Thermacon Insulation Pty Ltd v Kingspan Insulation Pty Ltd - [2016] APO 81

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Thermacon Insulation Pty Ltd v Kingspan Insulation Pty Ltd [2016] APO 81

Patent Application: 2012241111

Title:Perforated Sheeting

Patent Applicant:                   Kingspan Insulation Pty Ltd
Opponent:  Thermacon Insulation Pty Ltd
Delegate:  R Subbarayan
Decision Date:  15 November 2016
Hearing Date:  24 August 2016, in Canberra

Catchwords:  PATENTS – section 59 – opposition to grant of patent – insulation sheeting with perforations for vapour permeability - grounds of opposition include manner of manufacture, inventive step, full description, clarity and fair basis – opposition unsuccessful – costs awarded

Representation: Patent attorney for the applicant: Gareth Dixon of Shelston IP
Patent attorney for the opponent: Barry Newman of Armour IP

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2012241111

Title:Perforated Sheeting

Patent Applicant: Kingspan Insulation Pty Ltd
Date of Decision: 15 November 2016
DECISION
The opposition does not succeed. The claimed invention is novel, inventive, clear, fairly based, fully described and a manner of manufacture.
I award costs according to Schedule 8 against the opponent Thermacon Insulation Pty Ltd.
REASONS FOR DECISION
BACKGROUND

Divisional application AU 2012241111 in the name of Air-Cell Innovations Pty Ltd was filed on 15 October 2012 and claims priority from parent application AU 2006203389 filed on 4 August 2005. Air-Cell Innovations Pty Ltd subsequently changed its name to Kingspan Insulation Pty Ltd (the applicant). Following examination, the application was advertised as accepted on 20 November 2014. Thermacon Insulation Pty Ltd (the opponent) has opposed the grant of the patent under section 59 of the Patents Act 1990.
GROUNDS OF OPPOSITION
The opponent’s Statement of Grounds and Particulars (SOGAP) was filed on 20 May 2015 and identifies the grounds of opposition as manner of manufacture, novelty, inventive step, full description, clarity and fair basis. However at the hearing the opponent did not press the ground of novelty.
EVIDENCE
Evidence in support from the opponent comprises the following:
·Declaration of Joshua Tomkinson dated 20 August 2015 (Tomkinson #1)
·A first declaration of Thomas Wright dated 18 August 2015 with exhibits ESP-1 to ESP-5 (Wright #1)
·A second declaration of Thomas Wright dated 19 August 2015(Wright #2)
Evidence in answer from the applicant comprises the following:
·Declaration of Keith Robert Anderson dated 22 December 2015 with exhibits KRA-1 to KRA-5. (Anderson #1)
Evidence in reply from the opponent comprises the following:
·Declaration of Joshua Tomkinson dated 19 February 2016 with exhibits JT-1 to JT-5. (Tomkinson #2)
Mr Tomkinson is a Director of Thermacon Insulation Pty Ltd who has worked in the insulation industry since 1990.
Mr Wright is the President of Environmentally Safe Products, Inc., an American company that manufactures and sells insulation products under the brand name Low-E.
Mr Anderson is a named inventor of the present application and is currently employed by Kingspan Insulation Pty Ltd as a Technical R&D and Accreditations Manager. He holds the technical qualifications of Associate Diploma in Civil Engineering and Accredited
House Energy Assessor, FirstRate; BERS Pro; and AccuRate. He states that because of his experience and qualifications he has detailed practical experience of insulating materials and their properties as well as a deep theoretical appreciation of the industry and its technical requirements.
ONUS OF PROOF
The examination request for this patent application was filed on 21 February 2013. As a consequence, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present application. This includes the amendment to subsection 60 (3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists.
Consequently the former standard for opposition proceedings applies and the opponent must establish that it is clear or practically certain that the patent is invalid (F Hoffman La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17]).
SPECIFICATION
The specification states that the present invention relates to insulation sheeting that has been devised particularly for insulating buildings and other structures.
Under the heading “Background of the Invention”, it states that various types of heat insulation are available for buildings and that one such insulation is a thermo-reflective insulation sheeting that “comprises a single layer closed cell structure interposed between two outer layers, at least one of which comprises a reflective foil”. The closed air cell structure serves to reduce the amount of heat transfer through convection and conduction, and the reflective layer serves to reduce heat transfer through radiation. An example of such thermo-reflective insulation sheeting is also stated as being disclosed in the applicant's Australian innovation patent 2003100663 the contents of which are incorporated in the present specification by way of reference.
This type of insulation sheeting typically also acts as a barrier to water vapour. However for certain applications such as walls and floors, the specification states that “it is desirable that the sheeting have some permeability to moisture vapour so as to reduce the risk of moisture damage due to condensation in the building envelope cavity”.
The present invention is stated to provide an insulation sheeting that addresses this issue.
The specification then provides the following “Summary of the Invention”
According to a first aspect of the present invention there is provided fire-retardant insulation sheeting comprising a body having a pair of opposed surfaces, each opposed surface laminated with a foil coating, at least one said foil coating being anti-glare, the body comprising a closed cell cross-linked polyethylene foam structure to which an appropriate quantity of a fire-retardant substance has been added, the body comprising a plurality of perforations extending fully therethrough for vapour permeability between the opposed surfaces defined by the respective foil coatings.
A detailed description of certain preferred embodiments is then provided with reference to figures 1 to 7 of which figure 7 is reproduced below:
In the embodiment shown in this figure, the insulation sheeting 10 comprises two outer layers 11, 12 of reflective aluminium foil with a closed cell foam structure 13 bonded therebetween. At least one of the foil outer layers is provided with a surface treatment such as colouring for providing glare reduction. The closed cell foam structure comprises a cross-linked low density polyethylene foam that includes a fire retardant, a UV protectant and an anti-oxidant. The fire retardant may provide a Fire Index of less than or equal to five under Australian Standard AS 1530.2. A plurality of perforations 25 are formed in the sheeting and comprise holes 27 that extend through the outer layers and the closed cell foam structure. The perforations are of a size that provides for permeability of air and water vapour but precludes the passage of water in liquid form.
The specification ends with 10 claims of which the independent claims read as follows.
1.A fire-retardant insulation sheeting comprising a body having a pair of opposed surfaces, each opposed surface laminated with a foil coating, at least one said foil coating being anti-glare, the body comprising a closed cell cross-linked polyethylene foam structure to which an appropriate quantity of a fire-retardant substance has been added, the body comprising a plurality of perforations extending fully therethrough for vapour permeability between the opposed surfaces defined by the respective foil coatings.
6.A method of manufacturing insulation sheeting comprising forming a body having a pair of opposed surfaces, said body comprising a closed cell cross-linked polyethylene foam structure to which an appropriate quantity of a fire-retardant substance has been added; laminating each opposed surface with a foil coating, at least one said foil coating being anti-glare; and perforating the body with a plurality of perforations extending fully therethrough for vapour permeability between the opposed surfaces defined by the respective foil coatings.
The opponent provided in their written submissions the following list of the integers of claim 1 which I will also adopt in this decision.
1. A (A) fire-retardant insulation sheeting comprising
(B) a body having a pair of opposed surfaces,
(C) each opposed surface laminated with a foil coating,
(D) at least one foil coating being anti-glare, the body comprising a
(E) closed cell cross-linked polyethylene structure to which
(F) an appropriate quantity of a fire-retardant substance has been added, the body comprising
(G) a plurality of perforations extending fully therethrough for
(H) vapour permeability between the opposed surfaces defined by the respective foil coatings.
CLAIM CONSTRUCTION AND CLARITY
The approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70, 81 IPR 228 at [118] – [120]:
“the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification”
The opponent submitted that the term ‘for vapour permeability between the opposed surfaces’ should not be construed narrowly as requiring that the perforations provide permeability only to air and water vapour to the exclusion of liquids such as water. They submitted that Mr Tomkinson has stated that “being permeable to water vapour does not imply that the material is impermeable to liquid water” (Tomkinson #2 at 4).
I disagree. While the term ‘vapour permeability’ does not explicitly impose any limitation on the size of the perforations, in my view the skilled addressee would understand that this term refers to permeability to vapour only and not to liquids. If the intent was to also allow water permeability the claim would have stated the perforations allow for water permeability rather than vapour permeability as water permeability would inherently also provide vapour permeability. Such a construction is also clearly supported by the description at page 8 of the specification where it states:
“The perforations 25 are of a size, spacing and number to provide the insulating sheeting with permeability to water vapour, thereby allowing a building in which the sheeting is installed to "breathe" through the sheeting and to minimise any condensation arising within the building envelope cavity from the barrier-effect of the sheeting. More particularly, the perforations 25 are such that the insulation 30 sheeting can comply with the permeability rating required for wall and floor applications. The perforations 25 are, of course, of a size which excludes normal passage of water in liquid form therethrough.”
In my view when the claim is read in context of the specification as a whole, it is clear that this term refers only to permeability for vapours and not permeability for liquids.
The opponent submitted that the term ‘appropriate quantity’ of a fire-retardant substance does not provide a clear boundary around the claim as it is unclear what it is appropriate for.
In Leonardis, Nicola v Sartas No 1 Pty Ltd & Anor [1996] FCA 449 (13 June 1996) it was stated:
It is not inadmissible to use in a claim an imprecise word, in an appropriate context, where it conveys the necessary meaning: cf. Populin v H B Nominees Pty Ltd [1982] FCA 45; (1982) 41 ALR 471 at 473 ("relatively small"); Imperial Chemical Industries Limited (Clark's) Application [1969] RPC 574 at 583, 584 ("a minor amount of water ... small in comparison with the total amount of other liquid constituents"); Vax Appliances Limited v Hoover plc [1991] FSR 307 at 309, 318 ("substantially dropwise" flow); Monsanto Company v Commissioner of Patents (1974) 48 ALJR 59 ("substantial effect"). The purpose of the integer conveyed by the words "substantially above" being plain, the dictum of Taylor J. in Martin v Scribal Proprietary Limited [1954] HCA 48; (1954) 92 CLR 17 at 97 applies: "[I]t is right to construe a claim with an eye benevolent to the inventor and with a view to making the invention work - this is an application of the old doctrine ut res magis valeat quam pereat".
As noted earlier, the specification states that the fire retardant may provide a Fire Index of less than or equal to five under AS 1530.2. So even though the claim may not specify what is the appropriate quantity, in my view when the claim is read in the context of the specification as a whole, it is clear that the appropriate quantity refers to the quantity of fire-retardant that when included in the polyethylene foam will provide for a Fire Index of 5 or less. I further note that Mr Tomkinson does not state that he would not understand the scope of this term. This term in the claims is clear.
INVENTIVE STEP
Under the provisions of subsections 7(2) and 7(3) of the Patents Act 1990, an invention is taken to involve an inventive step when compared with the prior art base unless it would have been obvious to a person skilled in the art. The invention must be obvious in the light of the common general knowledge as it existed in the patent area before the priority date, either on its own or together with information in a document, or combination of documents, that the person skilled in the art could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant and, where necessary, combined. Obvious means ‘very plain’ (Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21; (2007) 72 IPR 447 at 461 [51] - [52]).
The test for obviousness was provided by Justice Aickin in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; 148 CLR 262 at 286 as follows:
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
Where the invention lies in a combination of features, the question is whether the combination, not each individual feature, is obvious when compared to the prior art base:
"The claim is for a combination, the interaction between the integers of which is the essential requirement for the presence of an inventive step. It is the selection of the integers out of "perhaps many possibilities" which must be shown to be obvious, bearing in mind that the selection of the integers in which the invention lies can be expected to be a process necessarily involving rejection of other possible integers." (Aktiebolaget Hässle v Alphapharm Pty Limited [2002] HCA 59 at [41])
An important consideration is also the impermissible use of hindsight. The High Court in Alphapharm (supra) also warned against the misuse of hindsight noting that the danger of such misuse will be "particularly acute where what is claimed is a new and inventive combination for the interaction of integers, some or all of which are known". In that regard, the court referred with approval to Lord Diplock's comments in Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd [1972] RPC 346 (at 362):
"Once an invention has been made it is generally possible to postulate a combination of steps by which the inventor might have arrived at the invention that he claims in his specification if he started from something that was already known. But it is only because the invention has been made and has proved successful that it is possible to postulate from what starting point and by what particular combination of steps the inventor could have arrived at his invention. It may be that taken in isolation none of the steps which it is now possible to postulate, if taken in isolation, appears to call for any inventive ingenuity. It is improbable that this reconstruction a posteriori represents the mental process by which the inventor in fact arrived at his invention, but, even if it were, inventive ingenuity lay in perceiving that the final result which it was the object of the inventor to achieve was attainable from the particular starting point and in his selection of the particular combination of steps which would lead to that result."
The High Court in Alphapharm (supra) also noted that “It is important also to remember that in Australia, a "scintilla of inventiveness" will suffice: "no smallness or simplicity will prevent a patent being good"”.
The usual approach to determining inventive step is the problem-solution approach. Once the problem has been formulated and the common general knowledge and the prior art base has been determined, the question of whether the claimed solution is obvious must be addressed.
Common General Knowledge (CGK)
The opponent submitted that based on the evidence of Mr Tomkinson all of the integers of claim 1 other than those relating to the perforations, i.e. integers A to F, were CGK at the priority date.
The applicant submitted that they strongly dispute this contention and in particular they argued that integers D (anti-glare foil) and F (fire retardant foams) were not CGK.
Anti-glare foil (integer D)
In relation to this integer Mr Tomkinson states as follows:
“In August 2005 I was well aware of the use of anti-glare coatings on insulation sheeting foils. These coatings were common and well known in the industry. They were used in situations where the foil might be exposed, and where bright reflections might prove annoying”. (Tomkinson #1 at 3)
Mr Wright states:
“I have been asked to comment on the use of anti-glare coatings for foil layers. I consider such coatings to have been commonplace in our industry for at least twenty years”. (Wright #1 at 12)
Mr Anderson states:
“I disagree that the use of anti-glare foil coating was "common and well-known in the industry". Mr Tomkinson has not defined what he considers "common and well known", let alone how broadly he has characterised "the industry". Accordingly, in the circumstances, all I can offer is that I disagree with such broad, vague generalisations”. (Anderson #1 at 35)
“I refer now to Point 12 of Wright-1, in which Mr Wright comments on the use of anti-glare foil. Mr Wright considers (without providing any examples) such foils to have been "commonplace in our industry for at least twenty years". However, this statement, in similar vein to that of Mr Tomkinson's Point 3, cannot reasonably be taken as gospel in the absence of any examples or substantiation. Notwithstanding, I understand that the real question is whether anti-glare foils have been commonplace within the field of closed cell cross-linked fire-retardant containing polyethylene foam insulating materials prior to 4 August 2005; this question is not addressed in the Wright-1 Declaration”. (Anderson #1 at 86)
“Mr Wright concedes in Point 11 that an anti-glare coating is not a part of "E4H00", nor indeed any of its successor products marketed after the priority date of 4 August 2005”. (Anderson #1 at 87)
“Notwithstanding, based upon my understanding of the opposed application (see Points 17 to 32, above), we are not claiming to have invented anti-glare facing on insulation materials. Anti-glare is but one feature of the opposed invention”. (Anderson #1 at 36)

Mr Tomkinson has in response provided an extract from the Energy Smart Housing Manual published by Sustainable Energy Authority of Victoria in 2002 (Exhibit JT-1) and a data sheet dated September 2000 for a Bradford Insulation product known as 'Thermofoil Light Duty Antiglare', (Exhibit JT-2) to support his view that the use of anti-glare foil was well known in the art.
In the Energy Smart Housing Manual under the heading “Reflective Insulation” it states:
“Double-sided foil is typically produced with an anti-glare coating-this reduces the insulation's effectiveness by around 10%”.
In the 'Thermofoil Light Duty Antiglare' data sheet it states:
“Thermofoil™ Light Duty Antiglare (732) has a blue antiglare coating to reduce hazardous sun glare during installation”.
In my view the information in these two exhibits clearly supports Mr Tomkinson’s assertion that the use of anti-glare foil in insulation sheeting was well known in the art in Australia at the priority date. At the hearing the applicant did not provide any submissions to the contrary. I am therefore satisfied that integer D was CGK in the art.
Fire retardant foams (Integer F)
In relation to this integer Mr Tomkinson states:
“In August 2005 I was aware of 'fire-retardant' foams being available. These were (and are) 'off the shelf products. They were common and well known in the industry. I do not know how these foams are made, or which chemicals are added to them in order to make them 'fire-retardant'. We simply purchase the foam already made”. (Tomkinson #1 at 6)
Mr Wright states:
“I have been asked to comment about the use of fire-retardant or flame retardant substances in polyethylene foams. Such treated foams have been widely available for at least twenty to thirty years”. (Wright #1 at 13)
Mr Anderson does not appear to refute this but merely states:
“I refer now to Point 6 of the Tomkinson Declaration. In similar vein, I do not believe that we claim to have invented fire retardant foams, per se. Rather, by incorporating appropriate quantities of the relevant chemicals added to closed-cell cross-linked polyethylene foam, an enhanced fire retardancy character relative to that of "undoped" closed-cell cross-linked polyethylene foam has been obtained”. (Anderson #1 at 43)
While the applicant initially submitted that the use of fire-retardants in polyethylene foams was not CGK in the art, they subsequently changed their view and conceded that it was CGK.
I am therefore satisfied that the use of fire-retardants in polyethylene foams was CGK at the priority date.
Closed cell cross-linked polyethylene foam (Integer E)
In relation to this integer Mr Tomkinson states:
“In August 2005 I was aware of a number of different foam products readily available for use in laminated insulation sheeting products. These included closed cell cross-linked polyethylene foams, including LDPE foam. Use of closed cell cross-linked LDPE foam was common and well known in August 2005”. (Tomkinson #1 at 5)
“I consider the choice of cross-linked or non-cross-linked foam in our products to be a design choice having no significant effect on the properties of the final product. I note that US 6,720,362 describes both as equivalent examples”. (Tomkinson #2 at 17)
Mr Wright states:
“I have been asked to comment on the use of 'cross-linked' closed cell polyethylene (LDPE) foam. Low-E Housewrap does not use cross-linked foam. This was a matter of design choice for us in or around 2002. Cross-linked and non cross-linked LDPE foams were both readily used in the manufacture of insulating sheeting at this time”. (Wright #1 at 11)
Mr Anderson does not appear to rebut this but merely highlights the differences between cross-linked and non-cross-linked polyethylene foams and why it would not have been a matter of design choice to choose cross-linked over non-cross-linked polyethylene foams
Mr Anderson states:
“However, as at 4 August 2005, I would suggest that the choice between cross-linked and non-cross-linked foam was far from a matter of design choice; the two foams demonstrated perceptibly different physical and thermal properties”. (Anderson #1 at 72)
“I refer now to the opposed application, at page 9, line 24 through page 10, line 7:
The cross-linked structure of the closed cell foam structure 13 provides enhanced thermal and acoustic insulation characteristics, as well as greater resistance to heat and flame, in comparison to the prior art insulation sheeting referred to previously. Specifically the closed cell foam structure 13 produced from cross-linked LDPE foam allows construction of insulation sheeting which is thinner than the prior art sheeting referred to previously because of inherent stiffness in the foam arising from the cross-linking. Further, the closed cells within the cross-linked LDPE foam are much smaller in size than the air cells in the earlier embodiments and also in prior art sheeting. Indeed, the closed cells in the foam structure 13 comprise microencapsulated air cells, typically of a cross-sectional size less than 0. 1 mm. With this arrangement, the air cells are generally evenly distributed within the foam cell structure 13, so affording better fire resistance. This is because there are no relatively large bubbles of air to support combustion, as exist in the prior art insulation referred to previously. The even distribution of micro-encapsulated air cells also provides resistance to thermal and acoustic energy transfer”. (Anderson #1 at 73)
“Accordingly, the opposed application actually teaches the reader that the cross-linked nature of the polyethylene foam has a perceptible and tangible effect upon the physical and thermal properties of the claimed insulating material”. (Anderson #1 at 74)
Mr Anderson’s evidence merely highlights the differences between cross-linked and non-cross-linked polyethylene foams and why it would not have been a matter of design choice to choose cross-linked over non-cross-linked polyethylene foams. He does not directly address the issue of whether both types of foams were well known in the art of thermal insulation.
I have no doubt that both cross-linked and non-cross-linked polyethylene foam as products have been available well before the priority date. The only remaining question is whether it was CGK that cross-linked polyethylene foams could be used as thermal insulating material. While I accept that the only piece of corroborative evidence provided by Mr Tomkinson in relation to the use of cross-linked polyethylene foam was an isolated US document which pertains to the use of such foams for sound insulation, a cursory search on the internet strongly suggests that cross-linked polyethylene foams were well studied and understood before the priority date and were also known to be used in thermal insulation.
I am satisfied that the use of use of cross-linked polyethylene foam in thermal insulation sheeting was CGK in Australia at the priority date.
Plurality of perforations (Integer G) for vapour permeability (Integer H)
The opponent has conceded that these integers are not CGK and I accept that.
Inventive Step Considerations
The opponent submitted that claim 1 lacks an inventive step when the disclosures of each of the following prior art is combined with CGK in the art.
Low-E Housewrap product
Low-E Housewrap is an insulation sheeting manufacture and sold by Environmentally Safe Products, Inc. from around 2002. This first generation product (E4H00) is not available anymore and has been superseded by an improved product from around 2010. While Mr Wright has provided a technical manual of the improved product (exhibit ESP-5), no such manual of the first generation product E4H00 has been provided. However Mr Wright, the President of this company, in his evidence states as follows in relation to the E4H00 product:
“Low-E Housewrap is a laminated product having two or three layers: one layer of closed-cell polyethylene foam enclosed between two layers of reflective aluminium foil or with foil on one side. Once bonded together, the laminate is perforated, with perforations being spaced apart by 1.25 inches in a regular array. These perforations provide the product with vapour permeability”. (Wright #1 at 5)
“Low-E Housewrap is manufactured by laminating the foam together with the foil outer layers, and then using a tool to perforate all three layers of the laminate in a single action. The tool used is a roller with sharp 'punchers' located around its surface”. (Wright #1 at 6)
“Low-E Housewrap does not use cross-linked foam. This was a matter of design choice for us in or around 2002. Cross-linked and non cross-linked LDPE foams were both readily used in the manufacture of insulating sheeting at this time”. (Wright #1 at 11)
“For US market anti-glare coating were not required when designing product (E4H00) or (4PFNS,5PFNS, 6PFNS)”. (Wright #1 at 12)
“For US market fire-retardant or flame-retardant substances in polyethylene foams were not required when designing product (E4H00) or (4PFNS,5PFNS, 6PFNS)”. (Wright #1 at 13)
Mr Wright has also provided a vapour permeance performance test report dated November 2003 for the E4H00 product (exhibit ESP-2).
It is clear from Mr Wright’s evidence that the E4H00 insulation product comprises a layer of closed-cell polyethylene foam bonded between two layers of reflective aluminium foil with the laminated product having perforations to provide the product with vapour permeability. It differs from claim 1 in that the polyethylene foam is not cross-linked, there is no anti-glare coating and there is no fire retardant substance added to the polyethylene foam.
Subsection 7(3) of the Patents Act 1990, requires that prior art information relied on for establishing lack of inventive step must be information that the person skilled in the art could be reasonably expected to have ascertained, understood and regarded as relevant.
The evidence from the opponent in this regard, consists of exhibit ESP-3 of Mr Wright which is an advertisement for Low-E in a magazine called “Farmers Hot Line” dated April 2003 and exhibit ESP-4 which is an invoice dated 16 January 2003 showing supply of Low-E Housewrap to a customer. The opponent submitted that even a cursory search of the market would have revealed the product and therefore the skilled addressee could certainly have been reasonably expected to ascertain this product.
The applicant submitted that the opponent has not established that the E4H00 Low-E Housewrap product is one that would have been ascertained by the skilled address and I agree. While I accept Mr Wright’s evidence that this product was being manufactured and sold from around 2002, he gives no indication that it was being sold or even marketed in Australia before the priority date. Mr Tomkinson who has been clearly involved in the insulation industry in Australia since 1990 does not state that he was aware of this product before the priority date. There is also no evidence from Mr Tomkinson that the person skilled in the art of insulation sheeting in Australia would routinely have consulted a magazine called “Farmers Hot Line” which appears to be directed to farmers. Even if they did and would have seen this advertisement for Low-E Housewrap, there is nothing in this advertisement to suggest that this product had perforations for vapour permeability.
Based on the evidence from the opponent, I cannot be satisfied that the first generation Low-E Housewrap product satisfies the subsection 7(3) requirement. Hence this product is not prior art information for assessing inventive step.
The evidence does not establish that the claimed invention is obvious in light of the E4H00
Low-E Housewrap product.
US 6128879 (D2), US 6720362 (D3) and US 7452586 (D5)
In their written submissions for the hearing, the opponent for the first time introduced D2, D3 and D5 as documents that when combined with CGK would deprive some of the claims of an inventive step.
The applicant submitted that these documents were never part of the opponent’s evidence in support and that they never had an opportunity to file evidence in relation to these documents under the ground of inventive step.
I fully agree. These documents were never properly led in as evidence under this ground in the opponent’s evidence in support. They were introduced in the opponent’s evidence in reply in order to support Mr Tomkinson’s views that certain integers of the claim were well known in the art. That cannot form the basis for now introducing these documents as primary documents under the ground of inventive step.
I advised the opponent at the hearing that I would not bring these documents into the proceedings under the ground of inventive step but would rely on them only to the extent that Mr Tomkinson relies on them in his evidence in reply. I also advised the parties that the Commissioner may initiate re-examination if she forms the view that these documents are highly relevant to the ground of inventive step.
I therefore do not intend to make any findings in this decision in relation to inventive step in light of each of these documents when combined with CGK.
SUFFICIENCY
The opponent submitted that although claims 1 and 6 define a “polyethylene foam structure to which an appropriate quantity of fire-retardant substance has been added”, the specification is silent regarding the nature of the fire retardant substance and gives no indication of as to what an appropriate quantity might be and consequently does not fully describe the invention.
The legal test for sufficiency is set out in the High Court decision in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd ( 2001) HCA 8; 207 CLR 1; 177 ALR 460; 75 ALJR 518 at [25]:
"The question is, will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?"
This test clearly recognises that there can be an element of trial and error involved which would not necessarily lead to a problem with sufficiency. As McTiernan J pointed out in AMP v Utilux, (1971) 45 ALJR 123 at page 128:
"Specifications very frequently contain mistakes; they also have omissions. But if a man skilled in the art can easily rectify the mistakes and readily supply the omissions, the patent will not be held to be invalid. The test to be applied for the purpose of ascertaining whether a man skilled in the art can readily correct the mistakes or readily supply the omissions has been stated to be this: Can he rectify the mistakes and supply the omissions without the exercise of any inventive faculty? If he can, then the description of the specification is sufficient. If he cannot, the patent will be void for insufficiency."
The only disclosure in the specification in relation to fire retardancy is that “The fire retardancy is such as to provide compliance with AS 1530.2. Indeed, the fire retardant may provide a Fire Index of less than or equal to five under AS 1530.2”. Clearly there is no disclosure as to what are some of the fire-retardant substances that can be used and what the appropriate quantities would be. However that itself does not make the specification lacking in sufficiency. The real question is whether the skilled addressee would be able to identify suitable fire retardants that can be used in cross-linked polyethylene foam to achieve the specified fire index, without new inventions or prolonged study of matters presenting initial difficulty.
The opponent has submitted that the use of fire retardant substances in the polyethylene foam is CGK in the art and I have come to the same conclusion based on the evidence. The applicant argued that having submitted that the use of fire retardant is CGK, the opponent cannot also then argue that the speciation lacks sufficiency on the basis that the fire retardant substances have not been identified.
I agree. As noted by the delegate in Arch Wood Protection Pty Ltd v Koppers Performance Chemicals Australia Pty Ltd [2015] APO 89, at paragraph 108:
“The opponent said that the.. [relevant feature is] ..part of the common general knowledge. Consequently I do not see how they can establish that carrying out these would then require new inventions or additions or prolonged study of matters presenting initial difficulty. That is, if they are part of the common general knowledge then the person skilled could put them into practice without invention”.
I further note that both of the opponent’s experts were of the view that the use of fire retardant substances in polyethylene foam was well known and neither identified the lack of identification of the fire retardant substances as a serious deficiency in the disclosure of the opposed application. Although Mr Tomkinson has stated that he did “not know how these foams were made or which chemicals are added to them in order to make them ‘fire-retardant’” he acknowledges that such foams were ‘off the shelf’ products that they simply purchased. While Mr Tomkinson may not have personally known what fire retardant substances to use, the ready availability of fire retardant polyethylene foams strongly suggests that people in the art of making polyethylene foams knew what fire retardant substances to use and in what quantities.
In my view the person skilled in the art of making fire retardant foams would be able to identify without new invention or prolonged study what fire-retardant substance to use and their quantities in order to provide a Fire Index of 5 or less. The claimed invention is fully described.
MANNER OF MANUFACTURE
The opponent submitted that in independent claims 1 and 6, integers D or F do not contribute to the desired result of providing vapour permeability and that therefore in line with the principles set out by the Full Court in Smith & Nephew Pty Ltd v Wake Forest University Health Sciences [2009] FCAFC 142, these claims are mere collocation of integers that does not constitute a manner of manufacture as all of the integers of the claim do not interact to bring about the desired result.
In Smith & Nephew (supra), the Court found that claim 49, which was directed to an apparatus for applying negative pressure, was a collocation on the basis that one of the claimed integers (the aseptic packaging) had been put forward as an essential integer of the claimed combination but this integer had nothing to do with the desired result of application of negative pressure. The court clearly contrasted this claim from claim 36 which is directed to an apparatus for facilitating the healing of wounds and which was found to be a manner of manufacture.
In my view, the present case can be distinguished from Smith & Nephew (supra) in that the applicant has not put forward a construction in which integers D or F is an essential integer for vapour permeability. Claims 1 and 6 are directed to insulation sheeting that not only provides for vapour permeability but also provides for fire-retardancy and anti-glare properties and integers D and F contribute to these other characteristics of the insulation sheeting. While the invention may have been developed primarily for providing vapour permeability, the applicant has chosen to add other integers to further limit the scope of the claims and even in Smith & Nephew (supra) the Full Court made it clear that such a situation is not objectionable, in line with authorities such as British United Shoe 25 RPC 631 and Pugh 31 RPC 266.
This attack on the ground of manner of manufacture fails.
The opponent also submitted that there is no ‘mutual relation’ in the operation of any two of the integers of anti-glare coating, the fire retardant substance and the perforations for vapour permeability and each continues to operate as it did before and the claim is therefore merely a collocation of known integers.
The opponent again relied on Smith & Nephew (supra), where the Court referred to the words of Dixon J in Palmer v Dunlop Perdriau Rubber Co Ltd (1937) 59 CLR 30:
… the characteristic which a combination of known integers must possess in order to afford subject matter is mutual relation in the operation of such integers. Separate elements may be brought together and yet each may continue to operate as it did before. In other words, all that the patentee may have done is assemble together things or ideas which apart from sequence, order, position and proximity of association continue to perform their known functions as before. He may in such a case have produced a more convenient and a better appliance or process but he has contributed nothing in doing so which amounts to invention.

I am not convinced that in claim 1 the various integers are merely placed together without any mutual relationship. The anti-glare coating is provided on the foil coating which is laminated to the body of the closed cell cross-linked polyethylene foam structure, the fire retardant is incorporated into the foam structure and the perforations extend fully through the foam structure and the foil coating. As I noted earlier, the fact that the anti-glare coating and fire-retardant do not contribute to the vapour permeability cannot detract from the fact the claimed invention is to insulation sheeting that in addition to providing vapour permeability also provides for anti-glare and fire-retardancy characteristics.
This attack on the ground of manner of manufacture also fails.
FAIR BASIS
The opponent submitted that claim 4 is not fairly based as the integer of the perforations being ‘in a substantial regular array’ is not mentioned in the specification.
It is a requirement of subsection 40(3) that the claims must be fairly based on the matter described in the specification. In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 at [69], 217 CLR 274 at 300 the High Court approved the words of Gummow J in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 95 as an appropriate test for determining fair basis:
“..the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification”.
The applicant argued that while the description may not explicitly state that the perforations are arranged in a regular array, “figure 6, in particular, very clearly depicts the perforations (25) being spaced in what can only be described as a ‘substantial regular array’”.
Figure 6 is reproduced below:
I agree with the applicant that the perforations 25 are clearly arranged in a regular array. Claim 4 is fairly based.
CONCLUSION
None of the grounds of opposition have been made out. The claimed invention is novel, inventive, clear, fairly based, fully described and a manner of manufacture.
COSTS
Costs normally follow the event and the applicant has sought costs if the opposition does not succeed. As none of the grounds of opposition have been made out, I award costs according to Schedule 8 against the opponent Thermacon Insulation Pty Ltd.
R Subbarayan
Delegate of the Commissioner of Patents