to 23 only support PET compound fabric of PET non-woven fabric and PET mesh fabric.

  2. I consider this feature to be sufficiently supported by the disclosure in the specification.  Claim 18 requires preparing a bottom-layer base fabric using either non-woven fabric or the compound fabric of non-woven fabric and mesh fabric.  A surface of the bottom-layer base fabric is later heat treated using a thermal compounding procedure.  This provides the advantage of protecting the bottom of the artificial turf.[22]  It is clear that the advantages are achieved via a thermal compounding procedure rather than a specified heat treatment method.  I consider it sufficient to claim this feature broadly.

    [22] Application at [0052].

  1. Furthermore, with regards to the PET compound fabric, I do not think it is reasonable to limit the bottom-layer base fabric to specific embodiments.  It is clear from the specification that, although PET is frequently used, provided the bottom-layer base fabric consists of either non-woven fabric or a compound fabric of non-woven fabric and mesh fabric the benefits described will be achieved.[23]  

    [23] Application at [0053]-[0055].

  1. These features of claim 18 are supported.

Claim 19

  1. Zhang1 argued that claim 19 lacks support as there is no mention of direct heating by a heating roller which is one of three options for heat treatment.  Zhang1 also argued that neither of the two heat treatment methods for compound fabric of the non-woven fabric and the mesh fabric is provided in paragraphs [0068] to [0072].

  2. Claim 19 sufficiently describes the heating methods available.  I note that heating via a heating roller is an option present in the claim.  Regarding Zhang1 second point, the heat treatment methods are sufficiently disclosed throughout the entire specification. Absence of particular heat treatment methods in specific paragraphs does not amount to a lack of support in the claims.

  1. The features of claim 19 described above are sufficiently supported.  

Subsection 60(3) – section 40 – lack of support

Bottom-layer fabric thermally compounded at the bottom of the artificial turf

  1. On 11th of November 2022, I exercised my power under section 60(3) of the Act to take into account a ground of opposition not relied upon by the Opponent in their statement of grounds and particulars.  I invited the parties to provide comment in regard to non-compliance with s40(3).  I noted, in my opinion, claim 1 and appended claims 2-6, 11 in part, 15 in part and 17-22 do not appear to be supported as they omit a bottom-layer fabric thermally compounded at the bottom of the artificial turf. 

  2. As described in paragraph [0055] of the specification:

“To reduce the attrition of the root of artificial yarn, general sports fields have strict requirements for the foundation during pavement, that is, the surface should be flat and smooth, to avoid affecting the service life because of serious attrition. By adding a layer of base fabric at the bottom of the artificial turf, the friction between the root of the artificial yarn and the foundation is effectively avoided, thereby reducing requirements for the field foundation, saving labor and financial resources, and reducing pavement costs.”

  1. In light of the above, I would characterise the use of a bottom-layer fabric thermally compounded to protect the bottom of the artificial turf as a technical contribution of the current application. Consequently, claim 1 and appended claims 2-6, 11 in part, 15 in part and 17-22 do not appear to be supported as they omit the bottom-layer fabric thermally compounded on the bottom surface of the base fabric

  1. In the Applicant’s submissions 1 at [7] they argued:

“We note that having a bottom layer (such as in embodiments 20-23) provides an advantage of protecting the bottom of the turf or reducing friction when used on sports fields. However, the turf as claimed in claim 1 can still be used without this feature and will meet the object of the invention and furthermore the turf as claimed also is not limited to being used on sports fields and can be used as leisure turf and therefore there is no need in some embodiments for a bottom layer to reduce friction.”

  1. I am inclined to agree with the Applicant’s submissions.  As they stated above, the bottom-layer base fabric protects the bottom of the turf which is only necessary when used on sports fields that have strict requirements for the foundation.  It is clear that this is an optional feature based on whether or not the turf is used for such purposes.

  2. For the reasons provided above, omission of a bottom-layer base fabric thermally compounded at the bottom of the artificial turf does not result in a lack of support. 

Support Conclusion

  1. Claims do not lack support and therefore comply with s 40(3) of the Act for the reasons discussed above.  This ground of opposition is unsuccessful.

NOVELTY

  1. As discussed in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; (1977) CLR 228 at page 235; 13 ALR 605 at page 611 (‘Meyers Taylor’) novelty is determined using the reverse infringement test:

    “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.”

  1. Further, guidance on whether disclosure comprises an infringement can be found in General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at pages 485-486 (‘General Tire & Rubber’):

    “...if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated.

    If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness.  To anticipate the patentee’s claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice.”

  1. The Opponent raised the following citations against Novelty in the SGP:

    ·     D1: EP 0260872 A2

    ·     D2: JP 3372472 B2

    ·     D3: CN 104727202 A

Novelty with respect to D1

  1. D1 is directed to tufted carpet, including the manufacture of artificial turf which is used on playing surfaces or for decorating indoor or outdoor spaces.  The back-loops of the stitches of the tufted pile yarn are fastened to the backing by thermal bonding. The yarn has a lower melting point than that of the backing so as to prevent damage to the face pile during application of heat.  This is said to remove the need for applying an adhesive coating to the underside of the backing.[24]  

    [24] Ibid.

  2. D1 is best represented in Fig. 1, as shown below.  Fig. 1 discloses a section of tufted carpeting 10.  The stitches of yarn 12 have been stitched into the backing 14.  The backing 14 has a plurality of layers, Fig 1 shows three (16, 18 and 20) however any number may be used.  The pile yarn stitching is fixed to the underside of the backing by partially melting the back-loops 26 in order to cause them to become thermally bonded to the backing.[25]

[25] D1 at 3.

  1. D1 further discloses that the backing may be made of woven nylon.[26] 

    [26] D1 at 4.

  2. As discussed in Zhang1, D1 discloses the following at Column 1 (my emphasis added):

    “Typically, tufted carpeting is produced by stitching a plurality of rows of yarn loops through a previously manufactured mesh-like backing so that the yarn protrudes above one face of the backing as a pile, and is drawn relatively closely against the opposite face of the backing…

    In some instances the or a layer of the backing is made of flexible plastic film or non-woven fabric, rather than a fabric mesh.”

  1. I note the above Column is referencing materials that are typically used as backing material in prior art.  Example materials used for the backing of D1 are not discussed until Column 5.  The example given includes layers of nylon backing.  While there is discussion of a mesh fabric or a woven fabric, there is no clear and unmistakable direction of a backing which includes both a woven fabric and a mesh-fabric.  I also note that D1 does not use latex or PU adhesive which is described in the specification as the main reason artificial turf cannot be recycled.[27]  Additionally, the specification describes methods of melting the root of the artificial yarn without impacting the ability to recycle the materials.[28]  I consider it inherent that the materials of D1 can be recyclable.

    [27] Application at [0003].

    [28] Application at [0043].

  1. Furthermore, as Zhang1 agreed, there is no clear and unmistakable direction of a hot melt adhesive powder being spread on a bottom surface of the base fabric through a powder spreading procedure.  With regards to claim 17, D1 does not disclose that hot melt adhesive powder is used to combine woven fabric and mesh fabric to prepare the base fabric.

  1. Claim 1 and 17, and therefore appended claims 2-16, 18-22, are novel in light of the disclosure of D1.

Novelty with respect to D2

  1. According to the verified translation of D2 provided by the Opponent, D2 is directed to artificial turf and the manufacturing method thereof.[29]  D2 suggests that the high temperatures required to melt the back-stitch portions of the piles often causes heat shrinkage or partial distortion of the base fabric.  In order to prevent this from occurring D2 uses piles made of thermal melting fibres having a lower melting temperature than a non-woven fabric which is polymerized on the back of the base fabric.  This is said to supress the heat transfer to the base fabric side when heat-melting the backstitch portions of piles.[30]  Additionally, D2 discloses that the materials used to make the artificial turf are recyclable.[31]

    [29] D2 at [0001].

    [30] D2 at [0001] & [0007].

    [31] D2 at [0009].

  2. There is no clear and unmistakable direction of a hot melt adhesive powder being spread on a bottom surface of the base fabric through a powder spreading procedure, a base fabric including woven fabric and mesh fabric.  With regards to claim 17, D2 does not disclose that hot melt adhesive powder is used to combine woven fabric and mesh fabric to prepare the base fabric.

  1. Claim 1 and 17, and therefore appended claims 2-16 and 18-22, are novel in light of the disclosure of D2.

Novelty with respect to D3

  1. According to the verified translation of D3 provided by the Opponent, D3 is directed to recyclable artificial turf and a method of preparing the same.[32]  The recyclable artificial turf comprises artificial turf filaments and base fabrics. The base fabrics consisting of a base fabric A for fixing turf filaments and a base fabric B at the bottom of the artificial turf.[33]  Artificial yarn is tufted on the Base fabric A which consists of a woven fabric.[34]  D3 further discloses that hot melt adhesive powder is distributed in scattered dots on the base fabric to adhere base fabric A and base fabric B while allowing for improved drainage.[35]

    [32] D3 at [0001].

    [33] D3 at [0011].

    [34] D3 at [0123] & [0125].

    [35] D3 at [0042].

  2. As pointed out by Zhang1, D3 discloses embodiments wherein the base fabric A is prepared includes a woven fabric and a mesh fabric (grid fabric). For example, paragraph [0123] discloses the following:

“A woven fabric A (which is prepared by weaving a 120g/ non-woven fabric and a 80g/  grid fabric of a grid size 4 × 4 mm), on which PE hot melt adhesive powder of a mesh of 50 is dispersed evenly, passes a heating device at a convey speed of 5 m/min at a heating temperature of 170-180℃, and is cooled and rolled after the hot melt adhesive powder melts to obtain the base fabric.”

  1. There is no clear an unmistakable direction for the method of melting the root of the artificial yarn in order to integrate the artificial yarn with the base fabric nor does D3 disclose that the material of the artificial yarn has a lower melting point than that of the material of the base fabric.

  2. Claim 1 and 17, and appended claims 2-16 and 18-22, are novel in light of the disclosure of D3.  

Novelty Conclusion

  1. Claims 1-22 are novel in light of the prior art documents D1 to D3.

INVENTIVE STEP

  1. It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claims, involves an inventive step. Subsection 7(2)-(3) states:

    “(2) For the purposes of this Act, an invention is taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the art in light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).

    (3) The information for the purposes of subsection (2) is:

    (a) any single piece of prior art information; or

    (b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.”

  2. The test for obviousness was developed in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262 (‘Wellcome Foundation’) at [45] (my emphasis added):

    “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.”

  3. In considering the question of what constitutes “a matter of routine”, in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411; (2002) 194 ALR 485; (2002) 77 ALJR 398, it was stated at [53]:

    “That way of approaching the matter has an affinity with the reformulation of the ‘Cripps question’ by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd. This Court had been referred to Olin in the argument in Wellcome Foundation. Graham J had posed the question:

    ‘Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art and of the facts of the nature and success of chlorpromazine, directly be led as a matter of course to try the -CF3 substitution in the “2” position in place of the -Cl atom in chlorpromazine or in any other body which, apart from the -CF3 substitution, has the other characteristics of the formula of claim 1, in the expectation that it might well produce a useful alternative to or better drug than chlorpromazine or a body useful for any other purpose?’ (emphasis added)

    That approach should be accepted.” (original emphasis, reference(s) omitted).

  1. More recently, in Vehicle Monitoring Systems Pty Ltd v SARB Management Group Pty Ltd [2020] FCA 408 (‘Vehicle Monitoring Systems’), J Burley discussed the requirements of s7(3)(a) and under what circumstances a person skilled in the art would have been reasonably expected to have combined 2 or more pieces of prior art to arrive at the claimed invention.  In particular, at [95]-[96] J Burley states:

“In relation to s 7(3)(b), when considering the combination of two pieces of prior art information, the Court must first decide what two or more pieces of prior art information were publicly disclosed.  It is that prior art information that the notional person skilled in the art is deemed by the subsection to possess.  Secondly, the Court must consider whether the skilled person or team could reasonably be expected to combine the two or more pieces of prior art.  That enquiry is not undertaken in a vacuum, but is to be considered in the context of the task that the skilled person or team is to ‘consider’ as required under s 7(2), which is in moving from the common general knowledge to solving a particular problem, or meeting a long-felt want or need: see, by analogy, Lockwood at [152]; AstraZeneca at [68]…

It will be a question of fact whether or not they may be reasonably be expected to be combined.”

  1. In the SGP and Zhang1, the Opponent argued the claims lacked an inventive step when either D1 or D2 were combined with D3.

Inventive step with regards to D1 when combined with D3

  1. In Zhang1 it was argued that a person skilled in the art would be reasonably expected to combine D1 and D3 because they are related to enhanced and/or recyclable artificial turfs.

  2. The applicant responded that the opponent merely lists the limitations of the citations and does not provide further reasoning for why a person skilled in the art would be motivated to combine the documents.[36]

    [36] EIA at [7].

  1. As discussed above, D1 does not disclose a hot melt adhesive powder being spread on a bottom surface of the base fabric through a powder spreading procedure, or that the backing layer (base fabric) includes a mesh fabric and woven fabric.

  1. As discussed in Vehicle Monitoring Systems, it is a question of fact whether or not a person skilled in the art may be reasonably expected to have combined two documents.  This assessment is done in the context of the common general knowledge and the problem being solved, or meeting a long-felt want or need.  The Opponent has merely asserted that a person skilled in the art could reasonably be expected to have combined D1 and D3 because they solve a similar problem, however, has not identified said problem or provided evidence to support this assertion.  In the absence of supporting evidence the Opponent has failed to establish that it would be reasonable for a person skilled in the art to combine D1 and D3.

  1. Notwithstanding the above, I have made the following observations about combining D1 with D3.  D1 describes at column 1, lines 22-29:

“By far the heretofore most popular way of locking the tufted yarn to the backing has been to apply an adhesive to the back of the backing, after tufting, in such a manner as to adhere the back loops of the yarn to the backing, mechanically entrap the back loops of the yarn in a common matric with the backing, and in order to obscure access to the back loops.”

  1. D1 further states at column 2, lines 34-51:

“The back-loops of the stitches of pile yarn of a tufted carpet are fastened to the backing by thermal bonding, obviating the need for applying an adhesive coating to the underside of the backing…

Where other backings and coatings are omitted, a tufted carpet of superior porosity may be made, e.g., for use as a sand-filled artificial turf.”

  1. It appears that D1 teaches away from the use of a coating on the bottom surface of the backing (base fabric).  Therefore, regardless of whether it would be obvious to use D1 as artificial turf or have a backing or base fabric which includes both woven and mesh fabric, a person skilled in the art would not be motivated to combine the disclosures of D1 and D3 to include the step of spreading hot melt adhesive on a bottom surface of the base fabric.  Therefore, I do not consider that a person skilled in the art would be reasonably expected to combine D1 and D3.

  2. Claims 1-22 involve an inventive step in light of the disclosure of D1 when combined with D3.

Inventive step with regards to D2 when combined with D3

  1. Zhang1 provided the same reasoning for why a person skilled in the art would be motivated to combine D2 with D3.  In particular, it was argued that a person skilled in the art would be reasonably expected to combine D2 and D3 because they are related to enhanced and/or recyclable artificial turfs.

  2. The Opponent has failed to establish the claims lack an inventive step in light of the combination of D2 and D3 for the same reasons provided above.  The Opponent has not supported their assertion that it would be reasonable for a person skilled in the art to combine the disclosures of D2 and D3 to arrive at the claimed invention.

  1. Claims 1-22 are inventive in light of D2 and D3.

Inventive step conclusion

  1. Claims 1-22 are novel and inventive in light of the prior art.

CONCLUSION AND COSTS

  1. The Opposition has been unsuccessful on all grounds. The application should proceed to grant.

  2. I see no reason to depart from the usual practice that costs follow the event. I will accordingly award costs in accordance with Schedule 8 of the Patents Regulations 1991 against the Opponent, Qingdao Bellinturf Industrial Co., Ltd.

S.E. Howard
Delegate of the Commissioner of Patents

ANNEXURE A

1. A completely recyclable artificial turf, comprising artificial yarn and base fabric, wherein the base fabric includes woven fabric, the artificial yarn is tufted on the base fabric including woven fabric, the root of the artificial yarn is melted or locally melted, and the artificial yarn is integrated with the base fabric into a whole after cooling and shaping, wherein the material of the artificial yarn has a melting point lower than that of the material of the base fabric, wherein for the base fabric, before the artificial yarn is tufted, hot melt adhesive powder is spread on the bottom surface of the base fabric through a powder spreading procedure and wherein the base fabric includes mesh fabric.

2. The completely recyclable artificial turf according to claim 1, wherein the root of the artificial yarn is tufted artificial yarn located below the bottom surface of the base fabric.

3. The completely recyclable artificial turf according to claim 1, wherein the root of the artificial yarn is melted or locally melted in a thermal compounding manner.

4. The completely recyclable artificial turf according to claim 1, wherein the woven fabric is single woven fabric or compound woven fabric.

5. The completely recyclable artificial turf according to claim 1, wherein the material of the mesh fabric has a melting point higher than that of the material of the artificial yarn, and the mesh fabric has been heat-treated.

6. The completely recyclable artificial turf according to claim 5, wherein the gram weight of the mesh fabric is 50-200g/m2 , and the material of the mesh fabric is polyethylene terephthalate.

7. The completely recyclable artificial turf according to claim 1, wherein an additional layer of base fabric is thermally compounded on the bottom surface of the base fabric on which the artificial yarn is tufted.

8. The completely recyclable artificial turf according to claim 7, wherein the material of the base fabric thermally compounded on the bottom surface of the base fabric on which the artificial yarn is tufted has a melting point higher than that of the material of the artificial yarn, and for the base fabric before being thermally compounded, hot melt adhesive powder is spread on one surface thereof through a powder spreading procedure.

9. The completely recyclable artificial turf according to claim 7, wherein the material of the base fabric thermally compounded on the bottom surface of the base fabric on which the artificial yarn is tufted is non-woven fabric or compound fabric of non-woven fabric and mesh fabric.

10. The completely recyclable artificial turf according to claim 9, wherein the non-woven fabric or the compound fabric of non-woven fabric and mesh fabric has been heat-treated.

11. The completely recyclable artificial turf according to claim 5 or 10, wherein the heat treatment method for the mesh fabric or the non-woven fabric is as follows: heating the mesh fabric or the nonwoven fabric in the mode of thermal radiation by an oven or direct heating by a heating roller, controlling the heating temperature between the glass transition temperature and the melting point of the material, and completing heat treatment of the mesh fabric or the non-woven fabric after shaping.
12. The completely recyclable artificial turf according to claim 10, wherein there are two heat treatment methods for the compound fabric of non-woven fabric and mesh fabric, one method is as follows: performing heat treatment on the non-woven fabric and the mesh fabric respectively in the mode of thermal radiation by an oven or direct heating by a heating roller, controlling the heating temperature between the glass transition temperature and the melting point of the material, and thermally adhering the two together through a powder spreading procedure to form the compound fabric; and the other method is as follows: stitching the non-woven fabric and the mesh fabric together first through a stitching process, then heating the compound fabric in the mode of thermal radiation by an oven or direct heating by a heating roller, controlling the heating temperature between the glass transition temperature and the melting point of the material, and completing heat treatment after shaping.

13. The completely recyclable artificial turf according to claim 9 or 12, wherein the gram weight of the non-woven fabric is 50-150g/m2 , the gram weight of the mesh fabric is 80-150g/m2 , and the material of the non-woven fabric or the mesh fabric is polyethylene terephthalate.

14. The completely recyclable artificial turf according to claim 13, wherein the material of the nonwoven fabric or the mesh fabric is polyethylene terephthalate, the heating temperature thereof during heat treatment ranges from 170℃ to 200℃.

15. The completely recyclable artificial turf according to claim 1 or 8, wherein the material of the hot melt adhesive powder has a melting point lower than that of the material of the base fabric.

16. The completely recyclable artificial turf according to claim 15, wherein the hot melt adhesive powder is prepared of one of PE, EVA and TPU or a combination thereof, and the powder spreading amount of the hot melt adhesive powder is 60-150g/m2.

17. The preparation method for the completely recyclable artificial turf according to any one of claims 1-16, comprising the following steps:

(1) spreading hot melt adhesive powder on the woven fabric and the mesh fabric simultaneously through a powder spreading procedure to prepare base fabric, or spreading powder on the woven fabric first and then combining the woven fabric with the mesh fabric to prepare base fabric;

(2) tufting artificial yarn on the base fabric to prepare same into a semi-finished product; and

(3) heating the bottom of the semi-finished product through a thermal compounding procedure, so that the root of the artificial yarn is melted or locally melted and is melted with the hot melt adhesive powder, and the artificial yarn is integrated with the base fabric into a whole after cooling and shaping, thus obtaining the completely recyclable artificial turf.

18. The preparation method for the completely recyclable artificial turf according to claim 17, comprising the following steps:

(1) spreading a layer of hot melt adhesive powder on one surface of the non-woven fabric or the compound fabric of non-woven fabric and mesh fabric through a powder spreading procedure, to prepare bottom-layer base fabric;

(2) spreading powder on the woven fabric and the mesh fabric simultaneously through a powder spreading procedure to prepare base fabric, or spreading powder on the woven fabric first and then combining the woven fabric with the mesh fabric to prepare base fabric for tufting;

(3) tufting artificial yarn on the base fabric to prepare same into a semi-finished product, and covering the other base fabric on which powder is spread on the bottom surface of the semi-finished product, the surface with hot melt adhesive powder of the base fabric coming into contact with the grass root; and

(4) heating the surface without hot melt adhesive powder of the bottom-layer base fabric through a thermal compounding procedure, so that the root of the artificial yarn is melted or locally melted and is adhered together with the melted hot melt adhesive powder, and the artificial yarn is integrated with the two layers of base fabric into a whole after cooling and shaping, thus obtaining the completely recyclable artificial turf.

19. The preparation method for the completely recyclable artificial turf according to claim 18, wherein the mesh fabric, the non-woven fabric or the compound fabric of the non-woven fabric and the mesh fabric has been heat-treated, wherein the heat treatment method for the mesh fabric or the nonwoven fabric is as follows: heating the mesh fabric or the non-woven fabric in the mode of thermal radiation by an oven or direct heating by a heating roller, controlling the heating temperature between the glass transition temperature and the melting point of the material, and completing heat treatment of the non-woven fabric or the non-woven fabric after shaping; there are two heat treatment methods for the compound fabric of the non-woven fabric and the mesh fabric, one method is as follows: performing heat treatment on the non-woven fabric and the mesh fabric respectively in the mode of thermal radiation by an oven or direct heating by a heating roller, controlling the heating temperature between the glass transition temperature and the melting point of the material, and thermally adhering the two together through a powder spreading procedure to form compound fabric; and the other method is as follows: stitching the non-woven fabric and the mesh fabric together first through a stitching process, then heating the compound fabric in the mode of thermal radiation by an oven or direct heating by a heating roller, controlling the heating temperature between the glass transition temperature and the melting point of the material, and completing heat treatment after and shaping. 20. The preparation method for the completely recyclable artificial turf according to claim 19, wherein when the material of the non-woven fabric or the mesh fabric is polyethylene terephthalate, the heating temperature during heat treatment ranges from 170℃ to 200℃.

21. The preparation method for the completely recyclable artificial turf according to claim 17 or 18, wherein the powder spreading procedure is performed by heating the hot melt adhesive powder in the mode of thermal radiation by an oven or direct heating by a heating roller, so that the hot melt adhesive powder is melted to produce adhesiveness and then is adhered to the surface of the woven fabric or the non-woven fabric, or the woven fabric and mesh fabric, or the non-woven fabric and the mesh fabric are adhered together, to form a whole after cooling and shaping.

22. The preparation method for the completely recyclable artificial turf according to claim 17 or 18, wherein the thermal compounding procedure is performed by heating the root of the artificial yarn or the surface without hot melt adhesive powder of the base fabric in the mode of thermal radiation by an oven or direct heating by a heating roller, so that the root of the artificial yarn and the hot melt adhesive powder are melted to produce adhesiveness and then are combined with each other, and the artificial yarn is firmly fixed onto the base fabric through cooling and shaping.


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Cases Citing This Decision

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Statutory Material Cited

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Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890
Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121
Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890