Seasonmakers (Australia) Pty. Limited. v. North Coast Woodwool Pty. Ltd.

[1987] APO 17

In the Matter of the Patents Act 1952

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In the Matter of Application No.  539158 for a Patent by SEASONMAKERS (AUSTRALIA) PTY. LIMITED.

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In the Matter of Section 59 Opposition thereto by NORTH COAST WOODWOOL PTY. LTD.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
         Seasonmakers (Australia) Pty. Limited (Seasonmakers) filed patent application 539158 on 23 January, 1980 accompanied by a provisional specification, subsequently filing the complete specification on 13 January, 1981.  The Office advertised acceptance in the Official Journal of 13 September, 1984, and on 12 March, 1985 North Coast Woodwool Pty. Ltd. (North) lodged notice of opposition under section 59, following allowance of an extension of time to do so.
         North served its evidence in support on 12 June 1985 and Seasonmakers responded by proposing amendments to the complete specification under section 77 shortly thereafter.  The Office examined the proposed amendments and, pursuant to sub‑section 81(3), advertised the request to amend in the Official Journal of 8 January, 1987.  This meant that, pursuant to section 82, a person interested had until 8 April, 1987 to lodge notice of opposition to the allowance of that request; no such notice was received, however

the amendments were not allowed before the section 59 matter came to hearing in Canberra on 27 April, 1987.  Despite proposing amendments to its specification, Seasonmakers did serve evidence in answer on 1 August, 1986; North served evidence in reply on 23 December, 1986.
         At the hearing North was represented by Mr. J.G. Adams, Patent Attorney of Grant Adams & Co., Brisbane.  Seasonmakers was not represented : through its Patent Attorneys, F.B. Rice & Co., Sydney, it indicated by a notice in writing dated 23 April, 1987 that it would rely on the material on file including certain submisssions contained in the notice.  It seems that this decision was based on the incorrect assumption that the section 77 amendments had been allowed, and that as a result the grounds of opposition were removed.
The Specification as Accepted
         The invention described relates to a means to be
applied to a ground surface for preventing or reducing erosion, and to a method and apparatus for manufacturing such means.
         The specification discusses that there are a number of known ways of controlling soil erosion especially on steeply sloping ground.  The disadvantage of these is that, while such methods are effective in arresting soil erosion, they "prevent and inhibit the growth of plants, grass and flora".
         The solution consists in providing:

"a soil erosion control blanket comprising a mat of wood‑wool fibres retained in a coherent structure by means of a biodegradable mesh such that at least some of the fibres interlock with the mesh and others of said fibres".

This mat is formed by feeding shredded wood‑wool fibres onto the mesh and kneading the wood‑wool against the mesh to secure the fibres to the same by interlocking.
         The specification continues by describing with respect to two figures of drawings an apparatus for forming the mat.  In this apparatus the mesh is fed from a roll, and wood‑wool is fed on to the top of the mesh.  The mesh and wood‑wool are then passed over brushes and a series of rollers whereby the wood‑wool is compressed against the mesh and interlocked therewith.  The path of the mesh and the wood‑wool through the rollers is sinuous.  After emerging from the rollers, the formed mat is wound onto a roll.
         The specification concludes with eleven claims of which the independent product, method and apparatus claims are as follows:

1. A soil erosion control blanket comprising a mat of wood‑wool fibres retained in a coherent structure by means of a biodegradeable mesh such that at least some of the fibres interlock with the mesh and other of said fibres.

1. A method of forming a soil erosion control blanket comprising feeding shredded wood‑wool fibres onto a length of biodegradable mesh and kneading the wood‑wool against said mesh to secure it to same by the inter‑

locking of at least some of said fibres said mesh and others of said fibres.

1. Apparatus when used for manufacturing a soil erosion control blanket comprising a roll feed for biodegradable mesh, means for feeding said mesh from said roll to an end station, a feed station for feeding wood‑wool onto a travelling surface of said mesh, kneading rollers for compressing the wood‑wool against the mesh after said feed station in the direction of travel of said mesh and wind up means at said end station for winding up the so produced blanket."

In addition, there are three typical omnibus type claims, respectively corresponding to claims 1, 3 and 7.
The Proposed Amendments
         I have indicated above that the proposed amendments had not been allowed before the hearing.  Mr. Adams submitted that, in his opinion, and that of his client, the proposed amendments were not allowable as they introduced new matter which would make the invention totally different from that applied for.  In support, he referred to the evidence in reply, which comprises a statutory declaration by Donald John Lyell.  Mr. Lyell's comments on this matter were made pursuant to his having had the opportunity to view the amendments in their originally proposed form, a courtesy copy of which had been supplied by Seasonmakers.
         At that stage I explained to Mr. Adams that his submissions ought to have been put in relation to opposition under section 82, a course which his client had failed to choose.  Nevertheless it did appear to me that the amendments were not allowable.  In such circumstances, even though no opposition has been mounted under section 82, the Commissioner (or his delegate) is not obliged to allow the amendments, and this is made clear in sub‑section 83(2).  Consequently, I determined that the hearing should continue on the basis of the specification as accepted.
         [Subsequent to the hearing, the Office wrote to Seasonmakers' Patent Attorneys informing them of the problems with the section 77 request and inviting them to a hearing on the matter or to take other appropriate action.  In response Seasonmakers withdrew that request and lodged a further request which at the time of writing of this decision has been cleared for advertisement pursuant to sub‑section 81(3); the advertisement should appear in the Official Journal of 6 August, 1987.  Both parties to this action have been informed accordingly.]
The Evidence
         The evidence in support comprises statutory declarations by Donald John Lyell and John Anthony Callinan.
         Mr. Lyell is the Managing Director of North.  His declaration includes three exhibits of which the most relevant appear to be:

(i)DJL 1 ‑ a copy of a brochure produced by the American Excelsior Company relating to "Curlex Blankets" for erosion control, and

(ii)DJL 3 ‑ a copy of the Alabama Agricultural Experiment Station Bulletin No. 499, and a copy of a letter from the Central Library of the Queensland Department of Primary Industries stating that the Bulletin was available to the public on 26 February, 1979.

Mr Lyell deposes that the brochure of exhibit DJL 1 was among the documents of the business, North Coast Woodwool Co., which business he purchased on 24 March 1975.  He had considered manufacturing erosion control blankets similar to the "Curlex Blankets", but did not do so until after the date of lodgement of the present application.  He also deposes that:

"I believe that it is immediately obvious that a machine by which a mat of curled wood excelsior (or woodwool) and a plastics or like mesh is produced will incorporate pinch rollers between which the mesh and overlying woodwool will be passed, the mesh being drawn from the roll in which form it is supplied, the finished blanket being wound in a roll for storage and transport.  ....... In my Company's factory, erosion control blankets of woodwool and biodegradable plastic mesh are passed between an arrangement of pinch rollers originally devised for use in bonding veneers to particle board. It is well‑known to anybody who has had any experience, accidental or otherwise, with woodwool that it tends to hold to many materials into contact with which it has been pressed".

Mr Callinan, an employee of Grant Adams & Co., includes one exhibit, JAC 1, with his declaration.  JAC 1 comprises a letter to him from the American Excelsior Company and a brochure on "Curlex Blankets".
         The evidence in answer comprises a statutory declaration by Geoffrey Bowers.  Mr Bowers is the Director of Seasonmakers and the inventor of the present invention.  He declares, inter alia, that the evidence does not disclose "the essential feature of my invention which is the kneading step".  He also declares that he had experimented with pinch or crushing rollers, but found that the end product was unsatisfactory.
         The evidence in reply comprises a statutory declaration by Mr Lyell.  As well as making comments regarding the amendments under section 77, Mr Lyell states that he considers the term "kneading" is inappropriate, as it is concerned with forming a homogenous plastic mass, which the blanket of the invention is not.
Anticipation
         The opposition by North is primarily based on the argument that most of the present claims (especially claims 1, 3 and 7) are anticipated by the "Curlex Blankets" and the method and apparatus for producing them.
         On comparing the disclosures in exhibits  DJL 1, DJL 3, and JAC 1 with the invention defined by claim 1, I come to the conclusion that this claim is prior published by the "Curlex Blankets".  It is manifestly clear that the latter has all the features of the blanket defined.  I come to the same conclusion with regard to claims 2 and 11.  I note that Seasonmakers has proposed to amend the specification to delete claims to a blanket per se, an explicit concession in the light of the evidence.
         In relation to the method and apparatus claims, Mr Adams submitted that it is disclosed in exhibit DJL 1 that the blanket or mat is "machine produced".  Also he submitted that these claims  are not novel in the light of pressing wood‑wool against the mesh using pinch rollers, which is the method use by the opponent since 1975. He also pointed out that North had no objection to claim 8, which appends to claim 7 and recites the inclusion of fibre brushes to assist the intermeshing of the wood‑wool and the mesh.  I cannot agree with Mr Adams in this matter.  While the exhibits do disclose that the mat is machine produced, there is no disclosure of any method nor any apparatus for forming the mat.  Furthermore, there is no evidence before me that North has been making these mats since 1975.  In fact it appears from Mr Lyell's first declaration (paragraph 3) that he did not produce these mats until after the priority date of the present application.  I do note however that Mr Lyell declares that he had considered producing these mats some time in 1975, but I also note that he makes no mention of the type of method and apparatus he had envisaged using at that time.  Further, Mr Lyell does not state what method and machinery was used by the American Excelsior Company to produce the "Curlex Blanket". Therefore, there is no evidence before me which could destroy the novelty of claims 3 and 7.
Obviousness
         I am concerned here with whether the method or the machine as claimed are obvious in the light of the evidence.  The determination of obviousness is a matter dependant upon the common general knowledge in the field of the invention.  (See the judgment of Aicken J. in Minnesota Mining and Manufacturing Co. v. Beiersdorf (Australia) Ltd. 144 CLR 253).
         The relevant evidence under this heading appears solely in Mr. Lyell's first declaration, and is reproduced in toto below:

"I believe that it is immediately obvious that a machine by which a mat of curled wood excelsior (or woodwool) and a plastics or like mesh is produced will incorporate pinch rollers between which the mesh and overlying woodwool will be passed, the mesh being drawn from the roll in which form it is supplied, the finished blanket being wound in a roll for storage and transport.  Pairs of pinch rollers are almost invariably used for the continuous bonding of layers of substances one to another as, for example, in the adhesion of laminations in making plywood or in the making of heat‑insulating sandwich panels of expanded polystyrene between metal or other adhered skins, or in bonding veneer to particle board.  In my Company's factory, erosion control blankets of woodwool and biodegradable plastic mesh are passed between an arrangement of pinch rollers originally devised for use in bonding veneers to particle board.*  It is well‑known to anybody who has had any experience, accidental or otherwise, with woodwool that it tends to hold to many materials into contact with which it has been pressed.  Therefore to ensure it will hold to an open mesh it is desirable to press or knead it into the open mesh, most conveniently by passing the woodwool and mesh between pinch rollers which also bring the blanket to the desired more or less uniform blanket thickness."

*Mr. Lyell (as aforesaid) conceded in paragraph 3 of this declaration that this manufacture commenced after the priority date of the opposed application.

What Mr. Lyell's deposition amounts to is this:

(i)he believes it is obvious to use pinch rollers in the context of this invention;

(ii)pinch rollers are almost invariably used for continuous bonding of layers of substances;

(iii)because of the well known nature of wood‑wool, attaching it to mesh would be most conveniently done between pinch rollers.

Item (ii) is clearly common knowledge in many distinct arts which perhaps could all be included under the general heading of "construction of laminates".  Mr. Lyell's third point is a statement that ‑ in his view ‑ the man skilled in the art would use pinch rollers to bond the wood‑wool and the mesh.  I accept this statement.  His first point follows from the acceptance of points (ii) and (iii), although I would reword that point to read that it would have been obvious to try pinch rollers in the context of the invention.  And this is in fact conceded by Mr. Bowers in his declaration in the evidence in answer where he states "... I had experimented with pinch or crushing rollers ... but the end product so formed was completely unsatisfactory ...".  As in my view claims 3 and 7 are broad enough to include performance of the invention by use of pinch rollers, I find these claims to be obvious.  I do note however that the invention described does not involve pinch rollers either in the method or the apparatus.
Section 40
         In the evidence in reply, Mr Lyell considers the term "kneading" to be inappropriate. Mr Adams made no submissions on this point.  On reading the specification as a whole, I am of the opinion that the term, "kneading" means pressing or pushing the wood‑wool onto the mesh.  While this may not be the exact dictionary definition of the term, I consider its use throughout the specification to be consistent and in my view a skilled addressee would encounter no difficulties with it.
Conclusion
         I have found that claims 1, 2 and 11 are prior published, and that claims 3 and 7 are obvious, therefore the opposition succeeds, and I award costs against the applicant.  Clearly there is patentable subject matter disclosed in the application and in the normal course I would allow the applicant an opportunity to amend the specification to delete the defects.  However in this case the applicant has already proposed amendments which have yet to be advertised pursuant to sub‑section 81(3).  As I have previously indicated, that advertisement is planned for appearance in the Official Journal of 6 August next.  At that time, North may, if it chooses, oppose allowance of the amendments.  Whether or not it chooses to do so, the opportunity to be heard on the specification in its final amended form on the grounds raised in the section 59 action will be offered.

(J.L. ROVETA)

Patent Attorneys for the applicant : F.B. Rice & Co.
Patent Attorneys for the opponent  : Grant Adams & Co.