Tamfelt Oy AB v Albany International Corporation

[2001] APO 5

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No.  688492  in the name of TAMFELT OY AB

Title:          Press Belt and Method of Manufacture

Action: Opposition under Section 59 of the Patents Act by ALBANY INTERNATIONAL CORPORATION.

Decision:          Issued            .

Abstract

The opponent succeeded in its opposition to the patent application. 

Claims 1 to 4 of the application were found to be not novel and to lack an inventive step.  The applicant was given the opportunity to make amendments to overcome these findings.

The evidence was found to be inadequate to support submissions that relevant patent specifications were part of the common general knowledge in Australia at the priority date of the application.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent application 688492 by TAMFELT OY AB, and opposition under section 59 by ALBANY INTERNATIONAL CORPORATION.

BACKGROUND

Tamfelt Oy AB ("Tamfelt") filed patent application 688492 on 21 April 1995 as PCT/FI95/00226.  The application claims priority from a United States application filed on 22 April 1994.  Patent application 688492 was advertised accepted on 12 March 1998.

Albany International Corporation ("Albany") filed a notice of opposition to the grant of a patent on the application on 12 June 1998.  On 11 September 1998 Albany filed a statement of grounds and particulars in support of the opposition. 

Following several extensions of time allowed to both parties, the stages for serving evidence were completed on 13 March 2000.

The matter came to a hearing in Sydney on 16 October 2000.  Mr Christian Schieber, patent attorney of Watermark, represented Tamfelt.  Mr Schieber was assisted at the hearing by Mr Shaun Griffin, also of Watermark.  Mr Tony Smeeton, patent attorney of Davies Collison Cave, represented Albany.

SPECIFICATION

The specification commences by indicating that the invention relates to an endless loop press belt construction and a method of manufacturing such a press belt.  Press belts are used in various press devices such as shoe-type presses, as used in paper making machines and calendars, to transport a continuous fabric web or sheet through a press nib.

The specification then describes several perceived problems associated with prior press belts.  These include difficulties in manufacturing belts having woven reinforcement material due to the accuracy required in getting the dimensions exact, and a lack of flexibility in these belts.  Further difficulties with belts having helically wound yarns are low durability and cumbersome manufacture due to the specialised machinery required.

The specification suggests solving these problems by providing a press belt and disclosing a method of manufacturing a press belt with the following features.  The press belt has separate layers of crosswise and lengthwise reinforcing yarns laid on top of each other and enclosed in elastomeric material.  The crosswise yarns are located adjacent to the outside surface of the belt and the lengthwise yarns are located adjacent to the inside surface of the belt.  The specification states this arrangement of the yarns provides the proper tensile strength while retaining the elasticity required for use in shoe-type pressing devices.  Consequently I rate this arrangement as essential to the invention.

The specification ends with ten claims of which the main claims read as follows:

1.     An endless loop press belt having inner and outer surfaces and comprising a plurality of reinforcing yarns encased in an elastomeric material, said reinforcing yarns comprising an outer yarn layer adjacent said outer surface of said belt and an inner yarn layer adjacent an inner surface of said belt, said outer yarn layer comprising a plurality of spaced reinforcing yarns extending in a crosswise direction, said inner yarn layer comprising a plurality of spaced reinforcing yarns extending in a lengthwise direction.

5.     A method of forming an endless loop press belt comprising a plurality of reinforcing yarns encased in an elastomeric material, said method comprising the steps of:
positioning a layer of crosswise reinforcing yarns inside a casting cylinder having an inside diameter equal to a desired outside diameter of said press belt;
positioning a layer of lengthwise reinforcing yarns on top of said crosswise reinforcing yarns; and
casting an elastomeric material over said crosswise and lengthwise reinforcing yarns to encase said yarns, whereby said crosswise reinforcing yarns are adjacent to the outer surface of said press belt and the lengthwise reinforcing yarns are adjacent to the inner surface of said press belt.

8.     A method of forming an endless loop press belt comprising a plurality of reinforcing yarns encased in an elastomeric material, said method comprising the steps of:
positioning a layer of crosswise reinforcing yarns inside a casting cylinder having an inside diameter equal to a desired outside diameter of said press belt;
casting a first layer of elastomeric material over said crosswise reinforcing yarns;
positioning a layer of lengthwise reinforcing yarns on top of said still wet first layer of elastomeric material;
casting a second layer of elastomeric material over said lengthwise reinforcing yarns wherein said first and second layers of elastomeric material simultaneously cure to form an integral elastomeric entity which encases both the crosswise and lengthwise reinforcing yarns.

STATEMENT OF GROUNDS AND PARTICULARS

Albany's grounds for opposing the application are that the claimed invention is not novel, does not involve an inventive step and is not a manner of manufacture.  Albany also states the claims are ambiguous, not clear and succinct, and not fairly based on matter described in the specification.  Furthermore Albany states the specification does not fully describe the invention.  Albany provides corresponding particulars to support each of these grounds.

EVIDENCE

Albany's evidence in support of the opposition consists of statutory declarations by Ms Joan M Marsh, Mr John F Gulbin and Mr John Mead. 

Ms Marsh is the intellectual property rights administrator for Albany in the USA.  She describes the means by which the patent documents cited in the statement of grounds and particulars came to Albany's attention and how those documents were disseminated to key personnel within Albany. 

Mr Gulbin is an attorney with a law firm in the USA that represents Albany.  He describes the US patent monitoring service he provides to Albany.

Mr Mead is a director for Albany Australia Pty Ltd.  He includes thirteen exhibits with his declaration.  Several of these exhibits are patent specifications cited in the statement of grounds and particulars.  Mr Mead asserts a number of the patent specifications are relevant and clearly describe all the essential features set out in several of the claims of the present application. 

Two of the patent specifications Mr Mead relies upon are US 4238287 and DE 3827486.  Several of the remaining patent specifications are assigned to a German press belt manufacturer, J M Voith GmbH.  In his declaration Mr Mead refers to the belts disclosed in these specifications as the Voith belts. 

Mr Mead concludes, at paragraph 29, that the only difference between the Voith belt [and the Tamfelt belt] is the relative disposition of the crosswise and lengthwise reinforcing yarns.  He says if the Voith belt was turned inside out it would be exactly the same as the belt of the present application.

Tamfelt's evidence in answer consists of a statutory declaration by Mr Olli Jermo.  He is the press belt product manager for Tamfelt. 

Mr Jermo challenges the conclusions drawn by Mr Mead in respect to the similarities between the Voith belt and the present Tamfelt belt.  Mr Jermo states the relative disposition of the yarns is a very significant difference.  He calculates there is a significant difference in flexural stress on the elastomer between the Voith and Tamfelt belts, and states that current belts cannot be readily turned inside out without damaging them.  Mr Jermo also notes the Voith manufacturing methods are totally different to the Tamfelt process.  The Voith belts are cast on the outside of a mandrel in a process known as ribbon flow.  In this process the mandrel rotates at a very low speed and the polyurethane resin employed must cure very fast to make sure it does not drop off the mandrel.  The Tamfelt belt is cast on the inside of a mold rotating at high speed.  The method is known as centrifugal casting.  The centrifugal force caused by the high rotation speed forces the elastomer to the mold surface.  The method allows for practically any curing speed for the elastomer.

Albany's evidence in reply consists of statutory declarations by Ms Geraldine R Gross and Mr Robin William Dent.

Ms Gross is a senior research associate at Albany in the USA.  She addresses the present specification's assertions of the deficiencies of the pre-existing Voith belts.  Ms Gross concludes the strain distribution of the Tamfelt belt is not significantly improved over the Voith belts.

Mr Dent is a research associate at Albany in the USA.  He disputes Mr Jermo's calculations in respect to the strains placed on belts.  Mr Dent asserts that Mr Jermo's calculations are based on an extremely simplistic model of belt structure, which in turn is based on questionable assumptions.  For instance Mr Dent states that Mr Jermo assumes the sample layer strains are proportional to the bending radius.  Mr Dent says this implies the belt has a constant bending rigidity throughout its thickness.  He further states this is not correct for a composite structure, like a press belt, having warp layers (yarns in running direction) and weft layers (yarns in crosswise direction) interspersed with elastomer.

DECISION

INTERPRETATION OF THE SPECIFICATION

At the hearing both parties made extensive submissions on the terms "comprising" and "consisting of".  The former term appears throughout the claims of the specification.  The latter term appears on page 2 line 26 of the specification.  Significantly this passage of the specification describes the features of the invention said to overcome the problems of the prior art.

Mr Smeeton stated a number of recent Australian court decisions have raised doubt as to the interpretation of the word "comprise" as used in patent specifications.  He said these decisions suggest the word "comprise" is to be given an interpretation appropriate to the context of its use.  In the present case Mr Smeeton stated the word "comprise" does not appear to be used in an exhaustive sense.  That is, a press belt "comprising" a combination of integers includes, but is not limited to, the combination of integers identified after the word "comprising".

Mr Schieber submitted that Albany's declarants do not appear to have any problem with the clarity of language used in the description of the invention or in the claims.  He noted Mr Mead refers in paragraph 24 to the press belt consisting of various features while in paragraph 27 Mr Mead refers to the press belt as comprising the same features.  Mr Schieber suggested it is clear the words "consisting of" and "comprising" are used interchangeably.  He also referred to the General Clutch Corporation v Sbriggs Pty Ltd decision, (1997) 38 IPR 359. Mr Schieber said in that case the word "comprising" was taken to mean "consisting of". That is, the word "comprising" in respect to a spring clutch was interpreted in an exhaustive or limiting sense as the spring clutch "consisting of" the combination of integers expressly defined thereafter. Mr Schieber submitted I should read the word "comprising" in the same way in the present case.

Prior to the Asahi Kasei Kogyo Kabushiki Kaisha v W R Grace & Co decision, (1991) 22 IPR 491, it was a long-standing convention in Australia that where the word "comprises" is used in a patent specification it should be interpreted non-exhaustively. That is, the word "comprising" in respect to a combination of integers would take the meaning of "including, but not limited to" the combination of identified integers. In the Asahi (supra) decision, at page 515, Heerey J accepted the word "comprises", in claim 1 of that case, meant "consists of". Heerey J went on to say this meaning appears to be the primary natural meaning and in this context it gives a sensible and workable meaning. The subsequent appeal decision, at (1993) 25 IPR 481 at pages 500 and 501, did not disturb Heerey J's decision. In General Clutch (supra), Lindgren J reviewed a number of authorities and several dictionaries, and similarly concluded the word "comprising" means "consisting of, made up of, composed of or constituted by".

In ICI Australia Operations Pty Ltd v Monsanto Company, [1997] APO 71, the hearing officer noted that claim 3 defined a process according to claim 1 where the ingredients included a filler although this feature was not defined in claim 1. He similarly commented that claim 12 claimed a process according to claim 1 with reference to examples that described the use of fillers and a drying step although these features of the process were not defined in claim 1. Consequently the hearing officer interpreted the word "comprising" as permitting the possibility of claim 1 including the use of fillers and a drying step even though these features were not expressly defined in claim 1. He said this distinguishes the interpretation of the word "comprising" in claim 1 from the meaning given in the General Clutch (supra) case.  That is, the hearing officer in the ICI (supra) case applied the word in a non-exhaustive sense as distinct from an exhaustive or limiting sense.

Gyles J in Abbott Laboratories v Corbridge Group Pty Ltd, [2000] FCA 1713, stated it is a matter of gleaning sense from the context to find the word "comprising" in that case meant "including or containing" the integers described, rather than being composed only of them. In the Safety Equipment Sweden AB v Protector Safety Industries Pty Ltd decision, [2000] APO 72, the hearing officer stated that in view of recent court decisions, the term "comprising" when used in claims must similarly be given an interpretation appropriate to the overall context of its use. The hearing officer concluded the word "comprising" in the context used in the latter case similarly meant "including" or "having".

It is clear from the above decisions that the interpretation of the word "comprises" depends greatly on the context in which the word is used in each particular case.  The General Clutch (supra) case also states (at page 374), in the context of a spring clutch, the word "comprising" as meaning "a spring clutch [the 'whole'] consisting of, made up of, composed of or constituted by the following [parts] as its essential elements as a spring clutch".  The reference to essential elements as a spring clutch suggests the words "consisting of" do not define items in a completely limiting or exhaustive sense.  That is, the words define a spring clutch that may include other, inessential features.  This suggests the words "comprising" and "consisting of" are not so divergent in meaning. 

In the present case a number of sources suggest the words "comprises" and "consists of" are not divergent at all.  The present specification on page 2 lines 25-28 describes a press belt "consisting of" various features.  A passage on page 4 lines 27-30 describes the press belt as "comprising" exactly the same features.  Similarly claim 1 defines a press belt "comprising" these features.  Consequently it appears the words "comprising" and "consisting of" are used interchangeably and mean the same thing.  Further support that the words are equivalent in the present case comes from considering the claims as a whole.

Claims 2 to 4 are appended to claim 1.  Each of claims 2 to 4 defines further limitations of either the reinforcing yarns or the elastomeric material.  Both of these features are defined in claim 1.  Claims 6 and 7 are appended to claim 5.  Both claims 6 and 7 similarly define further limitations of features already mentioned in claim 5.  The same is true of claims 9 and 10 that are appended to claim 8.  This contrasts with the ICI (supra) situation where the hearing officer dealt with appended claims that introduced additional features not mentioned in the main claim.  In the present case each appended claim simply qualifies features already mentioned in the main claims. 

The inclusion of all the claimed features of the press belt in the main claims suggests it is a characteristic of the main claims that they are limited to what is expressly defined therein and that there are no other integers.  That is, the press belt consists of only the subsequently defined features.  On the other hand it does not necessarily follow that, because all the appended claims simply qualify features already mentioned in the main claims, there are consequently no further possible features of the press belt.  For instance the claims could have further defined the spacing between the crosswise and lengthwise yarns so that elastomeric material has sufficient space to compress when the belt is bent against the press shoe.  Consequently I am not prepared to say the main claims and appended claims of the application have completely exhausted all possible features of the press belt.  The General Clutch (supra) decision states the word "comprising" as meaning "consisting of" the following parts as essential elements of a spring clutch.  In the present case I adopt a similar position.  That is, in the context of the claims of the specification, the word "comprising" means "consisting of" in the sense of the press belt having the subsequently defined features as its essential elements.

Mr Smeeton suggested the claims are not clear or fairly based on the description of the invention because of the claims' use of the word "comprising" compared with the description's use of the words "consisting of".  From the above interpretation of the substantial equivalence of the words in the present case, it follows that this issue is no longer pertinent.

With the above in mind I will now determine whether the invention as claimed in the claims of the specification is novel.

NOVELTY

The Meyers Taylor Pty Ltd v Vicarr Industries Ltd decision, (1977) 137 CLR 228, provides an appropriate test for novelty. The test is also known as the "reverse infringement test". Aickin J., at page 235, states:

"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."

The Rodi and Wienenberger AG v Henry Showell Ltd decision, (1969) RPC 367, states that infringement occurs where each and every one of the essential features of a claim is taken.

A practical application of the above decisions suggests a claim lacks novelty if a prior citation discloses all of the essential features of a claim.  I will apply this test to the present case.

At the hearing Mr Smeeton confined his assertions of lack of novelty to claims 1 to 4 of the present specification.  In this respect he relied primarily on two of Mr Mead's exhibits.  The first is US patent 4238287.  The second is German patent DE 3827486.

US 4238287

Mr Smeeton stated this patent discloses a press belt with a longitudinal reinforcing layer and two layers of crosswise reinforcing material.  He referred to column 5 lines 9-18 to further state the two layers of crosswise reinforcing material may be located on opposite sides of the longitudinal reinforcing layer or both crosswise layers may be on the same side either above or below the longitudinal layer.  Mr Smeeton submitted claim 1 is clearly not novel.

Mr Schieber conceded that if the word "comprising" is interpreted non-exhaustively then the US patent would anticipate claim 1 of the present application.  However he submitted if his suggested exhaustive construction of "consists solely of" applied, then claim 1 would be novel.  With the latter interpretation Mr Schieber's reasoning was that claim 1 is restricted to only one each of a lengthwise yarn layer and a crosswise yarn layer.  On the other hand US 4238287 discloses a longitudinal layer and two crosswise layers.  Mr Schieber submitted the two crosswise layers took the US patent outside the scope of claim 1.  He also offered if necessary to amend the claim to replace the word "comprising" with "consisting of".

Both parties appear to agree on what is disclosed by the US patent.  The specific embodiment disclosed in the US patent illustrates a layer of longitudinal or lengthwise reinforcing yarns sandwiched between two crosswise reinforcing layers.  Additionally though the US specification states (column 5 lines 9-13) the two crosswise layers could be located both on the inner side of the longitudinal layer or both on the outer side of the longitudinal layer.

In the present case I have previously interpreted the word "comprising" as meaning "consisting of" any subsequently defined features as essential elements.  In respect to the yarn layers, the features and essential elements of claim 1 are a press belt with a crosswise layer on the outer side of a lengthwise layer.  At least the latter embodiment of the US patent discloses such an arrangement.  There may also be a second crosswise layer.  However that is by the way.  The US patent at least discloses one crosswise layer in the requisite position relative to the lengthwise layer. 

In the light of the above interpretation, Mr Schieber's offer to amend claim 1 to replace the word "comprising" with the words "consisting of" would not save the claim.  The present claim 1 requires something more expressive than the mere substitution of one of these terms for another.

I conclude claim 1 is not novel over US patent 4238287.

Mr Smeeton further submitted that claims 2 to 4 defined features that were either disclosed in the US patent or were part of the common general knowledge.  He particularly referred to Mr Mead's comments that multi-filament and monofilament yarns are very well known as is the use of polyurethane as the elastomeric material.  Mr Schieber did not dispute any of these comments.

Mr Mead may appear to be referring to the present state of the common general knowledge rather than the situation at the priority date of the claims.  However I am prepared to accept yarns of both multi-filament and monofilament type would have been common general knowledge at the priority date in 1994.  In respect to the elastomeric material the US patent suggests the use of polyurethane as a suitable elastomeric material.

I conclude the invention as claimed in claims 2 to 4 is not novel over US patent 4238287.

DE 3827486

Mr Mead included German patent DE 3827486 as exhibit JM11 with his declaration.  The German document is accompanied by an English translation although there is no verification of that translation.  Consequently the veracity of the translation may be in doubt.  Mr Schieber did not raise this as an issue.  He discussed the contents of the translation at some length in defending the claims of the present application.  In this light it appears Mr Schieber accepted the translation as authentic.  I am prepared to similarly accept the translation as being consistent with the disclosure of the German patent.

Mr Smeeton stated the translation discloses a procedure where monofilament or multi-filament longitudinal threads are introduced onto the surface of an underlayer simultaneously during the coating of the underlayer with a pre-polymer mixture such as polyurethane.  Transverse or crosswise threads may also be incorporated into the press band and may be either outside or inside the longitudinal threads.  Mr Smeeton specifically referred to pages 18 and 19 of the translation to state that, in one embodiment during manufacture, the press band has de-watering channels formed on its inside, and subsequently the press band is turned inside out leaving the crosswise threads outside the longitudinal threads. 

Mr Schieber stated the German patent discloses a press belt having a configuration similar to that of the Voith belt.  The relative disposition of the crosswise and lengthwise reinforcing layers of the belt is reversed compared with the belt of the presently claimed invention. 

The translation of the German patent discloses transverse or crosswise threads worked into a press band with longitudinal threads deposited on the crosswise threads prior to coating with an elastomeric coating material.  The crosswise threads are supported by distance elements that keep the threads at a distance from the roller surface or underlayer during the coating process.  After completion of the coating, the distance elements are removed to form de-watering channels.  Subsequently the press band is reversed due to the fact that the de-watering channels must lie on the outside.  The reversal of the press band places the crosswise threads outside the longitudinal or lengthwise threads.  This arrangement is equivalent to that claimed in the present claim 1.

I conclude claim 1 is not novel over DE 3827486.

In respect to claims 2 to 4 of the application, the German patent discloses the longitudinal threads as being monofilament or multi-filament yarns.  Additionally the elastomeric coating material is a pre-polymeric mixture such as polyurethane.  Consequently I conclude claims 2 to 4 of the application are also not novel over DE 3827486.

INVENTIVE STEP

Under sections 7(2) and (3) of the Patents Act, inventive step is presumed unless it is demonstrated that the invention is obvious. The assessment of obviousness may be made against common general knowledge alone, or together with information that was publicly available and which a person skilled in the relevant field in Australia could be reasonably expected to have ascertained, understood and regarded as relevant before the priority date.

An appropriate test for inventive step is whether a person skilled in that field, and 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 (Wellcome Foundation Ltd v VR Laboratories (Aust.) Pty Ltd, (1981) 148 CLR 262 at page 286).

Common General Knowledge

Mr Smeeton cited the Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd decision, 144 CLR 253 at 294, to state that patent specifications may form part of the common general knowledge in a particular trade. He also relied on Mr Mead's declaration to say that in the present art, people involved in the field were routinely provided with and read relevant patent specifications. Consequently Mr Smeeton stated the patent specifications cited in the present case form part of the common general knowledge in Australia in the press belt field.

The British Acoustic Films Ltd v Nettlefold Productions decision, (1936) 53 RPC 221 at page 250, considered whether material disclosed in publications would constitute common general knowledge in the art. This decision held that

“a piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less merely because it is widely circulated.  Such a piece of knowledge only becomes common general knowledge when it is generally known and accepted without question by those who are engaged in the particular art.” 

The General Tire & Rubber Company v Firestone Tyre & Rubber Company Ltd decision, (1972) 89 RPC 457 at page 483, regarded the words “accepted without question” as putting the position rather high. This decision held the words, “generally regarded as a good basis for further action”, would be more appropriate.

In the present case the issue is whether patent specifications rather than a scientific paper have been so widely circulated, read and generally regarded as to constitute common general knowledge.

In his declaration Mr Mead states the technology relating to paper manufacturing machines and associated equipment is highly specialised and the best sources of technical information in this field are technical brochures, information from conferences and seminars, and patent literature.  He also states one of his roles is to receive and review patent specifications in the field.  Mr Mead further believes that relevant patent specifications would be well known to others in the field. 

This may suggest patent specifications in this field form part of the common general knowledge.  On the other hand one person widely reading and reviewing relevant patent specifications and stating a belief that others in the industry would do likewise is significantly short of making such information common general knowledge.  The British Acoustic (supra) decision clearly states that wide readership is not enough.  In the light of this decision and the General Tire (supra) decision such information must be generally regarded as a good basis for further action before it becomes common general knowledge.  As Mr Schieber stated, in the present case there is no independent corroboration of the general regard that others in the industry had of this information.  In the present case there is insufficient evidence before me to demonstrate that any particular patent specifications are so generally regarded as to be part of the common general knowledge. 

Mr Smeeton further noted that Mr Mead states that only two companies, Voith and Albany, supply press belts of the claimed type in Australia.  Mr Smeeton consequently submitted that the knowledge of people in these two companies alone constitutes the common general knowledge in Australia.

This may suggest the circulation and general regard of information does not have to be wide in this field.  On the other hand the evidence is largely silent in respect to any information being generally regarded as a good basis for further action by people in these two companies.

Mr Smeeton stated that if I did not accept that patent specifications in this field were part of the common general knowledge then at least the two prior patents (US 5134010 and US 5238537) mentioned in the background portion of the present specification were part of the common general knowledge.  He relied on the Bristol-Myers Squibb Company v FH Faulding & Co Ltd decision, 46 IPR 553, to support this statement.

The Bristol-Myers (supra) case states, at page 564,

"If a patent application, lodged in Australia, refers to information derived from a number of prior publications referred to in the specification or, generally, to matters which are known, in our view the court - or the commissioner - would ordinarily proceed upon the basis that the knowledge thus described is, in the language of s 7(2) of the 1990 Act, part of the common general knowledge as it existed in the patent area."

This passage from the Bristol-Myers (supra) decision does not suggest that the whole information in the prior publications forms part of the common general knowledge.  Instead it is that information, from these sources, as it is presented on the face of the present specification that may be common general knowledge.

The University of Georgia Research Foundation Inc v BioChem Pharma Inc decision, [2000] APO 68, also discusses the above passage from the Bristol-Myers (supra) case.  In the words of the University of Georgia (supra) case, if information is stated [in a specification] to be common general knowledge or can reasonably be inferred to be common general knowledge, then the commissioner can accept that conclusion without any further evidence.  It is not correct to say that every piece of prior art referred to in the specification is part of the common general knowledge. 

The introductory part of the present specification describes two US patents as representing the closest prior art.  The specification states that one patent (US 5238537) describes a belt construction wherein the reinforcing material consists of a woven paper machine fabric which is impregnated from one side with polyurethane material.  The specification states the other patent (US 5134010) discloses a press belt that is constructed on the outside of a casting cylinder.  The press belt is formed by first laying a plurality of crosswise reinforcing yarns at a distance from the outside of a casting form and then helically winding a lengthwise reinforcing yarn around the crosswise yarns.  Elastomeric material is then fed over the yarn layers.  The crosswise yarns are adjacent the inner surface of the belt while the lengthwise yarn is adjacent the outside surface of the belt.  This positioning of the yarn layers is the reverse of that as claimed in the present application.

The prior information mentioned on the face of the specification is rather limited.  The information loosely describes two forms of press belts.  Furthermore there does not appear to be any assertion that the prior information was part of the common general knowledge in Australia.  In the light of the information on the face of the specification and the available evidence before me, I am only prepared to say that the following was common general knowledge in Australia at the priority date of the present application.

Press belts typically comprised a base weave covered on both sides and impregnated with elastomeric material.  The base weave acted as a reinforcing material to add strength to the belt.  The reinforcing material could be in the form of multi-filament or monofilament yarns.  Polyurethane was a commonly known elastomer for shoe-type press belts.

Assessment of Claims 1 to 4 in Respect to the Voith Belts

Mr Smeeton stated that claims 1 to 4 of the application lack inventive step over the Voith belts.  Examples of prior disclosures of these belts are US patents 5118391, 5134010 and 5302251. 

The Voith belts disclosed in these patents have crosswise and lengthwise reinforcing yarns whose relative disposition is opposite to that of the claimed invention.  That is, the lengthwise yarns are on the outer side of the crosswise yarns.

Mr Mead states that if the Voith belts were turned inside out they would be exactly the same as the belt of the claimed invention.  On the other hand Mr Schieber referred to Mr Jermo's evidence and to US patent 4889674 (cited by Albany) to highlight the problems of reversing of press belts.  The main problem appears to be the risk of considerable damage to the belt that might be caused by reversing the belt.

In assessing inventive step, it is irrelevant whether a prior belt would be exactly the same as that of the claimed invention if the belt were simply turned inside out.  The proper question is whether a person skilled in the field would have taken the step of reversing the belt as a matter of routine before the priority date of the application.  In view of the problems highlighted if the belt were reversed I cannot see how a person skilled in the field would have contemplated such a step.  Moreover Albany has not presented evidence to demonstrate such a step would have been a matter of routine for a person skilled in the field. 

Mr Mead states this is how Albany belts are manufactured.  That is, once the belt and its internal reinforcement has been formed the belt is turned inside out to adopt its in use configuration.  Once again Albany has not presented evidence to demonstrate this.

I conclude claims 1 to 4 of the application are inventive over the Voith belts.

Assessment of Claims 1 to 4 in Respect to US 4238287 and DE 3827486

The present specification further outlines the following problems with the Voith belt, particularly referring to the belt disclosed in US 5134010.  A complicated device is required to helically wind the lengthwise yarn on top of the crosswise yarns.  Secondly the resulting belt is not elastic enough to withstand the repeated flexing in the press because the outer layer of helically wound lengthwise yarn causes the inner crosswise yarns to press together.  In this respect the disclosures in US 4238287 and DE 3827486, mentioned previously, in which the crosswise yarns are on the outer side of the lengthwise yarns, overcome the above-mentioned problems.  Moreover, as mentioned previously, there is no difference between the disclosures of these patents individually and the invention as claimed in claim 1 of the present application.

I conclude the invention defined in claim 1 of the application lacks inventive step over the disclosures in US 4238287 and DE 3827486 individually.

The use of monofilament or multi-filament yarns and the use of polyurethane as the elastomer were common general knowledge at the priority date of the application and are disclosed in one or both of US 4238287 and DE 3827486.

Consequently claims 2 to 4 also lack inventive step over these documents.

Assessment of Claims 5 to 10

In respect to claims 5 to 10 of the application Mr Smeeton stated that claim 5 lacks inventive step over the disclosures in US patents 4889674, 5118391 5134010 and 5320702.  The last of these patents was published after the priority date of the present application.  Since that date is not in dispute I am prepared to state the last patent is excluded.

Mr Smeeton described the relative disposition of the yarns in US 5118391 and US 5134010.  These patents disclose Voith belts and the disposition of the yarns is reversed from that claimed in claim 5 of the present application. 

I have already found the presently claimed invention is inventive over the Voith belts in respect to the relative disposition of the yarns.

Mr Smeeton further stated the process claimed in claim 5 of the application is the same as that disclosed in these US patents except the claimed process is carried out inside a casting cylinder rather than outside a cylindrical mandrel.  In this light Mr Smeeton referred to US patent 4889674 which discloses the placement of a reinforcing material within a centrifugal tube.  Mr Smeeton relied on his categorisation of these patents as all being part of the common general knowledge and on the total disclosure of them to state that claim 5 lacks an inventive step.

Since I have found earlier that Albany has not sufficiently demonstrated that the US patents were part of the common general knowledge at the priority date, the patents must all be considered individually.

In respect to US 5118391 and 5134010 Mr Mead states the contrast between the steps of the claimed invention being carried out inside a casting cylinder as opposed to the outside adds nothing to the body of knowledge known before the priority date in 1994. 

Mr Jermo states the two manufacturing processes are totally different.  The Voith belts are cast on the outside of a mandrel with the mandrel rotating at very low speed.  At such speed the polyurethane resin employed must cure very fast to prevent it dropping off the mandrel.  The belt of the present application is cast on the inside of a casting cylinder rotating at high speed.  The centrifugal force forces the elastomer to the mould surface and allows for practically any curing speed for the elastomer.  Mr Schieber further submitted that Albany has failed to establish the claimed and different manufacturing method would have been the obvious choice of a person skilled in the field.

This analysis suggests the two processes are significantly different.  The casting occurs on opposite sides of a casting cylinder at quite different speeds that in turn achieve different outcomes.  Consequently it appears the differences cannot be dismissed as lightly as Mr Mead suggests in saying that one process does not add anything over the other to the body of knowledge.  Moreover Albany has not presented evidence to demonstrate that the transfer of the manufacturing process from the outside to the inside of a casting cylinder would have been done as a matter of routine or an obvious choice by a person skilled in the field.

US patent 4889674 discloses the placement of a reinforcing material within a centrifugal tube.  On the other hand the patent is silent in respect to the relative disposition of reinforcing yarn layers.

I conclude the invention as claimed in independent claim 5 and similarly independent claim 8 is inventive over any of the cited prior art considered individually.  Consequently appended claims 6, 7, 9 and 10 also define inventive subject matter.

MANNER OF MANUFACTURE

The NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd decision, (1995) 32 IPR 449, and the Bristol-Myers (supra) decision state the present position in respect to a threshold requirement of inventiveness.  The latter case at page 564 appears to affirm the decision in the former case.  If, on the basis of what was known, as revealed on the face of the specification, the claimed invention was obvious or did not involve an inventive step, then the threshold requirement for an invention to be apparent on the face of the specification is not met. 

Mr Smeeton submitted the presently claimed invention is a mere collocation of known integers.

The known press belts as described on the face of the specification either do not have the elaborate yarn structures claimed in the present application or have the yarn structures reversed. Consequently significant integers of the claimed invention are apparent from the specification as being more than what the specification describes was known before the priority date.  Clearly the claimed invention is directed to more than just a mere collocation of known integers.  Furthermore the prior art submitted by Albany also fails to establish the claimed invention was already known. 

I conclude the claimed invention has the requisite threshold of inventiveness and consequently is directed to a manner of manufacture.

CLARITY AND FAIR BASIS OF CLAIMS

I have dealt with the issues concerning the words "comprising" and "consisting of".

Mr Smeeton further noted the specification on page 2 states that separate layers of crosswise and lengthwise reinforcing yarns are laid on top of each other.  He submitted this calls for the yarns to be in abutting relationship with one another.  Mr Smeeton noted claims 1 to 10 are not so limited.

Mr Schieber stated that yarns laid on top of each other did not necessarily mean touching each other.  He further referred to page 5 of the specification to state there may be varying distances between the yarn layers.  Mr Schieber similarly suggested that the casting steps outlined on pages 6 and 7 for the two yarn layers with an elastomer operation in between suggests the yarn layers do not abut each other.

There is ample support for the principles that the specification is to be read as a whole and be given a purposive construction.  See for example Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd, (1960) 77 RPC 59, Welch Perrin and Co Pty Ltd v Worrel, (1961) 106 CLR 588, Catnic Components Ltd v Hill & Smith Ltd, [1982] RPC 183, and Décor Corporation Pty Ltd v Dart Industries Inc, 13 IPR 385. The expression, "separate layers of crosswise and lengthwise reinforcing yarns laid on top of each other" (page 2), read in isolation may suggest the yarn layers abut each other. As Mr Schieber noted though, the present specification describes embodiments of the invention where the crosswise and lengthwise reinforcing yarns are not necessarily in contact with each other. Consequently interpretation of the broadest form of the invention must give effect or purpose to these embodiments as well as any other disclosed embodiments. This suggests the above expression must include the meaning that the yarn layers do not contact each other as well as the meaning that they do. Consequently I interpret the expression to mean one yarn layer is over the other. The definitions in the claims of the adjacency of the yarn layers respectively to the inner and outer surfaces of an endless loop press belt adequately define this interpretation.

Mr Smeeton raised a couple of further less important challenges against the clarity and fair basis of the claims.  I am satisfied there is little of substance for Tamfelt to address on these points.

I conclude the claims of the application are clear, and fairly based on the material described in the specification.

CONCLUSION

Albany has been successful in its opposition to the present application. 

The successful grounds are that claims 1 to 4 of the application are not novel and lack inventive step over certain items of prior art.

To overcome these findings I allow Tamfelt sixty (60) days from the date of this decision to propose amendments to the specification.

If suitable amendments are not proposed within that time I will refuse the application.

COSTS

Both parties submitted that costs should follow the event.  I see no reason to depart from this practice in this case.

I award costs against the applicant, Tamfelt Oy AB.

M. G. Kraefft

Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Watermark, Sydney

Patent attorneys for the opponent   :  Davies Collison Cave, Sydney