Recycled Paper Products Corporation v Ghaleb M Y Alhamad
[1998] APO 37
•20 July 1998
official notice
decision of a delegate of the commissioner of patents
Application : No. 668148
in the name of Recycled Paper Products Corporation
Title: Packing Material
Action: Opposition under section 59 by Ghaleb M Y Alhamad
Decision: Issued
Abstract
The terms “land areas” and “at full expansion” as used in the claims are unclear.
The feature in the claims of “land areas” forming an angle “of between 45 degrees and 70 degrees at full expansion” was not in substance disclosed in the specification as filed. This feature was introduced by amendment, and consistent with Section 114 and Regulation 3.14, the priority date of the claims is 27 February 1996.
Claims containing the feature of “land areas” forming an angle “of between 45 degrees and 70 degrees at full expansion” are not fairly based on the body of the specification as accepted.
The feature in the claims of the “land areas” forming an angle “of between 45 degrees and 70 degrees at full expansion” is not an essential feature of the invention described in the specification as accepted.
The invention is not novel in the light of US 5001017 and US 5365819.
Opposition successful.
The specification does not disclose patentable subject matter, the application is refused.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent application No. 668148 by Recycled Paper Products Corporation, opposition thereto by Ghaleb M Y Alhamad.
background
Patent application 668148 (38094/93) by Recycled Paper Products Corporation was filed on 16 March 1993, with earliest priority claimed from application 851991 filed in the United States on 16 March 1992. The application was advertised as accepted on 26 April 1996.
Ghaleb M Y Alhamad lodged a notice of opposition on 23 July 1996 and subsequently a Statement of Grounds and Particulars on 23 October 1996. Following the grant of three extensions of time, totalling 7 months, service of evidence in support of the opposition was completed on 23 August 1997.
The applicant did not serve any evidence in answer. In the process of setting the matter for hearing the attorneys for the applicant indicated that they would not be attending the hearing.
I heard the opposition in Canberra on 19 February 1998. The opponent was represented by Mr Malcolm Bell, patent attorney of Phillips Ormonde & Fitzpatrick.
the specification
The specification relates to a packaging/cushioning material for use in wrapping objects or filling hollow spaces in packaging and the like. The cushioning material is formed from a flat sheet of paper with a plurality of parallel spaced rows of slits. When the sheet is extended by applying tension at each end the rows of slits allow the sheet to deform three-dimensionally forming an expanded cushioning material.
The accepted specification includes 11 claims. The 4 independent claims are as follows:
1. A flat extendible paper sheet material for use in forming an expanded cushioning material for protecting an object during shipping packing by cushioning the object comprising;
at least one sheet of a slit paper;
each of said at least one sheet of paper having, in its unexpanded form,
a slit pattern of a plurality of parallel spaced rows of consecutive slits and unslit gaps, extending transversely from one edge of said sheet of paper to the opposing edge of said sheet of paper, each of said rows having its slits positioned adjacent unslit gaps of the adjacent rows,
said unslit gaps between adjacent parallel row of slits forming land areas;
each of said at least one sheet being expanded by extending the sheets transverse to said rows of slits,
said unslit gaps and said space between rows of slits having dimensions whereby the slits form an array of hexagonal openings,
said land areas forming an angle with the plane of the unexpanded sheet, of between 45 degrees and 70 degrees at full expansion,
whereby said at least one sheet in substantially expanded form have sufficient load bearing capacity to protect an article in transit against impact damage, by cushioning the article.
6. An extended paper sheet material for use in protecting an object during shipping packing by cushioning the object comprising:
an extended paper sheet material, said sheet material having, in its unexpanded form,
a slit pattern of a plurality of parallel spaced rows of consecutive slits and unslit gaps, extending transversely from one edge of a sheet of paper to the opposing edge of said sheet of paper, each of said rows having its slits positioned adjacent unslit gaps of the adjacent rows,
said unslit gaps between adjacent parallel row of slits forming land areas, said slit pattern having dimensions which, upon expansion, form an array of hexagonal openings;
said extended paper having land areas which forming an angle with the plane of the unexpanded sheet, of between 45 degrees and 70 degrees at full expansion,
whereby said at extended sheet in substantially expanded form protects an article in transit
against impact damage, by cushioning the article.8. A method of protecting an object for shipping by wrapping and cushioning said object in an extended sheet material, wherein said extended sheet material is formed from slit paper having in its unexpanded form,
a slit pattern of a plurality of parallel spaced rows of consecutive slits and unslit gaps, extending transversely from one edge of said sheet of paper to the opposing edge of said sheet of paper, each of said rows having its slits positioned adjacent unslit gaps of the adjacent rows,
said unslit gaps between adjacent parallel row of slits forming land areas;
and characterized by the steps of:
(a) extending a length of said sheet material by extending the opposing ends of the sheet material to form an extended sheet having an array of openings, said slit pattern and said paper in combination, when expanded to at least 130% of its unextended length, producing an extended sheet, wherein said flexible material is paper, said sheet being expanded to a thickness at least ten times the unexpanded thickness of said paper prior to being extended, said extended sheet having an array of openings, said openings being bound by land areas and leg areas, the ratio of the space between slits, to the length of the slits and to the space between parallel rows of slit producing upon extension, hexagonal openings, said openings being generally similar in shape and size, in a consistent uniformly repeating pattern, said land areas being rotated to an angle with the plane of the unexpanded sheet of at least 45 degrees and less than 70 degrees at full extension from its unextended position,
(b) wrapping said at least one extended sheet around an object such that land areas of successive layers of sheet material nest and interlock, and
(c) placing said wrapped object in a package.10. An article wrapped in a protective cushioning packaging material comprising the combination of;
an expanded cushioning material and an article, said material comprising,
at least one sheet of flexible paper having in its unexpanded form,
a slit pattern of a plurality of parallel spaced rows of consecutive slits and unslit gaps,
extending transversely from one edge of said sheet of paper to the opposing edge of said
sheet of paper, each of said rows having its slits positioned adjacent unslit gaps of the
adjacent rows,
said unslit gaps between adjacent parallel row of slits forming land areas; said paper and said slit pattern, in combination forming upon expansion to at least about 130% of its unexpanded length in the direction transverse to said parallel rows of slits, an array of openings, said openings being bound by land areas and leg areas, the ratio of the interval space between slits, to the length of the slits and to the space between parallel rows of slits producing land areas so that upon expansion it will produce hexagonal openings, said openings being generally similar in shape and size, in a consistent, uniformly repeating pattern, said land areas being rotated at full expansion to an angle of at least 45 degrees and up to 70 degrees from its unexpanded position; an article, said
flexible paper being extended and said article being contained within layers of said extended flexible paper, whereby said article is contained and protected within a protective cushioning packaging material.
Grounds of opposition
The grounds of opposition stated in the Statement of Grounds and Particulars are summarised below.
The invention does not comply with paragraphs 18 (1) (a) because:
· It lacks any necessary quality of inventiveness. and/or
· It defines nothing more than a new use of an old contrivance when considered on the face of the specification and/or in light of the publication of:
US 4149649, US 5001017, US 4921118, US 5365819, US 2656291 or
The application as filed AU-A 38094/93.
The invention does not comply with paragraphs 18 (1) (b) because when compared with the prior art as it existed before the priority date:
· It lacks any necessary quality of inventiveness.
· It is not novel in light of:
US 4149649, US 5001017, US 4921118, US 5365819, US 2656291 or
The application as filed AU-A 38094/93.
· It does not involve an inventive step, the prior art base includes:
US 4149649, US 5001017, US 4921118, US 5365819, US 2656291 or
The application as filed AU-A 38094/93.
· The application is not entitled to the claimed priority of 16 March 1992, 27 August 1992 and 19 October 1992. The earliest priority date of each of the claims is the date of the applicant’s amendment of 27 February 1996.
The specification does not comply with sub-sections 40(2) or (3) because:
· The specification does not describe the invention fully including the best method of performing the invention. The claims require that the “land areas” form an angle with the plane of the unexpanded sheet of between 45 and 70 degrees at full expansion. There is no, or no sufficient explanation as to how this is achieved.
· The specification does not sufficiently describe how the slit configuration of the sheet affects the expanded sheet and what, if any limits apply to the slit configuration.
· The specification insufficiently describes the invention insofar as the specification is unclear and contradictory, various references in the specification are confusing.
· The claims are not clear because it is unclear what part of the paper forms the socalled “land areas”. Further it is unclear how the “land areas” can form an angle of between 45 and 70 degrees at full expansion.
· The claims are not clear because it is unclear what the passage “whereby said at least one sheet in substantially expanded form have sufficient load bearing capacity to protect an article in transit against impact damage, by cushioning the article” means in claim 1.
· The claims are not fairly based because the claims are limited to sheets in which the angle of the “land areas” is between 45 and 70 degrees. The specification does not limit the invention to such a configuration and the only example discusses alternatives when the angle is greater than 70 degrees and also is less than 45 degrees.
evidence
The evidence in support of the opposition comprises statutory declarations by:
Mr John Carsten Nielsen dated 19 August 1997, accompanied by exhibits JCN-1 to JCN-4.
Mr Nielsen is currently Design Manager Multiple Packaging at Riverwood Packaging Systems, one of Australia’s largest packaging businesses. He has been involved in the packaging industry since 1970 and worked at Riverwood Packaging Systems since 1975. JCN-1 is a copy of the accepted specification of the present application. JCN-2 is a copy of the specification as filed for the present application. JCN-3 & JCN-4 are copies of US patents 5001017 and 5365819 referred to in the Statement of Grounds and Particulars; and
Mr Malcolm Neil Bell dated 23 July 1997, accompanied by exhibit MNB-1, which establishes publication dates in Australia of the five US Patent specifications referred to in the Statement of Grounds and Particulars.
decision
I will deal firstly with the feature “said land areas forming an angle with the plane of the unexpanded sheet, of between 45 degrees and 70 degrees at full expansion” in claim 1, as accepted. Mr Bell for the opponent made various submissions in relation to the construction of this feature and the terms contained therein. He specifically asserted that the terms “land areas” and “at full expansion” are unclear.
“land areas”
Claim 1 states “said unslit gaps between adjacent parallel row of slits forming land areas”. The reference to “said” unslit gaps implies these are the same “unslit gaps” previously referred to at line 5 of the claim. As pointed out by Mr Nielsen, the declarant for the opponent, the earlier use of “unslit gaps” in the claim was in relation to the narrow unslit area between adjacent slits in the same row. However, the second reference to “unslit gaps” in attempting to define “land areas” introduces the concept of the area between adjacent parallel rows of slits. This is contradictory and confusing. The meaning of the term “land areas” is not readily apparent from claim 1. If a term in a claim is unclear or ambiguous it is permissible to refer to the body of the specification to clarify the meaning of the term, Decor Corp Pty Ltd v Dart Industries Inc, 13 IPR 385.
There is no specific definition of the term “land areas” in the body of the specification. At page 2 lines 19 to 20 it is generally stated that “The opening action causes the land, or solid, sections between slits to bend in a direction normal to the plane of the paper . . .”. Nielsen indicates that from this part of the specification it appears that the “land areas comprise all the sheet other than the slits/openings”. Subsequently, the majority of discussion in the specification in relation to “land areas” is in reference to the drawings. Figure 1, for example, (Attachment A - for reference) is discussed at page 7, where it is indicated that “The slits 14 and slits 16 are placed in rows and separated from one another by land 20.” Nielsen states that from Figure 1 it appears that the land area is that uncut region in each row between consecutive slits. He further states that since the specification indicates that the land area provides support to prevent the paper from tearing into strips this can only make sense if the land area is the gap in each row between consecutive slits as is specifically shown in the figure. This would mean that “land area” is construed as the very narrow strip of paper which is the uncut region between the end of two slits in the same row.
I cannot agree with Mr Nielsen on this point. Initially, it would appear from Figure 1 that the “land” comprises only the unslit space between two slits in the same row. However, I believe a fair reading of the sentence on page 7 would include a construction which is not limited to the “land” being the space between two slits of the same row. From the figure, slits 14 and 16 are clearly in separate rows and in order for them to be separated from one another by land 20 it would be necessary for the land to be at least some proportion of the paper between rows of slits. This construction is also supported by Figures 6, 7 & 8 where “land” 20 appears to be referring in some way to the space between consecutive rows of slits. The reference on page 10 at lines 18 to 21 and on page 12 to the land area size being dependent on the row spacing also supports a construction where the “land” is some or all of the space between adjacent rows.
From the above, it must be the case that the “land area” comprises some or all of the area between rows of slits. However, it is unclear from a thorough reading of the specification precisely what part or area this is. The references to “land areas” throughout the specification are inconsistent and obscure and do little to clarify the meaning of the term. One example of this is the use of numeral 20 to signify the “land” in Figures 6, 7 &8. In each of these three figures it is unclear as to which particular part of the structure numeral 20 relates, the reference is at best a general indication of the area between the rows of slits. Another example of the lack of clarity in relation to “land areas” is its use in claim 8, where, it states “said openings being bound by land areas and leg areas’. Nowhere in the rest of the specification is it made apparent which particular part or section of the sheet is the socalled “leg area” as opposed to the “land area”.
Nielsen’s overall conclusion from a consideration of the specification is that it is unclear what “land areas” means. I must concur, as I am unable to place a clear construction on this term from a reading of the specification. The term is unclear.
As stated by McTiernan J. in AMP v. Utilux, (1971) 45 ALJR 123 at page 128:
"A claim is a portion of the specification which fulfils a separate and distinct function. It, and it alone, defines the monopoly; and the patentee is under a statutory obligation to state in the claims clearly and distinctly what is the invention which he desires to protect."
The applicant has not clearly and distinctly stated what the term “land areas” means in a way which makes it clear to the reader what the bounds of the monopoly are. All independent claims contain this term and, hence, in this respect the claims are unclear.
“at full expansion”
Mr Bell submitted that the term “at full expansion” is not clear. In paragraphs 56 and 57 of his declaration Mr Nielsen indicates that he has difficulty with the term and is unclear whether it “refers to the paper material to which no continuing force is applied, or whether it refers to the configuration where the maximum force applied short of actually ripping the material”.
Two terms “expansion” and “extension” are used throughout the specification. While these two terms are used inconsistently, and in some instances interchangeably, it is possible from a reading of the specification as a whole, to arrive at a purposive constructions for these terms. This is illustrated in the first two lines of claim 1 which refers to “A flat extendable paper sheet material for use in forming an expanded cushioning material”(emphasis added). As used in the specification I consider the two terms to be different and have the following meanings. Extension: is the application of pulling forces at each end of the paper sheet transverse to the direction of the rows of slits. Expansion: is the process of deformation (inclination of the paper sections between slits in adjacent rows) from an essentially 2 dimensional paper sheet into a ‘three-dimensional cushioning material’ as a result of extension (as defined above) of the sheet.
The term “at full expansion” is not specifically defined in the body of the specification. At page 9, and elsewhere, it is indicated that the paper has a ‘memory’ which causes it to return to it’s original shape following release of the extending forces. This means that when the extension force is released there would necessarily be some contraction and consequent reduction in the expansion of the sheet. At no point in the specification is it made clear whether “full expansion” refers to the paper material to which no continuing force is applied, or whether it refers to the situation where the maximum extending force is applied short of actually ripping the paper.
On page 10 of the specification it is stated that “slits 14 and 16 have been fully extended in Figure 8, allowing a slightly less than 90% angling of the land 20”. This, however, is a reference to the full extension of the slits and not “full expansion” of the paper sheet. As pointed out by Nielsen, at paragraph 55, it is not clear if ‘full extension of the slits’ correlates with ‘full expansion of the sheet’ as referred to in the claim, and if it does, it is unclear what ‘90% angling of the land’ actually means.
On page 11 reference is made to ‘maximum expansion’ to 100% or more of the unexpanded length, and how this can result in excessive weakness of the expanded structure. On page 13 the specification states “The slit pattern of this material permits an expansion by an amount greater than 100% of it’s unexpanded length.”. At the bottom of page 17 it is stated that “The total square footage of a sheet of expandable material changes as the sheet is expanded to its maximum expansion length.”. The inconsistent and interchangeable manner in which the terms extension and expansion are used throughout the description, which is exemplified in these sentences, creates difficulty in attempting to place a clear construction on the term “at full expansion”.
From a reading of the specification as accepted it is clearly apparent that extension and expansion are related, in that the later is a consequence of the former. The degree of expansion is dependent upon the degree or amount of extension of the sheet. Thus it is possible to infer that “full expansion” equates in some way with the degree or amount of extension of the sheet. That is to say, “full expansion” occurs where the sheet is extended either to 100% or more of its unexpanded length or extended to its maximum length short of ripping the paper sheet. Unfortunately, various degrees or amounts of extension are referred to throughout the description. No specific indication is given as to what might constitute full or maximum extension nor is any association made with what degree or amount of extension actually correlates with “full expansion” of the sheet.
From the above, I consider that there is no clear description or definition in the specification of the term “at full expansion”. I am unable from a reading of the specification to ascribe a clear meaning to the term. The term is unclear. In that independent claims 1, 6 and 10 contain this term they are also unclear.
Claim 8 does not use the term “at full expansion” but does, however, make reference to “land areas being rotated to an angle with the plane of the unexpanded sheet of at least 45 degrees and less than 70 degrees at full extension” (emphasis added). Similarly to “at full expansion” there is no clear description or definition of the term “at full extension” in the specification. The term is unclear, as is claim 8.
‘In Substance Disclosed’ and Priority date
Mr Bell submitted that the feature of “land areas forming an angle with the plane of the unexpanded sheet, of between 45 degrees and 70 degrees at full expansion” was introduced by amendment and does not have any basis, ie was not in substance disclosed, in the specification as filed. Thus claims containing this feature have a priority date of 27 February 1996, the date on which the amendments were filed.
The appropriate test for determining whether a claim was "in substance disclosed" in the specification as filed is the same as that for fair basis and comes from Hoffman la Roche v Commissioner of Patents 123 CLR 529, where the High Court used the rules expounded in Mond Nickel Company Ltd's Application [1956] RPC 189. The rules can conveniently be expressed as:
¨ Is the alleged invention as claimed broadly described in the specification as filed?
¨ Is there anything in the specification as filed which is inconsistent with the alleged invention as claimed?
¨ Does the claim include as a characteristic of the invention a feature as to which the specification as filed is wholly silent?
In relation to the first question, the answer is no. The feature of “land areas forming an angle with the plane of the unexpanded sheet, of between 45 degrees and 70 degrees at full expansion” (emphasis added) is not fairly taught or suggested in the specification as filed. The specification as filed generally describes the land areas moving out of the original plane of the sheet, as a result of extension, and inclining relative to the original plane of the sheet anywhere from a small inclination up to a maximum theoretical angle of 90 degrees. It is indicated that an angle of at least about 45 degrees is preferred and that as the sheet is further extended, and as a consequence expanded, closer to 90 degree angling of the land, more abrasion results, which is undesirable.
Specifically on page 2, of the specification as filed, it is stated that the land areas form an angle of between about 45 and less than 90 degrees (at full expansion) and preferably on the order of about 70 degrees. It is not apparent whether the term “at full expansion” only relates to the 90 degree figure, indicative of the fact that 90 degrees is the maximum possible angling and expansion, or whether the term “at full expansion” relates to the entire 45 to 90 degree range. I must determine whether the specification discloses a range of angles at full expansion of between about 45 and less than 90 degrees or whether it discloses land angling between about 45 and less than 90 degrees the sheet being at full expansion at the 90 degree angle.
Again the specification fundamentally lacks information in relation to this issue. From a reading of the specification as a whole I believe it is reasonable to directly equate the term “at full expansion” with the maximum land angling of 90 degrees, and not with the entire 45 to 90 degree range. This is consistent with the definition of expansion I have indicated above and supported by the basic notion that 90 degree land angling is the ‘maximum’ or ‘fullest’ expansion of the sheet alluded to in the specification, as it cannot be expanded any further. Thus this disclosure in the specification as filed is to land angling in the range of 45 to 90 degrees with the 90 degree angling correlating in some way with “full expansion” of the sheet.
The specification as filed does not give any indication that the specific 45 to 70 degree at full expansion range of angles for the land areas is fundamental to the working of the invention. The specification does not give reasons for, nor place any emphasis on, the specific 45 to 70 degree land angling other than to indicate that they are preferred angles. There is a reference at the top of page 11 to “The high ratio of slit length to interval length the greater is the maximum angle which can be formed between the plane of the sheet and the planes of the land areas.” I take this to mean, the higher the ratio of slit length to interval length (row spacing) the greater the ‘maximum angle’ of inclination of the land areas. This clearly raises the issue of a ‘maximum’ land angle of some sort, however, does not indicate how, if at all, this relates to full expansion of the sheet. Further to this, there is no explicit indication in the specification of slit configurations which would produce the 45 to 70 degree angling of the land at full expansion, but not outside this range.
Thus it can not be said that an invention specifically limited to “land areas forming an angle with the plane of the unexpanded sheet, of between 45 degrees and 70 degrees at full expansion” is broadly described in the specification as filed.
The answer to the second question is, yes. As indicated above, the concept of 45 to 70 degree land angling at full expansion is contradictory to, and inconsistent with, the general description of the invention at filing. There is nothing in the specification as filed to indicate that a 45 to 70 degree restriction is fundamental to the working of the invention or that land angling outside this range is not within the bounds of the invention. The specification as filed clearly on page 2 discloses 90 degree land angling at full expansion and also throughout the body discusses angling greater than 70 degrees. The limitation of “land areas forming an angle with the plane of the unexpanded sheet, of between 45 degrees and 70 degrees at full expansion” asserts as the invention something which is inconsistent with that which was asserted as the invention in the specification as filed.
Question three must also be answered in the affirmative. There is nothing in the specification as filed to indicate that the limitation of between about 45 and less than 70 degrees at full expansion is an essential feature of the invention. Notwithstanding the information at lines 5 to 7 of page 11, there is nothing in the specification as filed which would provide an instructed reader with clear parameters of how one might go about constructing a paper sheet which specifically produces the required land angling of 45 to 70 degrees at full expansion, but not outside the range.
Although angles of about 45 degrees and on the order of about 70 degrees were disclosed in the specification as filed, the disclosure of these features is not of the sort which would lead to the conclusion that the feature of “land areas forming an angle with the plane of the unexpanded sheet, of between 45 degrees and 70 degrees at full expansion” was in substance disclosed in the specification as filed. In conclusion,, this feature was not in substance disclosed in the specification as filed and consistent with Section 114 and Regulation 3.14, the priority date of claims 1 to 7 is 27 February 1996.
Claim 10 refers to “land areas being rotated at full expansion to an angle of at least 45 degrees and up to 70 degrees from its unexpanded position”. I take this expression to have the same meaning as the “land areas forming an angle with the plane of the unexpanded sheet, of between 45 degrees and 70 degrees at full expansion” and hence claims 10 and 11 have a priority date of 27 February 1996.
Claim 8 refers to “land areas being rotated to an angle with the plane of the unexpanded sheet of at least 45 degrees and less than 70 degrees at full extension” (emphasis added). Similarly to my arguments in relation to the feature of “at least 45 degrees and less than 70 degrees at full expansion” there is no clear description or definition of the term “at full extension” in the specification as filed. The priority date of claims 8 and 9 is also 27 February 1996.
Fair Basis
Mr Bell further submitted that the claims which contain the feature of the land areas forming an angle “of between 45 degrees and 70 degrees at full expansion” are not fairly based on the body of the description as accepted.
The specification as accepted, apart from the amended claims and page 2, is identical to that which was filed. The one instance in the description as accepted where a restricted range of the land angling is mentioned is at line 24 of amended page 2. It states “. . . land areas lying in a plurality of parallel planes, forming an angle between about 45 and less than 20 degrees (at full expansion)”. The alleged upper limit of 20 degrees can only be construed as an error given its context. This error on page 2 as amended is problematic because page 2 as originally filed contained the one and only reference to 70 degree land angling, as a preferred feature. Thus as a result of the amendments the only reference to 70 degrees has been removed from the description. The only other reference to an upper limit of 70 degrees at full expansion is in the claims as amended.
Given that the tests for ‘in substance disclosed’ and ‘fair basis’ are the same, it logically follows from my conclusion that the feature “of between 45 degrees and 70 degrees at full expansion” was not in substance disclosed that the claims which contain this feature are also not fairly based. Using the same reasoning to that in relation to ‘in substance disclosed’ above, claims 1 to 7, 10 and 11 are not fairly based on the matter described in the specification. Claims 8 and 9 which make reference to 45 to 70 degree angling at full extension are also not fairly based.
Essential Features of the Invention
Before considering the issue of novelty I must determine which features of the claimed invention I consider essential. The invention as claimed has several aspects and thus the features essential to each aspect of the invention may vary in some respects. The first aspect of the invention is the expandable paper sheet material as in claim 1. The other aspects of the invention; the extended paper sheet, a method of protecting an object and an article wrapped in a packaging material are defined by independent claims 6, 8 and 10.
Paper Sheet
Claim 1 of the accepted specification can be broken down into the following features:
A flat extendible paper sheet material for use in forming an expanded cushioning material for protecting an object during shipping packing by cushioning the object comprising;
a) at least one sheet of a slit paper;
b) each of said at least one sheet of paper having, in its unexpanded form,
c) a slit pattern of a plurality of parallel spaced rows of consecutive slits and unslit gaps, extending transversely from one edge of said sheet of paper to the opposing edge of said sheet of paper, each of said rows having its slits positioned adjacent unslit gaps of the adjacent rows,
d) said unslit gaps between adjacent parallel row of slits forming land areas,
e) each of said at least one sheet being expanded by extending the sheets transverse to said rows of slits,
f) said unslit gaps and said space between rows of slits having dimensions whereby the slits form an array of hexagonal openings,
g) said land areas forming an angle with the plane of the unexpanded sheet, of between 45 degrees and 70 degrees at full expansion,
h) whereby said at least one sheet in substantially expanded form have sufficient load bearing capacity to protect an article in transit against impact damage, by cushioning the article.
Claims are to be given a purposive construction and initially it is to be assumed that all features of independent claims are essential, Catnic Components v Hill & Smith Ltd, (1982) RPC 183 at 227. However, presence of a feature in an independent claim is not conclusive proof that it is essential, a feature can be regarded as not essential if it does not have a material effect on the way in which the invention works, Rodi and Wienenberger v Henry Showell Ltd, (1969) RPC 367.
From a reading of the claim, and the specification as a whole, it is readily apparent that features a) to f) and h) are essential to the invention, insofar as the paper sheet material is concerned.
Feature d) “said unslit gaps between adjacent parallel row of slits forming land areas” is clearly essential to the invention, notwithstanding the fact, as I have pointed out earlier that the term “land areas” is unclear.
Feature g) “said land areas forming an angle with the plane of the unexpanded sheet, of between 45 degrees and 70 degrees at full expansion” was introduced into the specification by amendment. As discussed earlier, there is insufficient support in the description to regard this feature as being essential to the invention. Consistent with my conclusions as to the lack of clarity of the terms “land areas” and “at full expansion” and in relation to fair basis above, I believe this feature is not an essential feature of the invention.
As a result of the considerations above, I believe the essential features in relation to the paper sheet material, are features a) to f) and h), as listed above.
Other Aspects of the Invention
Claim 6 is a claim to an “extended” paper sheet material which, other than the fact that it is “extended” to some degree, is identical to the paper sheet of claim 1.
Although it is not specified in the claim I take the feature “expanded by extending the sheet transverse to said rows of slits” to be essential to this aspect of the invention. It is clearly apparent from claim 1 and from the specification as a whole that extension forces are applied transverse to said rows of slits to effect both extension and expansion of the sheet. Hence, I consider the essential features in relation to the “extended paper sheet” aspect of the invention to be:
An extended paper sheet material for use in protecting an object during shipping packing by cushioning the object comprising: features a) to f) and h) as per claim 1.
Claim 8 relates to a method of protecting an object in effect by using the expanded paper sheet of the invention. I will take the essential features of this claim to be the features listed in the claim itself and the feature “said sheet being expanded by extending the sheet transverse to said rows of slits” which I believe is fundamental to extension of the sheet. However, the feature of between 45 to 70 degree land angling at full extension, for the reasons previously referred to, is not an essential feature of this claim.
Claim 10 relates to an article wrapped in a protective cushioning material, in essence utilising the expanded paper sheet of the invention. Again I will take the essential features of this claim to be the features listed in the claim itself, apart from, the feature of between 45 to 70 degree land angling at full expansion which is not an essential feature of this claim
I will only have regard to those features I have indicated above as being essential to the invention in considering the novelty of the claims.
Novelty
Mr Bell made submissions in relation to novelty based on two US patents, namely 5 001 017 and
5 365 819. The other documents referred to in the Statement of Grounds and Particulars were not entered into evidence nor referred to by Mr Bell in his submissions.
US Patent 5 001 017
US patent 5 001 017 (hereafter 017) has a publication date in Australia of 11 September 1991, which is before the earliest priority date of 16 March 1992 for the current application.
This patent is primarily directed to an expandable metal product for use in extinguishing fires. The invention essentially consists of an unexpanded continuous sheet of magnesium alloy foil having discontinuous slits in spaced apart lines parallel to each other but transverse to the longitudinal dimension of the sheet. The longitudinal edges of the sheet are intercepted by the slits thereby eliminating intact longitudinal margins which might resist stretching of the slit sheet. The unexpanded sheet is stretched longitudinally to form an expanded three-dimensional metal net having an increased surface area useful in smothering and thus extinguishing fires.
Notwithstanding the primary objective of the invention, it is also stated at column 18 that if cardboard or strong kraft paper is used as the material, and if a wider spacing for the slits is used, an improved packing or insulation material can be made.
The law in relation to novelty is well established. The fundamental test for determining whether an invention lacks novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, (1977) CLR 228 at page 235 (see also 13 ALR 605 at page 611), where Aikin J stated: "The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement." Infringement of a claim occurs where "each and every one of the essential integers" of that claim have been taken. Rodi and Wienenberger AG v Henry Showell Ltd, (1969) RPC 367 at page 391.
Also when assessing the teaching of an alleged citation, I must consider what the skilled addressee is being taught. In General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd, (1972) RPC 457 at pages 485-6 it is stated that "if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim."
It is necessary to compare the disclosure of the 017 patent with the essential features of the invention as I have listed them above. The 017 patent describes the use of cardboard or strong kraft paper for use in packaging [preamble of claim 1 and feature a)-in part], which in its unstretched form has discontinuous slits in spaced apart lines parallel to each other but transverse to the longitudinal dimension of the sheet, where slits in each line are offset from slits in adjacent lines [features a)-in part, b) and c)]. The 017 patent clearly discloses “longitudinal stretching of the slit sheet” [feature e)] and figures 3C, 3D and 3E show openings which are hexagonal, ie six sided, although not regular [feature f)]. There is also a very basic description of how the expanded net or honeycomb form of the sheet can be used in producing boxes, spacers or other insulating materials [feature h)].
Feature d) is not referred to in 017. I do not think this is of consequence, since, if the paper sheet materials of the present invention have “land areas”, whatever that term ultimately means, then it is inherent that the materials produced by following the instructions of the 017 patent would similarly have such “areas”. The specific embodiments in the 017 patent are, in terms of their relative slit dimensions and row spacing, very similar to those of the current application.
Nielsen, the declarant for the opponent, makes a comparison between the disclosures of the 017 patent and the invention as exemplified and claimed in the accepted specification. He states, in paragraph 98, that the sheet shown at Figure 2 of the 017 patent is virtually identical to that shown in Figure 1 of the opposed specification. Also that the exemplification given at column 5 of 017 overlaps with the two examples given in the opposed specification. From the statements of Nielsen and my own comparison of the two specifications it is apparent that there is a large degree of similarity, if not identity, between the specific embodiments in the two documents.
I believe US patent 5 001 017 contains a clear disclosure of the essential features of the invention that I have listed above. Following the directions in the 017 patent would result in the making of a paper sheet material falling squarely within the boundaries of the invention defined in claim 1 of the accepted specification. Hence, Claim 1 is not novel in light of this publication. Subsequent claims, 2 to 5, that are dependent upon claim 1 do not contain any features which would confer novelty on those claims.
Independent claims 6, 8 and 10 and their dependent claims are similarly not novel given the disclosure in this patent. There are no features in those claims that would serve to distinguish them from the disclosure in the 017 patent in a manner which render them novel.
US Patent 5 365 819
Mr Bell asserted that US patent 5 365 819 (hereafter 819) renders the current claims not novel. The only possible distinguishing feature in the claims was introduced by amendment and was not in substance disclosed in the specification as filed. Hence, the correct priority date for the amended claims is the date the amendments were filed, which is subsequent to the publication date of 10 January 1995 for the 819 patent.
As indicated above, I have taken the feature of 45 to 70 degree angling of the land areas at full expansion to have only been in substance disclosed as a result of amendment, the priority date of the claims is 27 February 1996, the date on which those amendments were filed. I am thus able to consider the 819 patent in relation to novelty.
The 819 patent is primarily directed at a method and process for cutting paper. From a reading of the patent it can be seen the patent is directed to a cutting process which produces a multitude of small, thin, closely spaced slits arranged in rows in a paper material. The configuration of slits allows the paper material to be pulled or expanded into a three-dimensional shape that is both load bearing and resilient.
The following paragraph appears at column 1 of the 819 patent:
“Recently attention has been directed to using expandable paper as a packing material. To form such a packing material, a flat, thin sheet of paper, or paper-like material, is provided with a multitude of rows of small, closely spaced slits. The slits in adjacent rows are staggered so that the slits in one row extend across the spaces between the slits in an adjacent row. After the slits are formed in the paper, the ends of the paper are pulled apart, and this pulls the paper into a three-dimensional shape comprised of a multitude of six-sided cells. In the direction perpendicular to the original plane of the paper, the expanded paper material is both, load bearing and resilient, and the paper hence, makes a very good cushioning or packing material. For instance, the extended paper can be wrapped around an article to protect that article during shipment, or the expanded paper can be placed in a box or container, under and around another article, to cushion that article.”
A comparison of the disclosure in the 819 patent with the essential features of the invention is a simple matter. “To form such a packing material, a flat, thin sheet of paper, or paper-like material, is provided with a multitude of rows of small, closely spaced slits” [preamble of claim 1 and features a), b) and c)-in part]. “The slits in adjacent rows are staggered so that the slits in one row extend across the spaces between the slits in an adjacent row” [feature c)-in part]. “After the slits are formed in the paper, the ends of the paper are pulled apart, and this pulls the paper into a three-dimensional shape comprised of a multitude of six-sided cells” [features e) and f)]. “In the direction perpendicular to the original plane of the paper, the expanded paper material is both, load bearing and resilient, and the paper hence, makes a very good cushioning or packing material” [feature h)].
Nielsen at paragraph 106 of his declaration, after having made a comparison between the disclosure of the 819 patent and the features of the claimed invention, states that in his view for all intents and purposes the paper sheet material disclosed in the 819 patent is the same as that in the opposed specification.
I must agree with Mr Nielsen, When the disclosure referred to above is read in conjunction with the specific embodiments disclosed in the 819 patent it is clear that the patent discloses all of the essential features of the current invention. The invention defined by the claims of the opposed specification is not novel in light of the disclosure in US patent 5 365 819.
conclusion
The terms “land areas”, “at full expansion” and “at full extension” as used in the claims are unclear.
The feature in the claims of “land areas” forming an angle “of between 45 degrees and 70 degrees at full expansion” was not in substance disclosed in the specification as filed. This feature was introduced by amendment, and consistent with Section 114 and Regulation 3.14, the priority date of the claims is 27 February 1996, the date on which the amendments were filed.
Claims containing the feature of “land areas” forming an angle “of between 45 degrees and 70 degrees at full expansion” are not fairly based on the body of the specification as accepted.
The feature in the claims of the “land areas” forming an angle “of between 45 degrees and 70 degrees at full expansion” is not an essential feature of the invention described in the specification as accepted.
The invention is not novel in the light of US 5001017 and US 5365819.
In my opinion the specification does not disclose patentable subject matter, and I refuse the application in its entirety.
costs
As the opposition has been successful, I award costs against the applicant.
V. J. Portelli
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Collison & Co
Patent attorneys for the opponent : Phillips Ormonde & Fitzpatrick
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