THE CONTINENTAL GROUP, INC.

[1986] APO 24

In the Matter of the Patents Act 1952

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In the Matter of Patent Application No. 87037/82 for Letters Patent in the Name of THE CONTINENTAL GROUP, INC.

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In the Matter of Examiner's Objections thereto.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
         This matter concerns an application for a patent entitled "CONTAINER HAVING PRIZE INDICIA ON THE INTERIOR THEREOF" lodged on 10 August, 1982.  The application is a Convention application claiming priority from a United States application dated 12 November, 1981.  Despite proposed amendments having been lodged, the examiner in the most recent report dated 7 February, 1986 has maintained an objection that the application is in respect of an invention that is not novel.  In earlier reports the examiner had also taken an objection that the application was not in respect of a manner of new manufacture.  The applicant has now requested under Regulation 19D that the Commissioner exercise his discretionary powers under section 52 in relation to this matter.
         The proposed amended specification commences thus:

"Background of the Invention

In order to stimulate the purchase of their products, manufacturers have developed various programs of prizes.  In the sale of beverages, the practice has been to imprint a concealed prize value under the cap or crown so that the purchaser is required to open the bottle before gaining access to the prize information, if any.  Purveyors of soft drinks in three‑piece cans have heretofore concealed legends on the interiors of the end members which, when after the product is consumed, are visible through the pour opening.

Several serious problems have arisen in connection with the security of such programs.  Complaints have been increasing of tampering of the product by the customers, employees and others.  The cap or crown would be lifted and either reapplied or discarded.  The small cap is easily concealable by the thief on his person and the integrity of the program is very difficult to monitor.  In three‑piece cans, the small prize‑

indicating end members must be guarded to prevent theft."

The present invention is said to provide a solution to the problems of the prior art by imprinting a prize indicia on the inside of the bottom of the container.  This makes it impossible to see the prize until all of the contents has been removed and only then is it visible through the opening made in the container to remove the contents.
         The specification continues with a discussion on one preferred form of the invention which is a drink can with a prize indicia of $1,000 printed on the inside of the bottom of the can.  The can described has a cylindrical side wall with an integral bottom and the top of the can is covered by an end member.  The end member is scored to define an openable segment which is adapted to be opened by a tab.  When the tab is lifted, the score is broken and the segment is hinged and pushed into the can to produce a pour opening.  After the contents have been consumed, the consumer can readily look through the pour opening into the can to see the prize indicia.
         There are eight claims included in the proposed amended specification and they read as follows:

"1.In combination with a container having a body wall an integral bottom end, a top end connected to the body and having an integral openable section and means for opening said section to provide a pour opening therein, and a prize indicia on the interior of said bottom end in a position visible through said pour opening after the disposal of the contents of said container.

2.The invention according to claim 1 wherein container is a can and said bottom end has a convex interior.

3.The invention according to claim 1 and wherein said indicia is imprinted on said bottom end and a transparent coating is applied thereover.

4.A purchase‑stimulating package comprising a container including a body and an integral end and having a prize‑

indicating means on the interior surface thereof, means for opening said container to provide a discharge opening in line of sight to said prize‑indicating means whereby upon discharge of the contents from the container, said prize‑indicating means is visible through said opening only.

5.The invention according to claim 4 and said container comprising top and bottom ends, and said means for opening said container comprising an openable segment located on said top end, and said prize‑indicating means being located on said bottom end.

6.The invention according to claim 4 and said prize‑

indicating means comprises an imprint and product‑isolating coating covering said prize‑indicating imprint.

7.The invention according to claim 6 and further authenticating means provided elsewhere on the container.

8.The invention according to claim 7 and said further authenticating means disposed on the exterior of the bottom end of the container."

The Examiner has maintained the objection that these claims lack novelty in the light of known containers.
         Claim 1 defines a container comprising a combination of features as identified in the claim : I note that the "means for opening" could be an element completely separate from the rest of the container.  Leaving aside the "prize indicia" feature for the moment, I interpret the claim to relate to a container of the general type which has in its top end an integral openable section, i.e. an openable section which can create a pour opening.  It is worth pointing out here that various known forms of containers, such as drink cans, soap powder packets, liquid dispensers, etc. are of this type and I am personally aware of their existence prior to 1981.  I am also aware that Australian Patent Specifications 533347, 518940 and 512257, all published before the priority date of the present claims, disclose containers, namely drink cans, of this type.  Claim 4 is directed to a package and in some respects is somewhat broader in scope than claim 1, e.g. the location of the discharge opening is not specified.
         I turn now to the question of novelty.  In the paragraph entitled "Background of the Invention" quoted earlier, reference is made to purveyors of soft drinks heretofore concealing "legends on the interiors of the end members" of three‑piece cans.  In my view, claims 1 and 4 include within their scope such very items and hence the claimed invention fails to exhibit any novelty over the admitted prior art.
         I will now consider the question of novelty having regard to known containers as raised by the Examiner.  In the second last paragraph above I referred to some known types of containers.  The only difference between these known types, all of which are openable to form a pour opening, and the invention defined by the claims is the inclusion in the latter on the interior thereof of a prize indicia or prize‑indicating means viewable through the pour or discharge opening after discharge of the contents.  The question before me is whether this difference is sufficient to confer novelty.  I note that the nature of the prize indicia is not specified and hence clearly could take the form of either a print of the actual prize value or a symbol or colour to indicate a prize and its value.
         It is the practice of this Office to use the test for novelty as set out by Dixon J. in Griffin v. Isaacs (1942) AOJP 739 which is:

"Where variations from a device previously published consist in matters which make no substantial contribution to the working of the thing or involve no ingenuity or inventive step and the merit if any of the two things considered as inventions is the same, it is, I think, impossible to treat the differences as giving novelty."

Hence I have to consider whether the difference or variation mentioned makes a substantial contribution to the working of the container.  The attorney for the applicant has submitted that because of the location of the prize indicia on containers of the present invention and the necessary removal of contents before the prize indicia becomes observable, the security problem associated with containers having such prize indicia is solved and thus there is a contribution to the working of the invention.  It may well be the case that the degree of tampering concerning containers of the invention may be diminished somewhat compared to previous arrangements since removal of the contents after opening of the container is a prerequisite for observation of the indicia.
         But the test for novelty hinges on whether the location of the prize indicia on these containers makes a substantial contribution to the working of the "thing", i.e. the container.  In this regard the container still operates or is operated on in exactly the same manner as would be the case if the prize indicia were absent or elsewhere located.  The container houses its particular contents which can be dispensed via the pour opening created by the openable section in the usual manner; neither the indicia nor its location has any effect on the way the container stores its contents, the way the container is openable or the way in which the contents are removed, i.e. the indicia makes no contribution (let alone a substantial one) to the working of the container.  As I further consider that the merit of the container of the present invention is no different to that of the known containers, I conclude that the invention defined by claims 1 and 4 lacks novelty.
          In submissions lodged on behalf of the applicant, some reliance has been placed on Fishburn's Application 57 RPC 245 to support the present application, the argument advanced being that the printing of the prize indicia on the interior of the container in a position viewable through the opening after the contents are emptied serves a mechanical purpose thus conferring novelty and patentability to the claimed invention. In Fishburn's Application, the printing arrangement on a ticket made it possible for the ticket to be divided in two different ways such that, irrespective of the way of division, all relevant information was retained on each portion.  This arrangement of printing was found to serve a mechanical purpose and the alleged invention was considered to be a "manner of manufacture", i.e. constituted patentable subject matter.
         In the present case, I cannot accept that the printing and its positioning on the container serves a mechanical purpose analogous to the situation in the Fishburn case as any purpose it serves is merely by way of information in no way related to the function of the container as a container.  The container is openable in the usual manner and once the pour opening is provided, anything inside the container whether it be its contents or printing on, or colouring of, the inside surface of the container is naturally observable through the pour opening.  The fact remains that the indicia, irrespective of its unusual location in this case or the prize value which it might indicate, does not affect the container, the manner of its use, or its normal performance as a container.
         The attorney for the applicant has indicated that a US Patent has been granted on the US application corresponding to the present application and submits that the invention in Australia ought to be correspondingly patentable. However the granting of a US Patent is not conclusive of the patentability and novelty of the corresponding application in Australia determined in accordance with Australian Patent Law.
         In summary therefore, I conclude that the invention as defined by claims 1 and 4 is not novel for the reasons stated.  In addition, I do not consider that the features introduced by the remaining claims affect these conclusions ‑ therefore in my view no presently proposed claim is novel.
         I am satisfied that lawful grounds of objection exist to the application and complete specification in its presently proposed form.  As the specification may contain novel subject matter, rather than refuse to accept the application outright at this stage, I shall afford the applicant an opportunity to propose further amendments in the time remaining for acceptance with a view to over‑coming the lawful grounds of objection and gaining acceptance.

(T.R. BRUHN)