The Secretary of State for Defence in Her Britannic Majesty's Government of the United Kingdom of Great Britain and Northern Ireland v. Rheinmetall Gmbh

[1986] APO 35

In the Matter of the Patents Act 1952

‑ and ‑

In the Matter of Patent Application No. 530072 by THE SECRETARY OF STATE FOR DEFENCE IN HER BRITANNIC MAJESTY'S GOVERNMENT OF THE UNITED KINGDOM OF GREAT BRITAIN AND NORTHERN IRELAND

‑ and ‑

In the Matter of Opposition thereto under Section 59 by RHEINMETALL GmbH

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
         Patent application No. 530072, entitled "Improvements in or Relating to Projectile Tail Fin Units", was advertised accepted on 30 June, 1983 and Notice of Opposition was lodged on 29 September, 1983 by RHEINMETALL GmbH.  The service of evidence in support of the opposition was completed on 27 June, 1984 and the service of evidence in answer was completed on 10 January, 1985.  The opponent was granted an unopposed extension of time to 10 July, 1985, in which to serve evidence in reply.  Subsequently the opponent applied for a further three month extension of time and the applicant objected to the extension being granted.  After a hearing on the matter a further extension was granted until 10 October, 1985 and the service of evidence in reply was completed by the due date.

The section 59 matter came to hearing in Canberra on 2 May, 1986.  Mr. R. Walton, patent attorney of Griffith, Hassel & Frazer, Sydney, appeared for the applicant and Mr. A.J.F. Ward, patent attorney of Clement Hack & Co., Melbourne, appeared for the opponent.
The Specification
         The invention relates to projectile tail fin units in particular, but not exclusively, to units for kinetic energy projectiles.  Although the specification does not say so, the latter ‑ known as KE projectiles ‑ are non‑explosive armour piercing projectiles "sabot fired" from smooth bore guns.  The specification explains the prior art problems in the following terms:

"Projectiles fired from a gun by means of a propellent charge are subject to in‑bore damage due to high propellent flash temperatures at their propellent adjacent surfaces.  This is particularly harmful when lightweight stabilizing tail fins of aluminium alloy are fitted, as any significant damage to the fins will result in degradation of the aerodynamic performance of the projectile.  Furthermore, the leading edges of the fins are also subject to substantial aerodynamic heating in flight, resulting in possible further performance degradation.  Attempts have been made to protect the outer surface of such fins by anodizing, but this has not proved effective against thermal erosion.  Thermally insulating coatings of ceramic type have also been tried but these present adhesion problems and the layer thickness required tends to distort the aerodynamic characteristic of the fins.

Heat absorption coatings such as coatings containing intumescent materials, are also known for their thermally protective properties, but these too have poor adhesion and also undergo dimensional changes in operation which degrade the aerodynamic performance of a finned projectile."

The specification goes on to explain that another example of a heat absorbent coating is an ablative heat shield, i.e. a sacrificial layer of material which is gradually removed by thermally induced processes, such as pyrolysis, melting and vaporisation: heat shields of this kind are known for the protection of space vehicles at re‑entry to the earth's atmosphere, being generally formed from plastics composites having a fairly high fibre content, and often including intumescent materials.  The composites are usually applied to the relevant surface either as a bonded pre‑
formed layer or in fluid form by trowelling or casting.  Such protective layers are thick and heterogeneous, ablate unevenly and consequently would have the effect of adversely distorting the aero‑
dynamic profile of a precise structure such as the fins of a projectile, both initially and variably during flight.
         There follows in the description a number of statements regarding the features of the invention, and discussion of a preferred embodiment.  There is a drawing illustrating a tail fin unit covered by a layer of material.  The claims are as follows:

1.A projectile tail fin unit having its exterior surfaces coated with a substantially homogeneous layer of a heat cured resinous material, the layer being capable of thermal ablation at a temperature less than the melting point of the material of the unit and having a thickness sufficient only to absorb all the heat received during firing and flight of the unit.

2.A projectile tail fin unit as claimed in Claim 1 wherein the layer has been formed by a process of immersing the projectile component, pre‑heated to the curing temperature of the resinous material, in a fluid suspension of the resinous material in finely divided, uncured state.

3.A projectile tail fin unit as claimed in Claim 2 wherein the exterior surfaces of the unit have been abraded by grit‑blasting prior to the layer forming process.

4.A projectile tail fin unit as claimed in any one of the preceding Claims wherein the resinous material is epoxy resin based.

5.A projectile tail fin unit as claimed in Claim 4 wherein the epoxy resin is a diglycidyl ether of bisphenol A.

6.A projectile tail fin unit substantially as hereinbefore described with reference to the accompanying drawing.

Grounds of Opposition
         The opponent, in its notice of opposition specified most grounds of opposition available under section 59, but in its evidence and from its submissions at the hearing the grounds being pursued embraced those of prior publication, lack of novelty, obviousness and non‑compliance with section 40.
The Evidence
         The evidence in support comprises two declarations which I will briefly discuss.
 (i)  Declaration by Antony John Fowler Ward
         Mr. Ward is a registered Patent Attorney acting for the opponent.  In his declaration Mr. Ward analyses the opposed specification (as accepted) and discusses the novelty of the claimed projectile tail fin in the light of French Patent Specification 1219149.  There are three exhibits to Mr. Ward's declaration, the first being a copy of the French Patent Specification, the second being a letter from the Patent Office Library establishing publication of the French Patent well before the priority date of the patent in suit, and the third being a translation of the French Patent prepared on Mr. Ward's instructions.
         The translation discloses coating of mortar bombs or the like with a varnish "similar" to a melamine based resin.  There is reference to this coat being burnt off at the moment of firing.  Reference is made to the protection of the "tail of the projectile".
         Mr. Ward also refers to a chemical dictionary to show that a melamine based resin is thermosetting.
         At the hearing Mr. Ward produced British Patent Specification No. 920,921 which is equivalent to the French Patent, but, being in its original language, is more readable and under‑
standable than the translation of the other.
(ii)  Declaration by Oskar Delatycki
         Mr. Delatycki deposed that he holds a degree in Mechanical Engineering from the Technical University of Munich and has been working in the field of polymers since 1959.  Since 1963 he has been lecturing in polymer science at the University of Melbourne, he is now a senior lecturer, and he regularly practises as a consultant in the polymer science field.  Exhibit OD‑1 to his declaration is a copy of Chapter 13 (entitled "Ablation") by Donald L. Schmidt of a publication entitled "Engineering Design for Plastics" edited by Eric Baer and published in 1964 by the Rheinhold Publishing Corporation.  There was no evidence on file concerning knowledge of that document in Australia.  Since the hearing however, Mr. Ward has lodged 2 declarations on this matter, one by a librarian from Monash University, the other by a librarian from the Ballarat College of Advanced Education.  There is dispute between the parties as to whether OD‑1 constitutes part of the common knowledge, or of the public knowledge only, in this country.  I will deal with this matter in relation to the question of obviousness.
         0D‑1 extensively describes ablation including theory, materials, and performance criteria.  Mr. Delatycki makes a number of points about the disclosures therefrom, which I reproduce here:

(i)from pages 815, 816 ‑

"Their most notable achievements have been in protecting aero‑space vehicles during aerodynamic heating due to hypersonic flight in the atmosphere, insulating various sections of rocket motors from hot propulsion gases, resisting the intense heating effects of thermal nuclear blasts, and providing thermal protection to structural elements.  Ablative plastics and composites are thus finding wide acceptance for use in extremely high temperature environments."

(ii)from pages 817, 818 ‑

"Ablative plastics are able to tolerate extremely high temperatures, and surprisingly the performance tends to increase with environmental temperatures.  The surface of an ablative plastic is automatically controlled by the ablative process.  Ablation is thus passive in operation.  Resistance to thermal shock is excellent, due largely to their organic composition.  A wide variety of ablative plastics are currently available, and their properties and characteristics can be varied considerably by altering the component resin, reinforcing agent or filler."

Exhibit 0D‑2 to this declaration is a copy of the section entitled "Ablation" from the Kirk‑Othmer Encyclopedia of Chemical Technology (2nd Ed., published in Australia 1963).  This exhibit discloses the necessity of the use of ablative materials on various artifacts including long range missiles, on the external surface thereof and on the outside and inside of the rocket motor.  It does not specifically disclose coating the tail fins of the missile; epoxy resins are described as one class of materials studied for use as ablatives.  The final exhibit to Mr. Delatycki's declaration is designated as OD‑3, and comprises a copy of Chapter 6 of a publication entitled "Uses of Epoxy Resins" by W.G. Potter and published by Newnes Butterworth, 1975.  While there is no librarian's certificate of publication in Australia of this document Mr. Delatycki himself declares that the Monash University Library has a copy of this publication showing that it was first loaned in November 1977.  This document extensively describes epoxy resin coatings, including uses and methods of application.  Mr. Delatycki's declaration concludes with the following paragraph:

"26.I conclude that at the priority date of the opposed specification, it was well known in Australia to persons skilled in the art to use thermo‑setting resins as ablative coatings for rockets.  The application of an epoxy thermo‑setting resin by dipping a pre‑heated article into a fluidized bed of powdered resin was also well known to those skilled in the art in Australia at the priority date of the opposed specification.  It would have been obvious to me and those skilled in the art in Australia at the priority date of the opposed specification to apply these techniques to the tail fin of a projectile and to provide a coating of thickness sufficient to absorb the heat received during firing and flight of the projectile."

The evidence in answer comprises declarations by Raymond Leo Woodward, John Wilby and Robert William Beckham.  The latter two persons are residents of the UK and while their evidence is enlightening concerning the field of the invention and the general background thereto, it cannot be relevant to what constitutes common knowledge in this country.  Dr. Woodward's declaration comes into a different category.  He holds the degrees of Bachelor of Science with Honours, and Master of Science from the University of Melbourne and the degree of Doctor of Philosophy from Monash University.  He has had 11 years experience in the field of ballistics and is presently employed in the Department of Defence Materials Research Laboratories at Maribyrnong; he is presently responsible for Australia's research program on penetration mechanics and armour.  The portions of his declaration relevant to the art in Australia before the priority date of the application read as follows:

"4.I note the priority date of 29 December 1977.  I state below what was the status of technology on fin stabilized, direct fire armour piercing projectiles utilizing a high density metal penetrator, in Australia before the priority date.

5.Before the priority date there was an awareness of the major aspects of overseas developments in this type of projectile.  This included the requirements for a high density, high length to diameter ratio penetrator, the use of a sabot during launch and the use of fin stabilization.  Details of design geometry associated with the mechanism of attachment of the components and approximate component dimensions were known.

6.Before the priority date there was no use of this type of projectile in Australia nor a suitable manufacturing capability.

7.Before the priority date theoretical and experimental research was being conducted into the mechanism of penetration of this type of projectile in Australia.  Research was not being carried out on aspects related to the launch or flight of this type of projectile in Australia before the priority date.

8.Consideration was given to materials for the high density penetrator before the priority date in Australia.

9.The requirement for coatings to protect light metal fins from in‑bore erosion by propellant gases would have been foreseen by engineers in Australia experience in ammunition design before the priority date.

10. The effect of aerodynamic heating on the profile of light metal fins during flight, with this type of projectile, was known by aero ballistics experts in Australia before the priority date.  Consideration had not been given to solving the problem for this type of projectile before the priority date in Australia."

The evidence in reply provides general background material in the field of the invention in the UK, USA and West Germany and is also indicative of the state of the art in the opponent company.  It is not elsewise relevant to this opposition.
Section 40
         Claim 1 as accepted is characterised by a number of features, as follows:

1.A projectile tail fin unit.

2.The exterior surfaces (of the unit) are coated with a substantially homogeneous layer.

There was some disagreement between Messrs. Ward and Walton as to what, precisely, is "a substantially homogeneous layer".  The Condensed Chemical Dictionary 9th Ed. (Van Nostrand Reinhold Company) gives the following meaning for "homogeneous":

"homogeneous (Latin, "the same kind").  This term, in its strict sense, describes the chemical constitution of a compound or element.  A compound (q.v.) is homogeneous, since it is composed of one and only one group of atoms represented by a formula (q.v.)  For example, pure water is homogeneous, as it contains no other substance than is indicated by its formula H2O.  Homogeneity is a characteristic property of compounds and elements (collectively called substances (q.v.), as opposed to mixtures.  The term is often loosely used to describe a mixture or solution comprised of two or more compounds or elements that are uniformly dispersed in each other.  Actually, no solution or mixture can be homogeneous; the situation is more accurately described by the phrase "uniformly dispersed".  Thus so‑called "homogenized" milk is not truly homogeneous; it is a mixture in which the fat particles have been mechanically reduced to a size that permits uniform dispersion and consequent stability.  See also mixture; compound; heterogeneous; substance."

This is an example of where reference may be made to the description for assistance in determining the meaning of the word in question.  At page 4 the description states that the resinous material (i.e. of the coating) "... may comprise an epoxy resin material with or without fillers". An epoxy resin with fillers is one that the aforesaid dictionary describes as a "composite material", and most certainly does not fall within the strict definition of a homogeneous material.
         I take the usage in claim 1 therefore to be the more general usage (cf. Shorter Oxford English Dictionary, "uniformly dispersed") rather than the strict usage, and this has important implications in relation to the relevance of at least portions of the evidence.
     3.  The layer is of a heat cured resinous material.
"Curing" is the chemical process undergone by a thermosetting plastic in which the hot, liquid resin sets to a solid while the temperature is maintained.  The specification exemplifies the coating of the fin unit by reference to a process in which the fin unit is immersed and agitated in a fluidized bed of the resin powder until a required layer thickness is achieved, and then removed and cured for a further period at the curing temperature of the resin.  The claim however is silent on the manner of coating of the fin unit, which is not limited to having been coated with a heat curable resinous material which has been cured in situ on the fin unit.  The specification at page 3 supports this construction by stating that it is preferable to apply the resin to the unit before curing ‑ however the description goes further and states that it is only preferable that the resinous material be heat curable.  This, of course, results in an inconsistency between the description and the claims and in this respect the specification is defective under section 40.

4.The layer is capable of thermal ablation at a temperature less than the melting point of the material of the fin unit.

5.The thickness of the layer is sufficient only to absorb all the heat received during firing and flight of the unit.

Mr. Ward submitted that item 5 was of indefinite scope whereas Mr. Walton made submissions relying on the law from No‑Fume v. Pitchford 52 RPC 231, suggesting that a person skilled in the art would have no difficulty with this item. The judgement in the No‑Fume v. Pitchford case was concerned with two points viz. sufficiency of disclosure and ambiguity, i.e. indefiniteness of the scope of the invention described. In this case the specification gives as an example a particular fin unit and describes the conditions it will be subjected to : it then goes on to describe a preferred coating material, how it may be applied, and the thickness of the applied layer. Consequently, I have no doubt that the description is sufficient for a skilled person to be able to put the invention into practice. Looking at item 5 in the claim however, I find a different situation. The function of a claim is to clearly define the scope of the monopoly so that the public will be clear concerning what they may do, and what they may not do, in order to avoid infringement. In this case the question of infringement would be contingent upon e.g. the nature of the firing, velocity of the missile carrying the fin unit, the time of flight, and presumably the state of the atmosphere through which the unit passes, i.e. the thickness of the coating depends upon the manner of usage of the unit, and not only upon its construction. Further, I note that the fin unit is not characterised to any particular use (an example being as an operative part of a discarding sabot fin stabilised KE armour piercing projectile having a high length to diameter ratio) which might assist in clarifying the scope of item 5 of the claim. Consequently I find that claim 1 does not define the invention.
Anticipation
         There are three relevant documents on file which can be used for an attack under this heading.  They are BP920,921, and exhibits OD‑1 and OD‑2.   BP920,921 discloses, inter alia, a fin stabilized projectile in which the fins are coated to protect them during firing.  The coating is described as comprising a melamine‑

formaldehyde resin lacquer or phenolic resin lacquer to which has been added a salt such as ammonium oxalate, which, when heated, decomposes to produce steam.  In view of my comments about claim 1 under the heading "Section 40", I find that the only apparent distinction between that claim and this disclosure is concerned with the requirement of the claim that the coating be of a "heat cured resin".  A heat cured resin is one in which the polymerization (i.e. the cross‑linking which causes the setting) has been induced by heat.  On the other hand a lacquer is a coating composition which produces a layer or coating solely by evaporation of the solvent(s).  Once cross‑linking of a thermosetting resin has occurred, the material is virtually insoluble in organic liquid.  Therefore, if the term lacquer is to have any relevance in the BP, it must be that the resin for the coating is in an uncured stated in solution, and when deposited is dried by solvent evaporation.  While it seems unlikely to me that the resin coating would not be subsequently heat cured ‑ else it appears it would have no high temperature resistance to protect the projectile during firing ‑ the BP does not say so.  In fact, it refers to a preferred embodiment in which "On top of the aforesaid lacquer layer, another paint layer containing titanium oxide is applied".  Additionally, Mr. Walton has lodged further evidence which is to the effect that it would not be practical to heat cure the coating containing ammonium oxalate which normally exists as the monohydrate.  Thus, it seems that this compound commences to decompose at 70o Celsius by losing the molecule of water of crystallisation.  I would conclude from the foregoing that the BP does not prior publish the claims of the application in suit, and there is no expert evidence on file from the opponent which would lead me to any contrary conclusion.  In view of the nature of the distinction between the BP disclosure and claim 1, the BP is an unsuitable document to use as the basis for a novelty objection.
OD‑1 as I have indicated earlier in this decision extensively deals with ablative materials including phenolics, melamines and epoxies for use in various hypersonic flight applications. It does not however mention coating of fins although it does mention in passing coating of exhaust deflectors for rocket engines. In view of my construction of claim 1 of the opposed application the only difference here is the particular portion of a hypersonic flight object being coated by the ablative material. OD‑2 bears a similar relationship to the claim. The situation then is that each of these 2 exhibits (treated as publications only) disclose coating of metal surfaces with heat cured resins for the purpose of ablation in hypersonic flight applications. Mr. Ward argued that in view of this, and having regard to the admission in the specification itself that one of the preferred resins has been used for coating metal objects to weatherproof them, claim 1 at least lacked novelty. I agree with Mr. Ward's viewpoint albeit it seems to me that the matter is more appropriately concerned with "new manufacture", in accordance with the principles laid down in L. & G.'s Application 58 RPC 21 and The Commissioner of Patents v. Microcell 102 CLR 232. This result is, of course, purely a consequence of my construction of claim 1 which in my view fails to define the invention. I do not propose to elaborate on this point in view of my conclusions in relation to obviousness.
Obviousness
The law on obviousness in Australia has been set out in the judgement of the Full Bench of the High Court in Minnesota Mining and Manufacturing Co. v. Beiersdorf (Australia) Ltd. (1980) 144 CLR 253. In the consideration of obviousness there are two matters involved; the first is the determination of the evidentiary base, the second is the comparison of the invention with the material of that base.
         I turn now to the determination of the evidentiary base ‑ the High Court has stated that only matters of common knowledge may be used, thus in the absence of appropriate evidence to the contrary, the British and French patent specifications do not comprise part of the common knowledge, and may not be used in this exercise.  The common knowledge, of course, must be related to the particular art or arts with which the invention is concerned.  In this case it seems to be that there are two specific arts concerned viz. polymer science and ammunition design (which includes aspects of aero‑ballistics) ‑ in particular, the field of KE armour piercing projectiles.  On this basis, there are two experts, Mr. Delatycki, a polymer scientist who has made a declaration on behalf of the opponent, and Dr. Woodward, an expert in ballistics, and penetration mechanics and armour, who has made a declaration on behalf of the applicant.  I note that these experts make no statements concerning the state of knowledge in Australia before the priority date which are contradictory.  Therefore I accept their evidence on this matter.  Concerning exhibits OD‑1 to OD‑3, there is dispute between the parties as to whether these documents are illustrative of the common knowledge or are mere paper publications.
         On this point I would comment that it is inconceivable to me that the Kirk‑Othmer Encyclopedia (OD‑2) would not, as a whole, fall within the realm of common knowledge in many arts.  This Encyclopedia has been extensively used in Australia by the Universities for undergraduate instruction and reference purposes for long before the priority date of this application.  In any case, the comments which I make below about OD‑1 and OD‑3 are equally applicable to OD‑2.
         There is clear evidence that OD‑1 and OD‑3 are extracts from published books.  The evidence shows that two copies of "Engineering Design for Plastics" (from which OD‑1 is extracted) have been on the shelves of the Lawrence Hargrave Science and Engineering Library of Monash University since at latest 1970.  In addition these volumes were stamped "Overnight Only" on 6 June, 1975 meaning that borrowing is permissible for a single night only ‑ this being (on the evidence) the customary way that this Library designates and handles texts which are part of the prescribed reading matter for students. Further, a copy of this book has been on the library shelves of the Ballarat College of Advanced Education since late 1973.  I do not think this is sufficient for the conclusion that the book as a whole forms part of the common knowledge.  The High Court has said (in the Minnesota Mining case, supra) that common knowledge is what the experts say it is, and there are no such statements here concerning "Engineering Design for Plastics"; however I note that Mr. Delatycki has in paragraph 18 of his declaration made a statement about the common knowledge which he says is supported by OD‑1.  He has made similar comments in his declaration (paragraphs 22, 23, 25) about 0D‑2 and OD‑3.  I accept, therefore, that while ‑ with the exception of the Kirk Othmer Encyclopedia ‑ the books from which OD‑1 and OD‑3 are extracted are not proven to be common knowledge, the contents of 0D‑1 and OD‑3 which Mr. Delatycki so designated do constitute part of the common knowledge at least in the art of polymer science.
         My perception of the relevant common knowledge in ammunition design in Australia before the priority date may be summarised as follows:

.there was an awareness of major aspects of overseas developments on fin stabilized direct fire armour piercing KE projectiles using a high density metal penetrator, including awareness of requirements of a high length to diameter ratio for the penetrator, and the use of a sabot during launch; details of design geometry and approximate component dimensions were known;

.there had been no use of this type of projectile nor was there a suitable manufacturing capability;

.research was being conducted into the mechanism of penetration, but not into the launch or flight of such projectiles;

.the requirement for coatings to protect light metal fins from in‑bore propellant gas erosion would have been foreseen by experienced ammunition design engineers, and the effect of aerodynamic heating on the profile of light metal fins on this type of projectile was known by aero‑ballistics experts ‑ however, consideration had not been given to actually solving these problems;

.use of thermosetting resins (including epoxies) to form ablative layers on various components to be used in hypersonic flight applications was known; analysis of performance criteria for various ablative materials was well advanced and consideration had been given to minimizing the weight and hence the thickness of the ablative layer;

.epoxy powder coating technology was well advanced for use in a number of environments and methods of coating as exemplified in the specificaton in suit was known.

On my construction of claim 1, and in the light of the evidence, the invention defined is no more than a known object coated with a known material in a known way for a known purpose.  I am in no doubt whatever that it follows that claims 1‑6, as accepted, are obvious.
         However, I shall consider the invention as it might be if it were to be more carefully and accurately defined.  That is, I will presume that the invention comprises a specified KE projectile (i.e. see the example I have given under the heading of section 40) incorporating a fin unit of the class defined in accepted claim 1. I believe it would be possible to amend the specification to this effect.  I note that Mr. Delatycki has made the assertion that:

"It would have been obvious to me and those skilled in the art in Australia at the priority date of the opposed specification to apply these* techniques to the tail fin of a projectile and to provide a coating of thickness sufficient to absorb the heat received during firing and flight of the projectile."

This is not a conclusion with which I could immediately agree, if for no other reason than that Mr. Delatycki is a polymer scientist only, and is presumably not expert in ammunition design and aero‑
ballistics.
         In any case, it seems that the KE projectile construction and (approximate) component dimensions were known.  However as these projectiles had neither been made nor used in Australia, no research had been done on, and no attempt had been made to solve problems relating to the firing and flight thereof.  Nevertheless, the evidence shows that the in‑bore erosion problem would have been foreseen and the aerodynamic heating problem would have been appreciated by the relevant experts.
         Even so, as the problem had not been addressed before the priority date, I am of the opinion that Mr. Delatycki's conclusion has been made with the benefit of hindsight, and in fact there is insufficient evidence on file to show that the hypothetical skilled
____________________________________________________________________  

*i.e. the application of thermosetting resin to an article by dipping the pre‑heated article into a fluidized bed of the powdered resin.

ammunition designer would have consulted a polymer scientist like Mr. Delatycki for assistance had the problem been presented to him.
In addition, as I have stated above, Mr. Delatycki is clearly expert
in polymer science, he is not expert in ammunition design and aero‑
ballistics, and consequently while I find his conclusions concerning use of thermosetting resins and methods of coating therewith acceptable, I reject his conclusion concerning the obviousness of the solution provided by the specification to the firing and flight problems of KE projectiles.

Costs
         On the matter of costs, the situation is as follows:

(i)The evidence in reply failed to meet the requirements of regulation 74 in that about 60% of it was in the German language, thus forcing the applicant to provide its own translation; in addition, this evidence was not really in reply, and at the hearing Mr. Ward commented that it was not particularly relevant except to show that the opponent was expert in the field of the invention;

(ii)The opponent failed to adduce evidence of publication in Australia of OD‑1;

(iii)The opponent first raised BP920,921 as evidence at the hearing.

Pursuant to item (ii) I allowed Mr. Ward 1 month until 2 June, 1986 to adduce the required evidence; concerning item (iii) I allowed Mr. Walton 3 months to adduce evidence in answer, i.e. until 2 August, 1986.
         In determining which party should pay the costs of the action I have regard to the above matters in addition to the usual rule of costs following the event.
         Therefore I award the costs incurred up to, and including the hearing, excepting costs in relation to the evidence in reply, to the opponent.  I award costs incurred in relation to the evidence in reply and costs incurred since the hearing to the applicant.
Conclusion
         I have found that the opposition succeeds in that the application fails on grounds under section 40 that claim 1 (at least) does not define a manner of new manufacture and that all claims are obvious.  I believe there is patentable subject matter disclosed, and I allow the applicant 60 days in which to propose amendments with a view to properly describing and claiming that matter.  I award costs as set out in the preceding paragraph.

(J.L. ROVETA)