Saint-Gobain Isover v Knauf Insulation GmbH
[2015] APO 48
•14 August 2015
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Saint-Gobain Isover v Knauf Insulation GmbH [2015] APO 48
Patent Application: 2006272595
Title:Binders and materials made therewith
Patent Applicant: Knauf Insulation GmbH
Opponent: Saint-Gobain Isover
Delegate: Rhys Munzel
Decision Date: 14 August 2015
Hearing Date: 22 May 2015
Catchwords: PATENTS – fibreglass binder formed by curing Maillard reactants – novelty – prior art does not provide clear and unmistakable directions to select the defined reactants – a US patent document cannot be cited as whole of contents prior art – inventive step – it is not established that it would be a matter of routine to select the defined reactants and apply them to fibreglass batts as defined – fair basis – examples provide a real and reasonably clear disclosure of the feature in question – sufficiency – an enabling disclosure of matter falling within the claims is provided – utility – the invention is not necessarily promised to involve a water-resistant polymer – costs – a matter requiring medical treatment may provide an explanation for delay in filing summary submissions
Representation: Patent applicant: Mr Paul Whenman of FB Rice
Opponent:Mr Craig Smith, of counsel, instructed by Dr Grant Jacobsen and Ms Amanda Jones of Watermark
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2006272595
Title:Binders and materials made therewith
Patent Applicant: Knauf Insulation GmbH
Date of Decision: 14 August 2015
DECISION
The opposition has not succeeded on any ground. Subject to an appeal against this decision I direct the application proceed to grant and costs awarded according to Schedule 8 against Saint-Gobain Isover.
REASONS FOR DECISION
Patent application 2006272595 (“the application”) in the name of Knauf Insulation GmbH (“Knauf”) was examined and accepted by the Commissioner, and subsequently opposed by Saint-Gobain Isover (“St Gobain”). Knauf requested examination before 15 April 2015, which means substantive amendments to the Patents Act[1] brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act[2] do not apply to this opposition.
[1] 1990 (Cth) (“The Act”).
[2] 2012 (Cth) (“the Raising the Bar Act”).
St Gobain’s evidence in support consists of declarations by:
· Bronwyn Fox dated 24 January 2013 (“Fox 1”) with Exhibit BF1; and dated 13 August 2013 (“Fox 2”) with Exhibits BF2-BF11; and
· Paul Esposito dated 22 January 2013 (“Esposito 1”) with Exhibit PE1; and dated 27 June 2013 (“Esposito 2”) with Exhibits PE2-PE10.
Knauf, having had post acceptance amendments to the claims allowed on 14 August 2014, did not file any evidence in answer. St Gobain then obtained leave to file further evidence in relation to the newly amended claims, which consists of further declarations by:
- Bronwyn Fox dated 22 August 2014 (“Fox 3”) with Exhibits BF12 to BF14; and
·Paul Esposito dated 28 August 2014 (“Esposito 3”) with Exhibit PE11.
Knauf’s further evidence in response consists of a declaration by Carl Hampson dated 31 October 2014 (“Hampson 1”) with exhibits JR1 and JR2.
The matter was heard on 22 May 2015. Craig Smith, of counsel, instructed by Grant Jacobsen and Amanda Jones of Watermark Patent and Trade Marks Attorneys attended on behalf of St Gobain. Paul Whenman of FB Rice attended on behalf of Knauf.
Onus
As I noted above substantive amendments brought about by the Raising the Bar Act[3] do not apply. The onus therefore rests with St Gobain to clearly establish its case. For any ground of opposition to succeed, the Commissioner should be “clearly satisfied that the patent, if granted, would not be valid.”[4]
[3] 2012 (Cth).
[4] F. Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283, [67].
Grounds of opposition
St Gobain submits that the invention claimed lacks novelty, an inventive step, fair basis, sufficiency, and utility.
Nature of the invention as described
Before construing the specification, I note what Middleton J said in Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214, 100 IPR 451 at [139]:
“It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”
The background art and identified problem
The specification identifies that binders are useful in fabricating materials from non or loosely assembled matter. [5] Binders are described as capable of classification in a number of ways, including:
- whether they are organic or inorganic; or more specifically
- whether they are formed from proteins, carbohydrates, thermoplastic resins, thermosetting resins, natural resins, rubbers or inorganics; or
·whether they are used to bond rigid surfaces, or to bond flexible surfaces.[6]
[5] The specification, page 1.
[6] Ibid.
The specification lists a number of thermoplastic binders and notes such binders have permanent solubility and fusibility so that they creep under stress and soften when heated.[7] The specification also lists a number of thermosetting binders and notes that they are transformed into insoluble and infusible materials by means of heat or catalytic action.[8]
[7] Ibid.
[8] Ibid, pages 1 and 2.
The identified problem is provided in page 2:
“As indicated above, binders are useful in fabricating materials from non or loosely assembled matter. Accordingly, compositions capable of functioning as a binder are desirable.”
The invention described
Summary of the invention
The specification relevantly provides that binders of the present invention may include a product of a Maillard reaction, such as melanoidins.[9] Melanoidins are described as high molecular weight, furan ring and nitrogen-containing polymers that vary in structure depending on reactants and reaction conditions.[10] The reactants to produce a melanoidin may include an amine reactant and a reducing-sugar carbohydrate reactant.[11] A binder made from the reactants may be cured to fabricate water resistant and water insoluble melanoidins.[12]
[9] Ibid, page 3.
[10] Ibid.
[11] Ibid.
[12] Ibid, page 5.
The specification teaches that the binder may be used in manufacturing fibreglass and fibreboard products.[13] Fibreglass may be processed to form one of several types of fibreglass materials, such as fibreglass insulation.[14] In one example the glass fibres may represent 80-99% by weight of the fibreglass material.[15]
Detailed description
[13] Ibid.
[14] Ibid, page 6.
[15] Ibid, page 6.
The detailed description begins with a large number of dictionary definitions. The term “reducing-sugar” is relevantly defined as one or more sugars that contain aldehyde moieties, or that can isomerize, i.e. tautomerize to contain aldehyde moieties.[16] “Curing” is described as indicating that the binder has been exposed to conditions so as to initiate a chemical change and that examples of chemical changes include, but are not limited to: covalent bonding, hydrogen bonding of binder elements, and chemically cross-linking the polymers and/or oligomers in the binder.[17]
[16] Ibid, page 15.
[17] Ibid, page 7.
The specification elaborates on the mechanics of the Maillard reaction with reference to Fig. 2, which I reproduce below. A reducing-sugar is condensed with an amine reactant, producing an N-substituted glycosylamine.[18] The N-substituted glycosylamine undergoes an Amidori rearrangement and what then occurs depends on reaction conditions such as pH as reproduced below.[19]
[18] Ibid, page 16.
[19] Ibid, page 17.
The specification further adds that:
“concurrently, contemporaneously, or sequentially with the production of melanoidins, esterification processes may occur involving melanoidins, polycarboxylic acid and/or its corresponding anhydride derivative, and residual carbohydrate, which processes lead to extensive cross-linking. Accompanied by sugar dehydration reactions, whereupon conjugated double bonds are produced that may undergo polymerization, a water-resistant thermoset binder is produced consisting of polyester adducts interconnected by a network of carbon-carbon single bonds.”[20]
[20] Ibid.
The specification describes ammonium salts of a polycarboxylic acid as an effective amine reactant.[21] Such salts can be formed by neutralising the acid moieties with an amine base, thereby producing polycarboxylic acid ammonium moieties.[22] Complete neutralisation, i.e. about 100% calculated on an equivalents basis, may eliminate any need to titrate or partially neutralise acid moieties in the polycarboxylic acid prior to binder formation.[23] The specification notes however that less than complete neutralisation would not inhibit formation of the binder.[24] As a useful carbohydrate reactant the specification notes that a reducing-sugar – as defined above – may be used.[25] The reducing-sugar may be provided in combination with other reducing-sugars and/or a polysaccharide.[26] The specification also teaches that various additives can be incorporated into the binder composition, such as: silicon containing coupling agents (which enhance the adherence of the binder to for example glass fibres)[27] and corrosion inhibitors.[28]
[21] Ibid, page 18.
[22] Ibid.
[23] Ibid.
[24] Ibid.
[25] Ibid.
[26] Ibid.
[27] Ibid, page 23.
[28] Ibid, page 24.
The reactants may be provided in an aqueous, curable, formaldehyde free, alkaline binder composition.[29] The binder composition can be applied to a mat of glass fibres by means such as spraying.[30] Once the aqueous binder composition is in contact with the glass fibres the residual heat from the glass fibres – having been recently made from molten glass – and the flow of air through the fibrous mat will evaporate water from the binder composition.[31] The binder composition may then be cured in a curing oven at between 300-600°F. The thermoset cured binder is formaldehyde-free, water-resistant and attaches the glass fibres of the mat together.
[29] Ibid, page 20.
[30] Ibid, page 22.
[31] Ibid.
The specification then provides several experimental examples:
· Examples 1-4 relate to the formation and testing of a triammonium citrate – dextrose binder composition. Compositions are formed having varied proportions of dextrose to triammonium citrate.[32] Samples of each composition are cured under different conditions: 15 minutes at 400°F; 30 minutes at 350°F; and 30 minutes at 300°F.[33] The cured samples are then tested for wet strength,[34] and for elemental composition (to determine the degree of melanoidin formation).[35] The disclosed elemental composition indicates that nitrogen remains in the polymer after curing.[36]
· Examples 5-14 relate to use of binder compositions to produce: “glass bead shell bones”, fibreglass mats and wood fibre-board.[37] In some examples powdered anhydrous citric acid is first mixed with powdered dextrose and water while an ammonia solution is added thereafter to form the triammonium citrate.[38] A silane coupling agent is also added.[39] In another example an ammonium polycarboxylate – sugar based binder is produced.[40] The compositions are combined with the glass beads, fibre mats, and wood fibre and then each mixture is cured and tested for dry and weathered tensile strength.[41]
Summary of the nature of the invention
The invention is described as relating to an alternative binder composition formed from Maillard reactants in which the binder composition may be cured to provide a water resistant thermoset polymer. The binder composition may be used to provide fibreglass mats, such as for insulation, or to provide fibreboard products. The binder composition may provide the advantages of being formaldehyde free and being produced under non-corrosive conditions.
[32] Ibid, page 26 .
[33] Ibid, page 27.
[34] Ibid.
[35] Ibid.
[36] Ibid, page 52.
[37] Ibid, page 28.
[38] Ibid.
[39] Ibid.
[40] Ibid, pages 30, 31.
[41] Ibid, pages 28-32.
The person skilled in the art
The person skilled in the art (“the PSA”) is the hypothetical person to whom the patent specification is addressed.[42] The identity of the PSA will vary with the nature of the invention and the field with which it is concerned.[43] In KD Kanopy Australasia Pty Ltd v InstaImage Pty Ltd,[44] Kiefel J identified the PSA as:
“a person acquainted with the surrounding circumstances of the state of the art and manufacture at the relevant time…. They are likely to have a ‘practical interest in the subject matter of the invention’… and may often work in the art with which the invention is connected.”
[42] General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Ltd (1971) 1A IPR 121, 134
[43] Aktiebolaget Hassle v Alphapharm Pty Ltd (2002) 212 CLR 411, 465 [152]-[153]; Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC (No 2) (2006) 71 IPR 46, 63[67].
[44] (2007) 71 IPR 615, 621.
St Gobain submits that the PSA is a person with higher level qualifications in chemistry, a good knowledge of polymer based chemistry and the chemistry of binders and their application to the manufacture of fibrous insulation products. Knauf accepts this identification.
Construing the claims
The correct approach to claim construction was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd:[45]
“Words in a claim should be read through the eyes of the skilled addressee in the context in which they appear. Words used in a specification are to be given the meaning which the person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification … 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.”
[45] [2009] FCAFC 70, 81; IPR 228, [118]-[120].
The specification ends with 74 claims. Of those claims 1, 2, 24, 47 and 48 are independent. Claim 1 is reproduced below:
“A method of making a thermal or acoustical fiberglass insulation product, comprising:
-spraying an uncured, formaldehyde-free aqueous binder solution onto a collection of loosely assembled fibers in the form of a mat, the aqueous binder solution comprising:
Maillard reactants including (i) an ammonium salt of a polycarboxylic acid reactant and (ii) a carbohydrate reactant, wherein the carbohydrate reactant is selected from one or more carbohydrate reactants having one or more reducing-sugars, one or more carbohydrate reactants which yield one or more reducing-sugars in situ under thermal curing conditions, and combinations thereof;
-transferring the binder coated mat to a curing oven; and
-heating the binder coated mat in the curing oven and curing the binder so as to produce the thermal or acoustical fiberglass insulation product, wherein curing of the binder consists essentially of a Maillard reaction, and wherein the fibers comprise fiberglass fibers selected from mineral fibers and glass fibers, said fiberglass fibers being present in the fiberglass insulation product in the range from about 80% to about 99% by weight.”
Claim 2 is drafted in a similar manner to claim 1 however it contains no reference to curing of the binder consisting essentially of a Maillard reaction and otherwise further requires that:
“the percent by dry weight of the reducing-sugar reactant with respect to the total weight of reactants in the aqueous binder solution ranges from about 73% to about 96%”.
Claim 24 similarly contains no reference to curing of the binder consisting essentially of a Maillard reaction and is further distinguished from claim 1 in that the term the aqueous binder solution is “consisting essentially of” instead of “comprising” the listed components, and the listed components further includes (iii) optionally one or more inorganic acid salts.
Claim 47 is drafted slightly differently to claims 1, 2 and 24 and defines:
“A method of making a thermal or acoustical fiberglass insulation product, comprising:
-providing a collection of non- or loosely assembled heat-resistant fibers;
-spraying onto the heat-resistant fibers an uncured, formaldehyde-free binder solution comprising
a) reactants consisting of
(i)one or more reducing-sugars, a carbohydrate that yields one or more reducing-sugars in situ under thermal curing conditions, or combinations thereof,
(ii)an ammonium salt of a polycarboxylic acid,
(iii)one or more inorganic acid salts, and
(iv) optionally one or more non-carbohydrate polyhydroxy compounds,
b) one or more additives, and
c) water; and
-curing the binder disposed on the heat-resistant fibers so as to produce the thermal or acoustical fiberglass insulation product, wherein the heat-resistant fibers comprise fiberglass fibers selected from mineral fibers and glass fibers, said fiberglass fibers being present in the fiberglass insulation product in the range from about 80% to about 99% by weight.”
Claim 48 is distinguished from claim 47 in that feature (iii) relating to one or more inorganic acid salts is omitted.
An ammonium salt of a carboxylic acid
St Gobain and Knauf disagree over construction of the phrase “an ammonium salt of a carboxylic acid”. Knauf contends that the terms “salt” and “partial salt” ought to be distinguished such that a “salt” must relate to a fully neutralised acid. Knauf refers to Dr Hampson’s evidence, who declares that “[t]he plain meaning of ‘ammonium salt of a polycarboxylic acid’ is that the polycarboxylic acid must be fully neutralised.” St Gobain submits this construction is fundamentally at odds with the specification, which at page 21 states:
“As described above, the aqueous binder composition includes (i) an ammonium salt of one or more polycarboxylic acid reactants and (ii) one or more carbohydrate reactants having a reducing-sugar. It should be appreciated that when an ammonium salt of a monomeric or a polymeric polycarboxylic acid is used as an amine reactant, the molar equivalents of ammonium ion may or may not be equal to the molar equivalents of acid salt moieties present on the polycarboxylic acid. In one illustrative example, an ammonium salt may be monobasic, dibasic, or tribasic when a tricarboxylic acid is used as a polycarboxylic acid reactant.”
From my background I understand “acid salts”, i.e. salts formed by the partial neutralisation of diprotic or polyprotic acids, to be a category of salt. It is also clear in view of the specification (as for example quoted above) that it treats “salt” as allowing for partially neutralised salts. I therefore do not accept Dr Hampson’s view that an ammonium salt of a carboxylic acid must be fully neutralised. I construe “an ammonium salt of a carboxylic acid” as allowing for partial salts.
Curing
I have referred to the dictionary definition of “curing” provided in the specification. I repeat in particular that curing may involve covalent bonding or hydrogen bonding of binder elements, and chemically cross-linking the polymers. In the claims however binder elements are defined as “reactants”. This to me implies that the reactants chemically react during curing to provide the binder. There appears to be some debate as to what chemical reaction would occur between the reactants. Associate Professor Fox declared:
“a Maillard reaction is between an amino acid and a reducing-sugar. However, other reactants that provide the chemical functionalities of amine (or ammonia or ammonium), carboxylate and hydroxyl would, on heating, generate Maillard products (melanoidins). A reducing-sugar carbohydrate ring opens to create a linear molecule with aldehyde and hydroxyl functional moieties. The acid moieties of the polycarboxylic acid then react with the hydroxyl moieties on the reducing-sugar to form ester linkages and therefore a polyester.”[46]
[46] Fox 2, [27].
Associate Professor Fox thereafter declared:
Effectively all of the examples in the Opposed Application use citric acid and dextrose (glucose) as raw materials for preparing binders. These are well known, readily available and low cost materials. As these materials are examples of polycarboxylic acids and polyhydroxy materials… these would result in the formation of polyesters. The addition of ammonia so as to yield ammonium citrate would not change the fact that a polyester containing mixture would be formed… The use of ammonium salts is not significant in this case. Ammonium salts are highly water soluble, therefore the use of ammonium salts might facilitate aqueous reactions without altering the nature of these chemical reactions.”[47]
[47] Fox 2, [30].
I understand Associate Professor Fox as declaring that an ammonium salt of a polycarboxylic acid would react with a reducing-sugar such that carboxylate moieties of the salt would dehydrate with hydroxy moieties of the reducing-sugar to provide an esterification reaction, and whether the sugar is a reducing-sugar or the salt is an ammonium salt is chemically insignificant. Given the Maillard reaction occurs between an amine and a reducing-sugar (as illustrated in Fig. 2 reproduced above), it appears Associate Professor Fox does not actually consider that a Maillard reaction would occur between the defined reactants or, that to the extent it does occur, it is chemically insignificant.
The specification teaches (as I discussed above) that the relevant reaction occurs between the aldehyde moiety of the reducing-sugar and the amino moiety of the ammonium salt to form a glycosylamine intermediate product, from which a range a reactions may occur to provide melanoidins.[48] The specification further teaches that nitrogen content in the cured polymer is demonstrated in the examples.[49] The specification however also teaches that esterification reactions may occur between residual carbohydrates and the carboxyl moieties.[50]
[48] The specification, page 17.
[49] Ibid, 52.
[50] Ibid, 17.
It seems to me that, according to Associate Professor Fox, a reaction between ammonium citrate and dextrose would lead to cross-linked polyesters, whereas the specification appears to teach that the product would be melanoidins, cross-linked with citric acid via esterification. This difference of opinion appears to concern utility as much as it does construction (for the purposes of novelty and inventive step). I will consider it further when discussing utility. For now (i.e. for novelty and inventive step purposes) I accept the specification’s teaching that the relevant initial reaction occurs between the aldehyde moiety of the reducing-sugar and the amino moiety of the ammonium salt, and that this Maillard reaction is different to and more complex mechanistically than an esterification reaction. However, I note the specification’s teaching that complementary esterification reactions may also occur; in my view this seems the purpose of selecting a poly-carboxylate as the anion to the ammonium.
Novelty
The general test for lack of novelty is the reverse infringement test. The classic formulation of this test was given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd:[51]
"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".
[51] [1977] HCA 19 at [20], 137 CLR 228 at 235.
This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed.[52] Australian courts have often cited, with approval, the words of the UK Court of Appeal in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited:[53]
“If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee’s claim if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated.”
[52] Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513, 517.
[53] [1972] RPC 457, 485-486 (“General Tire”).
St Gobain relies on two documents for lack of novelty:
· US 2004/0254285 A1 (RODRIGUES et al.) 16 December 2004 (“Rodrigues”); and
· US 2005/0215153 A1 (COSSEMENT et al.) 29 September 2005 (“Cossement”).
Rodrigues
Rodrigues relates to non-woven binder composition having a carboxy-functional copolymer and a compound capable of forming hydrogen bonding complexes with that polymer.[54] The binder is described as having the advantages of providing a strong yet flexible bond and being able to be cured at low temperatures.[55]
The background art
[54] Rodrigues, [0018].
[55] Ibid, abstract.
Rodrigues provides background information on formaldehyde-free binder systems which are formed of three parts.[56]
- The first part is a polymer that can be copolymerised with other ethylenically unsaturated monomers, for example a polycarboxyl, polyacid, polyacrylic, or anhydride.
- The second part is a cross-linker that includes an active hydrogen compound such as trihydric alcohol, triethanolamine, beta-hydroxy alkyl amides, or hydroxyl alkyl urea.
- The final part is a catalyst or accelerator such as a phosphorous containing compound or a fluoroborate compound.
[56] Ibid, [0008].
The background formaldehyde-free binders are described as working well, though they require relatively high temperatures to first drive off water and then chemically convert the raw materials to a cross-linked gel. Temperatures needed to drive this esterification reaction can range from 200-250°C.[57] Rodrigues teaches that there is a need for an alternative fibreglass binder system that cures at lower temperatures.[58]
[57] Ibid, [0009].
[58] Ibid.
Rodrigues also teaches that polysaccharides such as starch have also been used in binder systems.[59] These polysaccharides form hydrogen bonding complexes with polyacrylic acid, as well as with themselves. However these materials tend to have high molecular weights, which can lead to clumping and sticking of the fibres.[60]
[59] Ibid, [0010].
[60] Ibid.
Rodrigues then summarises the invention disclosed which, as noted above, relates to a binder composition comprising at least one carboxy-functional copolymer binder crosslinker (“the carboxyl polymer”) and at least one compound capable of forming a hydrogen-bonding complex with the carboxy-functional copolymer binder (“the hydrogen bonding compound”).[61] The binder composition can be in the form of an aqueous solution.[62]
The carboxyl polymer
[61] Ibid, [0011].
[62] Ibid, [0012].
The carboxyl polymer can be synthesised from one or more carboxylic acid monomers and, in one embodiment, the acid monomer makes up about 30-100 mol% of the polymer.[63] Carboxylic acid monomers useful in forming the polymer includes: acrylic acid, methacrylic acid, fumaric acid, maleic acid, cinnamic acid.[64]
[63] Ibid, [0018].
[64] Ibid, [0019].
Monomers can be used to adjust the glass transition temperature of the carboxyl polymer to meet end use requirements.[65] Suitable monomers for this purpose include: (meth)acrylates, maleates, (meth)acrylamides, nitrogen functional monomers, vinyl esters, alcohol functional monomers, and unsaturated hydrocarbons.[66] As discussed at paragraph [0032], the carboxyl polymer can be partially neutralised, which is commonly done with sodium, potassium or ammonium hydroxides. The choice of base and partial salt is taught to also affect the glass transition temperature of the copolymer.[67]
[65] Ibid, [0021].
[66] Ibid.
[67] Ibid, [0032].
Low levels of up to a few percent (e.g. up to above 2 weight % based on total monomer) of cross-linking monomers can be used in forming the carboxyl polymer.[68] This extra crosslinking improves the strength of the bonding but can negatively affect the flexibility of the resultant material. The crosslinking moieties can be latent crosslinkers which allow for crosslinking after polymerisation during curing of the binder.[69] The carboxyl polymer can also be co-synthesised with one or more substituted amide, silanol, or amine oxide functional-monomers for improved glass adhesion.[70]
[68] Ibid.
[69] Ibid.
[70] Ibid, [0024]-[0028].
The carboxyl polymer can be synthesized by known polymerisation methods such as solution, emulsion, suspension, and inverse emulsion methods.[71] It can have a random, block, star, or other known architecture.[72] It can have an average molecular weight in the range of 1,000 to 300,000 – though in further aspects more specifically in the range of about 3,000-6,000.[73]
The hydrogen bonding compound
[71] Ibid, [0029].
[72] Ibid, [0033].
[73] Ibid.
Examples of suitable compounds include: polyalkylene glycol, polyvinyl pyrrolidone, polysaccharides, polyethylene amine. Suitable polysaccharides include starch, cellulose, gums, alginates, pectin and gellan.[74] Also included are hemicellulose polysaccharides such as D-xylans.[75] The polysaccharides can be modified or derivatized by etherification, esterification, acid hydrolysis, dextrinization, oxidation, and/or enzyme treatment.[76] Polysaccharides are taught to have the additional advantage of being able to form hydrogen bonding complexes with themselves, and that cross linked polysaccharides can be produced which can negate any need for the carboxyl polymer in the binder composition at all.[77] I note that certain listed saccharides, such as starch and corn syrup, are understood to either be or comprise reducing-sugars.[78]
Reaction conditions
[74] Ibid, [0035].
[75] Ibid, [0036].
[76] Ibid, [0037].
[77] Ibid, [0039].
[78] Fox 2, [38], [48].
Rodrigues teaches that hydrogen bonding complexes can form cross-links in the absence of chemical reaction and therefore can be cured at lower temperatures, for example 150°C.[79] This is taught to save energy and time.[80] I also note that Associate Professor Fox declared 154°C is required to initiate a Maillard reaction in food.[81] The hydrogen bonding complex to polymer binder weight ratio is very broadly taught to be from 1:99 to 99:1, or more specifically 1:5 to 5:1.[82]
[79] Rodrigues, [0015].
[80] Ibid, [0015], [0016].
[81] Fox 2, [21].
[82] Rodrigues, [0040].
The binder composition is taught to form strong bonds without the need for a catalyst or accelerator.[83] One advantage of not using a catalyst in the binder composition is that catalysts tend to produce films that can discolour and/or release phosphorus containing vapours.[84] An accelerator and/or catalyst can be combined with the copolymer binder to decrease cure time, increase crosslinking density and/or decrease the water sensitivity of the cured binder.[85]
[83] Ibid, [0041].
[84] Ibid.
[85] Ibid.
The binder composition can optionally be formulated with one or more adjuvants such as coupling agents, dyes, pigments, oils, fillers, thermal stabilisers, emulsifiers, curing agents, wetting agents, enzymes, surfactants, release agents, corrosion inhibitors, additives to minimise leaching of glass, flame-retarding agents, and lubricants.
St Gobain’s submissions
St Gobain submits that Rodrigues teaches the necessary reactants and that a Maillard reaction would be inherent under the elevated temperature conditions of a curing oven.
Consideration
Rodrigues teaches that carboxyl polymers are mixed with hydrogen bonding compounds, and that suitable hydrogen bonding compounds include sugars where some example sugars are reducing-sugars. Rodrigues also teaches that the polycarboxyl polymers may be neutralised with bases such as sodium, potassium or ammonium hydroxides. However it is relevant to look to the context in which Rodrigues provides this teaching. Rodrigues does not direct – and in fact teaches away from – chemically reacting the carboxyl polymer and the hydrogen bonding compounds. It teaches that the effort involved in chemically cross-linking these compounds wastes energy and time, and that high levels of chemical cross-linking would negatively affect the flexibility of the resultant material. I also consider it noteworthy that Rodrigues teaches away from discolouration of the resultant binder, given melanoidins are understood to be brown polymers.[86]
[86] Fox 1, [49]; the specification, page 17.
Rodrigues teaches that sugars are added as a means of providing hydrogen bonding and not as a source of either hydroxide moieties for esterification reactions or of aldehyde moieties for Maillard reactions more specifically. Neutralisation of the carboxyl polymer with sodium, potassium or ammonium hydroxide is taught as a means to affect the glass transition temperature of the carboxyl polymer. It is not therefore taught as a means to provide a relevant cation for reaction with a sugar, or a reducing-sugar in particular. There is therefore no clear direction or otherwise implicit motivation to select among the available carboxyl polymers an ammonium salt while simultaneously selecting a reducing-sugar among the available hydrogen bonding compounds so as to chemically react them.
There is no clear and unmistakable direction to provide matter falling within the scope of the claims. Claims 1-74 are therefore novel in view of D1.
Cossement
St Gobain seeks to rely on Cossement as a “whole of contents” document. Cossement was published 29 September 2005 and has a claimed priority date of 23 March 2004. In comparison the present application claims a priority date of 26 July 2005. Schedule 1 of the Act[87] provides the definition of “prior art base” and relevantly provides that the following may be considered for novelty purposes:
(ii) information contained in a published specification filed in respect of a complete application where:
(A)if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
(B)the specification was published after the priority date of the claim under consideration; and
(C)the information was contained in the specification on its filing date and when it was published.
[87] 1990 (Cth).
Schedule 1 also relevantly provides the following definitions:
- “application” means a patent application, and includes a relevant international application.
- “patent application” means an application for a standard patent or an application for an innovation patent.
- “innovation patent” means letters patent for an invention granted under section 62.
- “standard patent” means letters patent for an invention granted under section 61.
·“relevant international application” means an international application in relation to which the Patent Office is the receiving Office (even if Australia is not specified in the application as a designated State under Article 4(1)(ii) of the PCT).
In short, a US patent application is not relevant for whole of contents purposes under Australian law. I have searched for but not found an Australian application corresponding to Cossement. While St Gobain has not disputed the opposed application’s right to priority I have also briefly considered the cited basic documents: US 60/702,456 and US 60/743,071 and see no glaring reason to doubt the priority date of the application. For at least this reason claims 1-73 are novel in view of Cossement.
While I do not believe exploring Cossement further is necessary, on the chance that could become relevant prior art I will discuss it briefly. Cossement is directed to a polycarboxy binder composition that contains: a polycarboxy polymer, a cross-linking agent and dextrin as a co-binder.[88] Suitable polycarboxy polymers are listed at paragraph [0037], which notes that the polymer may be prepared from a number of listed acids and their corresponding alkali metal or ammonium salts. The cross-linking agent may be a polyol that contains at least two hydroxyl moieties.[89] Suitable polyols are listed at paragraph [0040] and include compounds such as glycerol, trimethylolethane, diethanolamine, sucrose, glucose, resorcinol, pentaerythritol and sorbitol. A pre-binder composition may be formed by admixing the polycarboxy polymer, the crosslinking agent and a catalyst (if present) in a conventional mixing device.[90] Water may be added in amount sufficient to dilute the aqueous pre-binder to a viscosity and flow rate suitable for application to glass fibres.[91] Once the pre-binder composition is formed, a dextrin may be added with agitation to form the dextrin binder composition. The composition may be applied to glass fibres, evaporated and cured.[92]
[88] Cossement, abstract.
[89] Rodrigues, [0023].
[90] Ibid, [0044].
[91] Ibid.
[92] Ibid, [0050].
Cossement broadly teaches an esterification reaction occurring between carboxyl moieties and hydroxide moieties. This is the context in which glucose and sucrose are described, i.e. as a source for hydroxide moieties. Similarly polycarboxy polymers, and salts thereof, are disclosed as sources for carboxyl moieties. Cossement does not clearly and unmistakably direct the addressee to select a reducing-sugar as a source of an aldehyde moiety, while simultaneously selecting an ammonium salt of a polycarboxy polymer as a source of an amino moiety, so that the two may necessarily react according to the Maillard reaction. The “accuracy of a sniper” has not been demonstrated in this respect.[93] As a result, even if it could be cited as relevant prior art, I am not satisfied any claim lacks novelty in view of Cossement.
[93] Apotex Pty Ltd (formerly GenRx Pty Ltd) v Sanofi-Aventis [2008] FCA 1194, [91].
Inventive step
Sub-section 7(2) of the Act[94] states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art. A document is prior art for this purpose if “a skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded [the document] as relevant.”[95]
[94] 1990 (Cth).
[95] Ibid, s 7(3).
The test for whether an invention is obvious is to ask whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd[96] Aickin J stated:
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
[96] [1981] HCA 12, [45], 148 CLR 262, 286.
In view of the common general knowledge
St Gobain’s submissions are as follows:
· the use of formaldehyde-free two part binders to bind fibres to make insulation products following a curing process was well-known.
· the use of two-part binders that would, when heated, react to form a cross-linked polyester was well known.
· The Maillard reaction was well known. It was known that where a polycarboxylic acid with amine functions was used as the amine reactant, the chemistry could also involve the production of a polyester, which would therefore function as a binder in the same way as other polyester binders.
· Indeed there are many other reactants that can similarly form a polyester and function as a formaldehyde-free binder.
· There can be no invention, and it is not ‘beyond the skill of the calling’, to specify a two-part binder comprising known reactants reacting in a known way to perform the same function as directly analogous binders.
My concern with St Gobain’s submissions lies in the Maillard reaction, as illustrated in Fig. 2 reproduced above, bearing little resemblance (from what I can gather) to an esterification reaction, which St Gobain exemplified with the figure I reproduce below. Similarly a melanoidin, described in the specification as a brown nitrogen-containing polymer, does not appear to me to necessarily resemble a polystyrene.
[97]
[97] Seymour/Carraher’s Polymer Chemistry, page 94
The present matter may have fallen differently had I accepted – as Associate Professor Fox appears to suggest – that whether the sugar is a reducing-sugar, or whether the salt is an ammonium salt, is chemically insignificant. However, as I stated above, I presently accept the specification’s teaching that that the relevant initial reaction occurs between the aldehyde moiety of the reducing-sugar and the amino moiety of the ammonium salt, and that this is different to an esterification reaction between a carboxy moiety and a hydroxide moiety. While I also note the specification to teach additional esterification cross-linking reactions between carboxyl moieties and hydroxide moieties I nevertheless consider the selection of an ammonium salt and a reducing-sugar to be significant to the invention claimed and not simply the mere selection among known reactants to form a polyester.
St Gobain has not established that it would be a matter of routine to select to the two defined reactants to provide a Maillard reaction product useful as a binder as claimed.
In view of s 7(3) prior art
St Gobain relies on Rodrigues, as relevant s 7(3) prior art, as well as:
US 1801052 (MEIGS) 14 April 1951 (“Meigs 1”); and
US 1801053 (MEIGS) 14 April 1951 (“Meigs 2”).
Rodrigues
As I discussed in relation to novelty, I read Rodrigues as teaching away from any chemical reaction between the carboxyl polymer and the hydrogen bonding compound, or more specifically any Maillard reaction between an ammonium salt and a reducing-sugar. As such I am not satisfied that the PSA would as a matter of routine arrive at the invention claimed in light of Rodrigues.
Meigs 1 and 2
Meigs 1 relates to a process of making a resinous condensation product as a substitute for hard rubber, resins, shellac and celluloid and allied materials.[98] The material may be further be used as binders for comminuted fibrous or granular material, or as continuous filling material in the manufacture of hot moulded articles such as electrical insulation, phonograph records and the like, and as varnishes and enamels.[99]
[98] Meigs 1, page 1 lines 3-9.
[99] Ibid, page 1 lines 38-45.
Meigs 1 discloses that the reaction between a carbohydrate, a base and an acid or mixture of acids may lead to the production of bodies not freely soluble in water.[100] Meigs 1 notes that the production of such bodies may be facilitated by the presence of a basic, base containing or base-yielding body such as: ammonium chloride, aniline, or aniline oxalate.[101] Meigs 1 then provides a number of experimental examples where carbohydrates, bases and organic acids are reacted together. Most relevantly in example 5,[102] 180 grams of glucose is mixed with 120 grams of ammonium citrate in 100 mL of water. The mixture is refluxed for 40 minutes to provide a black, water insoluble material having resilient properties.
[100] Ibid 1, page 1 lines 46-53.
[101] Ibid 1, page 1 lines 53-62.
[102] Ibid, page 2 lines 36-61.
Meigs 1 notes that the reactions described in the examples may be modified by working at lower temperatures and with lower acid concentrations.[103] In general, the more vigorous the reaction, the longer it continues and the more infusible and insoluble the products become.[104] The basic body “may” greatly accelerate the reaction.[105] Meigs 1 notes that the water insoluble products of the reaction may be mixed with filling material and heated in moulds to produce various moulded bodies. [106]
[103] Ibid, page 2 lines 47-53.
[104] Ibid, page 2 lines 53-59.
[105] Ibid, page 2 lines 59-61.
[106] Ibid, page 2 lines 64-67.
After discussing a number of experiments involving phenols as the relevant acid compound, Meigs 1 provides the following:
“Carbohydrates as for example glucose appear to react readily with amino compounds as for example aniline, with the production of useful reaction products. The reaction may be catalysed by acids and may lead as indicated in the subsequent examples to the formation of bodies adapted for use as plastics or for other purposes.”[107]
[107] Ibid, page 3 lines 102-109.
Meigs 1 also provides:
“Ammonia and other nitrogenous or basic bodies may exert a profound condensing reaction on the difficultly-water-soluble-products of reaction of saccharides, bases and acids (as for example phenols).”[108]
[108] Ibid, page 4 lines 12-18.
Meigs 1 then further explores potential uses for the disclosed product. Meigs 1 notes that the product may be sold dissolved in a suitable solvent for use as an impregnating or coating varnish of the baking type.[109] Meigs 1 also notes that the product may be sold partially hardened (i.e partially cured) such that it may be capable of moulding under heat and pressure to produce moulded articles such as hard electrical insulation.[110]
[109] Ibid, page 4 lines 34-38.
[110] Ibid, page 4 lines 39-55.
Meigs 2 relates to matter similar to that of Meigs 1. Meigs 2 generally discloses products of reactions between carbohydrates and nitrogenous or basic materials in the presence or absence of acids.[111] As discussed in Meigs 2, the reaction is not limited to any particular carbohydrate and may employ any suitable member of the carbohydrate family as may be found advantageous.[112] However I note that much of the first page of Meigs 2 is devoted to the use and importance of dextrose- and other monosaccaride-yielding materials.[113] Acids are described as a means of breaking more complex carbohydrates down into monosaccharides such as dextrose.[114] From my background I understand that all monosaccharides are reducing-sugars.
[111] Meigs 2, page 1 lines 12-16.
[112] Ibid, page 1 lines 27-32.
[113] Ibid, page 1 lines 50-85.
[114] Ibid, page 1 lines 33-37.
Meigs 2 then notes:
“The product of the reaction between a carbohydrate and a suitable nitrogenous or basic body may lead to the production of substances of a resinous character suitable for use in the manufacture of varnishes, or for use as binding material for fibrous or non-fibrous materials in the manufacture of hot or cold molded articles.”
In example 3,[115] 180 parts of corn sugar (85% dextrose) is mixed with 120 parts ammonium citrate in 100 parts water and the mixture is heated under reflux for 45 minutes. This is said to yield water insoluble, black, resilient material having a consistency resembling a concentrated rubber solution.
[115] Ibid, page 3 lines 18-33.
The generally disclosed reaction products are taught as usable in the manufacture of moulded articles such as hot moulded products.[116] For example, the reaction product may be prepared in a fusible, soluble and soft condition that can be mixed or incorporated with other materials in manner known in the art.[117] Such other materials may comprise cellulosic and other fibres of fibrous material, such as for example, wood pulp, ground wood, cotton linters, cotton, wool or silk flock, rubber, glue, casein, gluten, starch, asphalt, beeswax, as well as inorganic materials such as metal oxides and hydroxides, salts, carbon black, aluminium silicate, rotten stone, asbestos, and talc.[118] The mixture can then be further treated, by applying pressure and heat, to change the softer material into a harder form.[119] The hardened material may be used to provide articles for electrical or heat insulation or other purposes.[120]
[116] Ibid, page 4 lines 13-17.
[117] Ibid, page 4 lines 21-26.
[118] Ibid, page 4 lines 26-43.
[119] Ibid, page 4 lines 43-60.
[120] Ibid, page 4 lines 101-108.
In relation to Meigs 1 and 2, St Gobain submits:
“The person skilled in the art would also be likely to find each of the Meigs patents (D4 and D5), each of which teaches the manufacture of a resinous binder, suitable for use with fibrous materials, by mixing and heating glucose (alternatively corn sugar, comprising 85% glucose (dextrose)) with ammonium citrate.”[121]
[121] St Gobain, summary submissions, [102].
Meigs 1 and 2 discloses a resinous reaction product of a carbohydrate, such as dextrin, and a nitrogenous or basic material. Example 5 of Meigs 1, and 3 of Meigs 2, provide a curing reaction between dextrose and ammonium citrate. Meigs 2 also notes that the resinous reaction product may be used as a binder for fibrous materials, and that the hardened material may be used for heat insulation purposes. The question before me is whether it would be a matter of routine to apply the uncured compositions taught in Meigs 1 and 2 (in particular those of the cited examples) by spraying them onto a fibreglass mat and thereafter performing a curing step.
Spraying an uncured binder onto fibreglass to provide insulation batts is known in the art,[122] and is for example disclosed in Rodrigues as I have discussed. However, St Gobain’s evidence on Meigs 1 and 2 centres exclusively on the novelty of the claims as they existed at acceptance and therefore prior to the amendments allowed 14 August 2014.[123] The evidence does not refer to Meigs 1 and 2 in relation to inventive step against the present claims (or the claims at acceptance). In this respect the evidence does not establish that the PSA would recognise the disclosed reaction product as a suitable alternative binder for use in fibreglass insulation batts and to therefore, as a matter of routine, apply it in the manner defined. There is simply a lack of evidence to establish that the disclosures of Meigs 1 or Meigs 2 would be recognised as relevant in this respect.
[122] Fox 1, [23]; Esposito 2, [7].
[123] See Esposito 2, Esposito 3, Fox 2 and Fox generally.
St Gobain has not established that any claim lacks an inventive step in view of Meigs 1 or Meigs 2.
Fair basis
In considering fair basis, the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd[124] approved the words of Gummow J in Rehm Pty Ltd v Websters Security System (International) Pty Ltd: [125]
“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.”
[124] [2004] HCA 58, [69]; 217 CLR 274, 300 (“Lockwood v Doric”).
[125] (1988) 81 ALR 79, 95.
Lockwood v Doric[126] clarifies that the comparison required involves:
“construction of the specification as a whole, putting aside particular parts which, although in isolation they might appear to point against the ‘real’ disclosure, are in truth only loose or stray remarks.”
[126] [2004] HCA 58, [69]; 217 CLR 274.
St Gobain submit that claim 2 lacks fair basis because there is no real and reasonably clear disclosure that the reducing-sugar must comprise between 73-96% by weight based on the total weight of reactants in the aqueous binder composition. Knauf refers to the examples provided in the specification and cites calculations it provided in its letter dated 18 November 2013, which I reproduce below.
In essence Knauf acknowledges that no consistory statement or similar provides the defined feature, but submits that it is borne out in the examples. I accept that examples consistent with the specification’s overall teaching can provide basis for features not necessarily set out in consistory statements.[127]
[127] See Matbro Ltd. v Michigan (G.B.) Ltd. (1973) RPC 823; and Screen Printing Machinery Ltd's Application (1974) RPC 628.
In the examples the disclosed weight % of reducing-sugar varies between 73.6% and 95.6% to provide a binder composition. I am satisfied that there is a real and reasonably clear disclosure in the specification of the subject matter claimed.
Sufficiency
As set out in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd[128] the test for full description is whether:
“the disclosure enable[s] the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty.”
[128] [2001] HCA 8 at [25]; (2001) 207 CLR 1 at 17.
St Gobain submits that, if it were accepted that either Rodrigues or Cossement did not disclose a binder that underwent a Maillard reaction notwithstanding that the binder comprised Maillard reactants, then it would follow that the application lacks sufficiency, since no greater level of disclosure is made in the Application.
I have previously distinguished the disclosure of either Rodrigues or Cossement from that of the specification. Neither Rodrigues nor Cossement provide unmistakable directions to simultaneously select an ammonium salt and a reducing-sugar and thereby provide a Maillard reaction. In contrast, the specification provides such a disclosure in sufficient detail to provide a cured product as defined.
St Gobain has not established that any claim lacks sufficiency.
Utility
All within the scope of the claim must be useful if the claim is not to fail for inutility. A claim is bad if it covers means that will not produce the desired result even if a skilful person would know which means to avoid.[129] However, claims should be construed in a common sense way to avoid embodiments understood by the person skilled in the art to be totally impractical and contrived.[130]
[129] Norton and Gregory Limited v Jacobs (1937) 54 RPC 271, 276; Welch Perrin & Co Pty Limited v Worrel [1961] HCA 91; (1961) 106 CLR 588, 601; Martin Engineering Co v Trison Holdings Pty Ltd (1989) 14 IPR 330, 337.
[130] Austal Ships Pty Ltd v Stena Rederi Aktiebolag [2005] FCA 805, [240].
I have already discussed what I consider to be the problem solved according to the specification, that is:
“As indicated above, binders are useful in fabricating materials from non or loosely assembled matter. Accordingly, compositions capable of functioning as a binder are desirable.”
In the inverse, I consider the promise of the invention to be providing a composition capable of acting as a binder.
St Gobain submits that claim 2 includes within its scope a binder having 96% by dry weight of a reducing-sugar reactant, while the Application shows that such a binder would not be useful since it would have no wet strength. I take from this that St Gobain considers wet strength to be a promise of the invention. Is this the case? There are a number of disclosures in the specification which suggest that water resistance is relevant:
· “The melanoidins in the binder may be water insoluble. Moreover, the binders may be thermoset binders.”[131]
· “a binder made from the reactants of a Maillard reaction may be cured. These binders may be used to fabricate cured formaldehyde-free matter, such as, fibrous compositions. These compositions are water-resistant and, as indicated above, include water-insoluble melanoidins.”[132]
· “Concurrently, contemporaneously, or sequentially with the production of melanoidins, esterification processes may occur involving melanoidins, polycarboxylic acid and/or its corresponding anhydride derivative, and residual carbohydrate, which processes lead to extensive cross-linking. Accompanied by sugar dehydration reactions, whereupon conjugated double bonds are produced that may undergo polymerization, a water-resistant thermoset binder is produced consisting of polyester adducts interconnected by a network of carbon-carbon single bonds.”[133]
· “In the curing oven the mat is heated (e.g., from about 300°F to about 600°F) and the binder cured. The cured binder is a formaldehyde-free, water-resistant thermoset binder that attaches the glass fibers of the mat together.”[134]
· “In other embodiments of the invention, a binder that is already cured can be disposed on a material to be bound. As indicated above, most cured binders will typically contain water-insoluble melanoidins. Accordingly, these binders will also be water-resistant thermoset binders.”[135]
[131] The specification, page 3.
[132] Ibid, page 4 to page 5.
[133] Ibid, page 17.
[134] Ibid, page 22.
[135] Ibid, page 23.
These passages provide a strong suggestion that the cured product will be water-resistant. However I believe it is also important to consider what the specification teaches of the example in question. The specification, as set out in Table 1, clearly teaches that the example is not water resistant. Does the specification therefore teach that this example is outside the invention? I do not find any suggestion that it does. Taking into account the entire specification including the examples I believe the specification promises that the defined reactants will react according to the Maillard reaction and that, taking into account curing duration and temperature and reactant ratio, the reaction can provide a water-resistant thermoset polymer. In other circumstances, such as where the curing temperature is too low, or where the reactant ratios are not appropriate, the specification clearly teaches that the resultant polymer will not be water resistant.[136]
[136] Ibid, table 1.
Does the specification teach that non-water resistant polymers are not useful as binders? Again, I do not believe that it does. The specification instead teaches that binder compositions can be useful as binders even where they are not cured at all.[137] An uncured binder would clearly lack water resistance. St Gobain has not clearly satisfied me that that subject matter falling within the scope of the claim would not meet the promise of the invention to provide an alternative binder composition.
[137] Ibid, for example pages 2, 4, 6, 7, 20 and 22.
I noted previously an evidentiary issue relating to whether the Maillard reaction would be chemically significant in providing a cross-linked polymer according to the invention. I repeat Associate Professor Fox’s observation that:
“Effectively all of the examples in the Opposed Application use citric acid and dextrose (glucose) as raw materials for preparing binders. These are well known, readily available and low cost materials. As these materials are examples of polycarboxylic acids and polyhydroxy materials… these would result in the formation of polyesters. The addition of ammonia so as to yield ammonium citrate would not change the fact that a polyester containing mixture would be formed… The use of ammonium salts is not significant in this case. Ammonium salts are highly water soluble, therefore the use of ammonium salts might facilitate aqueous reactions without altering the nature of these chemical reactions.”[138]
[138] Fox 2, [30].
I noted that, for the purposes of novelty and inventive step, I accepted the specification’s teaching that use of an ammonium salt and a reducing-sugar would be chemically significant, in that the relevant reaction would be a Maillard reaction producing brown nitrogen-containing polymers such as melanoidins. I would perhaps accept that, if such materials were not produced and the resulting polymers were, practically speaking, merely polyesters, the defined invention would not achieve the promise of an alternative binder (particularly in view of claim 1’s requirement that curing the binder consists essentially of a Maillard reaction). However to establish this as fact I would expect evidence such as experimental results and analysis demonstrating minor or no formation of melanoidins (or related nitrogen-containing polymers), and that the thermoset polymer is for all intents a polyester. Such evidence was not provided.
St Gobain has not established that any claim lacks utility.
Conclusion
The opposition has not succeeded on any ground. Subject to an appeal against this decision the application is to proceed to grant.
Costs
100. Generally costs should follow the event. In the present matter Knauf filed its summary submissions one day late. At the hearing Knauf explained that its attorney had a medical matter arising on the last day to file submissions, which required him to seek medical treatment such that he was unable to file the submissions on time.
101. Sub-regulation 5.20(6)[139] permits the conduct of the parties in filing their summary of submissions to be taken into account in awarding costs. In Mars, Incorporated v Société Des Produits Nestlé SA[140] the delegate found that oversight was not a sufficient excuse for filing submissions a day late and took this into account when determining costs. In contrast I consider a medical matter arising on the final day to file submissions, requiring medical treatment, is an explanation distinguishable to mere oversight. In the present circumstances I am satisfied costs should follow the event.
[139] Patents Regulations 1990 (Cth).
[140] [2014] APO 43.
102. I will award costs according to Schedule 8 against St Gobain.
Rhys Munzel
Delegate of the Commissioner of Patents
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