Reckitt Benckiser LLC v S. C. Johnson & Sons, Inc
[2016] APO 47
•12 July 2016
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Reckitt Benckiser LLC v S. C. Johnson & Sons, Inc. [2016] APO 47
Patent Application: 2009215860
Title:Cleaning composition that provides residual benefits
Patent Applicant: S. C. Johnson & Son, Inc.
Opponent: Reckitt Benckiser LLC
Delegate: Greg Powell
Decision Date: 12 July 2016
Hearing Date: Written submissions completed 22 March 2016
Catchwords: PATENTS – opposition to the allowance of amendments – amendments refused according to subsection 102(2)(a) and subsection 102(2)(b) – costs awarded against the applicant.
Representation: Applicant: Spruson & Ferguson
Opponent: Shelston IP
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: 12 July 2016
DECISION
The opposition is successful on all grounds.
I refuse the amendments.
I award costs against S. C. Johnson & Son, Inc.
REASONS FOR DECISION
Background
This matter relates to Australian Patent Application No. 2009215860 in the name of S. C. Johnson & Son, Inc. (the Applicant) filed 19 February 2009 as the national phase entry of PCT/US2009/001058 and has a priority date of 21 February 2008. Examination was requested on 30 January 2013 and advertised as accepted on 27 March 2014 in the Australian Official Journal of Patents.
A Notice of Opposition to the grant of the patent was filed by Reckitt Benckiser LLC (the Opponent) on 27 June 2014. The Statement of Grounds and Particulars was filed 26 September 2014 and Evidence in Support completed 23 December 2014.
Amendments were filed on 1 April 2015 accompanied with a request for stay of proceedings. A direction was issued on 16 April 2016 directing that the opposition is stayed from 1 April 2015 until the amendments have been allowed, refused or withdrawn. The period of time for filing Evidence in Answer will then extend to one month after this date.
Leave to amend was advertised on 11 June 2015. The opponent filed a Notice of Opposition to the amendments on 11 August 2015.
Grounds of Oppositions
The Statement of Grounds and Particulars specifies that the ground of opposition is that the proposed amendments are not allowable because they do not comply with section 102 of the Patents Act 1990. However the particulars only set out how the amendments do not comply with subsection 102(2). This opposition is therefore limited to considerations under s102(2) only.
Evidence
Evidence in Support consists of a Statutory Declaration by Paul Meredith Wynn-Hatton (WH 1) dated 18 September 2015.
Evidence in Answer consists of a Statutory Declaration by Jason Richard Stokes (Stokes) dated 4 January 2016.
Evidence in Reply consists of a second Statutory Declaration by Paul Meredith Wynn-Hatton (WH 2) dated 4 February 2016.
The Opponent’s and Application’s submissions were respectively filed 1 March 2016 and 15 March 2016.
The Opponent’s final submission was filed 22 March 2016.
The law
As the request for examination of the patent application was filed before 15 April 2013, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar)Act 2012 do not apply to the present patent application.
Subsection 102(2) of the Patents Act as it existed prior to the introduction of the Raising the Bar Act is as follows:
(2) An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment :
(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment ; or
(b) the specification would not comply with subsection 40(2) or (3).
The “relevant time” set out in subsection 102(2)(a) is after the specification has been accepted. Therefore, as the present specification had been accepted when the amendments were requested, the requirements of subsection 102(2) apply.
It is plain from the wording of subsection 102(2) that the test provided by this section of the Patents Act is confined to matters which arise as a result of amendment (see Kornelis’ Kunsthars Producten Industrie BV v WR Grace & Co-Conn [1994] FCA 969; (1994) AIPC 91-056 at 38,204). Consequently any pre-existing deficiencies in the specification which are unaffected by amendment are irrelevant to the present action.
The applicable parts of section 40 of the Patents Act 1990 as they apply to the present case are set out below:
(2) A complete specification must:
(a) describe the invention fully, including the best method known to the applicant of performing the invention; and
(b) where it relates to an application for a standard patent – end with a claim or claims defining the invention.(3) The claim or claims must be clear and succinct and fairy based on the matter described in the specification.
The nature of the amendments
The focus of the opposition is directed towards amendments made to independent claims 1, 9, 14 and 19 as accepted and renumbered respectively as claims 1, 8, 13 and 18. Given the nature of the proposed amendments, any issue which corresponds to claim 1 will likewise also apply to the other independent claims. Therefore, for convenience, I will refer explicitly to claim 1 and only refer to the other independent claims where applicable.
To better understand the impact of the proposed amendments, I have reproduced claim 1 as accepted here with the portions deleted by the amendment underlined:
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 one or more of substituted or unsubsituted, linear or branched, polyethylene glycol, cellulose, polysaccharide, natural or synthetic polymer, alginate, polyurethane, gelatine, pectine, oleyl amine, alkyl dimethyl amine oxide, alkyl ether sulfate, polyalkoxy substituted compounds, sulfonate, sulfate, stearate, and polyalkoxyalkane;
(iii)a transport rate factor of less than about 55 seconds; and
(iv)an adhesion time of greater than about 8 hours;
wherein either (a) the adhesion promoter can be one or more of the at least one surfactant, or if not (a), then (b) a second compound other than (i) is present which is the adhesion promoter, so that (a) or (b) provide adhesion of the composition to a hard surface to which the composition is applied.
Claim 1 as amended is reproduced here with the portions added by the amendment underlined:
A composition for use on a hard surface, the composition comprising;
(i)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;
(ii)a transport rate factor of less than about 55 seconds; and
(iii)an adhesion time greater than about 8 hours;
wherein the composition includes an additional surfactant and mineral oil.
Construction of the claims
In the statement of grounds and particulars, the opponent submits that claim 1 as accepted can be construed as two alternative options, referred to as (a) and (b) in their submissions.
Option (a) and Option (b) are set out below:
Option (a):The claim discloses the at least one adhesion promoter to also be the surfactant. In this option, the claim does not require at least 7.5 wt.% of at least one surfactant as both the adhesion promoter and the surfactant are the same compound.
Option (b):The claim discloses at least 7.5 wt.% of at least one surfactant, and at least one adhesion promoter. The adhesion promoter is a compound which is not the surfactant.
There is no dispute over the construction of Option (b).
The applicant disagrees ([21] of applicant’s submission) that option (a) is a valid construction of claim 1 and submits that the claim does not imply that the functions of the surfactant and adhesion are fulfilled by only one compound. Rather, the claim refers to at least one surfactant and at least one adhesion promoter. Not all surfactants in the composition need to form part of the adhesions promoter.
Referring to option (a), claim 1 as accepted defines a composition which comprises two components designated (i) and (ii), and has the properties designated (iii) and (iv). Component (i) is defined as at least one surfactant and component (ii) defines at least one adhesion promoter selected from a specified list of substances. It is worth noting that the listed substances clearly include surfactants and non-surfactants.
It is clear in (i) and (ii) that the use of the term “at least one” indicates that there could be a plurality of substances which makes up (i) or (ii). However regardless of what substances make up (i) and (ii), at least one of the surfactants of (i) must be in an amount of at least 7.5 wt.% and at least one of the adhesion promoters of (ii) must be in an amount of about 20 to 80 wt.% selected from the specified list of substances.
The claims are ambiguous due to the proviso. The proviso states that either (a) the adhesion promoter can be one or more of the at least one surfactant, or if not (a) then (b) a second compound other than (i) is present which is the adhesion promoter. Regardless of the choice of compounds, options (a) and (b) must result in providing adhesion of the composition to a hard surface to which the composition is applied.
The question here is whether provisio (a) means that the adhesion promoter and the surfactant are the same substance (carrying out two roles), or that the adhesion promoter is a separate substance to the surfactant (where this separate substance is also a surfactant), and therefore two surfactants are used.
The structure of claim 1 as accepted lists four integers which characterise the composition as components (i) and (ii), and the properties designated (iii) and (iv). The separation of each integers, and the fact that the at least one surfactant and at least one adhesion promoter is explicitly claimed, suggests that each integer is a separate integer and all integers are required. In particular, there must always be a component (i) in addition to a component (ii).
Proviso (a) states that “the adhesion promoter can be one or more of the at least one surfactant”. This is in direct contrast with (ii) which states that the adhesion promoter is one or more substances from a selected list. In my mind, this does not necessarily imply that the adhesion promoter of (ii) is the surfactant of (i) but merely provides the option that at least one of the additional substances which makes up the adhesion promoter (in additional to an adhesion promoter from the selected list) can be one of the surfactants of (i).
It follows that in order to produce the composition of claim 1 as accepted it is essential that there must always be two components – at least 7.5 wt.% of at least one surfactant (i) in addition to about 20 to about 80 wt.% of at least one adhesion promoter (ii). While it is possible for the adhesion promoter (i) to also be a surfactant, this will be one of the substances from the selected list and is a different surfactant to the at least one surfactant of (ii).
The differences between claim 1 as accepted and claim 1 as amended are summarised below:
·Removal of at least 7.5 wt.% of at least one surfactant.
·The adhesion promoter is a non-ionic surfactant based on a C12 to C30 alkoxylated alcohol and includes a C16-C18 ethoxylated alcohol
·The composition now includes an additional surfactant and mineral oil
Paragraph 102(2)(a) – in substance fall within the scope of the claims before amendment.
A useful test for considering the allowability of an amendment under paragraph 102(2)(a) is whether a proposed new claim would extend the patent monopoly in the sense that it would make something an infringement which is not an infringement already. This view was expressed in AMP Incorporated v Commissioner of Patents [1974] AOJP 3224 at page 3227 where the High Court stated:
“The amending claim must in-substance fall within the scope of the claims before amendment. The reference to substance imports the kind of test which is appropriate to a consideration of the question whether or not a particular act or a particular article is an infringement of the patent.”
I note that the allowability of an amendment under paragraph 102(2)(a) is determined by reference to the scope of the claims as a whole before the amendment. It is not that a proposed new claim must in-substance fall within the scope of every claim before amendment, rather it only needs to in-substance fall within the scope of broadest claim before amendment.
It appears that there are a number of issues here which I will first consider separately under subsection 102(2)(a) and later under subsection 102(2)(b):
(i)Whether the adhesion promoter is in substance disclosed within the scope of the two options as discussed above.
(ii)Whether the additional surfactant in the amended claim is the same as the at least one surfactant in the accepted claim, or refers to a different surfactant and any implications this has on the claimed adhesion promoter range of 20 wt.% to about 80 wt.%.
(iii)The implications of incorporating mineral oil as a component of the composition.
The adhesion promoter
Amended claim 1 now recites that the adhesion promoter is a non-ionic surfactant based on a C12 to C30 alkoxylated alcohol and includes a C16-C18 ethoxylated alcohol. I understand that a C12 to C30 alkoxylated alcohol falls within the scope of polyalkoxy substituted compounds and polyalkoxyalkanes as present in the selected class of adhesion promoters defined in accepted claim 1.
The opponent submits ([24] to [32] of the Opponent submissions) that amending claim 1 to recite an adhesion promoter (being a non-ionic surfactant) which is based on a C12 to C30 alkoxylated alcohol does not fall within the scope of where an adhesion promoter is a C12 to C30 alkoxylated alcohol. The term “based on” may imply that the surfactant is derived through some chemical modification of a C12 to C30 alkoxylated alcohol or includes a chemical mixture that includes a C12 to C30 alkoxylated alcohol as a main component.
In response to both interpretations, the applicant disagrees ([29] to [31] of Applicant’s submission) and submits that the term “based on” has an ordinary dictionary meaning that describes the main thing from which a substance is made. Where a chemical modification is made, claim 1 as accepted also includes an embodiment where the adhesion promoter is one or more of “substituted or unsubstituted polyalkoxy substituted compounds” and “substituted or unsubstituted polyalkoxyalkanes”.
In my mind, the term “based on” indicates that C12 to C30 alkoxylated alcohol only needs to be present as the main component and includes a C16-C18 ethoxylated alcohol. Claim 1 as accepted recites that the at least one adhesion promoter is either one or more of the at least one surfactant, or a different compound from a selected class.
Referring to accepted claim 1, amended claim 1 has been narrowed according to option (a). That is, the adhesion promoter can be at least one of the at least one surfactant (as indicated by the adhesion promoter being a non-ionic surfactant), and is based on C12 to C30 alkoxylated alcohol (which may be an adhesion promoter). As long as C12 to C30 alkoxylated alcohol is present as the main component, it will still fall within the scope of option (a).
I therefore find that the adhesion promoter claims subject matter which is in substance disclosed within the scope of the claims before amendment.
The additional surfactant
I will now consider whether the additional surfactant in the amended claim is the same as the at least one surfactant in the accepted claim, or refers to a different surfactant.
The applicant submits that the basis for an additional surfactant can be found on page 31 of the specification wherein samples 1 to 13 are prepared from a base ingredient set comprising C22 ethoxylated alcohol and C16-C18 ethoxylated alcohol. This table is reproduced below:
While this table does provide a basis for the additional surfactant as defined in the amended claims, the issue I must now consider is whether removing the restriction that there be at least 7.5 wt.% of at least one surfactant is allowable.
The opponent submits ([9] to [21] of the Opponent final submissions) that regardless of how the surfactant is characterised, there must still be at least 7.5 wt.% of at least one surfactant in addition to the 20 to about 80 wt.% of at least one adhesive promoter (where the adhesive promoter can be one or more of the at least one surfactant).
The applicant submits ([25] of Applicant submission) that the at least 7.5 wt.% of at least one surfactant is incorporated into the now claimed 20 to about 80 wt.% non-ionic surfactant adhesion promoter.
In construing claim 1 as accepted, I concluded that in order to produce the composition of claim 1 as accepted it is essential that there must always be two components as defined by integers (i) and (ii). As a result, regardless of whether the adhesion promoter can be one or more of the at least one surfactant, or a different compound that is not a surfactant, there must always be at least 7.5 wt.% of the at least one surfactant in addition to about 20 to about 80 wt.% of the at least one adhesion promotor.
It follows that removing the restriction that there always be at least 7.5 wt.% of at least one surfactant would result in broadening the scope of the claim. This broader claim would extend the patent monopoly in the sense that it would make something an infringement which is not an infringement already.
Therefore I conclude that removal of the at least 7.5 wt.% of at least one surfactant claims subject matter which does not in substance fall within the scope of the claims before amendment.
The Mineral oil
Following on the above, it is clear that the inclusion of additional components which make up the claimed composition will still fall within the scope of the claim as accepted. I therefore find that the inclusion of mineral oil does in substance falls within the scope of the claim before amendment.
Paragraph 102(2)(b) – Clarity and Fair Basis
For the sake of surety, I will now consider whether issues (i), (ii) and (iii) comply with subsection 102(2)(b).
In relation to fair basis, subsection 40(3) states that the claim or claims must be clear and succinct and fairly based on the matter described in the specification. Thus for an amended claim to claim matter in substance disclosed in the specification as filed, the amended claim must be fairly based on the specification as filed (see United-Carr Incorporated's Application [1971] RPC 23, RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd (1998) 42 IPR 353).
The test for fair basis was stated by the High Court in Lockwood Security v Doric Products [2004] HCA 58 at [69]; [2004] HCA 58; 217 CLR 274 as:
“Rather, 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.
In relation to clarity, while the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries 13 IPR 385, recently the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 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 ... 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."
I also note that the requirement that the claims are clear 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).
The adhesion promoter
I will first decide whether the phase the adhesion promoter is a non-ionic surfactant based on a C12 to C30 alkoxylated alcohol and includes a C16-C18 ethoxylated alcohol is clear.
From the previous section, it is clear that the term “based on” indicates that C12 to C30 alkoxylated must form the main component of the adhesion promoter.
The opponent submits ([30] to [32] of opponent’s submission) claiming an adhesion promoter that is a non-ionic surfactant based on a C12 to C30 alkoxylated alcohol and includes a C16-C18 ethoxylated alcohol is unclear as it specifies a broad range of compounds including a narrow range of compounds. As a result, the relationship between the broad element and the narrower element wholly contained within it is unclear.
The opponent also submits ([37] to [42] of the opponent’s submissions) that the “base set of ingredients” on page 31 of the specification implies that the adhesion promoter is made up of two compounds and there is no disclosure of an embodiment where only a single adhesion promoter is used.
However, I consider that there are two ways in which this phrase could be construed.
Option 1There is only one adhesion promoter and where the adhesion promoter is based on a C16-C18 ethoxylated alcohol.
Option 2There is at least one adhesion promoter where one adhesion promoter is based on a C12 to C30 alkoxylated alcohol (compound A) and a second adhesion promoter is a C16-C18 ethoxylated alcohol.
Option 1 can be found in the specification as filed (Page 10 lines 20 – 28). This passage is reproduced below with the my emphasis underlined:
In some embodiments, the composition may include an adhesion promoter which causes a bond with water and gives the composition a dimensional stability even under the action of rinse water; at least one non-ionic surfactant (which may serve all or in part as the adhesion promoter), preferably a ethoxylated alcohol; at least one anionic surfactant, preferably an alkali metal alkyl ether sulfate or sulfonate; mineral oil; water; and optionally at least one solvent.
Option 2 can be found in the table reproduced in the previous section. In the table, the adhesion promoter comprises C22 Ethoxylated Alcohol and C16-18 Ethoxylated Alcohol.
It follows that based on the above, both alternative constructions of this phase are clear and fairly based.
The additional surfactant and mineral oil
It is clear from the above table that the inclusion of an additional surfactant and mineral oil meets the requirements of Paragraph 102(2)(b) for clarity. I will now decide if the inclusion of these two compounds without indicating the amount present is fairly based on the matter described in the specification.
The opponent submits ([48] to [53] of the Opponent’s submission) that the specification implies that less than 5 wt.% of mineral oil is required. Additionally, the adhesion time is critically dependent on the amount of mineral oil and it would be more than a matter of mere trial and error to determine the appropriate amount of mineral oil required to meet the claimed “transport rate factor” and “adhesion time” values.
The applicant disagrees and relies on evidence provided by Stokes ([37] of the Application’s submission and [27] of Stokes) who states that;
In my opinion, because the claim themselves clearly stipulate the minimum Adhesion Time and Transport Rate Factor, and the methodologies associated with these measurements are clearly described in the patent application, someone wishing to determine the optimal mineral oil content for a composition according to the invention would be able to do so through no more than routine experimentation.
In response, the opponent’s declarant Wynn-Hatton ([5] to [7] of WH 2) submits that the measurements of “Transport Rate Factor” and “Adhesion Time’ are not standard measurements in this field of endeavour. Further, the methodologies in the specification are not adequately described.
I must now decide if the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification.
From the submissions, it appears that the issue of whether the tests of Adhesion Time and Transport Rate Factor are adequately described is directly related to the amount of mineral oil required. That is, if the tests are adequately described then determining the amount of mineral oil may be merely a matter of routine trial and error. Alternatively if the tests are insufficiently described, then an amount of mineral oil may need to be claimed.
However I note that the tests of Adhesion Time and Transport Rate Factor are present in the claims as accepted. Therefore any issue which may arise as a result of whether the tests are adequately described does not arise as a result of the amendment.
It follows that for the purpose of this decision, the question of whether the tests are adequate does not need to be decided as this makes no difference on the outcome.
From reading the specification as a whole, it appears that the amount of an additional surfactant can be in the range of 1 wt.% to 8 wt.%. The adhesion promoter is in an amount of about 20 to 80 wt.%. Although in reality the composition will also comprise other compounds, I will assume that in the broadest interpretation, the composition only consists of the adhesion promoter, additional surfactant and mineral oil. Therefore the amount of mineral oil permissible by the claim is present in a range from 12% wt. % to 79% wt.%.
I note that this is significantly greater than the less than 5 wt.% which the specification implies is required. There are also no examples where an amount of mineral oil greater than 5 wt.% is used. While the tests would allow the amount of mineral oil to vary from the described examples, there is no evidence to suggest that this would extend to all amounts particularly when said amount differs significantly from what is suggested in the rest of the specification.
It follows that based on the above, defining an undisclosed amount of mineral oil and additional surfactant does not meet the requirement of Paragraph 102(2)(b) and is not fairy based on the matter described in the specification.
As a final note, the opponent submits ([22] to [28] of the Opponent’s final submission) that the proposed amendment does not disclose a fragrance which is an essential feature. The fragrance is present in all of the other independent claims and was not removed in the amended claims. Claim 1 both prior to and after amendment does not disclose a fragrance. Therefore any issue which may be present from the absence of this feature does not arise as a result of the amendment.
Conclusion
The opposition is successful on all grounds.
I will refuse the amendments.
Costs
Ordinarily in proceedings such as these, costs follow the event. I see no reason that warrants varying this approach. Therefore, I award costs in accordance with Schedule 8 of the Patents Regulations against S. C. Johnson & Son, Inc.
Greg Powell
Delegate of the Commissioner of Patents
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