Tetra Pak International AB v J. Gadsden Pty Ltd

[1987] APO 35

In the Matter of the Patents Act 1952

‑ and ‑

In the Matter of Application No. 530946 for a Patent by TETRA PAK INTERNATIONAL AB

‑ and ‑

In the Matter of Opposition thereto under Section 59 by J. GADSDEN PTY. LTD.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
         Tetra Pak International AB (Tetra Pak) lodged Application No. 530946 on 30 January, 1979, claiming a Convention priority of 30 January, 1978 based on Swedish Application No. 7801067‑5.  The application was advertised accepted in the Official Journal of 4 August, 1983.  J. Gadsden Pty. Ltd. (Gadsden) lodged notice of opposition on 6 February, 1984 and by 6 December, 1984 had served its evidence in support in full.  In response, before serving its evidence in answer, Tetra Pak lodged on 5 June, 1985, a request under section 77 to amend the complete specification.  This request was allowed, and the allowance was notified in the Official Journal of 7 November, 1985.  Service of evidence was completed by 6 April, 1987 and the matter came to hearing on 12 August, 1987 in the Melbourne sessions.
         At the hearing Mr. Bruce Caine of Counsel advised by Mr. S. Plymin, patent attorney of Edwd. Waters & Sons, appeared for Tetra Pak and Mr. David Shavin of Counsel, advised by Mr. G. Chambers, patent attorney of Phillips, Ormonde and Fitzpatrick appeared for Gadsden.

Grounds of Opposition
         Whereas the notice of opposition includes all major grounds available under section 59, the evidence and submissions are essentially concerned with three issues only, viz. section 40, novelty and obviousness.
The Specification (as amended under Section 77)
         The specification is concerned with:

"a machine for the application of drinking straws or suction tubes to prefabricated packing containers which suction tubes are wrapped in protective casings and are arranged so as to be supplied to the machine in the form of a continuous band."

The description explains that:

"Fruit juices and the like at present are frequently packed in non‑returnable packages in portion‑size, which are intended to be emptied with the help of a suction tube.  The suction tube for reasons of hygiene is usually wrapped in a protective paper or a protective casing and is supplied together with the package, either separately or joined in one way or another to the packing container.

The suction tube or the suction tube casing may be attached for example by means of tape or the like to the outside of the packing container.

The attachment of each individually wrapped suction tube to the wall surface of the packing container had to be carried out hitherto mainly by hand, since the mechanical handling of the very light suction tube was found to cause great difficulties.  The mechanical handling can be made easier, however, if the suction tubes, after they have been enclosed in the individual casing, are joined together in such a manner that a continuous band of suction tubes is formed.  The individually wrapped suction tubes are separated from this band only in connection with the application to the individual packing containers.  This concept is described in detail in the Swedish patent application No. 7613372‑7, to which reference is made."

The object of the invention is simply expressed as:

"to provide a machine for the application of drinking straws or suction tubes to prefabricated packing containers."

There is a consistory statement in terms corresponding to those of claim 1 followed by a number of statements of preferred constructions of the machine.  The description of the preferred embodiment with respect to two figures of drawings follows.
         Claim 1 is the only independent claim.  It reads:

"Apparatus for the application of suction tubes to prefabricated packing containers wherein said tubes are wrapped in protective casings and arranged parallel to each other across and spaced along a continuous band, said apparatus comprising:

(i)conveying means to convey packing containers along a predetermined path;

(ii)adhesive applying means to apply adhesive patches to the packing containers conveyed by said conveying means;

(iii)supply means to supply the continuous band of said suction tubes to a location adjacent said predetermined path;

(iv)separating means to separate individual suction tubes from said continuous band;

(v)advancing means to advance said separated individual suction tubes;

(vi)orientating means to orientate each said separated individual suction tube and a said packing container arranged on said conveying means to align said suction tube with the adhesive patches on said packing container; and

(vii)attaching means to move said suction tube, after orientation by said orientating means, into contact with the adhesive patches to attach the suction tube to the packing container."

[The numeration of the seven features in claim 1 does not appear in the specification ‑ I have done this here for the sake of convenience].
         Because of the nature of the opponent's submissions and evidence, it is necessary to consider the invention in some detail.  In doing so I will refer to Figures 1 and 2 of the drawings reproduced below:

In terms of claim 1, the drawings (as supported by the description) illustrate the following:

(i)"conveying means to convey packing containers along a predetermined path";

The containers (1) are transported by means of a conveyor belt (2) to a transfer unit (3) which moves them successively to a feed track (6) leading to the apparatus which attaches the suction tubes.

(ii)"adhesive applying means to apply adhesive patches to the packing containers ...";

Visible in Figure 1 is an adhesive applicator (21) adjoining the feed track (6) and having an applicator nozzle (22) ‑ the unit is stated in the description to be able "to apply adhesive, e.g. of the "hot‑melt" type ..." to the sides of the containers (1).

(iii)"supply means to supply the continuous band of said suction tubes to a location adjacent said predetermined path";

A magazine roll (12) provides a supply of tubes, individually wrapped in casings, in the form of a continuous band (9).  There is a driving mechanism (14) for the band (9) and surrounding elements.

(iv)"separating means to separate individual suction tubes from said continuous band";

These means are constituted by a piston and cylinder unit (18) and a knife element (19) which comprises a yoke (27) and a pair of knives (28).

(v)"advancing means to advance said separated individual suction tubes";

This particular means comprises part of the drive mechanism (14) referred to in (iii) above.

(vi)"orientating means to orientate each said separated individual suction tube and a said packing container arranged on said conveying means to align said suction tube with the adhesive patches on said packing container";

In the context of this invention, it is clear that "orientation" is used in its broadest sense to mean movement into correct position.  The separated suction tubes are moved (after passing by the knife element (19)) from a position remote from the feed track to a position adjacent a container on the feed track for attachment thereto.  During the course of this movement the tubes are also moved in a vertical sense into the correct vertical location ‑ this is achieved by means of the tubes (in their respective casings) passing between the surfaces of two "orienting (sic) devices" (16 and 17) with the ends of the casings being in contact therewith as readily seen in Figure 2.

The containers are also orientated as they move with the feed track (6).  Thus as each packing container element (7) moves (to the left in Figure 1), the first leg thereof (8) is raised at an angle to the horizontal plane until the element assumes such a position that the diagonal line of the packing container side is substantially vertical.  This enables fixing of the suction tube (which is longer than the depth of the container) along that diagonal line, as the suction tube is in a vertical position correctly located by means of the mechanism (14) and the two so‑called "orienting devices" (16 and 17).

(vii)"attaching means to move said suction tube, after orientation by said orientating means, into contact with the adhesive patches to attach the suction tube to the packing container".

This feature is constituted by a transfer device (20).

Novelty
         There are numerous items of documentation including foreign patent specifications on file; in my view, none of these anticipate any of the claims of the Tetra Pak application, and I do not propose to review them here.
Obviousness
         Mr. Shavin has made two attacks under this heading, the first being typical of this ground of opposition and being based on the evidence adduced by Gadsden, the second deriving from an argument based on the perceived admissions in the Tetra Pak specification about the inventive step.
         The first attack is supported by Mr. Roger McLean Powell, a technically qualified employee of Gadsden having managerial responsibility for its asceptic packaging systems production.  In his evidence, Mr. Powell reviews the state of knowledge in Australia as it was before the priority date of the claims, i.e. 30 January, 1978.  In doing so, he refers to various classes of packaging procedures including fixing keys to cans and labels to bottles, which he says are analagous to the fixing of a suction tube to a container of fruit juice or other drink; in addition he refers extensively to various patent specifications and other documents.  In respect of the patent specifications he deposes as follows:

"It is the practice of J. Gadsden Pty. Limited and was the practice of Australian Consolidated Industries during the period of my employment with that company to watch Australian and overseas patent specifications that become open to public inspection and to direct relevant material to the attention of employees.  I am therefore familiar with patent literature in the field of packaging and packaging machinery."

It may be that this statement is intended to imply that the patent specifications in evidence formed part of the common general knowledge at the relevant date.  If so, this is something I cannot accept.  Firstly, it is not clear that the particular patent specifications on file fall within the class of specified "relevant material".  Secondly, it does not necessarily follow that because A.C.I. and Gadsden directed relevant material to their employees, this material became part of the common general knowledge in the art; and in this respect I note particularly the last sentence in Mr. Powell's statement.
         Mr. Shavin's second attack is based on what he perceives as the admitted prior art at page 2 of the Tetra Pak specification, which is reproduced earlier in this decision.  At that page reference is also made to Swedish patent specification 7613372‑7 (412042).  This specification together with a verified translation constitutes exhibits 2 and 3 to the declaration of Mr. Powell dated 7 November, 1984.  It describes a supply arrangement of suction tubes for attachment to containers wherein the tubes are fixed in equally spaced parallel positions along a pair of bands, the tubes and bands being rollable or pleatable to form a "magazine pack".  In application the magazine pack feeds via a driven sprocket to a knife means which cuts the bands to separate the tubes before or after attachment to respective containers.  The drawings are schematic, and the only apparatus disclosed is a basic sprocket and knife means.  The specification does say that using this arrangement it is possible in a "simple manner" with "automatic machines" to attach the tubes to their containers.
Mr. Shavin submitted that taking account of this the present application is directed to a problem already solved in the Swedish specification, and has merely applied well known "automatic machines", as referred to therein, to operate on the magazine pack. Thus having regard also to the evidence on file about such machinery there is no inventive step and the ground of obviousness must be established. He supported his argument by referring to the law expressed in Sonotone Corporation v. Multitone Electric Company Ltd. 71 RPC 299 at page 312 in which the High Court made the following statement:

"The last ..... ground of attack is that the invention, so far as claimed, is obvious and involved no inventive step .....  The essential features of the invention, as extractable from the main claim, have already been detailed, and it remains to define the step between the aggregation of these features ..... and the sum of prior knowledge and use so as to provide the basis for estimation of the ingenuity required to make it.  This may require a close and precise study of the cited prior art, but if, as sometimes happens, the specification itself includes a resume of the known art to which the inventor says he proposes to apply his ingenuity, it becomes wholly unncesssary to confirm the correctness of his acknowledgment, for the patentee must be bound by his own recital, which recital, it may be noted, may itself provide the reason for the absence of citations which would establish it in the absence of admissions.  Similarly, if the specification should express the discovery which the patentee believes himself to have made, it would be reasonable to construe the document, should the true import of the language so permit, so as to find the inventive step co‑extensive with the stated discovery."

Mr. Shavin referred also to the judgement of the Court of Appeal on the same matter which appears at 72 RPC 131; the following extract appears at pages 140‑141:

"Reference was made to some observations of Clauson, J., in the case of Chapman & Cook v. Deltavis Ld. (1930) 47 RPC 163, at p.173, where the learned Judge said: "But of course, if a patentee though entirely erroneously, does state by way of what I may call recital in his specification that a particular form of thing is common and then by some oversight or some mistake claims a monopoly in that particular form of thing he will have, so to speak, recited himself out of court and I venture to doubt whether he could possibly maintain any claim to a monopoly in a thing which he has recognised to be something which existed". .....

..... It may well be that as between a patentee and the Crown, at any rate, a clear admission of the state of the prior art on the basis of which a particular monopoly had been claimed and granted, could not subsequently be withdrawn or modified.  But it does not seem to us necessarily to follow that in a case like the present where, we are assuming, an admission is made as regards some integers of a combination for which a monopoly is claimed, the patentee could not in an infringement action resile from this admission to the extent of attempting to show that some particular feature or integer or some particular combination which on this view he must be taken to have included in the known prior art was in fact not old or known at all."

In my view, this second attack of Mr. Shavin's does not succeed. Firstly, the law to which he refers relates to the situation where there has been grant of letters patent made on the basis of a particular specification including recitation of alleged prior art, whereas the circumstances we are dealing with here concern an application which has yet to proceed to grant. In this respect I refer to the judgement in Montecatini v. Eastman Kodak (1971) 45 ALJR 593, wherein Gibbs J. in following a line of English precedent indicated that the jurisdiction to refuse a patent in opposition proceedings, at least on the ground of obviousness, should be exercised only in clear cases. This is also consistent with some earlier Australian judgements, such as McGlashan v. Rabett 16 ALR 43 and Stamp v. Powell (1918) CLR 339 wherein it was considered that the onus is on the opponent to show that the patent if granted would be clearly bad on the ground alleged. Secondly, it does not appear that this particular law has been finally decided. Thus the Court of Appeal in their judgement (supra, at page 140) went on to state:

"It is, however, unnecessary for us to express a final opinion on this matter, for we feel no doubt upon the evidence, as will later appear, that all that is contained and described in the paragraph in question was in fact well‑known by those skilled in the relevant art at or before the date of the specification.  And in any case it is, we think, necessary to see what that state of knowledge was.  For, assuming that the paragraph under discussion was rightly held by the learned Judge to be, and to be intended as, a statement of the existing state of knowledge, we are not satisfied that in the result the Patentee must be taken necessarily and conclusively to have so admitted and to be, as it were, estopped against the Defendants from asserting the contrary in any respect."

On the other hand, in the present case, as the Swedish specification did not become open to public inspection in Australia until 24 April, 1981, more than three years later than the priority date of the claims in suit, and incidentally, almost 21 months later than the Tetra Pak application, it is hardly likely that its contents would have constituted part of the prior art as such (i.e. in the absence of any evidence to the contrary).
         In the result there is little common general knowledge on file proven to my satisfaction; most certainly, although I accept Mr. Shavin's general submissions about the machines which solder keys to cans and those used in bottle labelling operations, there is insufficient expert evidence before me to show that the claims of the Tetra Pak application ought to fail on the ground of obviousness.
Section 40
         According to Mr. Shavin, the difficulty here lies with feature (vi) of claim 1 which defines orientating means.  He argued that this feature is defined ambiguously, and is clearly not limited to an arrangement in which there are two separate orientating means, one for the tubes, and one for the containers.  Consequently, the claim is not fairly based.  He emphasised that the latter arrangement is the only one disclosed, or even contemplated in the specification.
         Earlier in this decision I have considered feature (vi) in relation to the preferred embodiment of the invention.  To recapitulate, the tubes are orientated by being moved past the knife element to a location adjacent the feed track carrying the containers, and at the same time they are vertically positioned by an upper and a lower guide device; the containers are orientated by being moved to the location at which a tube will be affixed thereto and at the same time are rotated whereby the tube which is held vertically will be affixed along a diagonal dimension of the container.  Clearly, in the embodiment, there are two distinct sets of devices, one of which orientates the tubes, the other of which orientates the containers.  Synchronization of the mechanisms is, of course, essential, and in mechanical equipment of this class it is common knowledge that this is most simply and most usually done using mechanical interconnections, the whole being driven from a common power source.  The Tetra Pak specification does not describe any such details but I am in no doubt whatsoever that a person skilled in the relevant art would assume it to be so.  It might then be argued that there was a single orientating means but having parts which operate to individually orientate the respective tubes and containers.  Consequently, I think that the point to be determined here is not whether one or two orientation means is or are an essential feature of the invention, as argued by the opponent, but rather whether such orientating means as there are should be limited to orientating both the tubes and the containers, or not.  In fact, I think it is necessary to go further than this, because of the general way the dictionaries define the act of "orientation".  Thus this word requires relativity between at least two things, and furthermore, does not require that one or both of those things be rotated in order for orientation to have taken place.  Thus whereas in the embodiment described the act of orientating a respective tube and container involves both translation and rotation of each, the claim is not so limited, and requires only that one be moved into position with respect to the other, for the operation of mutual attachment.

In the determination of fair basis of a claim on the matter described in the specification reasonable tests to use are those set out by Lloyd‑Jacob J. in Re Mond Nickels Co.'s Application [1956] RPC 189, appropriately reworded:

(1)Is the alleged invention as claimed broadly described in the specification?

(2)Is there anything in the specification which is inconsistent with the alleged invention as claimed?

(3)Does the claim include as a characteristic of the invention a feature as to which the specification is wholly silent?

Upon consideration of claim 1 and the description in the specification it is my clear view that the answer to questions (2) and (3) is no.  Question (1) requires closer consideration.  There is a consistory statement in the description which is in terms substantially identical to those of claim 1.  Following this consistory statement are a number of statements of preferred constructions, before the commencement of the description referring to the drawings.  As Mr. Shavin has correctly pointed out, none of those statements nor indeed the description referring to the drawings describes apparatus in which only one of a tube or a container is moved for the purposes of orientation prior to mutual attachment.  Nevertheless, the consistory statement is not so limited.  While the mere repetition of a claim in the description ‑ as here ‑ might constitute an inadequate basis for that claim, it does provide an indication in the description that the invention is intended to be broader than the description of the preferred embodiment might of itself indicate.  When this indication is coupled with the established law that an applicant need only describe the best method of performance ‑ provided of course that the specification otherwise can be said to fully describe the invention ‑ it is my view that the invention as claimed is broadly described in the specification, and that the answer to question (1) (supra) is yes.  Consequently, I conclude that claim 1 is fairly based.
         I note that there is a clarity problem in claim 5.  The specification generally recognises that "orientation" means are not limited to means which produce a rotation, e.g. the slide devices which vertically position the suction tubes prior to the attachment step are referred to as "orienting" devices (see page 9) and claim 4 defines this arrangement thus:

"... said orientating means includes sliding surfaces ... to displace said suction tubes to a desired position ..."

Claim 5 however recites that:

"... said orientating means includes means to orientate said packing container carrier elements during the course of their movement ..."

The problem is that the "movement" is part of the overall orientation procedure, and consequently the meaning implied in this claim for "orientating" is not consistent with the usage in other parts of the specification.  As claim 6 (which appends only to claim 5) defines that the carrier elements are adapted to be pivoted it seems most likely that the "means to orientate" of claim 5 should in fact be defined as "means to rotate".  Normally this would not be a serious defect under section 40, however pursuant to the submissions made by the opponent in this action it is my view that this defect should be removed.
Conclusion
         I have found that the opposition has failed on all grounds, but that there is a defect in claim 5 which should be removed.  I allow the applicant 60 days from the date of this decision to propose amendments directed towards doing so.
         I award costs against the opponent.

(J.L. ROVETA)

Patent Attorneys for the Applicant : Edwd. Waters & Sons
      Counsel for the Applicant   : Mr. B. Caine

Patent Attorneys for the Opponent  : Phillips, Ormonde & Fitzpatrick