Reckitt Benckiser LLC v S. C. Johnson & Son, Inc
[2018] APO 58
•5 September 2018
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Reckitt Benckiser LLC v S. C. Johnson & Son, Inc. [2018] APO 58
Patent Application: 2009215860
Title:Cleaning Composition That Provides Residual Benefits
Patent Applicant: S. C. Johnson & Son, Inc.
Opponent: Reckitt Benckiser LLC
Delegate: K. Wagg
Decision Date: 5 September 2018
Hearing Date: 6 June 2018 in Sydney
Catchwords: PATENTS –Self-adhering sanitary agents–lack of clarity and full description established by experimental evidence–the person skilled in the art would be unable to determine the “transport rate factor” given the inadequate disclosure of this feature–the use of mineral oil in the composition has not been established to be of arbitrary significance–the use of mineral oil in self-adhesive sanitary agents not established to be common general knowledge–all other grounds of opposition fail–opportunity to amend–costs awarded against the applicant.
Representation: Patent attorneys for the Applicant: David Myers and Anna Goldys of Spruson & Ferguson
Counsel for the Opponent: Ms Katrina Crooks of Shelston IP Lawyers Pty Ltd
Patent attorneys for the Opponent: Dr Charles W Tansey of Shelston IP Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2009215860
Title:Cleaning Composition That Provides Residual Benefits
Patent Applicant: S. C. Johnson & Son, Inc.
Date of Decision: 5 September 2018
DECISION
The opposition has been successful: all of the claims 1-19 lack clarity and full description.
All other grounds of opposition fail.
Costs are awarded against the S. C. Johnson & Son, Inc. Subject to appeal, S. C. Johnson & Son, Inc. is given two months to file suitable amendments.
REASONS FOR DECISION
Background
Patent application number 2009215860 was filed on 19 February 2009 (the Opposed Application). The application claims a priority date of 21 February 2008. The request for examination in relation to the application was filed on 30 January 2013. Consequently, substantive amendments of the Patents Act 1990 (Act) brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Raising the Bar Act) do not apply to the present application. This includes the amendment to subsection 60 (3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists. Any subsequent references to sections of the Act relate to the Patents Act 1990 prior to amendment by the Raising the Bar Act. A similar qualification applies to references to the Patents Regulations 1991.
The applicant is S. C. Johnson & Son, Inc. (the Applicant). The application was examined and advertised as accepted by the Commissioner on 27 March 2014. Reckitt Benckiser LLC (the Opponent) filed a notice of opposition to grant on 27 June 2014. After evidence in support was filed, the Applicant sought leave to amend the specification on 1 April 2015 (the first amendments). Those amendments resulted in a stay of these proceedings. The Opponent filed a notice of opposition to the first amendments and a hearing was held by written submissions. A delegate of the Commissioner refused the first amendments on 12 July 2016.[1] The Applicant again sought leave to amend the specification on 22 July 2016 and filed further amendments (the further amendments). The further amendments resulted in another stay to the current proceedings. The Opponent filed a notice of opposition to the further amendments on 13 October 2016. A hearing was held on 23 May 2017 to decide the outcome of the further amendments. A delegate allowed the further amendments on 13 July 2017.[2] Details of the allowance were published in the Supplement to the Australian Official Journal of Patents on 24 August 2017. With the further amendments incorporated into the Opposed Application, the stay was lifted and evidence in answer and reply were completed.
[1] Reckitt Benckiser LLC v S. C. Johnson & Sons, Inc. [2016] APO 47
[2] Reckitt Benckiser LLC v S. C. Johnson & Son, Inc. [2017] APO 35.
A hearing was held on 6 June 2018 in Sydney to decide the opposition.
The Grounds of Opposition
The Statement of Grounds and Particulars identified 7 grounds of opposition. At the hearing the following grounds were pressed, the particulars to these grounds were narrowed:
·Lack of Clarity (section 40(3)).
·Insufficiency (section 40(2)(a))
·Lack of Fair Basis (section 40(3))
·Lack of Manufacture (section 18(1)(a))
·Lack of Novelty (section 18(b)(i))
·Lack of Inventive Step (section 18(b)(ii))
Standard of Proof
The onus of proof in this opposition proceeding rests with the Opponent, who must demonstrate that it is clear that a valid patent cannot be granted.[3]
[3] F.Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283; 50 IPR 305 at [67]; Commissioner of Patents v Sherman [2008] FCAFC 182; 79 IPR 426 at [18].
Evidence
The evidence is summarised in the table below:
Evidence Declarant Date Reference Exhibits In Support Dr Paul Wynn-Hatton 23 December 2014 Wynn-Hatton #1 PWH-1 to PWH-15 Robert Alan Hyde 17 December 2014 Hyde RAH-1 to RAH-3 Diane Joyce Burt 18 December 2014 Burt DJB-1 to DJB-8 In Answer Prof. Jason Richard Stokes 25 July 2017 Stokes JRS-1 to JRS-5 In Reply Dr Paul Wynn-Hatton 26 September 2017 Wynn-Hatton #2 PWH-16 to PWH-24 The Specification
The specification is entitled “Cleaning composition that provides residual benefits”. The Abstract states that the invention is a composition for use on a hard surface and contains a surfactant. A transport rate factor and adhesion time are given along with a figure of a dispenser. The composition can be dispensed into a surface (e.g. toilet bowl) where it adheres to the side and when water runs over it (e.g. with flushing) some of the composition is transported around the area to be cleaned (e.g. the toilet bowl). The specification ends with 19 claims.
What is the invention as described?
Before commencing to construe the specification, I note what Middleton J said about construction:
"It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”[4]
[4] Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214, 100 IPR 451 at [139]
The field of the invention
The field of the invention is given as:
“the invention is directed to a self-adhering composition that may provide residual benefits based on an extended spreading or coating provided by the composition upon exposure to a layer of water. In addition, the composition has improved stability under varying conditions of temperature and humidity, as well as improved self-adhesion to hard surfaces, for example a ceramic surface, such as toilet bowls, glass, windows, doors, shower or bath walls, and the like.”[5]
[5] Page 1 lines 19-27
The person skilled in the art
The person skilled in the art (PSA) has been considered previously with Finkelstein J saying:
“He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious.” [6]
[6] Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; 49 IPR 225 at [70]
However, the PSA is not a real person, but an artificial construct that is used as a tool of analysis by the Court to make a determination. This concept was established as follows:
“The notional person is not an avatar for expert witnesses whose testimony is accepted by the court. It is a pale shadow of a real person – a tool of analysis which guides the court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step.”[7]
[7] AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30 at [23]
The understanding of the PSA is therefore based on evidence from persons with knowledge of the relevant art (a.k.a. experts), as to the things they know and do, and what they understand to be commonly known and done. The weighing and evaluating of this evidence to decide the characteristics of the PSA is part of the normal work of a delegate of the Commissioner.
The key expert declarants in this opposition are Dr Wynn-Hatton and Professor Stokes. Ms Burt also provides experimental evidence and Mr Hyde is special counsel for the Opponent and only provides factual evidence.
The Opponent submitted that Dr Wynn-Hatton is representative of the person skilled in the art because he worked in the area of consumer formulations since 1992 and worked in toilet sanitary agents. The Opponent submits that he is independent. However, I note that although he is now independent, his work in toilet sanitary products included working for the Opponent.[8] I am satisfied he is able to comment on the PSA.
[8] Wynn-Hatton #1 at 10-11
The Opponent submitted that Prof. Stokes’ experience includes academic work in rheology[9] and that he does not have real experience necessary to comment on the PSA. I am not convinced of this. Prof. Stokes has industry work in home and personal care products.[10] This, in my view relates to the same field as the current application and the team the PSA would be a part of. Prof. Stokes also worked as a consultant for industry before the priority date.[11] Furthermore, Prof. Stokes has specific experience in formulation of products which contain surfactants and surface chemistry.[12] This is directly relevant to the current field of the invention: the interaction of the formulation with the hard surface and wetting characteristics and the use of surfactants to both clean and adhere to a surface. I therefore consider Prof. Stokes is able to comment on the PSA.
[9] Stokes at 5
[10] Stokes at 4
[11] Stokes at 7
[12] Stokes at 9
Thus, I accept that all of the experts have the relevant experience and knowledge to comment on the person skilled in the art.
The invention described in the specification
Under the heading “Background of Invention” the specification discusses known technology involving hanging devices under the rim of a toilet bowl which release cleaning, disinfecting and/or fragrance agents when flushed.[13] These “under-the-rim” devices have problems which may impede regular brush cleaning and may dislodge.[14] These problems may cause the consumer to have perceptions of them being unhygienic and unappealing.[15] The specification then states that:
“Exemplary sanitary agents for dispensing in toilet bowls may be in the form of solid blocks, liquids, and gel form.”[16]
[13] Page 1 line31-page 2 lines 3
[14] Page 2 lines 5-20
[15] Page 2 lines 20-21
[16] Page 2 lines 22-25
It is clear that the current specification relates to sanitary agents and that the exemplary sanitary agents do not use an under-the-rim type of device but are instead a formulated sanitary agent for direct in bowl dispensing. The above statement is then followed by an acknowledgement of prior art. This includes the document D4, which is cited by the Opponent in their case and I will discuss later. It is said that:
“U.S. Patent No. 6,667,286 discloses a sanitary agent in paste or gel form which provides a long-lasting cleaning and/or deodorant-releasing and/or disinfecting effect and which can be applied directly to the surface of the toilet bowl in a simple and hygienic manner.”[17]
[17] Page 2 lines 27-31
The specification then introduces the present invention in the same paragraph by saying it has advantages over these:
“The present invention provides an improvement to such a sanitary agent by providing greater stability, e.g. longevity in use, as well as improved self-adhesion to hard surfaces, especially ceramic surfaces such as a toilet bowl.”[18]
[18] Page 3 lines 1-4
From this passage it is clear that the specification relates to a self-adhesive sanitary agent and here it is saying that the present invention has improvements of the acknowledged prior art.
The delivery of the “improved” sanitary agent is said to have particular benefits to consumers in some embodiments. It is stated that:
“In some embodiments, the present invention provides consumers with the benefit of delivering a composition or active ingredient to a relatively wide area of a toilet bowl or other hard surface. In other nonlimiting embodiments, the present invention provides consumers with the benefit of efficiently delivering a composition or active ingredient to a relative wide area of the toilet bowl or other hard surface.”[19]
[19] Page 3 lines 6-10
Following on the specification provides a consistory clause (a repeat of the claims) under the heading “Summary of the invention”. I will introduce it here but provide a further construction of the claims later:
“(i) at least 7.5 wt. % of at least one surfactant;
(ii) at least one adhesion promoter in an amount of about 20 to about 80 wt. % wherein the adhesion promoter is a non-ionic surfactant based on a C12 to C30 alkoxylated alchohol and includes a C16-C18 ethoxylated alcohol and wherein the adhesion promoter provides adhesion of the composition to a hard surface to which the composition is applied;
(iii) a transport rate factor of less than about 55 seconds; and
(iv) an adhesion time of greater than about 8 hours;wherein the at least one adhesion promoter can be one or more of the at least one surfactant, and wherein the composition includes mineral oil in an amount of about 0.1 wt. % to about 5 wt. %”[20][20] Page 3 lines 12-page 3a
The summary of the invention continues to the next two pages with further narrowing by the inclusion of additional features. These include the addition of fragrance, being dimensionally stable on the hard surface and not manually sprayable.[21] It is clear now that the invention is in the composition, and its ability to adhere to a hard surface and then disperse around the bowl when flushed.
[21] Page 3a-3b
The Applicant summarised the function of the composition disclosed in the specification as:
“In use, the composition of the invention may be applied directly on the hard surface to be treated, e.g. cleaned, such as a toilet bowl…and self-adheres thereto, including through a plurality of flows of water passing over the self-adhering composition and surface, e.g. flushes...Each time water flows over the composition, a portion of the composition is released into the water that flows over the composition. The portion of the composition released onto the water covered surface provides a continuous wet film to the surface to in turn provide for immediate and long term cleaning and/or disinfecting and/or fragrancing or other surface treatment…It is thought that the composition, and thus the active agents of the composition, may spread out from or are delivered from the initial composition placement in direct contact with the surface to coat continuously an extended area on the surface. The wet film acts as a coating and emanates from the self-adhering composition in all directions, i.e., 360°, from the composition, which includes in a direction against the flow of the rinse water. Motions of the surface of a liquid are coupled with those of the subsurface fluid or fluids, so that movements of the liquid normally produce stresses in the surface and vice versa…”[22]
[22] Page 7 lines 16 to page 8 line 12.
The advantages of the composition is then given:
Surprisingly, it is observed that the nonlimiting exemplary compositions of the present invention provide for a more rapid and extended self-spreading. Without wishing to be limited by theory, it is thought that the self-spreading effect may be modified through the addition of specific surfactants to the composition. Nonlimiting examples of factors which are thought to affect the speed and distance of the self spreading include: the amount of surfactant present, the type of surfactant present, the combination of surfactants present, the amount of spreading of the surfactant over the water flow, the ability of the surfactant to adsorb at the liquid/air interface, and the surface energy of the treated surface.”[23]
[23] Page 8 lines 14-27.
Exemplary compositions are then given on page 21 in table 8 then on page 31 an ideal combination of various properties are described in detail. These include two ethoxylated alcohols, glycerine and the fragrance “Quest ® F560805” in 5 wt. %. Samples of the surfactants are then given with SLES 70% used at 8 wt. %. I note that mineral oil is not included in this example. The transport rate factor is measured for these on page 33 and it is compared to the example of D4 and a commercial product “scrubbing bubbles”. The adhesion time measurements are given on page 34-35 in table D for the examples. This is then followed by Gel temperature measurements (page 36) viscosity (page 37). The surface spreading method is provided on page 38 using “a 12” x12” pane of frosted or etched glass”. Example compositions containing mineral oil are provided separately on pages 43-44.
The specification ends with 19 claims. The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd:[24]
“the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear … 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 … terms in the claim which are unclear may be defined or clarified by reference to the body of the specification”
[24] [2009] FCAFC 70, 81 IPR 228 at [118] – [120]
Claims
Claim 1, claim 8, claim 13 and claim 18 are independent claims and claim 19 is an omnibus claim. Claim 1 reads as follows:
“1. A composition for use on a hard surface, the composition comprising:
(i) at least 7.5 wt.% of at least one surfactant;
(ii) at least one adhesion promoter in an amount of about 20 to about 80 wt.%, wherein the adhesion promoter is a non-ionic surfactant based on a C12 to C30 alkoxylated alcohol and includes a C16-C18 ethoxylated alcohol and wherein the adhesion promoter provides adhesion of the composition to a hard surface to which the composition is applied;
(iii) a transport rate factor of less than about 55 seconds; and
(iv) an adhesion time of greater than about 8 hours;
wherein the at least one adhesion promoter can be one or more of the at least one surfactant, and wherein the composition includes mineral oil in an amount of about 0.1 wt. % to about 5 wt. %.Claims 8, 13, and 18 further require the presence of fragrance, at either less than 6 wt.% or at less than 10 wt.%. Claims 8 and 13 further require the composition to be ‘self-adhesive to a hard surface to which the composition is applied’ and to be ‘dimensionally stable’.
The Surfactant (i)
The term “surfactant” is commonly used in the art and is defined on page 7 lines 1-11 as being:
“..“surfactant” refers to any agent that lowers the surface tension of a liquid, for example water. Exemplary surfactants which may be suitable for use with the present invention are described infra. In one embodiment, surfactants may be selected from the group consisting of anionic, non-ionic, cationic, amphoteric, zwitterionic, and combinations thereof. In one embodiment, the present invention does not comprise cationic surfactants. In other nonlimiting embodiments, the surfactant may be a superwetter.”
As I have mentioned above the surfactants are used in the exemplary compositions, including those on page 21 and 31. Those, in my view, put the surfactant into context with the adhesion promoter, but other surfactants can be present.
Adhesion promoter (ii)
This is defined in the claim as a non-ionic surfactant based on a C12 to C30 alkoxylated alcohol and this includes a C16-C18 ethoxylated alcohol. The use of the term “based on” was construed by the delegate in decision on the amendments. He stated that the C12 to C30 alkoxylated alcohol only needs to be present as the main component and includes a C16-C18 ethoxylated alcohol.[25] I have no reason to depart from that construction. The adhesion promoter itself can act as both the adhesion promoter and the surfactant because of the phase “wherein the at least one adhesion promoter can be one or more of the at least one surfactant. Furthermore the description states that:
One of skill in the art will appreciate that in some embodiments, a substance which may be used as an adhesion promoter may also be a surfactant.[26]
[25] Reckitt Benckiser LLC v S. C. Johnson & Sons, Inc. [2016] APO 47 at [38]
[26] Page 7 lines 11-14
Therefore in my view features (ii), the adhesion promoter, has C12 to C30 alkoxylated alcohol and this includes a C16-C18 ethoxylated alcohol as the main component and there is the option of a further, more generally defined surfactant (i) but this is not necessary. Therefore a C16-C18 ethoxylated alcohol could be both the surfactant (i) and the adhesion promoter (ii).
The claims also contain mineral oil in the composition. This is present in the range of 0.1 wt. % to 5 wt. %.
The transport rate factor and the adhesion time were both points of contention in this hearing, with the opponent arguing that these terms were unclear. With this in mind I will deal this these under the ground of clarity.
Clarity
It is a requirement of subsection 40(3) of the Act that the claims must be clear. This requirement is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim"(Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59).
Is the transport rate factor used in the claims unclear?
The Opponent submitted that the transport rate factor and the adhesion time were unclear. The principle argument was that these are not usual experiments in the field and the PSA did not have a standard method to calculate them. Ms Burt stated:
“Prior to reviewing the Opposed Application, I had not heard of the term “transport rate factor”, and on the basis of my experience as described above, I do not believe that this is a term generally known in the industry either today or before 21 February 2008.” [27]
[27] Burt at 22
In this case the term does need clarification from the specification and Ms Burt then turns to the specification to clarify the term and notes it is used on page 38.[28] The skilled addressee would, have to rely on repeating the method in the specification to determine if what they proposed to do falls within the ambit of the claim. It is permissible, when construing a claim where a term maybe unclear, to turn to the specification.[29] The page 38 begins with:
“The “transport rate factor” is measured as described below.”
[28] Burt at 23
[29] H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70, 81 IPR 228 at [118] – [120]:
The experiment then states:
“A 12” x 12” pane of frosted or etched glass is mounted in a flat-bottomed basin that is large enough to support the pane of glass” (my emphasis)
The protocol is then given where the formulation is stuck on the frosted or etched glass and water poured over it and this is measured. The Opponent did not take issue with the general protocol and it appears that Ms Burt was able to follow it. However, Ms Burt found that it was difficult to repeat because it was not clear what was meant by the frosted or etched glass. Ms Burt says this:
“I am aware that “frosted” glass may be produced by means of a number of different techniques. Acid etched frosted glass and sand blasted frosted glass are two types of “frosted” glass.”[30]
[30] Burt at 25
Ms Burt, then, when charged with the task of determining the transport rate factor following the specification and decided to conduct experiments on both acid etched and sand blasted. I note that she observed:
“I observed from a visual inspection of these glass samples that the surfaces of the acid etched and sand blasted glass samples appeared similar. However, a closer inspection of the samples by running my hand over the surface of each glass type revealed that the acid etched glass samples were smoother in texture than the sand etched glass samples.”[31]
[31] Burt at 26
Prof. Stokes appears to agree that the choice of frosted glass would give different results, he states:
“In DJB [Ms Burt’s declaration] at paragraphs 23-25 it is alleged that the patent application does not provide sufficient detail regarding the characteristics of the “frosted or etched glass” used in the TRF measurements. In my experience I have found that the source of a glass may affect its wetting characteristics and this may, in my opinion, affect TRF [Transport Rate Factor] measurement.[32]
[32] Stokes at 59
Ms Burt conducted the experiments and they showed a clear difference in transport rate factors between the acid etched and sand blasted glass.[33] Ms Burt concludes that:
“It is clear to me from the results set out in Table 1 that there is very substantial variation in the values obtained for samples tested on the acid etched glass and those tested on the sand blasted glass, as well as being a very significant variation between TRF values for samples of the same adhesion promoter/surfactant type but in differing quantities.”[34]
[33] Burt table 1
[34] Burt at 34
Ms Burt further illustrates these differences[35] before concluding:
“In light of the results I obtained in carrying out the above experiments in accordance with the TRF [transport rate factor] Protocol, it is my view that the TRF Protocol is plainly not a reliable "test method" for measuring the TRF as described in the Opposed Application. As shown in the Tables above, the TRF Protocol does not yield results of any degree of predictability or consistency. It is my view therefore that the TRF Protocol is a highly unreliable method for carrying out any quantitative analysis of the rate of spreading or transport of compositions of the kind described in the Opposed Application.”[36]
[35] Burt 36-39
[36] Burt at 40
Prof. Stokes responded to this because he thought that, although the two glasses would show differences, there would be a consistent trend between the two and he investigated:
“In Table 2 of DJB, it is highlighted that measurements of TRF for a range of formulations varied between surfaces and it is suggested in paragraphs 36-38 that there is no trend in the data. In my opinion, this is curious; if roughness and/or contact angle were the defining parameters then I would have expected a trend where one surface was consistently higher than the other. I investigate this further below.
I see issues in the analysis of Tables 1 and 2 in DJB. It is not apparent to me that repetitions were performed in the experiments described in DJB, nor a statistical evaluation to disprove the hypothesis. The method may well prove reliable given sufficient repetitions or fine-tuning of the protocols performed. It is unusual in my opinion for a clear trend not to be observed between the two surfaces tested here, but no scientific explanation is even hypothesised. I therefore conclude that DJB has not provided sufficient analysis of the data to substantiate a conclusion of a lack of consistency.”[37]
[37] Stokes at 60-61
Prof. Stokes did show that one could draw a line of best fit between the two glasses. I have repeated the figure from his declaration below.
At the hearing the Opponent pointed out that this correlation used a different scale for the sand blasted glass to that of the acid etched glass. The Opponent also stated that the experiments were conducted in triplicate so there is no basis for not using points in the correlation.
Prof. Stokes was of the opinion that a skilled worker would be able to calibrate their formulation with those in the specification, on whatever type of frosted glass they chose and be able to calculate the difference, then determine if they were infringing. He states that:
“the data provided in the patent application may be used to “calibrate” a glass surface, for example by varying the chosen surface until the same TRF is achieved by the practitioner for one or more of the test samples as the value provided in the patent application. In my opinion, given the simplicity of the TRF measurement method and the basic materials used, this is well within what could be expected from a typical worker in the field of formulating cleaning compositions. I also note that the calibration of equipment and methods of measurement to reference standards is common in technical fields.”[38]
[38] Stokes at 64
Dr Paul Wynn-Hatton responds to this stating that Stokes had no basis for disregarding the points not used and that:
“The fact that the experimental data does not fit Stokes’ theory does not provide a legitimate basis for omitting it. Although there appears to be a correlation of some sort between the types of glass used, in other cases, there [are] significant outliers supported by experiment. A skilled person would have no idea as to whether a formulation would or would not follow the correlation, although in any event, the correlation is not relevant since the claims do not define TRF relative to two specific glass types, they define an absolute performance on an unspecified type of glass.”[39]
[39] Wynn-Hatton #2 at 42
In my view, while it is permissible to seek clarification from the specification on terms in the claims, the issue with the transport rate factor could not be resolved from the specification. On repetition, Ms Burt found that different frosted glass gave different results. The specification provides no guidance as to what frosted glass is to be used and although Prof. Stokes tried to resolve this with correlations and using reference standards, there is nothing in the specification that tells the PSA to do this. Instead in my view a person skilled in the art, in attempting to determine if their product was in the scope of the claims, would follow the procedure on page 38 and they might get a value which shows they are not infringing because they used one type of frosted glass and another PSA would think that they were infringing with the same formulation but they tested it on a different type of frosted glass. There is no information in the specification about the type of frosted glass, nor is there any information stating that it needs calibrating to a standard, or anything else that Prof. Stokes suggests one might do in order to determine the scope of the monopoly. I therefore find that the scope of the monopoly is unclear because the value of the transport rate factor cannot be determined.
Is the adhesion time used in the claims unclear?
The Opponent put forward a similar argument about the adhesion time used in the claims as they did for the transport rate factor. Ms Burt stated:
“I do not believe that prior to February 2008, or indeed today, the “Adhesion Test” as described in the Opposed Application is a test method that is either known or accepted in the industry as being a relevant means by which the physical or performance characteristics of a toilet cleaning composition would be measured.”[40]
[40] Burt at 41
In order to construe this term, once again one must turn to the description. The adhesion time is measured after the transport rate factor.[41] The claims refer to an adhesion time of greater than 8 hours. When Ms Burt conducted her experiments on the two different kinds of frosted glass the adhesion time they all adhered for greater than 8 hours and it did not present the same issues of the transport rate factor. She states that:
“In my view, the steps described in the Adhesion Time Protocol are fairly uncomplicated and require only basic laboratory technical skills to perform.”[42]
[41] Page 34 lines 1-10
[42] Burt at 44
In my view, the adhesion time is measure of the agent’s ability to stick to a surface and is therefore less dependent on the wetting characteristics of the particular surface used and, given that it did not present problems for Ms Burt, I do not find this term unclear.
Conclusion on Clarity
The person skilled in the art would be unable to determine the scope of the claimed monopoly. This is because they will be unable to determine whether or not their proposed composition would possess the transport rate factor in the claims given the differences in the types of frosted glass that could be used to test this and the lack of guidance the specification offers on how to calibrate it. Each of the independent claims, 1, 8, 13 and 18 refers to a transport rate factor. The dependent claims 2-7, 9-12, 14-17 and the omnibus claim 19 all incorporate this feature. I therefore find that claims 1-19 are unclear in view of the evidence provided.
Sufficiency
The test for sufficiency of description set out by the High Court is:
"… will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions of prolonged study of matters presenting initial difficulty?"[43]
[43] Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 at [25]:
The Opponent submitted that the specification lacks a full description for similar reasons to those I have discussed above for clarity. That is, the problems encountered by Ms Burt when attempting to carry out the measurement of “transport rate factor” and “adhesion time” required testing on frosted glass and, because of insufficient description of the frosted glass used, the specification fails for full description.
The measuring of adhesion time is disclosed in the specification.[44] As I have outlined above for clarity, the adhesion time, although an uncommon test in the art, did not, in my view, present problems in determining the scope of the monopoly and appeared to be readily carried out. I therefore find that, in view of the evidence, this feature is fully described.
[44] Page 40 line 1 to page 42 line 14.
The invention in this case lies in the claimed composition, and that composition has particular features. One of those features is the “transport rate factor”. I have found that the transport rate factor is unclear and, because of this, it is difficult for me to determine if a person skilled in the art, in light of the description, would be able to produce something within the scope of the claims having the required transport rate factor. On one hand, since the specification teaches a formulation with particular ingredients, one would assume that, on producing the formulation (e.g. by repeating the example containing mineral oil), it should inherently have the transport rate factor of the claims. However, on the other hand, the person skilled in the art would have to conduct calibrations on the glass they used. There is nothing in the specification which tells them to do this. In repeating the protocols, the PSA would be unaware that further study and calibration is needed. This feature is therefore inadequately described. The transport rate factor is therefore not fully described for the same reasons it is unclear.
The Opponent further submitted that fragrance is an essential feature of the claim and many claims are silent on the amount of fragrance and therefore allow for 0% fragrance. This submission is based on a declaration on the prosecution file by the inventor John R Wiedfelt which states that:
“the fragrance and surfactant need to be selected to provide the claimed transport rate factor and adhesion property to a hard surface.”
The Opponents stated that because this “essential feature” is omitted from the claims, the claims fail to define the invention. In my view, this argument appears to be dealing with a different ground, i.e. fair basis. However, although the fragrance may affect the transport rate factor, I do not see how this statement precludes someone from doing something within the scope of the claims.
Fair Basis
Subsection 40(3) requires that the claims be fairly based. A claim will lack fair basis if it is not consistent with what the specification as a whole describes as the invention. The general principle for fair basis is:
“where the issue is one under a 40(3) of ‘fair basing’ of a claim, what the 1990 Act requires is a comparison between the matter described in the specification and the claim which defines the scope of the monopoly”.[45]
[45] Kimberly-Clark Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 at 15
However the consideration of fair basis is not “a superficial test based solely on the presence or absence of words”.[46] Rather, a consideration must be made as to what the specification read as a whole discloses as the invention.[47]
[46] Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth (“Sigma”) [2011] FCAFC 132
[47] Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 at 87; (2004) 217 CLR 274)
The High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd at 300 approved the words of Gummow J in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd[48]:
"the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification".[49]
[48] (1988) 81 ALR 79 at 95
[49] [2004] HCA 58 at [69], [2004] HCA 58; 217 CLR 274 (Lockwood)
As outlined in my construction, the claims allow for the use of a single adhesion promoter, which can be the surfactant as well. The Opponent appears to agree with this construction and they submitted that the specification does not adequately support the use of a single adhesion promoter. Instead the examples use adhesion promoters in a 1:1 ratio, with one being a C22 and the other being a C16-18 ethoxylated alcohol.[50] They also submitted that mineral oil is not present in the examples which determine the transport rate factor and adhesion time, and they further submitted that the examples use less than 7.5% of at least one surfactant.[51] Furthermore the Opponent submitted that the fragrance is an essential feature in a similar way to above under sufficiency.
[50] Page 21 table B
[51] Page 30 line 11-page 40 line 4
In my view, the Opponent’s submissions focus heavily on the examples rather than the invention described in the specification as a whole. The description discusses having a single adhesion promotor[52] and therefore I do not feel that one can limit this part of the invention to the examples as it is discussed more broadly in the description. The specification also discusses the surfactants with higher percentages, including stating:
“In another embodiment, the composition comprises at least one surfactant in an amount of greater than 7.5 wt.%. In another embodiment, the composition comprises at least one surfactant in an amount of from about 7.5 wt.% to 25 about 20 wt.%. Surprisingly, it is discovered that providing an optimal amount of surfactant, in particular anionic surfactant, provides the product with a particularly strong "foaming" characteristic that greatly pleases consumers.”[53]
[52] For example pages 3 to 3b; page 10, lines 20-21: ‘the composition may include an adhesion promoter; page 11, lines 10-19: ‘the composition comprises an adhesion promoter’; and page 10, lines 23-25: ‘at least one nonionic surfactant (which may serve all or in part as the adhesion promoter)’.
[53] Page 11 lines 21-29
The Applicant also submitted that the surfactants used in the examples included two surfactants and because of this the amount used is greater than the 7.5 wt. %. I accept this submission and I find that the specification does contain a real and reasonably clear disclosure of this feature.
In regards to the submission on the fragrance being an essential feature, I am cautious that this is an over-meticulous, verbal analysis, which looks at statements made in prosecution rather than determining whether or not there is a real and reasonably clear disclosure of the invention claimed. The fragrance is discussed as an optional feature in the specification itself:
“Optionally, the compositions of the present invention may further comprise…at least one fragrance in an amount of from 0 wt.% to about 15 wt.%.” [54]
[54] Page 12, lines 14-18
Or alternatively the fragrance may be present in 0 wt % as outlined at:
In another embodiment, the gel composition comprises from 0 wt.% to 6 wt.% fragrance. In another embodiment still, the gel composition comprises from 0 wt.% to about 5 wt.% fragrance.”[55]
[55] Page 20 lines 26-30
These disclosures of the fragrance do not, in my mind, lead to an inconsistency between the invention described in the specification as a whole and what is claimed.
In regards to the submissions on the mineral oil, although it is is not present in the examples used to determine the transport rate factor and adhesion time, it is disclosed at several locations in the specification.[56] There are four example compositions which determine the effect of the mineral oil in the composition.[57] I do not see that the example of transport rate factor and adhesion time takes away from the other passages about the exemplary compositions in the specification that could lead to there not being a real and reasonably clear disclosure of this feature.
[56] Compositions having up to 5 wt.% mineral oil are discussed at page 11, line 32 to page 12, line 5 and also at page 19, line 10-21.
[57] Page 43 line 20- page 44 line 2
The Opponent has not satisfied me that there is not a real and reasonably clear disclosure of the invention claimed. Therefore this ground of opposition fails.
Manner of manufacture
It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, must be a manner of manufacture within the meaning of section 6 of the Statute of Monopolies.
The Opponent’s argument focused on the general lack of quality of newness or inventiveness, citing Commissioner of Patent v Microcell Ltd:
“We have in truth nothing but a claim for the use of a known material in the manufacture of known articles for the purpose of which its known properties make that material suitable. A claim for nothing more than that cannot be subject matter for a patent.” [58],
and NV Philips Gloeilampenfabrieken v Mirabella Internation Pty Ltd:
“if it is apparent upon the face of the specification, when properly construed, that the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent, one need go no further”[59],
along with the reasons of D’Arcy v Myriad Genetics Inc.[60]
[58] (1959) 102 CLR 232
[59] (1995) 183 CLR 655 at 663-665
[60] (2015) 325 ALR 100
The Applicant responded to this by citing Beach J in Meat and Livestock Australia Pty Ltd v Cargill LLC:
“Now I am not at all convinced that their Honours [the High Court in Myriad] have introduced a new threshold requirement for inventiveness. There is always a difficulty in parsing and nuancing the language of a judgment. But let me assume for the moment in favour of MLA that this is how their Honours’ reasoning should be read. I have not applied such a new threshold for inventiveness because there are two binding authorities against me doing so. The first authority is Myriad itself. Neither the plurality nor Gordon J endorsed such an approach. The second authority is Lockwood (No 2) at [106] where the Court stated, with reference to Commissioner of Patents v Microcell (1958) 102 CLR 232 that Microcell:
‘stands for a narrow proposition that a Commissioner of Patents, or his or her delegate, may refuse an application for patent protection where a specification “on its face” shows the invention claimed is not a manner of new manufacture. This may arise, for example, from admissions concerning novelty. The decision in Microcell has not always been properly understood; it does not involve a separate ground of invalidity or a discrete “threshold” test. (footnote omitted) (my emphasis)
In other words, Lockwood (No 2) rejected any separate threshold test, whatever it might be said that NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 183 CLR 655 at 663 and 664 stands for. Moreover, the plurality in Myriad at [12] did not refer to Philips to support any separate threshold requirement for inventiveness, but rather cited Philips in a manner consistent with how Lockwood (No 2) had described how Microcell should be read; this is consistent with the conjunction of the two references in footnote 26 to the plurality’s reasons in Myriad.”
To complete the circle, Gageler and Nettle JJ applied Lockwood (No 2) (see [131] and footnote 144), thereby confirming my doubts as to whether their Honours intended to introduce a new threshold requirement.”[61]
[61] [2018] FCA 51 at 458 to 460
The Opponent’s submissions focused on the discussion of the prior art in the specification. I have outlined this above but I will repeat it here:
“U.S. Patent No. 6,667,286 discloses a sanitary agent in paste or gel form which provides a long-lasting cleaning and/or deodorant-releasing and/or disinfecting effect and which can be applied directly to the surface of the toilet bowl in a simple and hygienic manner.”[62]
[62] Page 2 lines 27-31
However, this statement is followed almost immediately in the application with a discussions on the benefits of its invention over prior art which states:
“The present invention provides an improvement to such a sanitary agent by providing greater stability, e.g. longevity in use, as well as improved self-adhesion to hard surfaces, especially ceramic surfaces such as a toilet bowl.”[63]
[63] Page 3 lines 1-4
This, in my view, does not demonstrate that the specification itself is admitting to a lack of newness or inventiveness. The specification discusses how its sanitary agent is different from those in the prior art.
The Opponent further submits that each of the features of the claimed composition is known and they cite Dr Wynn-Hatton:
“it is clear that the Opposed Application does not disclose any compositions that are different in chemistry or that have any relevantly different physical or performance properties compared to each of the prior art documents.”[64]
[64] Wynn-Hatton at 89
In my view this discussion by Dr Wynn-Hatton of prior art adhesive cleaning products is more relevant under the grounds of novelty and inventive step, see below. Indeed, the surfactants themselves are known and so is the mineral oil. However, the claim is to a composition which has further properties. These enable it to be stuck inside the toilet bowl and disperse on flushing.
Prof Stokes has a different view and states that it would require rheological selection of compounds to get the right properties of the gel:
“Gel compositions of the sort the patent application is concerned with are rheologically complex, structured systems where viscosity plays an important role in determining their properties. In order to formulate an effective adhesive composition, in my opinion I, and others working in the field of cleaning compositions, would have had to select appropriate compounds with the right rheological properties.”[65]
[65] Stokes at 20
And he is of the opinion that:
“gel compositions would typically have been formulated based on serendipitous discoveries and a person’s past experience. And, it is my opinion that, at the priority date, the design of adhesive gel compositions was a complex and often unpredictable exercise, and was not well understood, certainly not in a quantifiable manner.”[66]
[66] Stokes at 21
Prof. Stokes’ opinion is then supported by a text book references on surfactants.[67] This tells me that the composition in the Opposed Application is not a mere collocation of known components acting together in a known way, because it was unpredictable. I do not accept that all surfactant containing formulations would have known properties, or that one could predict a formulation’s adhesion properties. The specification does not lack a manner of manufacture.
[67] Stokes at 22
Novelty
It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, is novel. Subsection 7(1) states that an invention is taken to be novel unless it is not novel when compared to prior art information. The Act then states that prior art information can be information made publically available in a single document.[68] Subsection 7(1)(b) states that prior art includes information made publically available in two or more documents if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information.
[68] ss 7(1)(a)
The well-established general test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd:
"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".[69]
[69] [1977] HCA 19; 137 CLR 228 at 235
This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co.[70] In order to meet this requirement, the prior art must “contain clear and unmistakeable directions to do what the patentee claims to have invented” (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited (General Tire)).[71]
[70] (1990) 91 ALR 513 at 517)
[71] [1972] RPC 457 at 486
The Opponent contended that the claims lacked novelty when compared to each of the following documents when considered separately:
US 6667286 (D4)[72]
AU 2005309096 (D6)[73][72] DJB-5
[73] PWH-10
Furthermore, the Opponent contended that the claims were not novel in view of D4 and D6 when these documents are combined and treated as a single document within the meaning of ss 7(1)(b). I will deal with each of these separately.
US 6667286 (D4)
As I have mentioned above D4 is acknowledged in the Opposed Application. The summary of the invention of D4 begins by stating:
“Amazingly, it was determined that it is possible to produce a sanitary agent that can be put directly on the surface of the sanitary object to be cleaned and that adheres there so that the known holders for the sanitary agents that are felt to be unhygienic can be abandoned; this was achieved by using an adhesion promoter, namely long or long-chained organic molecules with at least one hydrophilic residual together with water in the sanitary agent.”[74]
[74] D4 col 2 lines 35-43
Indeed this discussion is similar to that of the Opposed Application. D4 then discusses how the formulation would be adhesive and introduces an adhesion-promoting molecule:
“Through the interaction between the hydrophylic part of the adhesion-promoting molecule and water especially the surface of the agent becomes '"sticky," which makes an application directly onto the surface of the sanitary object possible.”[75]
[75] D4 col 2 lines 44-48
D4 then describes the agent as being able to disperse:
The agent according to the invention can also be applied in a simple way on different places of the sanitary object at the same time, for instance, to obtain a consistent cleaning effect both on the right and left side of a toilet bowl.[76]
[76] D4 col 2 lines 61-64
Later the adhesion promoters are defined and these are indeed similar to that in the Opposed claims:
“Preferred adhesion promoters are polyalkoxyalkanes, preferably a mixture of C20 to C22 alkyl ethoxylate with 35 EO, but also sodium dodecylbenzene sulfonate.”[77]
[77] D4 col 4 lines 25-28
Additional agents, including perfume oil, are disclosed:
“In addition to the components according to the invention, the sanitary agents can include other usual components such as perfume oil, a disinfection agent, preservatives such as isothiazolone derivatives or foam stabilizers such as coconut fatty acid amidopropyyl betaine or coconut fatty acid amidopropyl dimethyl amine oxide or coconut fatty acid mono/diethanolamide, but also colorants and/or substances that The adhesion-promoting molecules can be synthetic or dissolve calcium or urine deposits, especially acids.”[78]
[78] D4 col 4 lines 50-58
The agent is then described as being:
“Preferably the agent according to the invention is produced in the form of salve-like, pasty, and/or creme gels that stick to the hard surfaces through adhesion amazingly well. The gels are essentially dimensionally stable so that they do not "run" or "drip." The adhesion and form of the gels remain intact despite the considerable power (friction, deformation, ... ) caused by the water rinse.”[79]
[79] D4 col 5 lines 10-15
Importantly the example formulation disclosed in D4 is repeated below:
[80]
[80] D4 col 6 lines 1-19
There were some arguments between the parties as to whether or not the alkyl (C22) ethoxylate includes a C16-C18 ethoxylated alcohol and whether or not this formulation would inherently have the transport rate factors and adhesion times claimed. However, in my view, a key difference between the above formulation and the claims is that no mineral oil is disclosed in D4. This feature was added during the amendments which occurred after evidence in support was filed for this opposition. I will focus on the submissions on the mineral oil.
The Opponent submitted that the mineral oil feature suffered from parameteritis and with such a diagnosis the feature cannot convey novelty or inventive step. The term parametritis was first used by Laddie J in Raychem Corp’s Patents (Raychem)[81] At page 37, he defines the concept:
“This is the practice of seeking to repatent the prior art by limiting claims by reference to a series of parameters which were not mentioned in the prior art. Sometimes it includes reference to parameters measured on test equipment which did not exist at the time of the prior art. The attraction of this to a patentee is that it may be impossible to prove now that the prior art inevitably exhibited the parameters and therefore it is impossible for an opponent to prove anticipation. Even if that is what has happened here, it does not alter the task of the court. It must decide whether the opponent has proved anticipation or some other statutory ground of invalidity. Parametritis may make the court’s task more difficult, but at the end of the day the test of invalidity must be the same, whatever the form of the claims.”
[81] [1997] EWHC 372; [1998] RPC 31.
At page 46, he refers to the parameter (the S/D volume ratio) that is used in the claims in that case as:
“essentially arbitrary and has little technical significance. The selection of a group of compositions by reference to such a parameter does not involve any inventive step. Although it may not be obvious, in the common use of that word, to limit a claim by reference to this particular meaningless and arbitrary parameter, that has nothing to do with patentability. Patents are not given for skill in inventing technically meaningless parameters.”
In Australia, where it is spelled “parameteritis”, there have been several cases where the issue has arisen, and they provide a useful understanding. In Williams Advanced Materials Inc v Target Technology Co LLC[82] (Williams), Bennett J considered claims to an optical storage medium having a reflective layer including a silver – palladium alloy. Her Honour noted that the parameters were selected without a purpose:
“there is nothing in the specification that suggests that the proportions or the ranges of the metals in the alloys are in any way part of the invention, other than the mere reference to them. It is a case of ‘parameteritis’.”
[82] [2004] FCA 1405 [2004] FCA 1405;63 IPR 645 at 654
Her Honour then found that certain of the claims were not novel.
In Austal Ships Pty Ltd v Stena Rederi Aktiebolag[83], Bennett J referred to the Williams case, and distinguished it because:
“there is reference in the patent specification and evidence which supports the fact that the parameters have been carefully chosen, are part of the invention and are related to a claimed advantage as part of the combination of the design”.
[83] [2005] FCA 805 at [108], [2005] FCA 805; 66 IPR 420 at 437
The mineral oil includes features which are parameters, i.e. the wt. %, so the question is has the mineral oil, in the wt % claimed been chosen to achieve a technical effect, or is it of arbitrary convenience?
The Opponent proposed three reasons why they thought the mineral oil was arbitrary. Firstly they submitted that the mineral oil content is not necessary to obtain the claimed transport rate factor and adhesion time. In arguing this point the Opponent noted that the examples in the Opposed Application do not contain mineral oil. Indeed the base ingredient set does not mention mineral oil and this set is used to measure the transport rate factor and adhesion time. Instead the base ingredient set includes a fragrance and glycerine.
The specification discusses the use of mineral oil at length on page 19 where it is said that the mineral oil may serve to increase stability and self-adhesion in the amounts claimed[84] and in higher amounts it may result in difficulties in manufacture that are costly to overcome.[85] The specification also tests varying concentrations of mineral oil in the composition on page 43-44 and these are shown in Figures 2A to 2E. It is stated that:
“Surprisingly, it is discovered that the compositions with a relatively lower wt. % mineral oil tended to have lower adhesion times than samples with a relatively higher wt. % mineral oil.”[86]
[84] Page 19 lines 8-9
[85] Page 19 line 22-page 20 line 2
[86] Page 43 line 31-page 44 line 2
Although the formulations tested for adhesion time and transport rate factor do not contain mineral oil, the exemplary composition on page 21 lists three compositions containing mineral and one without.[87] In my view, the transport rate factor and adhesion time experiments were provided to give the person skilled in the art the knowledge to conduct the experiments. I do not consider the base ingredients set used cancel out any of the effects discussed for mineral oil and the differences noted when different wt. % were used.
[87] Page 21 table B
The transport rate factor did result in issues with the clarity of the claims, and I have addressed that above. Although it does appear that other ingredients, such as the fragrance and glycerine, could be used to achieve the transport rate factor and adhesion time, I have no reason to believe that these may convey the same advantages of increased stability and self-adhesion that the mineral oil may have. Furthermore, mineral oil is said to have disadvantages at higher concentrations and I have no evidence that using glycerine or fragrance instead of the mineral oil would not present disadvantages.
Secondly and thirdly the Opponent submitted that the sole role of mineral oil in the composition was to displace water and this could be equally achieved by increasing the surfactant/adhesion promoter within the claimed range or using any other suitable component to displace water. In reply Dr Wynn-Hatton discusses the amended claims, which included the addition of the mineral oil where he states:
“I note that the claims have been amended to now include the limitation of mineral oil. In my opinion, the addition of mineral oil would have very little practical effect upon the composition other than to displace the presence of water in the formulation, a factor which would in turn have an effect on the overall properties of the gel.”
Indeed Dr Wynn-Hatton notes that the mineral oil would have a technical effect. It is used to displace the water in the composition and this affects the overall properties of the gel. The question of whether or not this can be achieved through other means is going the beyond the question I have to answer here. I find that the mineral oil is not of arbitrary significance and is therefore a feature of the claim. This feature is not present in D4 and therefore the claims are novel when compared to D4.
AU 2005309096 (D6)
D6 is directed towards:
“an adhesive sanitary agent for cleaning and/or disinfecting and/or for fragrance release for sanitary objects such as toilet bowls. These sanitary agents are viscous, generally pasty gels which are applied directly to the surface of the sanitary object from a suitable container, adhere there and can [be] flushed away only after a relatively large number of flushing operations.”[88]
[88] D6 Page 1 lines 3-11.
This sanitary agent is clearly similar to that in the Opposed Application. D6 also discloses adhesion promoters and these fall with the scope of the claims:
“Preferred adhesion promoters are polyalkoxyalkanes, preferably a mixture of alkyl (C20-C20) ethoxylate with 35 EO or alkyl (C22) ethoxylate with 35 EO and alkyl (C16-C18) ethoxylate with 30 EO.”[89]
[89] D6 page 9 lines 8-11
The adhesion promoters are further discussed with their advantages:
“The use of a mixture of the adhesion promoters alkyl (C22) ethoxylate (35 EO) and alkyl (C16-C18) ethoxylate (30 EO) has a positive effect on the desired flush number in the sense of a reduction and the durability of the agent.”[90]
[90] D6 page 9 lines 15-19
The example formulation is provided on page 20. This formulation is repeated below for completeness. As can be seen, D6 uses two adhesion promoters, a C22 alkyl ethoxylate and a C16-C18 alkyl ethoxylate.
[91]
[91] D6 page 20 lines 15-20
Like D4, in the above example of D6 no mineral oil is disclosed. The Opponent again argued that the mineral oil was an inessential feature. However, as I have found above I do not accept this position and instead it should be read as part of the claim. D6 does allow for the addition of mineral oil to its composition and discloses it in general terms:
“In general, these compounds are essentially stable in the gel. If desired, however, the bleach can in be additionally stabilized by adding a stabilizing agent. Stabilizing agents which may be used are urea, barbituric acid, hydrophobic compounds, such as, for example, mineral oils or other unreactive hydrophobic compounds, such as tertiary alcohols, complex esters or ketones.[92]
[92] D6 page 5 lines 14-21
In my view, this disclosure is not clear and unmistakable directions to use the mineral oil in the composition. It is listed as one of possible stabilizing agents which may be used “if desired” and of those it is just an example of a hydrophobic compound, of which there are others listed. The evidence has not established that a person skilled in the art would read this as clear and unmistakable directions to use mineral oil, if at all. Instead the evidence focussed on the properties of the mineral oil and that it could easily be interchanged with something else to achieve the same technical effect. Because of this, in my view it has not been established that D6 anticipates the opposed claims.
D4 and D6 combined under s 7(1)(b)
D6 refers to D4 by introducing other adhesive sanitary agents, it states:
“Such adhesive sanitary agents are known from WO 99/66017 [the PCT publication of D4]. Besides surfactants, water and fragrances, they also comprise adhesion promoters, for example from the class of nonionic surfactants such as the polyalkoxyalkanes, and are viscous, solid or pasty agents. Polarization-microscopic analysis of the cleaning agents known from this printed specification shows that the agents comprise liquid-crystalline phases, in particular of hexagonal structures.”[93]
[93] D6 page 1 lines 22-30
The above passage is on the first page of D6, and it introduces D4 as other sanitary agents, it is a discussion of other prior art available rather than a reason to combine them. The reference is not telling me that I should use anything from D4 in combination with D6. Furthermore, I have no evidence from a person skilled in the art stating that they would read the above passage and that would tell them “I must combine these”.
The Opponent further submitted that both D4 and D6 have two common inventors−Johannes Dettinger and Edgar Jaeschke and because of this, and the above disclosure, the person skilled in the art would consider them as single source of information. I disagree with this submission. The mere presence of common inventors does not suggest that this is a single piece of prior art information. I have no evidence before me that this is something a person skilled in the art would do. In general, common inventors may highlight that separate publications might be of interest and might be useful when conducting a search, however, it does not extend to combining them as a single source of information.
It has not been established that D6 and D4 would be combined as a single piece of information.
Conclusion on Novelty
I am not satisfied on the evidence that the claims are not novel.
Inventive step
It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, involves an inventive step. Subsection 7(2) states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art. A document is prior art for this purpose if “a skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded [the document] as relevant” (subsection 7(3)).
The Opponent submitted that the claims lack an inventive step when compared to the common general knowledge alone, the prior art documents D4 and D6, the prior art documents D4 and D6 when combined and the sale of the product known as “scrubbing bubbles”. I note that “scrubbing bubbles” is documented by the MSDS (D1) and a news release document (D2). I will discuss the scrubbing bubbles product last.
The test for whether an invention is obvious is to ask whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd[94] Aickin J stated:
"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."
[94] [1981] HCA 12; 148 CLR 262 at 286
In Alphapharm,[95] the High Court endorsed the use of the reformulated "Cripps 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 the facts, directly be led as a matter of course to try the invention as claimed in the expectation that it might well produce a solution to the problem."[96]
[95] Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; 212 CLR 411
[96] Alphapharm at [53]
This has been elaborated on in the Full Federal Court’s decision Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft:
“We do not think that the plurality in Alphapharm were saying that the reformulated Cripps question was the test to be applied in every case. Rather, it is a formulation of the test which will be of assistance in cases, particularly those of a similar nature to Alphapharm. The plurality did not reject as an alternative expression of the test the question whether experiments were of a routine character to be tried as a matter of course (The Wellcome Foundation Limited v VR Laboratories (Aust) Proprietary Limited (1981) 148 CLR 262, at 280‑281, 286, per Aickin J). We do not think there is a divide here in terms of whether an expectation of success is relevant between a test which refers to routine steps to be tried as a matter of course and the reformulated Cripps question. It is difficult to think of a case where an expectation that an experiment might well succeed is not implicit in the characterisation of steps as routine and to be tried as a matter of course.“[97]
[97] 2014 FCAFC 73 at [71]
Where the invention is a combination of integers (as in the present case), obviousness is to be determined by reference to the combination as a whole and not each integer individually. As stated in Alphapharm at [41]:
“The claim is for a combination, the interaction between the integers of which is the essential requirement for the presence of an inventive step. It is the selection of the integers out of ‘perhaps many possibilities’ which must be shown by Alphapharm to be obvious, bearing in mind that the selection of the integers in which the invention lies can be expected to be a process necessarily involving rejection of other possible integers.”
In AstraZeneca AB v Apotex Pty Ltd[98] (AstraZeneca), the court held that in formulating the problem it is not permissible to incorporate information that is not available to the person skilled in the art either as common general knowledge or information available under subsection 7(3).
The problem
The current application discusses the problem with other sanitary cleaning products, such as caged hangers.[99] Dr Wynn-Hatton also discusses them in his evidence.[100] These under-the-rim devices get in the way of brush cleaning and are seen as unsanitary and generally unappealing as they require the consumer to move them with their hands.[101] The specification acknowledges that D4 is not an under-the-rim device[102] but offers improvements in stability, longevity and self-adhesion to hard surfaces.[103] From this information in the specification and the evidence of Dr Wynn-Hatton I consider the problem is to provide a self-adhering sanitary agent for use on hard surfaces (e.g. a toilet bowl) that has improved stability, longevity and self-adhering properties.
[98] [2014] FCAFC 99; 107 IPR 177
[99] Page 2 lines 14-21
[100] Wynn-Hatton #1 at 34-35
[101] Page 2 lines 14-21
[102] Page 2 line 27-page 3 line 1
[103] Page 3 lines 1-4
The Common General Knowledge (CGK)
The common general knowledge was considered by Emmett J in ICI Chemicals & Polymers Ltd v Lubrizol Corporation Inc[104]:
“The common general knowledge is the technical background to the hypothetical skilled worker in the relevant art. It is not limited to material which might be memorised and retained at the front of the skilled workers mind but also includes material in the field in which he is working which he knows exists and to which he would refer as a matter of course. It might, for example, include:
· standard texts and handbooks;
· standard English dictionaries;
· technical dictionaries relevant to the field;
· magazines and other publications specific to the field.”
[104] [1999] FCA 345; 45 IPR 577 at [112]
The common general knowledge must be established by evidence as stated by Emmett J in Dynamite v Aruze[105]:
“It is necessary to establish common general knowledge by appropriate evidence. Evidence that consists of generalised and sweeping statements of opinion or recollection, unsupported by secondary materials such as text books, trade journals and technical publications, should be treated with caution and given little weight.”
[105] [2013] FCA 163 at [104]
The Opponent first submitted that the claims lacked an inventive step when compared to the common general knowledge alone. The Opponent submitted that many things were part of the common general knowledge; I will deal with those relevant to the claims.
Dr Wynn-Hatton states that gel based cleaning products appeared to take over the market from the mid 2000 and there was a move towards self-adhering gels:
“By about the mid 1990s to about the early 2000s, the advancement of gel technology enabled the development of gel compositions that could be applied directly to the surface of the bowl. This was a significant turning point in the history of toilet products since historically, such products took the form of solid blocks that were dropped in the toilet cistern or were extruded blocks (either caged or cage-less) that hung from the rim of the toilet bowl. From the early 2000s onwards, there was a clear movement away from such products towards self-adhering gels. As discussed above, the projects undertaken at Reckitt Benckiser during this time sought to leverage off the developments in gel technology and substantial progress had been made in developing various self-adhering toilet cleaning compositions.”[106]
[106] Wynn-Hatton #1 at 36
While I accept Dr Wynn-Hatton’s account of this move to self-adhering gels, it is a discussion in the context of his experience at Reckitt-Benckiser. This does not give me any indication that this was happening in the field more generally. Indeed, there were a few patents which used self-adhering agents, such as D4 and D6, however, I have no evidence that satisfies me that these self-adhering gels were common general knowledge. There is no evidence they were seminal documents and widely known. Prof. Stokes states that:
“I do not believe that at the time of the priority date in 2008 I was aware of any commercial products which were self-adhering cleaning products.”[107]
[107] Stokes at 29
I note that Prof. Stokes makes this statement after he has seen the Opposed Application. While it is useful, Prof. Stokes does not give an indication of when he did become aware of self-adhering products, except to say that when he did he thought it was a good idea.[108]
[108] ibid
I therefore accept that self-adhering cleaning products were being worked on by some people in the art and some were available and, if a person skilled in the art was aware of them, then they would be very interested in them.
Dr Wynn-Hatton provides some guidance as to what was known about the formulation of self-adhering gels:
“In my experience, while the precise chemistry may vary between gel products, there are a number of core ingredients that would be included in toilet cleaning products. These core classes of compounds are as follows:
a) A surfactant;
b) A binder / matrix;
c) A fragrance; and
d) Other excipients as may be desired such as preservatives, colour dyes, biocides, compounds affecting the pH level and other compounds designed to treat the toilet bowl surface.”[109]
[109] Wynn-Hatton #1 at 38
Dr Wynn-Hatton elaborated on the surfactant by stating that:
“The surfactant of choice could be either anionic, non-anionic, cationic, amphoteric, or any mixture of these. I have had extensive experience in developing toilet cleaning products incorporating compounds falling within each of these classes of surfactants.”[110]
[110] Wynn-Hatton #1 at 39
This is followed by a broad list of examples. I note that at this stage he is discussing them generally, and does mention alkyl ethoxylates and alkyl alkoxyethers in this list. He also elaborated on the binders:
“The binders or matrices comprised of a range of compounds such as salts, glycols, polyols or amine bases and amine celluloses. In my experience, as at February 2008, there were not many alternative classes of compounds that were considered suitable for use in gel toilet products.”[111]
[111] Wynn-Hatton #1 at 40
Interestingly Dr Wynn-Hatton discusses “adhesion promoters” at this stage, in the context of the binder but does mention that the binder could be an adhesion promoter:
“Binders or matrices function as "adhesion promoters" by creating the structure by which the gel can interact, or "stick" to the surface. Surfactants can also perform this function.”[112]
[112] Wynn-Hatton #1 at 41
I accept that a person skilled in the art would be familiar with surfactants and their properties and that this would be common general knowledge. However, I am not convinced that adhesion promoters used in self-adhering gels for use as sanitary agents would have been widely known and be part of the common general knowledge. It appears to be specific knowledge that Dr Wynn-Hatton had from his role at Reckitt Benckiser.
The Opponent submitted that the use of mineral oil and water compositions were well known and that the mineral oil has the effect of reducing the water content. They cited Dr Wynn-Hatton who said that:
“It was well known that mineral oil and water compositions can be used to make gels, and that the thickness of the resultant gel is directly correlated to the balance between the water and organic components[113]
[113] Wynn-Hatton #2 at 19
This appears to me to be a sweeping statement and so I will treat it with caution. Dr Wynn-Hatton made this statement in reply, after the claims had been amended to include the mineral oil. I note that he did not make any comment about it when he was making his first declaration, even though the Opposed Application contained exemplary examples which contained mineral oil. I therefore give little weight to this statement.
Furthermore in discussing the amended claims, Dr Wynn-Hatton makes the following statement:
“The invention described in the paragraph bridging pages 43 and 44 and in Figures 2A to 2E of the opposed application show a correlation with the amount of mineral oil but the causation is actually the increased amount of water present in the samples with lower amounts of mineral oil. It was certainly common general knowledge at the priority date to add mineral oil to the adhesion promoters and surfactants typically used in these types of compositions.”[114]
[114] Wynn-Hatton #2 at 32
Again, this appears to be quite a sweeping statement of opinion. I do accept that mineral oil has been used in gels in the past, and this is documented[115], and, indeed, it is likely to affect thickness due to the balance between the water and organic components as documented in hair preparations.[116] However, I am not satisfied that mineral oil would be common general knowledge and that it would be routine to use it in the context of self-adhering agents such as that claimed.
[115] PWH 16-17
[116] PWH 18
The Opposed Application shows that there is a correlation between the amount of mineral oil[117] and states that:
“Surprisingly, it is discovered that the compositions with a relatively lower wt. % mineral oil tend to have lower adhesion times than samples with a relatively higher wt. % mineral oil.”[118]
[117] Page 43 line 20- page 44 line 2
[118] Page 43 line 31-page 44 line 2
Furthermore, Prof. Stokes comments on the use of mineral oil and his comments do not support that it would have been routine. He states:
“I do not believe that mineral oil would have been a usual or natural ingredient to include in a self-adhesive cleaning composition. It would not have been clear to me that mineral oil has useful properties in this regard or that it would enhance adhesion. At the time of the priority date I would in fact have considered it potentially likely to reduce adhesion. Therefore, it is, in my opinion, a surprising feature to include in the claimed composition.”[119]
[119] Stokes at 45
The evidence by Dr Wynn-Hatton appears to only show to me that mineral oil has been used in other gels. It does not satisfy me that it would have been routine to add it to a self-adhesive agent of the type claimed. Prof. Stokes discusses the use of mineral oil in relation to self-adhesive agents and his evidence is that was unlikely not known at the priority date that mineral oil would enhance adhesion. I am therefore not satisfied that the use of mineral oil in self-adhesive compositions was part of the common general knowledge at the priority date.
In summary I am not satisfied that the evidence establishes the common general knowledge the Opponent alleges is detrimental to the inventive step of the claims and therefore the lack of inventive step when compared to the common general knowledge alone has not been made out.
Inventive step when compared to prior art information (s 7(3)(a))
The Opponent relied on D4 and D6 under s 7(3)(a), which I have discussed above. In order to be considered prior art information a document must be ascertained, understood and regarded as relevant. I will discuss this threshold first.
Ascertained, understood, and regarded as relevant
For a document to be part of the prior art base for inventive step, it be must have been ascertained, understood, and regarded as relevant by the skilled worker.
In Lockwood,[120] the High Court stated that “Ascertained” means discovered or found out.
[120] Lockwood v Doric (No.2) [2007] HCA 21 at [132] (“Lockwood”)
A document would be ascertained “if it was published in such a manner or form that it could reasonably have been expected to be found by a person skilled in the art”.[121]
[121] Nippon Kayaku Kabushiki Kaisha and Sankyo Company, Limited v Rohm and Haas Company [1997] APO 40
“Understood” means that, having discovered the information, the skilled addressee would have “comprehended it” or “appreciated its meaning or import”.[122]
[122] Lockwood at [132]
The High Court stated in Lockwood:
“…the phrase ‘relevant to work in the relevant art’ should not be construed as meaning relevant to any work in the relevant art, including work irrelevant to the particular problem or long-felt want or need, in respect of which the invention constitutes an advance in the art. The phrase can only be construed as being directed to prior disclosures, that is publicly available information (not part of common general knowledge) which a person skilled in the relevant art could be expected to have regarded as relevant to solving a particular problem or meeting a long-felt want or need as the patentee claims to have done.”
and
“[t]he question of what a person skilled in the relevant art would regard as relevant, when faced with the same problem as the patentee, is to be determined on the evidence”.
Lockwood makes it clear that the relevance of documents is to be determined in view of the problem addressed by the claimed invention. Dr Wynn-Hatton estimates that at the priority date he would have undertaken reviews of patents approximately 1-2 times a month.[123] Both D4 and D6 discuss the problems of previous sanitary agents and use self-adhesive agents to overcome this problem. Dr Wynn-Hatton says that these documents were obtained either through his own searches or by the in house attorneys and legal advisors at Reckitt Benckiser.[124] There is no evidence which suggests the person skilled in the art would not have undertaken patent searches and found both D4 and D6. Furthermore experts all work in a highly technical field. I am thus satisfied that patent specifications would be ascertained, understood and regarded as relevant.
D4
[123] Wynn-Hatton #1 at 19
[124] Wynn-Hatton #1 at 20
As I have outlined above for novelty, the key difference between the opposed claims and D4 is that D4 does not disclose the use of mineral oil in the compositions. The Opponent submitted that the evidence of Dr Wynn-Hatton establishes that it was well known at the priority date to add mineral oil in small quantities to such sanitary formulations. I have reviewed this evidence under common general knowledge. I am satisfied that mineral oil has been used in gels but I am not satisfied that it was common general knowledge to use it in self-adhering sanitary agents. Furthermore, the question of whether a person skilled in the art would be directly led as a matter of routine to add mineral oil to a self-adhering sanitary, in my view, has not been answered. Dr Wynn-Hatton was able to locate documents that used mineral oil with surfactants.[125] However, these were used in hair preparations. I am not satisfied that the use of mineral oil was a matter of routine in the context of the current problem. I am therefore not satisfied that a lack of inventive step has been established when the Opposed claims are compared to D4 based on the evidence.
D6
[125] PWH-16 and PWH-17
I have discussed D6 above for novelty. Of particular importance is the formulation on page 20 which includes two adhesion promoters/surfactants which includes a C16-C18 ethoxylated alcohol. Both adhesion promoters are present in 12.5 wt. % so that the total amount adhesion promoters present would be 25 wt. %. This formulation, however, does not contain mineral oil. As I have discussed above for novelty mineral oil is disclosed in D6. I will repeat that disclosure below:
“In general, these compounds are the gel. If desired, however, essentially stable the bleach can in be additionally stabilized by adding a stabilizing agent. Stabilizing agents which may be used are urea, barbituric acid, hydrophobic compounds, such as, for example, mineral oils or other unreactive hydrophobic compounds, such as tertiary alcohols, complex esters or ketones.[126]
[126] D6 page 5 lines 14-21
The Opponent submitted that this is a direction to add mineral oil and that there is nothing particularly inventive about the particular range specified in the claim. Prof. Stokes comments on this by saying:
“Regarding mineral oil, this component is mentioned in the document (page 5, line 19),
however, it merely appears in a long list of “stabilising agents” which also comprises a diverse range of chemicals”[127]
[127] Stokes at 38
He then concludes:
“Based on this document, in my opinion there is no reason why I would have, at the priority date, specifically chosen mineral oil (or any other chemical) out of this list. The Buck Chemie AU Application [D6] also does not teach or suggest the amount of mineral oil that should be included in a cleaning composition. Furthermore, mineral oil does not feature in the single Example of the Buck Chemie AU application [D6]. Therefore I believe it is highly unlikely that I would have prepared a composition comprising about 0.1 wt. % to about 5 wt. % mineral oil, or thought of doing so, on having read this document.”[128]
[128] Stokes at 38
There is no reply to this statement in the evidence. Instead Dr Wynn-Hatton focused on the use of mineral oils as common general knowledge. I do not know what the routine steps would have been in order to arrive at the current claims. I therefore accept Prof. Stokes’ opinion on this passage of D6 and that it would be highly unlikely to prepare a composition with the mineral oil in the amounts claimed. Therefore I am not satisfied on the basis of the evidence that the claims lack an inventive step when compared to D6.
D4 and D6 combined
The Opponent submitted that the skilled person would have been reasonably expected to combine D4 and D6 given the explicit referencing of D4 in D6. I have discussed this cross referencing above under novelty, D4 is referenced in D6 in the context of other prior art. There is no evidence, other than the cross reference itself as to why the person skilled in the art would combine them or what parts would be combined. I see no reason one would combine the two documents.
The Opponent submits that D4 and D6 disclose each and every feature of the Opposed Application, apart from the specific quantity of mineral oil, and then says that this is both part of the common general knowledge and not an essential feature. I have already decided that I am not satisfied that the evidence has established that mineral oil would have been routinely used in self-adhesive sanitary products under the common general knowledge, and I am not satisfied that it is of arbitrary significance (see novelty above). These submissions appear to acknowledge the missing feature of the mineral oil and I do not see the benefit in combining D4 and D6.
The cross referencing in D6 of D4 is in the context of prior art and other sanitary products. I see no reason why the two compositions would be combined and, even if they were, one would not arrive at the current claims. A lack of inventive step when D4 and D6 are combined has not been established.
Scrubbing bubbles
The Opponent submitted that the sale of scrubbing bubbles before the priority date meant that it was part of the prior art base as it amounted to the doing of an act. They had document D1,[129] which is a MSDS document for the product scrubbing bubbles as well. I note that scrubbing bubbles was used in the current specification as a comparative example and Ms Burt, when she carried out the tests for transport rate factor and adhesion time I discussed above for novelty, obtained some scrubbing bubbles and she made the following observation:
“I am aware that SCJ markets its "Scrubbing Bubbles" toilet gel product in the United States in packaging marked with the patent identification "US 6667286". I am aware that US Patent No. 6,667,286 is for an invention entitled "Adhesive Sanitary Agent' in the name of Buck Chemie GmbH (the Buck Chemie Patent).[130]
[129] DJB-7
[130] Burt at 29
The patent Ms Burt is discussing here is indeed D4 and so it would appear that “scrubbing bubbles” is the product on the market covered by D4. I also note that Ms Burt obtained the scrubbing bubbles she used from both the US and Europe. Although this is not in Australia, the definition of prior art base means that I can take into account prior art information made publically available through the doing of an act in or out of the patent area (in or out of Australia). In regards to the MSDS, it is dated as issued on 20 December 2007, which is shortly before the priority date and D2 (a media release about scrubbing bubbles) is dated on 14 July 2008, after the priority date. I have little evidence to establish actual sales before the priority date and I have little evidence about whether or not the person skilled in the art would ascertain, understand and regard this MSDS as relevant. However, I feel, given my previous decisions, I do not have to answer these questions. The scrubbing bubbles product, being covered by the D4 patent, does not contain mineral oil as one of its ingredients. Therefore, even I could establish that scrubbing bubbles was relevant to the inventive step, it would suffer from the same problem as D4, in that I see no reason why the person skilled in the art would routinely add mineral oil to it with the expectation of success. Therefore this ground of opposition fails.
Conclusion on inventive step
The evidence has not established the routine steps required to add mineral oil to the prior art information cited, and the evidence has not established that it was common general knowledge to use mineral oil in self-adhesive sanitary agents. Because of this evidentiary deficiency, I am not satisfied a lack of inventive step exists.
Conclusion
The opposition succeeds on the ground of a lack of clarity and full description. All other grounds fail. Subject to appeal, the applicant is given two months to file suitable amendments.
Costs
The parties submitted that costs should follow the event. I see no reason to depart from that result. Costs should be awarded against the Applicant under Schedule 8.
K. Wagg
Delegate of the Commissioner of Patents
0
28
0