Renouf Industries Pty Ltd v Carter Holt Harvey Insulation Pty Ltd
[1998] APO 9
•12 March 1998
official notice
decision of a delegate of the commissioner of patents
Application : No. 642742 in the name of Renouf Industries Pty Ltd
Title: Improvements in reflective foil insulation
Action: Opposition by Carter Holt Harvey Insultion Pty Limited to a request to amend the specification under Section 104.
Decision: Issued .
Abstract
Proposed amendment Nos 10, 11 and 12 are not allowable for the following reasons:
Proposed amendment No. 10 not allowable because proposed claim 5 is not in substance disclosed in the specification as filed;
Proposed amendments No 11 and 12 are not allowable The manner in which claim 1 is drafted suggests a causal link between the bonding of the second layer of water-based adhesive and the replacement of moisture. This is not supported by the description. Therefore this aspect of the description and claim 1 is not clear and the claim 1 not fairly based.
Claim 1 is not fairly based in that it is missing the second heating step and pre-drying after the first heating step (presumably in the heating oven 25 of Fig 2) is not described. New Claim 7, subparagraph 2, is also not fairly based because of the silence in the description about details of the pre-drying step.
The claim is also not clear due to the silence of details in the description about the pre-drying step, either as amended or as filed.
I refuse to allow the request to amend the specification.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 642742 by Renouf Industries Pty Ltd and an opposition under s.59 of the Patents Act 1990 by Carter Holt Harvey Insulation Pty Limited and an opposition to amendments under s.104
background
Australian patent application number 78506/91 was filed as an application under the PCT by Renouf Industries Pty Ltd (Renouf) and has an International Filing date of 1 May 1991. The application claimed priority from AU Provisional Application No. PK0298 filed on 25 May 1990.
The application was advertised accepted on 28 October 1993 January 1992 and assigned the number 642742.
A Notice of Opposition under s.59 of the Patents Act was filed on 18 January 1994 by Insulco Pty Limited now called Carter Holt Harvey Insulation Australia Pty Limited (Carter). This opposition is yet to be heard.
Renouf filed a request to amend the complete specification on 22 August 1995 and the Request was advertised.
In a facsimile dated 16 October 1997 Carter referred to a letter dated 8 September 1995 requesting directions under r.5.(10) to suspend the requirement for filing evidence pending resolution of the s.104 amendments. This letter was not on file. They “anticipate that in the present circumstances it may be necessary to file a request to amend the Statement of Grounds and Particulars under Regulation 5.9(1)(b) or, at a minimum a request to file further evidence under Regulation 5.10(4).”
Evidence in support has been completed. Evidence in answer has been completed. Evidence in reply has not been served. The time for serving the notice of intention to serve evidence in reply (r.5.8(4)(a)) expired on 8 December 1995. Therefore evidence has been completed.
In these circumstances suspension of proceedings is not appropriate. If further evidence is necessary, then the appropriate course is to request further evidence under Regulation 5.10(4) and to amend the Statement of Grounds and Particulars under Regulation 5.9(1)(b).
Leave to amend was granted in accordance with Regulation 10.5, and particulars of the request advertised on 29 August 1996.
On 28 November 1996 Carter filed an opposition to the allowance of the proposed amendments.
No evidence was served in relation to this matter and it was heard in Canberra on 15 December 1997.
Renouf was represented at the hearing by Mr Stephen Wilson of Griffith Hack, patent attorneys Melbourne, and Carter through a written statement of grounds and particulars by Mr Andrew Wiseman of Allen Allen & Hemsley, solicitors, Sydney. Carter was not represented at the hearing.
the proposed amendments
The invention relates to reflective foil thermal insulation, in particular to reflective foil laminate material and a method and apparatus for its manufacture.
Proposed amendment nos 5 to 12, filed on 22 August 1995, 9 February 1996 and 15 May 1996 make changes to both the description and the claims.
Claim 1 as proposed to be amended is as follows
A method of manufacturing a reflective foil laminate material, including:
applying a non-flammable water-based adhesive to one side of a strengthening lamina with a spreading blade so that the adhesive penetrates the strengthening lamina, the non-flammable water-based adhesive flame retarding the strengthening lamina; bonding a first reflective foil lamina to the said one side of the strengthening lamina;
heating the reflective foil lamina and strengthening lamina after bonding the first reflective foil lamina to the strengthening lamina;
pre-drying the bonded reflective foil lamina and strengthening lamina to remove moisture from the strengthening lamina;
applying a non-flammable water-based adhesive to the other side of the strengthening lamina with a spreading blade after the pre-drying of the bonded reflective foil lamina and strengthening lamina to remove the moisture, so the adhesive penetrates the strengthening lamina, the nonflammable water-based adhesive flame retarding the strengthening lamina; and
bonding a second reflective foil lamina to the other side of the strengthening lamina so that the nonflammable water-based adhesive applied to the other side of the strengthening lamina replaces moisture removed from the strengthening lamina during the pre-drying as well as bonds the second reflective foil lamina to the other side of the strengthening lamina.
The statement of grounds and particulars
The statement of grounds and particulars submitted by Carter to support its opposition to the section 104 request in part states:
“All references are to sections of the Patents Act 1990
1. Renouf Industries Pty Limited (the Applicant) has requested amendments to Patent Application Number 642742 (the Patent Application) on five occasions. The most recent three occasions were:
(a) 22 August 1995
(b) 9 February 1996
(c) 15 May 1996.
2. On or about 14 August 1996 leave was granted in accordance with Regulation 10.5 to amend the specification of the Patent Application as shown in the statements filed by the Applicant on 22 August 1995, 9 February 1996 and 15 May 1996, which leave to amend was advertised in the Australian Official Journal of Patents on 29 August 1996.
3. Carter Holt Harvey Insulation Australia Pty Limited, formerly Insulco Pty Limited, (the Opponent) filed a Notice of Opposition under Section 104(4) on 28 November 1996 which was advertised in the Australian Official Journal of Patents on 2 January 1997.
4. The Opponent opposes the allowance of the proposed amendments to the complete specification filed in respect of the Patent Application on 31 May 1991 (Specification) on the following grounds under Section 40(3) on the basis that the claims concerned are not fairly based and/or are not clear or succinct and/or under the following grounds under Section 102 on the basis that the claims concerned are not in substance disclosed in the Specification.”
I will refer to further details of the particulars later under the section of my decision dealing with the “application of the law”.
DECISION
Relevant law
Amendments to patent specifications are made in accordance with section 104 of the Patents Act 1990.
104. (1) An applicant for a patent or a patentee, may, subject to this Act, and subject to and in accordance with the regulations, ask the Commissioner for leave to amend the relevant patent request or complete specification, or any other filed document, for any purpose including either or both of the following:
(a) removing a lawful ground of objection to the request or specification, whether that objection is raised in the course of an examination or re-examination or otherwise;
(b) correcting a clerical error or an obvious mistake.
(2) Where an applicant or patentee asks for leave to amend a patent request or complete specification, or any other filed document, the Commissioner must consider and deal with the request in accordance with the regulations.
(3) Subject to the regulations, the Commissioner may allow an amendment subject to conditions.
(4) The Minister or any other person may, subject to and in accordance with the regulations, oppose allowing an amendment.
(5) The Commissioner must not allow an amendment that is not allowable under section 102.
(6) On the allowance of an amendment, the amendment is to be taken to have been made.
(7) An appeal lies to the Federal Court, against a decision of the Commissioner allowing, or refusing to allow, a requested amendment, other than a prescribed decision.
The allowability of amendments is governed by section 102, which states:
102. (1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.
(2) An amendment of a complete specification is not allowable after the specification has been accepted 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).
This must be read in the light of Schedule 1 to the Act:
"In this Act, unless the contrary intention appears:
"claim" means:
(a) when used as a noun in relation to a patent - a claim (including a dependent claim) of the specification relating to the complete application on which the patent was granted; and
(b) when used as a noun otherwise than in relation to a patent - a claim ( including a dependent claim) of a complete specification; and
(c) when used as a verb - to claim in a claim (including a dependent claim) of a complete specification;"
An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim in a claim (including a dependent claim) of the complete specification, matter not in substance disclosed in the specification as filed.
Consequently, there is no ground of opposition under section 102(1) if an amendment alters the descriptive part of the specification, and does not result in any change to the scope of the claims.
In determining whether as a result of amendment a claim of the specification claims matter "in substance disclosed" or not, the test for fair basis of a claim can be employed. Thus, for an amended claim to claim matter in substance disclosed in the specification as filed, that claim must, in effect, also be fairly based on the specification as filed. United-Carr Incorporated's Application (1971) RPC 23 accepted as reasonable the rules set out in Mond Nickel Co Ltd's Application (1956) RPC 189, for testing a proposed amended claim against the original disclosure.
For an amended claim to be "fairly based" on the invention as disclosed in the specification there must be "a real and reasonably clear disclosure", of what is proposed to be claimed, in the specification as filed. CCOM Pty Ltd v Jeijing Pty Ltd 28 IPR 48, Leonardis v Sartas No 1 Pty Ltd & anor [1996] 449 FCA 1 (13 June 1996).
Application of the law
In summary Renouf submits that:
the description of the specification in relation to the preferred embodiments gives clear instructions detailing how the invention is to be used giving details about the nature of the paper, the foil and the adhesive which is to be used and the amount of adhesive to be used;
the essence of the invention is centred around the idea of pre-drying after the first pass through the machine because if the process does not include a pre-drying step before bonding the sheets of foil to the paper then there will be too much water in the paper which will just fall apart. So that if you apply enough adhesive to achieve the desired flame retarding and bonding effect then you will end up with a useless product;
a person skilled in the art of reflective foil insulating laminates would have no difficulty in understanding the invention.
The details of the Carter opposition are as follows.
The Carter Statement of Grounds and Particulars part 4(a):
(a) Proposed new Claim 1 introduces a new integer in the following terms:
“applying a non-flammable water-based adhesive to one side of the strengthening lamina with a spreading blade so that the adhesive penetrates the strengthening lamina, the non-flammable water-based adhesive flame retarding the strengthening lamina"
(i) to the extent that the "penetration" and "flame retarding" results from the use of a spreading blade, there is no explanation of this in the body of the Specification. Accordingly the claim, to that extent, is not fairly based and/or not in substance disclosed in the Specification;
(ii) to the extent that it is claimed that the "penetration" occurs prior to any pre-drying, there is no explanation of this in the body of the Specification. Accordingly the claim, to that extent, is not fairly based and/or not in substance disclosed in the Specification;
(iii) insofar as it is claimed that the "flame retarding" of either the strengthening lamina alone or the bonded reflective foil lamina and strengthening lamina, occurs prior to any pre-drying, there is no explanation of this in the body of the Specification. Accordingly the claim, to that extent, is not fairly based and/or not in substance disclosed in the Specification;
(iv) there is no explanation of, and it is unclear as to, what degree of penetration is required to flame retard the strengthening lamina. In other words, since there is no definition of the term "flame retarding" in the Specification, the claim is, to that extent, unclear and not succinct.
My conclusions
Carter submits that there is no explanation of the term “flame retarding” in the description.
However, on page 3 lines 1 to 3 of the specification filed on 30 May 1991 (amended sheets filed under the provisions of the PCT - the application entered the national phase on 22 October 1992) there is a statement that “Australian uniform building regulations now state that all sarking type materials must have a flammability index of no greater than 5”. This is a decrease from a previous requirement of a maximum of 26.
Page 5 lines 6 to 18 of this specification discloses that it is desirable that the laminate material have a low flammability index, preferably less than 5.
Consequently, it is clear to me that the applicant is describing the use of a non-flammable water-based adhesive to produce a low flammability index (preferably less than 5) laminate. The use of a non-flammable adhesive will contribute to the flame retardant nature of the laminate. A preferred class of adhesives is described on page 9 of the specification as filed.
It is clear from the description that a spreading blade is used to apply a coat of the adhesive to the paper to overcome problems associated with the use of rollers which are the conventional spreading means (page 5 line 22 of this specification.). On page 9 line 7 “a synthetic rubber water based adhesive which is able to penetrate the paper to provide a very effective bond of foil to paper” is disclosed.
It is clear to me that new claim 1, in this respect, is fairly based and in substance disclosed in the specification as filed. It claims a preferred embodiment of the invention as originally disclosed.
The Carter Statement of Grounds and Particulars part 4(b):
(b) Proposed new Claim 1 introduces two new integers in the following terms:
"heating the reflective foil lamina and strengthening lamina after bonding the first reflective foil lamina to the strengthening lamina; pre-drying the bonded reflective foil lamina and strengthening lamina to remove moisture from the strengthening lamina".
(i) it is not clear whether these integers disclose two distinct steps, namely,
heating on the one hand, and pre-drying on the other hand. Accordingly the claim, to that extent, is unclear and not succinct.(ii) assuming these integers disclose two separate steps, there is no disclosure in the Specification to which such a two-step process is referable. Accordingly the claim, to that extent, is not fairly based and/or not in substance disclosed in the Specification.
My conclusions
It is not clear from the description of the invention as accepted or filed, particularly the description of the preferred embodiments, as to how the pre-drying step is achieved.
However, it is clear from the amended sheets filed on 30 May 1991, that the strengthening lamina is pre-dried after the first application of water-based adhesive. This could happen, in my view, in a number of ways. It could happen in heating oven (25) during the first or second application of the reflective foil materials or it could simply be air dried after the first application on the roller 28 (Fig 2) although this is less likely because of the difficulty of drying a roll of laminated material. The description, therefore, does not provide a clear basis for this aspect of the claim.
Reference is also made in the abstract to the heating oven being used to pre-dry the laminate but Article 3(3) of the PCT precludes using the abstract as a basis for disclosure in the specification as filed. The text of Article 3(3) is as follows
(3) The abstract merely serves the purpose of technical information and cannot be taken into account for any other purpose, particularly not for the purpose of interpreting the scope of the protection sought.
It seems to me that the parts of new claim 1 referring to “heating the reflective foil lamina” and “predrying the bonded reflective foil lamina” are not clear. Are they both referring to pre-drying or does the heating step refer to preheating the lamina before application of the second relective foil lamina? The preferred embodiment is silent as to how the predrying step is achieved. Is is done in heating oven 25 in Fig(s) 2 and/or 3 or on roller 28? There is no description of predrying occuring after an initial heating step.
I construe the claim as follows:
subparagraph 1 refers to applying the water based adhesive (15, 19 of Fig 2).;
subparagraph 2 refers to the first bonding step (10, 11 of Fig 2);
subparagraph 3 refers to heating (25 of Fig 2);
subparagraph 4 refers to predrying ( the description is silent as to whether this occurs in oven 25 of Fig 2 and/or Fig 3 or on roller 28 of Fig 2);
subparagraph 5 refers to applying the second layer of adhesive ( 35, 39 Fig 3);
subparagraph 6 refers to the second bonding step (30, 31 Fig 3).
The claim is missing the heating step of oven 25 of Fig 3.
New claim 1 is not fairly based in that:
it is missing the second heating step;
pre-drying after the first heating step (presumably in the heating oven 25 of Fig 2) is not described;
New Claim 7, subparagraph 2, is also not fairly based because of the silence in the description about details of the pre-drying step.
New claim 1 is also not clear due to the silence of details in the description about the pre-drying step, either as amended or as filed.
The Carter Statement of Grounds and Particulars part 4(c):
(c) At line 17 to 23 of proposed new Claim 1, it is claimed:
“applying a non-flammable water-based adhesive to the other side of the strengthening lamina with a spreading blade after the pre-drying of the bonded reflective foil lamina and strengthening lamina to remove the moisture, so the adhesive penetrates the strengthening lamina, the nonflammable water-based adhesive flame retarding the strengthening lamina".
(i) the grounds of opposition particularised in (a)(i) and (iv) are repeated in respect of this part of Claim 1;
(ii) since the strengthening lamina is already "flame retarded", as required by that part of Claim 1 that appears at lines 4-8 on page 10, there is no explanation of, and it is unclear why it is necessary for the second layer of adhesive to be applied "so the adhesive penetrates the strengthening lamina to flame retard the strengthening lamina" (emphasis added). This reinforces the lack of clarity and succinctness, interest in the use of the term "flame retarding" in Claim 1.
My conclusions
In relation to part (i) my conclusions are the same as those relating to part (a) of the opponents submissions. That is, new claim 1, in this respect, is fairly based and in substance disclosed in the specification as filed. It claims a preferred embodiment of the invention as originally disclosed.
The description at page 9 (filed on 30 May 1991) lines 3 to 9 disclose the use of “a non-flammable water-based adhesive” to “bond reflective foil laminate to both sides of an absorbent strengthening lamina of, for instance kraft paper”. It seems clear to me that if the non-flammable water based adhesive is applied to and penetrates both sides of an absorbent lamina it will therefore contribute flame retardancy to both sides of the lamina. In my view the term is clear.
The Carter Statement of Grounds and Particulars part 4(d):
(d) At the end of proposed new Claim 1 it is claimed:
"bonding a second reflective foil lamina to the other side of the strengthening lamina so that the non-flammable water-based adhesive applied to the other side of the strengthening lamina replaces moisture removed from the strengthening lamina during the pre-drying as well bonds the second reflecting foil lamina to the other side of the strengthening lamina" (emphasis added).
(i) the bonding step is said to cause the second layer of adhesive to replace
moisture removed from the strengthening lamina during the pre-drying. Bonding the foil is not causally involved in any moisture replacement. If this is not so, then there is no disclosure of this causal involvement in the Specification. Accordingly the claim, to that extent, is not fairly based. Accordingly claim 5, to this extent, is not fairly based and/or not in substance disclosed in the Specification. In addition, or alternatively, the claim is to this extent unclear and not succinct.
My conclusions
Page 4 received on 30 May 1991 contains paragraphs as follows:
“According to another aspect of the present invention there is provided a method of manufacturing a reflective foil laminate material wherein said method comprises the steps of bonding a first reflective foil lamina to one side of a strengthening lamina with a water-based adhesive layer; pre-drying the strengthened lamina with the first reflective foil lamina bonded to it; and bonding a second reflective foil lamina to the other side of the strengthening lamina with another layer of water-based adhesive. ...
The water-based adhesive layer penetrates the pre-dried paper and replaces moisture removed from the paper during the drying step in the method of the present invention without raising the moisture content of the laminate material to an unacceptable level.”
In my view the process involves pre-drying to ensure that the absorbent strengthening lamina is not weakened or broken down by too much water absorbed during the manufacturing process. This process involves pre-drying both sides using heating oven 25 (see Fig(s) 2 and 3). It seems clear that water will be absorbed into the lamina during the first adhesive application step and also during the second adhesive application step. In the preferred embodiment pre-drying is carried out after application of adhesive to both sides to the lamina.
I agree that the way the claim is drafted suggests a causal link between the bonding and the replacement of moisture. This is not supported by the description which discloses, on page 4 of the amended page dated 12 October 1994
“... bonding a second reflective foil lamina to the other side of the strengthening lamina with another layer of water based adhesive after pre-drying the strengthening lamina with the first reflective foil bonded to it so that the another layer of water-based adhesive replaces moisture removed from the strengthening lamina during the pre-drying.”
This passage on page 4 (12 October 1994) does not include a pre-drying step on both applications of the adhesive but is otherwise clear; the proposed amendment is not. Therefore the description and claim is not clear and the claim not fairly based. Proposed amendments No 11 and 12 are therefore not allowable.
The Carter Statement of Grounds and Particulars part 4(e):
(e) Corresponding comments are made in relation to each of the matters raised in (a) - (d) above insofar as they appear at pages 4 and 5 of the proposed amended Specification.
My conclusions
My conclusions relating to this submission are included above.
The Carter Statement of Grounds and Particulars part 4(f):
(f) Claim 5 of the proposed amended specification is in the following terms:
"The method of Claim 1 wherein the heating of laminated reflective foil lamina and strengthening lamina occurs by passing the reflective foil lamina and strengthening lamina through a drying oven and wherein the pre-drying to remove moisture occurs by a second pass of the reflective foil lamina and strengthening lamina through the drying oven".
(i) this revised claim contemplates two separate passes of the incomplete laminate through a drying oven. The first pass encompasses the heating step. The second pass encompasses the pre-drying step. While the Specification contemplated two passes through a heating oven, this was not contemplated by reference to the first pass providing the heating process and second pass providing the pre-drying process. Accordingly claim 5, to this extent, is not fairly based and/or not in substance disclosed in the Specification.
My conclusions
I cannot find a disclosure, in the specification as filed, of “pre-drying to remove moisture occurs by a second pass ... through the drying oven.” There is a disclosure of pre-drying the lamina first with the first application of the adhesive and secondly with the second application of the adhesive but this is not what is claimed in claim 5. The amended claim therefore is not in substance disclosed in the specification as filed.
Proposed amendment No. 10 is therefore not allowable.
The Carter Statement of Grounds and Particulars part 4(g):
(g) Proposed new Claim 6 in the following terms:
"the method according to any one of the preceding claims wherein the amount of water-based adhesive used to bond the first and second foil laminae to the strengthening laminae is about 15 g/m2...
(i) there is no disclosure in the body of the Specification as to what amount of adhesive is required to "bond" the foil to the substrate and/or "flame retard" any one or more of the strengthening lamina, the partially completed laminate or the completed laminate. The claim is to this extent unfairly based and/or not in substance disclosed in the Specification;
(ii) it is unclear whether the specified 15 g/m2 is a dry weight or a wet weight. The claim is to this extent unclear and not succinct.
(iii) it is unclear whether the specified rate is to be applied to each side, or whether the volume specified is to be applied, in aggregate, to the two sides. The claim is to this extent unclear and not succinct.
My conclusions
Page 5 (filed 30 May 1991) lines 10 to 12 discloses
“The present invention, envisages the use of about three times the amount of water based adhesive on each side of the paper (ie. about 15 g/m2 on each side) to achieve the required flammability index of less than 5.
In my view this disclosure satisfies part(i) above and the claim is fairly based on the specification as filed. It is true that the claim or the description do not state whether the 15 g/m2 is dry or wet weight, however, I think this is a matter that the skilled person would readily understand.
In relation the submissions of part (iii) the ambiguity is resolved by reference to the disclosure described above. (if an expression is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim. - Decor Corp Pty Ltd v Dart Industries Inc 13 IPR 385 at page 400)
Conclusion
Proposed amendment Nos 10, 11 and 12 are not allowable for the following reasons:
·Proposed amendment No. 10 not allowable because proposed claim 5 is not in substance disclosed in the specification as filed;
·Proposed amendments No 11 and 12 are not allowable The manner in which claim 1 is drafted suggests a causal link between the bonding of the second layer of water-based adhesive and the replacement of moisture. This is not supported by the description. Therefore this aspect of the description and claim 1 is not clear and the claim 1 not fairly based.
·Claim 1 is not fairly based in that it is missing the second heating step and pre-drying after the first heating step (presumably in the heating oven 25 of Fig 2) is not described. New Claim 7, subparagraph 2, is also not fairly based because of the silence in the description about details of the pre-drying step.
The claim is also not clear due to the silence of details in the description about the pre-drying step, either as amended or as filed.
I refuse to allow the request to amend the specification.
Costs
Carter has been successful in its opposition to the section 104 request. Consequently I award costs against Renouf.
Bob Sawyer
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Griffith Hack, Melbourne
Solicitors for the opponent : Allen Allen & Hemsley, Sydney
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