The Smith Family, MCK Pacific Pty Ltd and Foss Manufacturing Company v I.N.C. Corporation Pty Ltd
[2006] APO 3
•24 February 2006
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No 2003100331 in the name of I.N.C. Corporation Pty Ltd
Title: A thermoformable acoustic sheet
Action: Opposition by The Smith Family, MCK Pacific Pty Ltd and Foss Manufacturing Company under s 101M of the Patents Act 1990
Decision: Issued 24 Feburary 2006.
Abstract
The invention defined by claims 1 to 5 is novel and innovative. The opposition is unsuccessful on all grounds.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re: Patent Application No. 2003100331 by I.N.C. Corporation Pty Ltd and opposition under Section 101M of the Patents Act 1990 by The Smith Family, MCK Pacific Pty Ltd and Foss Manufacturing Company.
BACKGROUND
Innovation Patent application 2003100331 in the name of. I.N.C. Corporation Pty Ltd (“INC”) was filed on 7 May 2003 as a divisional application of 200127222. Both the parent and current application claim priority from provisional application PQ8830, which was filed on 19 July 2000. The innovation patent application was accepted on 4 August 2003, sealed on 7 October 2003 and following a request for examination, certified on 24 October 2003.
The Smith Family, MCK Pacific Pty Ltd and Foss Manufacturing Co. Inc. (“the opponents”) filed notice of opposition on 30 June 2004 along with a Statement of Grounds and Particulars. Evidence in support was completed on 7 July 2004. After several unopposed extensions of time, INC served evidence in answer on 22 December 2004. The evidentiary stage was completed by the filing of evidence in reply on 22 March 2005.
The opposition came to hearing in Canberra on 4 August 2005. The patentee was represented by Mr Ross Macaw of counsel, instructed by Mr Leon Allen and Mr Simon Ware of the patent attorney firm Davies Collison Cave. The opponents were represented by Mr Richard Cobden of counsel, instructed by Mr John Lee, a solicitor of the firm Mallesons Stephen Jaques. Mr Peter Cowan, Chief Executive Officer of Smith Family Industries and Mr Paul Madden, Managing Director of Foss Australasia Pty Ltd were also in attendance as observers.
THE SPECIFICATION
The invention relates to materials for acoustic absorption, in particular thermoformable acoustic sheets. Sound absorption is required in a wide variety of industrial and domestic applications, and in many of these applications it is desirable that an acoustic material conforms to the shape of a surface or otherwise retains a particular shape.
One particular application for acoustic sheets is in the automotive industry in under bonnet insulators for motor vehicles. Existing under bonnet insulators use moulded fibreglass insulators for sound absorption. However, problems with handling the product, coupled with the release of toxic gases during the moulding process, make the use of resinated fibreglass undesirable.
Previous attempts to produce a suitable thermoformable material from thermoplastic textiles for under bonnet insulators have been unsuccessful for a number of reasons. These include the failure of the materials to have a low sag modulus at typically encountered operating temperatures, unsuitable moulding performance, and lack of uniformity of air flow resistance which is required for acoustic absorption performance.
According to the specification, the object of the invention is “…to provide a thermoformable acoustic sheet and a method of producing such a sheet that will at least provide a useful alternative”. This is followed by the consistory statement of the invention, detailed description of the invention and examples 1 to 10. The specification ends with five claims, which read as follows:
1 A thermoformable acoustic sheet formed by a compressed fibrous web including high melt and adhesive thermoplastic fibres in which the adhesive fibres are at least partially melted so that in the compressed web a fibre matrix is formed in which the adhesive fibres at least partially coat the high melt fibres and reduce the interstitial space in the fibre matrix to create a labyrinthine structure that forms a tortuous path for air flow through the fibre matrix and provide a selected air flow resistance of between 275 and 1100 Rayls;
wherein the high melt fibres have a melting point above about 220oC, at least some of the high melt fibres are polyester fibres and the web of the thermoplastic fibres has a web weight of about 1000 g/m2 or below.
2 A method of producing a thermoformable acoustic sheet including the steps of heating a fibre web including high melt and adhesive thermoplastic fibres to at least partially melt the adhesive fibres and compressing the web to form a sheet so that a fibre matrix is formed in which the adhesive fibres at least partially coat the high melt fibres and reduce the interstitial space in the fibre matrix to create a labyrinthine structure that forms a tortuous path for air flow through the fibre matrix and provide a selected air flow resistance of resistance between 275 and 1100 Rayls;
wherein the high melt fibres have a melting point above about 220oC, at least some of the high melt fibres are polyester fibres and the web of the thermoplastic fibres has a web weight of about 1000 g/m2 or below.
3 An acoustic thermoformed article heat formed from a thermoformable acoustic sheet as claimed in claim 1.
4 A method of forming an acoustic thermoformed article including the step of heat forming a thermoformable acoustic sheet as claimed in claim 1.
5 A thermoformed article according to claim 3, wherein the formed article is selected from the group consisting of under bonnet insulator for a motor vehicle, wheel arch linings, head linings and boot linings.
EVIDENCE
The evidence in support is quite extensive, comprising seven declarations and several dozen exhibits. Graham Kenneth Johnson is a textile consultant. As part of his business, he consults to Plexicor Australia (a division of MCK Pacific Pty Ltd), which is a manufacturer of thermo-formed plastic components for the automotive, industrial and communications industries. He also consults to Foss Australasia Pty Ltd on occasion. He has been involved in the textiles and fabric industry since 1992, when he commenced work with Melded Fabrics (a member of the BTR Nylex group of companies). Appended to the declaration is a selection of patent and non-patent disclosures on which the opponent’s case relies. These exhibits are referred to as GKJ-1 to GKJ-5.
Adrienne Koll has been employed by The Smith Family since January 2001, after obtaining a Bachelor of Science degree in Textile Management from the University of New South Wales. In her role as a Product Development Officer, she has access to the production records of The Smith Family going back to 1987. Annexed to her declaration are several invoices and test reports, as well as thirteen samples of material referred to as AK-1 to AK-13.
10. Paul Christopher Madden is the Managing Director of Foss Australasia Pty Ltd, an importer and distributor of textile products in Australia and New Zealand. Prior to joining Foss Australasia in 2001, he was the Sales and Marketing Manager (Nonwoven) at The Smith Family. Mr Madden states that he has “…been continuously involved in the textiles industry for 35 years, and, in particular, in the development, manufacture, marketing and sale of ‘nonwoven’ fabrics”. Exhibits PCM-1 to PCM-22 accompany his declaration.
11. Patrick Dunn has been employed by The Smith Family since 1987, and is currently Operations Manager – Nonwoven. For the past 38 years, most of his work has involved the development and manufacture of textiles and fabrics. He states that “…I have gained very extensive knowledge and experience in using different combinations of raw materials and components to create fabrics with particular characteristics including in relation to strength, weight, thickness, stiffness, density, and acoustic properties”. Exhibits PD-1 to PD-11 accompany his declaration.
12. Ross Lindsay Mahon is the General Manager Business Development of Plexicor Australia, and first started working with nonwoven materials as a senior product cost estimator for Ford in North America from 1989 to 1990. Two exhibits, RLM-1 and RLM-2, accompany his declaration.
13. Steven Woodrow Foss has been the Chairman, President and CEO of Foss Manufacturing Company Inc since 1967. He states that “Foss has been producing thermoformable materials since 1954, nonwovens since 1962, and synthetic fibres since 1979. Foss has produced acoustic wall coverings since 1980 and has produced automotive acoustic materials since 1982”. Exhibits SWF-1 to SWF-11 accompany his declaration.
14. Shyama Usha Jayaswal is a patent attorney and lawyer with Mallesons Stephen Jaques, Melbourne. Annexed to her declaration are several documents referred to as SUJ-1 to SUJ-6.
15. The applicant's evidence in answer consists of two statutory declarations. Colin Henry Hansen is a professor at the School of Mechanical Engineering, University of Adelaide. His current research activities are in the area of passive and active noise and vibration control, and he states that he has “…authored or co-authored over 100 papers in this area”. He is a past President of the International Institute of Acoustics and Vibration. Exhibits CHH-1 to CHH-5 accompany his declaration.
16. Michael William Coates obtained a Bachelor of Engineering (Materials) from Monash University in 1974, and founded INC in May 1977. He has been responsible for all product development and marketing since that time.
17. The evidence in reply consists of further declarations by Paul Christopher Madden and Patrick Dunn. Exhibits PD-12 to PD-24 accompany the Dunn declaration.
18. At the start of proceedings, the opponent submitted statutory declarations by Dr Ying Jin Chen, a Senior Fellow in the Research School of Physical Sciences and Engineering at the Australian National University, and Mr John Lee of Mallesons Stephen Jaques. These declarations related to the weight, size and density of The Smith Family Sample 6, and sought to correct what was evidently a clerical error.
19. The applicant initially objected to the filing of this “further evidence” at such a late stage in the proceedings. I noted that the evidence was already to hand thus averting any protraction of proceedings, and that it clearly went to questions that were fundamental to the correct determination of the opposition. In my opinion, this factor in conjunction with the applicant’s preparedness to respond to it at short notice weighed in favour of permitting the further evidence into the proceedings. After some discussion, both parties were prepared to admit the evidence if they were afforded the opportunity to make further submissions within 6 weeks. The hearing proceeded on that basis with the consent of both parties.
I will discuss the evidence in more detail, where appropriate, in my decision.
SUBMISSIONS
20. The submissions made were extensive and I will refer to them where necessary in my decision. However it became clear during the hearing that, so far as the grounds of novelty and innovative step were concerned, the opponents were relying on only some of the cited particulars, namely The Smith Family samples 1, 2, 3, 5 to 5(f) and 6 to 6(c), Melded Fabrics samples 1 and 2, and Foss samples 1, 4, 6, 7 and 8. Submissions at the hearing primarily went to the physical and acoustic characteristics of these samples and the construction of the claims.
DECISION
The law on Novelty
21. It is well established that the test for novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at 235:
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.
22. This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (Nicaro Holdings Pty Ltdv Martin Engineering Co 16 IPR 545 at 549). A feature is essential if the applicant has made it an essential feature by the terms of the claim when properly construed (see Catnic Components Ltd v Hill and Smith (1982) RPC 183). I do not think there is any doubt that every feature of claims 1 to 5 is essential, and neither party put a contrary view.
23. Section 7(1) of the Patents Act 1990 provides:
For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:
(a) prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;
(b) prior art information (other than that mentioned in paragraph (c)) made publicly available in two or more related documents, or through doing two or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information;
(c) prior art information contained in a single specification of the kind mentioned in sub-paragraph (b)(ii) of the definition of prior art base in Schedule 1.
24. The opponents have in essence alleged that the claimed invention is anticipated by prior art information made publicly available through doing a single act (traditionally known as "prior use"). Consequently, paragraphs (b) and (c) above are not presently relevant.
25. It is important to note that both section 7 and the definition of "prior art base" were amended by Schedule 1, Part 1 of the Patents Amendment Act 2001 (the "2001 Act"). The relevant Schedule commenced on 1 April 2002. As the innovation patent was filed on 7 May 2003, the provisions of the 1990 Act applicable are those effected by the amendments made by the 2001 Act. In this case, paragraph (a)(ii) in the definition of the “prior art base” in Schedule 1 of the Patents Act requires that the relevant information has been made publicly available through doing an act, whether in or out of the patent area. Prior to the 2001 Act the assessment of novelty and innovative step was confined to acts performed in the patent area – that is, Australia, the continental shelf and the waters above it, and the airspace above Australia and the continental shelf.
As a preliminary step, I think it is appropriate to review the law relating to prior use.
The law on Prior Use
26. In opposition proceedings the opponent must establish that there was some public use of the invention and though the standard of proof is that which applies to any civil case, namely proof on the balance of probability, it is of some importance to note that the courts have repeatedly indicated that they are reluctant to reject a patent application unless the evidence against it is very clear.
27. The UK Appeal Tribunal discussed the standard of proof required to establish prior use in Seiller's Application (1970) RPC 103. At page 106 Graham J. stated:
"In my judgement it is necessary that proof of prior user in opposition cases should be very clear. Normally in the absence of cross-examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable. Such corroboration is often best found in documents contemporary with the fact to be proved. Each case, however, must be considered on its own facts, and I say expressly that I am not attempting to lay down any rule as to what is or is not sufficient in any given case."
28. The UK Court of Appeal approved these comments in Dunlop Holdings Limited's Application (1979) RPC 523 at 548. A similar approach is evident in Windsurfing International Inc v Borsimex Pty Ltd (1984) AIPC 90-135, in which Waddell J. states:
"It is essential that an allegation of prior public use should be strictly proved. Evidence which is uncorroborated is undoubtedly suspect and should be scrutinised with particular care. The Court must be satisfied that the proof is sufficient in the circumstances, having regard to the gravity of the allegation."
29. However, I am aware that there have been several Patent Office decisions in which the hearing officer was nevertheless convinced that prior public use was established despite the lack of corroborating evidence: Glenwood Systems v Gooden (1993) AIPC 90-985, Dunlop Holdings Ltd's Application (1979) RPC 523, and Endurequip v Robyn Ann Roelofs 28 IPR 131, (1993) AIPC 91- 037.
30. To prove a lack of novelty section 7 requires the opponents to show that a claimed invention is not novel in light of "prior art information ... made publicly available". Consequently in this context it is insufficient to merely prove that R&D samples were manufactured, and that these samples possessed certain acoustic and physical properties. The opponents must also show that the information disclosed to the public was "informative" in the sense that the necessary information (disclosing all of the essential features)was made available to the public - see Hope v Heggies Bulkhaul Ltd (1996) 34 IPR 584.
Has there been public use of the invention?
31. The nature of the use is also an important consideration. Prior use will not anticipate a later invention unless it can be shown that the use makes an invention publicly available, and it has long been established that a single case of manufacture and sale, manufacture and use “in the ordinary course of business”, or even offer for sale is sufficient (see Birtwhistle v Sumner (1929) 46 RPC 59 at 72).
32. The applicant has expressed concern that the opponents’ evidence does not establish public use, stating that:
“It must, in any event, be very doubtful that the recipients of the samples were free to deal with them as they chose.”
33. On this issue the opponents submitted that:
“None of The Smith Family products referred to below that are alleged to anticipate the claims of the Patent and that were supplied, offered for sale, demonstrated and disclosed to potential customers was subject to any confidentiality obligation or regime. The products were freely disclosed and in the case of R&D samples or test samples, the potential suppliers or customers who they were disclosed or provided to were in fact encouraged to disclose the products to their own customers, and did so.”
and I note that supporting statements are provided by Dunn (paragraphs 38, 63 and 69 of his first declaration) and Madden (paragraphs 17, 26, 35,60 and 79 of his first declaration).
34. On the question of whether The Smith Family samples 1 to 6 annexed to Mr Koll’s declaration were used in public (as distinct from use by the public), there is only the declaratory evidence of Mr Koll, Mr Madden and Mr Dunn to support this. Some documentary evidence, such as copies of invoices stored in The Smith Family’s accounting and inventory management system is provided, but this relies entirely on the interpretation of Mr Koll for its significance, although it lends plausibility to the Koll, Madden and Dunn evidence.
35. Mr Johnson states at paragraphs 5.4 and 6.4 of his declaration that Melded Fabrics samples 1 and 2, respectively, were “…available to Plexicor without any confidentiality restrictions. I have knowledge of the above due to my role as General Manager of Melded Fabrics at the time”. Mr Foss likewise asserts at paragraphs 13, 25, 33, 37 and 41 that Foss samples 1, 4, 6, 7 and 8, respectively, were made available to customers without any restrictions regarding their further use. These customers include Regal Shoes (Thailand), Pou Chen (Thailand) and Actions Fabrications (USA).
36. The present situation bears similarities to two other cases. In Wood v Westaflex(Aust) Pty Ltd 20 IPR 387, it was held that dissemination of samples by a person to other persons within that person's own company did not constitute entry to the public domain of the product. However in Fomento Industrial SA v Mentmore Manufacturing Co Ltd [1956] RPC 87, it was held that somewhat wider dissemination of samples of a product could constitute entry of that product into the public domain.
37. In my view, the evidence before me strongly suggests that The Smith Family, Melded Fabric and Foss samples were made available without any express or implied obligation of confidentiality on behalf of the recipients. The evidence also indicates that the distribution of the R&D samples was not limited to persons merely in the employ of The Smith Family, Melded Fabrics or Foss. As a consequence of the wider dissemination of these samples, I believe that they have entered into the public domain.
38. It is of concern that the only evidence of prior use in this matter comes from persons who have been in the employ of one of the opponents and who are clearly not independent. Because of this, normally I would not be inclined to accept that the opponents had discharged the onus on them to make their case - see, for example, Raychem v Global Lightning Technologies, 36 IPR 572. This is particularly as, as in Raychem v Global Lightning Technologies, it would seem that it should have been fairly easy for the opponents to have obtained independent corroborating evidence. On the other hand, that evidence which has actually been put forward by the opponents on this point seems largely credible, and the applicant has not disputed its veracity.
39. Accordingly, even though the evidence before me is not extensive, I am prepared to accept for all but one of The Smith Family, Melded Fabrics and Foss samples the contention that they were made available to customers before the priority date of 19 July 2000. With regard to Foss sample 7, Mr Foss at paragraph 37 of his declaration states:
“Foss has been making Foss Sample 7 since 2000. Foss has sold Foss Sample 7 to Comfort Us, USA since 7 September 2000 without any restrictions regarding its further use.”
This statement directly contradicts the opponents’ assertion that Foss sample 7 was publicly available before the relevant priority date. As there is no other evidence before me which suggests that Foss sample 7 was made available to the public before 19 July 2000, or that Mr Foss’s statement was made in error, I must reject the opponents’ assertion that Foss sample 7 was made available to the public before the priority date. Accordingly, I conclude that Foss sample 7 cannot be used to argue prior use.
40. In summary, I have determined on the balance of probabilities that The Smith Family samples 1, 2, 3, 5 to 5(f) and 6 to 6(c), Melded Fabrics samples 1 and 2, and Foss samples 1, 4, 6 and 8 were made publicly available before the priority date and can therefore be used to argue prior use. However, I do not wish to suggest that I have reached this conclusion without some diffidence, as it seems to me that the opponents could have, with minimal effort on their part, provided independent evidence to corroborate their own.
Has the use been informative?
41. The applicant argued that:
“The provision of the R&D samples to potential customers did not make the combination of features of the invention, including selection of a suitable airflow resistance, publicly available. The Smith Family plainly had no interest in that matter. It appears not to have tested its R&D samples for sound absorption quantities before the priority date. When they were tested for the purpose of this opposition, all were tested. It is clear it had no idea which, if any, had an airflow resistance falling within the claimed range. There is no reason to think any recipient of the sample would have any interest in air flow characteristics either.”
42. The concept of anticipation by prior use becomes rather difficult when the specific nature of an invention is not readily apparent from a product itself. The issue becomes even more complicated where the claimed invention is for a process or the product of a process. In order to refute the allegations of prior use, the applicant has suggested that prior use requires not only the use in public of the invention but also public knowledge of the invention.
43. The degree of disclosure required was discussed by Lord Trayner in Gill v Coutts and Sons and Cutler (1896) 13 RPC 125 who stated that:
“…disclosure does not mean that the public shall know as much about the article used as the maker knows. It means that the thing must be disclosed to the public and not kept by the maker of it to himself. It is the use of the thing in public as distinguished from the use in private by the inventor. Public user involves disclosure”.
and I note that similar reasoning was applied in Carpenter v Smith (1841) 1 Web Pat Cas 530, ReStahlwerk Becker Aktiengesellschaft’s Patent (1918) 36 RPC 13, and Re European Community v Aleis International Pty Ltd (2002) 58 IPR 586.
44. In my view the proposition advanced by each of these cases suggests that if a product has been used in public then this is sufficient to destroy the novelty of an invention and it is immaterial that the product does not, in itself, disclose its composition or that the disclosure took place in a non-commercial context. Just as it is immaterial that no-one may have read a book in a public library or a patent specification in IP Australia’s files, so it is immaterial that no member of the public has actually bothered to analyse the R&D samples and that no-one has in fact ascertained the method by which they may have been produced.
45. In support of their contention that only uninformative use had taken place, the applicant referred to the House of Lords decision in Merrell Dow Pharmaceuticals Inc v H N Norton & Co Ltd (1996) 33 IPR 1. I consider that the present case may be easily distinguished from Merrell Dow. In that decision, the argument for anticipation by use failed because it relied upon the fact that the volunteers involved in the clinical trials of a drug called Terfenadine took Terfenadine capsules without knowing their composition and produced within themselves a substance which was not readily capable of being identified but which was later found to have been an acid metabolite. It was found that sufficient information to work the acid metabolite had not been communicated to the public because the prior use had occurred within the human body. This contrasts markedly to the present case, in which samples of acoustic material were publicly available for testing, inspection and analysis. Furthermore, as I have already found, the people to whom the information was disclosed were free, in law and equity, to make use of that information.
46. Accordingly, I conclude that the information disclosed to the public by the provision of the R&D samples was "informative”.
Novelty
47. Table 1, which was provided by the opponents at the hearing and is annexed to this decision, lists the critical characteristics of The Smith Family, Melded Fabrics and Foss samples relied upon for the purposes of novelty and innovative step. Of primary concern is the discrepancy in the results obtained by the RMIT and the University of Adelaide for the specific airflow resistance, and, to a lesser extent, the weight of each sample as measured by the RMIT and the opponents. I note that neither party put the discrepancy in results in the forefront of their arguments on novelty. I nevertheless propose to deal with it first, because I think it is a critical issue.
48. The University of Adelaide’s Professor Hansen has relied on the apparent conflict in the evidence to question the testing methodology relied upon by the RMIT, and consequently the accuracy of the results obtained. His concerns are expressed at paragraph 3.1 onwards:
“3.1As indicated in paragraph 2.6, air flow resistance is measured by ASTM C552-03, which sets a minimum standard for reliable results.
3.2The standard requires that a minimum of three samples be tested, in order to provide a minimum set of results which can reliably be said to be indicative of the sample. If less samples are tested than the standard requires, a report stating the airflow resistance of the tested sample would not be a reliable measurement of its airflow resistance in my view. I note that RMIT's report indicates that only one sample was tested, although no explanation has been given as to why this occurred and why the standard was not complied with.
3.3Both RMIT and the University of Adelaide have been asked to conduct testing to determine the air flow resistance of particular samples as indicated in the declaration by Shyama Jayaswal. If the testing were conducted according to ASTM C552-03, I would expect that the results would be similar. In comparing the values obtained by the University of Adelaide and RMIT for the same material, the values of air flow resistance are quite different. All the Adelaide test results have a higher Rayl measurement than the equivalent tests on the "same" samples by RMIT.
3.4For example, "SAMPLE Run No: LI-3919 Code: R&D 201" shown as exhibit AK-4 was tested by RMIT with an air flow resistance of 1634 Rayls and by the University of Adelaide with an air flow resistance of 2100 Rayls. A difference in the order of 40% could mean the tested material was different, the material was inconsistent or that the testing procedures differed.
3.5One possible explanation of the significant difference is that air flow leakage around the edges of the sample could account 'for the lower figures in RMIT's results. However there is not enough information in either test report to form a definitive conclusion in this respect.
3.61 also note that typically airflow resistance is measured to two significant figures due to the limitations in the accuracy of the test equipment and procedures involved.
3.7Accordingly, due to the unexplained difference in values between the supposedly same samples, I cannot conclude with any certainty the accuracy of the test results of RMIT, as relied upon in the declaration of Adrienne Koll and appearing in the declaration of Shyama Jayaswal. However, from my own knowledge, I am aware of the great care customarily taken by the University of Adelaide in its testing to seal the edges of the samples, using silicone gutter sealant. Further, the difference in results before and after the application of the sealant is similar to the difference between the RMIT results and the reported University of Adelaide results. Thus I am confident of the accuracy of the University of Adelaide test results, as relied upon in the declarations of Graham Johnson, Adrienne Koll, Ross Mahon and- Steven Foss and appearing in the declaration of Shyama Jayaswal. What I am not confident about is whether the results measured for such a small sample, by both RMIT and the University of Adelaide, would be truly representative of average results for a large sample.”
49. According to Professor Hansen, the standard method for assessing and measuring airflow resistance is by ASTM C522-03, which accompanied his declaration as Exhibit CHH-5. The introduction to this standard states that it covers the measurement of airflow resistance and the related measurements of specific airflow resistance and airflow resistivity of porous materials that can be used for the absorption and attenuation of sound. Materials may cover a range from thick boards or blankets to thin mats, fabrics, papers, and screens. When the material is anisotropic, provision is made for measurements along different axes of the specimen.
50. To test an acoustic material, a sample is placed in a sample holder and clamped firmly to restrict flow through the edges of the specimen. A constant airflow is established and measured by a flowmeter. The pressure difference across the specimen may then be measured with a digital manometer or similar device. These two measurements, along with the surface area of the sample being tested allow the specific airflow resistance [in mks Rayls] to be calculated.
51. As an aside, I note that at page 10 of the specification it is stated that the samples were tested using ASTM E1050-90, which according to Exhibit CHH-4 is the standard test method for measuring the in-duct impedance and absorption of acoustic materials. However, nothing appears to turn on this, and I see no reason to question the standard employed by the RMIT and University of Adelaide. It is significant that neither party argued against the appropriateness of ASTM C522-03, or earlier versions of the standard, for measuring airflow resistance.
52. Full compliance with ASTM C522-03 requires that three or more samples of a uniform sample material should be tested. When the sample material is not uniform the specimens should be selected to include the variations in the proper proportion, or several representative specimens of the materials should be tested and the results averaged. Professor Hansen has criticised the RMIT testing on the basis that only one sample was tested, and as a consequence “…the airflow resistance of the tested sample would not be a reliable measurement of its airflow resistance in my view” (see paragraph 3.2).
53. Even though it is unclear why the RMIT limited measurement to only one sample, I do not believe that I can disregard their data merely because it fails to comply with the accepted standard which specifies that three or more samples should be tested. As is evident from the standard, the benefit of testing more than one sample from the same material is that the measurements may be averaged. This removes some of the sample to sample variation, with the result that a more representative resistivity measurement of a material can be made. Of course, one would hope that any variation in the results obtained depends solely upon the uniformity of the material being tested. If a material is uniform, one would expect no variation in measurements, and therefore the results obtained from one sample would be representative of the whole. It could well be that the RMIT results are valid.
54. In any case, it seems to me that I need not conclude whether or not the single measurement made by the RMIT is actually representative of the whole. The disparity between the RMIT and University of Adelaide data, as noted by Professor Hansen, provides a more compelling basis for disregarding the results obtained by the RMIT, and ultimately the University of Adelaide data. For those samples that were measured by both institutions, the discrepancy ranges from approximately 29% (The Smith Family sample 4) to 75% (Melded Fabrics sample 1). For this reason, the applicant was of the firm view that “…the measurements can’t be taken to be reliable”.
55. In my view the consistently lower readings obtained by the RMIT in comparison to the University of Adelaide measurements for the specific airflow resistance strongly suggests some systemic flaw in the methodology employed or the equipment used by either the RMIT and/or the University of Adelaide, rather than any difference in the specimens tested. Even though Professor Hansen has expressed his confidence in the University of Adelaide data, because of the care customarily taken to properly seal the edges of the samples (Hansen, paragraph 3.7), I am not convinced that I should favour their data over and above that of the RMIT. As Professor Hansen points out, correctly in my view, there is not enough information in either report to conclude whether the tested materials were different, the materials were inconsistent or that the testing procedures differed (Hansen, paragraphs 3.4 and 3.5).
56. I consider that both institutions are well respected and highly regarded. Both confirm in their reports that they followed the standard test method for airflow resistance of acoustical materials. Each report also provides a brief summary of the equipment used, and I see nothing inconsistent between the details here and ASTM C522. Nevertheless, I note that neither report specifies whether or not the equipment used was calibrated before the experiments were conducted. Furthermore, neither report states that reference samples with known characteristics were measured to confirm the accuracy of the equipment and process used. Though this is not specifically required by the standard, I believe it would be good scientific practice.
57. Taken in isolation, each set of results appears to be valid. However, when considered together, it is abundantly clear that at least one set of results must be wrong if the tested materials were identical. The opponents provided assurances that the samples tested by both institutions were identical. Unfortunately, I have no evidence before me to assist in determining which, if any, set of results I should rely upon. Even though the opponents implored me to accept the University of Adelaide’s results due to Professor Hansen’s confidence, I have no logical basis for doing so.
58. Accordingly, a positive finding of fact as to the specific airflow resistance of each sample is not possible. Again, it is with some reticence that I reach this conclusion, as further evidence may well demonstrate that the RMIT or University of Adelaide data is accurate. I have no doubt that each sample must possess a specific airflow resistance, as this is merely a physical characteristic inherent to any acoustic material. I am conscious that this data is critical to the opponents’ case, and that my finding renders otiose any further arguments regarding novelty.
59. This finding raises a very difficult problem. Should I rely on the RMIT or University of Adelaide results in those instances where it is the only data available? I believe that were I to adopt this approach, it would be in error, as I have already found that neither set of results can be relied upon. It follows that each individual measurement within either set of results cannot be relied upon. Therefore, I see no reason to consider individual results.
60. That this situation has arisen at all is surprising. The opponents should have been alert to the fact that the data generated by the RMIT and University of Adelaide were inconsistent. A prudent course of action would have entailed making further enquiries so that an explanation for the apparent conflict could have been provided. No further investigation appears to have been done, and the discrepancy between both sets of results has not been resolved. Moreover, any confusion and uncertainty could easily have been avoided by the opponents presenting consistent, accurate and precise evidence. I am unable to accept the measurements for specific airflow resistance provided by the opponents.
61. In F. Hoffman-La Roche AG v New England Biolabs Inc (2000) FCA 283, Emmett J of the Federal Court found that in opposition proceedings the Court (and by implication the Commissioner of Patents in her role as a tribunal) should be "clearly satisfied that the patent, if granted, would not be valid". Where questions of fact such as obviousness and existence of invention are involved "the grant should not be refused unless it has been clearly shown that the grounds of opposition have been clearly made out" (Montecatini v Eastman Kodak (1971) 45 ALJR 593). Having regard to the present situation, it is clear that the opponents have not met their evidentiary burden. Accordingly, I find that anticipatory use of the invention has not been established.
I will now briefly discuss innovative step.
Innovative Step
62. To obtain an innovation patent, an applicant need only show that its invention involves an “innovative step”, rather than the “inventive step” required to obtain a standard patent. Section 7(4) of the Patents Act defines an innovative step. An invention is taken to have involved an innovative step if it makes “a substantial contribution to the working of the invention” compared to the prior art, as understood by a person skilled in the relevant art in light of the common general knowledge as it existed in Australia at the priority date of the relevant claim.
63. The term “innovative step”, and the difference between it and an “inventive step” applicable to standard patents, has not yet been the subject of judicial consideration. The Federal Court has made only three decisions in relation to innovation patents, but these cases did not require consideration of the substantive requirements for an innovation patent: Datadot Technology Ltd v Alpha Microtech Pty Ltd [2003] FCA 962, Masport Limited v Bartlem Pty Limited [2004] FCA 591 and Aus Fence Hire Pty Ltd v Thomas [2004] FCA 557.
64. However, the Revised Explanatory Memorandum which accompanied the Patents Amendment (Innovation Patents) Bill 2000 stated that “the test for innovative step will require an inventive contribution lower than that required to meet the inventive step threshold set for standard patents”. The Revised Explanatory Memorandum further suggests that to satisfy the “innovative step” requirement, an invention must differ from what is already known “in a way that it not merely superficial or peripheral to the invention”.
65. As to the level of contribution necessary to be "substantial" and thus meet the innovative step test, Volume 2 of the Examiner’s Manual of Practice and Procedure states:
“…no definitive measure applies and each invention needs to be assessed on its merits given the nature of the invention and the advance over the prior art information. In assessing the extent of any contribution to the working of the invention due to the variation from the prior art, it needs to be borne in mind that no feature of a claim which is an inessential feature thereof could possibly make a "substantial" contribution to the working of the invention defined.
Where the claimed invention differs from the prior art information and yet operates in substantially the same way, the feature in which the difference resides is unlikely to be of practical significance to the way the invention works. As a result there would not be a substantial contribution to the working of the invention given the difference and hence no innovative step involved.”
66. The Smith Family, Melded Fabrics and Foss samples relied upon for prior use were also used to argue lack of innovative step. The opponents submitted that any minor differences between them and the invention claimed would make "no substantial contribution to the working of the invention". As the opponents explained:
For example, if it was found that a particular Exhibit did not anticipate the claims of the Patent because, for example, the mks Rayls reading or the web weight was slightly outside the specified range, such a minor variation would make no "substantial contribution" to the working of the invention. The decisions discussed in the Manual above indicate that any alleged difference over the prior art must have some practical impact on the functionality of the claimed invention in order for the claimed invention to involve an innovative step. Any insignificant variations from the samples submitted into evidence will not render the invention claimed in the Patent patentable. This is particularly so when the breadth of the examples produced by the Opponents shows the range across which those practising in the art were acting.
67. As mentioned previously under the heading of “Novelty”, I have no doubt that every feature of claims 1 to 5 is essential. The discussion in the Examiner’s Manual above indicates that any alleged difference over the prior art must have some practical impact on the functionality of the claimed invention in order for the claimed invention to involve an innovative step. I believe that the weight and specific airflow resistance specified in the claims is not merely superficial or peripheral to the invention, and makes a substantial contribution to the working of the invention. Also it is significant that, according to the specification, the manufacture of an acoustic sheet with these particular characteristics is the problem of the prior art which is supposedly overcome by the invention. Accordingly, I do not view any "minor variation" between the claim and the samples in evidence as insignificant, because they clearly contribute to the overall result.
68. Even if I were to feel uneasy about this conclusion, I note that the opponents have not clearly established the specific airflow resistance for each sample relied upon. As a result, it is unclear what differences actually exist between the claimed invention and the R&D samples. It is therefore not possible to compare the two to see if these differences make no substantial contribution to the working of the invention. No proper determination regarding innovative step can be made due to the deficiencies in the evidence. I have no option but to conclude that the invention of claims 1 to 5 is innovative.
69. In an alternative argument, the opponents suggested that the presence of arbitrary parameters in the claims is not sufficient to amount to an innovative step. This is akin to what Bennet J described as "parameteritis" in Williams Advanced Materials Inc v Target Technology Co LLC (2004) 63 IPR 645 at [47], using the term apparently introduced by Laddie J in Raychem Corp's Patents [1998] RPC 31. I am not persuaded by this submission, as the “arbitrary parameters” are, in my view, the raison d'être for the invention. In the context of the present invention, I believe that any argument which merely relies on “parameteritis” to demonstrate lack of innovative step is incapable of succeeding. Again, the absence of appropriate evidence provides a more fundamental reason for dismissing this allegation.
70. I conclude that claims 1 to 5 are innovative.
Interpretation of the claims
71. A significant amount of the evidence and the submissions in this matter concerned the interpretation of claim 1. Nothing turns on the issues raised in this regard due to the failure to demonstrate lack of novelty or innovative step, but I will briefly address them for the sake of completeness.
72. Perhaps motivated by their concerns regarding prior use, the applicant argued that certain terms in claim 1 be given a narrow construction. For example, it was submitted that the phrase “selected airflow resistance” signifies an “…acceptable uniformity of airflow resistance through the acoustic sheet”, and that this requirement for uniformity would preclude layered products from being considered as acoustic sheets. The applicant directed my attention to paragraph 2.4 of the Hansen declaration in support of their argument.
73. I consider that Professor Hansen’s comments fall some way short of supporting the contention that an acoustic sheet cannot be formed from a layered material. I also note that such a suggestion is diametrically opposed to the teaching of the patent specification. At page 5, lines 21 and 22, the specification contemplates the lamination of a "layer of non-woven fabric or other material” to the compressed thermoplastic sheet. At page 6, lines 1 to 9, the specification discusses the “…application of multiple webs of fibrous material…”. Further examples of thermoformable acoustic sheets formed from multiple webs appear at page 6, lines 11 to 16 and lines 17 to 26. At page 7, lines 18 to 25, the specification discusses “…the option of using an additional layer of fibrous material as the coating…”. Moreover, under the heading "Test Results" from page 10 onwards, it is clear that the acoustic sheets of examples 8 and 9 were manufactured by laminating two webs together, that these acoustic sheets were tested, and that a satisfactory airflow resistance was obtained.
74. The opponents also noted that there is no explicit limitation in the claims requiring the acoustic sheet to be formed from non-layered material and that it be uniform either across the sheet or through its thickness. Even though the applicant submitted that the claims are so limited when reading the specification as a whole, I can see no reason to interpret "selected" as meaning "uniform and non-layered". As Sheppard J discussed in Decor Corporation Pty Ltd v Dart Industries Inc 13 IPR 385, it is not legitimate to confine the scope of the claims by reference to limitations that may be found in the body of the specification but are not expressly or by proper inference reproduced from the claims themselves. In my view, to accept the applicant’s arguments would require considerable strain to be placed on the plain meaning of the language used in the claims. There is simply no foundation for so limiting the term “selected”.
75. Applying the same reasoning, I must also reject the applicant’s contention that an overly restrictive approach be adopted for the terms “acoustic sheet” and “thermoformable”. The terms should be broadly construed in light of their plain meaning.
76. The opponents did submit that the term “about” which qualifies the web weight of the invention of claims 1 and 2 should be construed quite broadly, and suggested that a range of plus or minus 10% would be appropriate. According to this proposition, an acoustic sheet possessing a web weight of “about 1000 gsm or below” would be anticipated by an acoustic sheet with a web weight of up to 1100 gsm. The applicant does not accept any of this. They contend that the term “about”, when the specification is read as a whole, is clear and unambiguous, and should be construed far more narrowly. In their view, a person skilled in the art would recognise that the term “about” limits the range to only several gsm above the criterion of 1000 gsm.
77. In my view the first issue to be decided is whether the term “about” when used in this context is clear. There is a secondary issue, important for infringement, as to the precision of the numerical limit.
78. The authorities have recognised that generality of language in a claim is not fatal so long as the claim indicates the territory which is forbidden, and the claim may do so in a sufficiently general way to render difficult the task of the proposing infringer (eg.Electric and Musical Industries Ltd v Lissen Ltd (1938) 56 RPC 26, Interlego AG v Toltoys Pty Ltd Ltd (1973) 130 CLR 461). I appreciate that imprecise terms such as “about” can potentially cause lack of clarity in the claims of a patent specification. However, given the nature of the present invention, which clearly does not reside in a field of technology demanding of fine tolerances, I think that the meaning of the term would be readily apparent to the skilled addressee and that the term should be interpreted liberally.
79. The only evidence of substance on this issue was provided by the opponents. Exhibits PD-1, PD-2 and PD-3 to the Dunn declaration are copies of Piece Goods Questionnaires which record a potential customer’s specifications in relation to a proposed new nonwoven product. These three documents suggest that that the industry standard manufacturing tolerance for the weight of a nonwoven product is ± 10%. As no evidence to the contrary has been provided, I see no reason to reject the argument that a person skilled in the art would construe the term “about” as allowing for anything less than a 10% tolerance.
In summary, I conclude that the claims satisfy the requirements of s. 40(3) of the Patents Act.
CONCLUSION
80. I have found, based on the evidence before me, that the invention defined by claims 1 to 5 is novel and innovative. The opposition is unsuccessful on all grounds. Subject to any appeal, I direct that the application proceed to sealing.
COSTS
81. Both parties, irrespective of whether the application was granted or denied, argued that costs should be awarded in their favour. The power of the Commissioner to award costs is based on section 210 and regulation 22.8. The power to award costs is discretionary, so I must take into account all relevant considerations.
In actions before the Commissioner, costs usually follow the event. In this case I have found in favour of the applicant on all the issues raised. Considering all of the circumstances I award costs against the opponents.
R. W. J. Finzi
Delegate of the Commissioner of Patents
24 Feburary 2006
Patent attorneys for the applicant: Davies Collison Cave, Melbourne
Patent attorneys for the opponent: Mallesons Stephen Jaques, Sydney
Table 1: Innovation Patent 2003100331 – Opponents’ Samples Relied on
| Name | Exhibit | TSF Production Run | Evidence | Layered | Resistance (Rayls) RMIT | Resistance (rayls) University of Adelaide | Opponents’ evidence as to weight (gsm) | RMIT weight (gsm) |
| TSF 1 | AK-1 | 4667 | Dunn/Madden | 705.6 | 1200 | 1000 | 988.4 | |
| TSF 2 | AK-2 | 4940 | Dunn/Madden | ü | 404.3 | 400(L) | 444.9 | |
| TSF 3 | AK-3 | 4954 | Dunn/Madden | ü | 522.1 | 400 + 200(L) | 624.9 | |
| TSF 4 | AK-4 | 3919 | Dunn/Madden | ü | 1634.1 | 2100 | 612(L) | 674.1 |
| TSF 5 | AK-5 | 2724 | Dunn/Madden | 706.4 | 1100 | 1050 | 1071.8 | |
| TSF 5(b), (c), (d), (e), (f) | AK-6 to AKJ-10 | 2724 | Dunn/Madden | |||||
| TSF 6 | AK-11 | 2723 | Dunn/Madden | 470.1 | 730 | 500 | 510.3 | |
| TSF 6b | AK-12 | 2723 | Dunn/Madden | 420 | 750 | |||
| TSF 6c | AK-13 | 2723 | Dunn/Madden | 460 | 850 | |||
| TSF 6 “Reproduction” | PD-12 to 14 and PD-19 to 21 | 4279 (Reproduction) | Dunn #2 | |||||
| TSF 6b “Reproduction” | PD-15 to 17 and 22 to 24 | 4279 (Reproduction | Dunn #2 | |||||
| Borgers Absorbtive Carpet | RLM-1 | Mahon | 1400 | About 1000 | 1227 | |||
| Melded Fabrics 1 | GKJ-3 | Johnson | ü | 268.0 | 470 | 820 (L) | 1181.6 | |
| Melded Fabrics 2 | GKJ-5 | Johnson | ü | 302.4 | 480 | 735 (L) | 891.9 | |
| Foss 1 | SWF-1 | Foss | 630 | 405 | ||||
| Foss 4 | SWF-5 | Foss | 290 | 340 | ||||
| Foss 6 | SWF-7 | Foss | 910 | 920 | ||||
| Foss 7 | SWF-8 | Foss | 610 | 610 | ||||
| Foss 8 | SWF-9 | Foss | 510 | 610 | ||||
| Foss 9 | SWF-10 | Foss | 230 | 200 | 196.9 |
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