Trevor McGregor and Shirley Clarke v Anthony Smith & Associates Pty Ltd and Tamper Seal (Australia) Pty Ltd

[1998] APO 42

official notice

decision of a delegate of the commissioner of patents

Application  :          No. 674624 in the name of Trevor McGregor and Shirley Clarke

Title:          Improved Cap Seal

Action:          Oppositions under s59 by Anthony Smith & Associates Pty Ltd and Tamper Seal (Australia) Pty Ltd

Decision:          Issued            .

Abstract

The grounds of obviousness and lack of novelty not established.  However, the oppositions were successful on the ground of lack of fair basis.  Other s40 matters were not established.

Although not a ground of opposition in itself, the claims were found to have a later priority date with the consequence that the claims were not novel in view of the disclosures in the applicant's granted petty patent.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 674624 by Trevor McGregor and Shirley Clarke and oppositions thereto by Anthony Smith & Associates Pty Ltd and Tamper Seal (Australia) Pty Ltd

background

Trevor McGregor and Shirley Clarke (the applicants) filed standard patent application 674624 (14871/95) on 14 March 1995 claiming priority from a provisional application PM4612 filed 21 March 1994.  The applicants also filed a petty patent application 20353/95 on 30 May 1995 as a divisional of 674624 and sealed on 16 May 1996 as petty patent 668844.  The term of the petty patent has been subsequently extended to 14 March 2001.  On 27 June 1997, the applicants proposed amendments to the standard patent application to bring its claims into line with the claims of the granted petty patent.  The present patent application 674624 was advertised accepted on 2 January 1997.  A notice of opposition by Anthony Smith & Associates Pty Ltd (opponent 1) was filed on 1 April 1997.  On 2 April 1997, a second opposition by Tamper Seal (Australia) Pty Ltd (opponent 2) was filed.  A common agent represents both opponents.  On 1 July 1997, the agent for opponents 1 and 2 served the respective statements of grounds and particulars.  The only difference between the respective statements is the inclusion by opponent 1 of a number of additional s40(2) matters.

Evidence in support of the opposition by opponent 1 was completed on 22 October 1987.  No evidence in answer was served.  No evidence in support of the opposition by opponent 2 was served.

The matter was set down for hearing in Canberra on 17 March 1998.  Mr Peter Smith, patent attorney of the firm Carter, Smith & Beadle, Melbourne, represented the applicants.  The opponents did not attend but the agent for opponent 1 sent written submissions.  In respect of opponent 2, the agent indicated that it would rely only upon the statement of grounds and particulars, and in particular the ground relating to s40 matters.

Unless otherwise indicated in my decision, a reference to the opponent refers to opponent 1.

THE SPECIFICATION

The present specification states that the invention relates to a cap seal and in particular to such seals for use with bottles such as wine bottles.

The admitted prior art is stated to be as follows:

“Historically cap seals were of lead, were often printed on their outer surface and were then crimped around the corked end of a bottle and down the neck.

To open the bottle normally a knife is used to cut around the side of the neck adjacent the top and the top part of the cap seal is removed.

Other types of cap seals have also been adopted and used, for example cap seals made of a thermoplastics material which could be shrunk onto the neck of the bottle by means of heat.  Similar cap seals to these but with a perforation around the exterior of the neck which enabled the upper portion to be readily removed; dipped cap seals in which a plastics material or a wax was deposited on the neck and the end of the bottle after dipping into a solution of the material.” (sic)

It is an object of the invention to minimise the difficulties of the prior art that the specification states to be as follows:

“All of the seals have a similar disadvantage.  Should there be any weeping or deterioration of the cork this is not discovered until the cap seal is removed and, should the wine be corked then, the user only discovers this at the time.”

The broadest form of the invention is stated to be:

“a bottle having a cap seal, which cap seal comprises a skirt portion and an end portion which extends over the lip and upper end of the bottle, in which at least a part of the seal is sufficiently transparent to allow inspection of a cork within the neck of the bottle and adjacent to the upper end of the bottle.”

A number of forms of the invention are described, two of which are:

"In the first form of the invention, the end portion is substantially transparent and the remainder of the cap seal may be made of an opaque material and in a second form the whole of the cap seal can be transparent."

The claims define the second form of the invention.

There are two forms or aspects to the formation of the seal described.

“In a first form of the invention the seal may be preformed, as by injection moulding of a feed stock which will shrink on the addition of further heat.

In this arrangement the cap seal is adapted to be placed over the neck of the bottle and be brought into contact with a source of radiant heat, such as an electrical or gas element or transmitted heat such as a hot air gun under which it will shrink and take up a position closely abutting the neck of the bottle.

In a second aspect of the invention we may, by moulding or the like form a cap seal similar to the one described above but with the difference in that the end of the cap seal is transparent and the skirt is opaque, coloured or both.

In this embodiment the skirt can have printing or the like thereon whereby the normal, say, manufacturers logo can be provided on the cap seal.”

The invention defined by the claims appears to relate to the first form or aspect of formation of the seal. [my emphasis]

The specification also discloses other forms of the cap seal.

“For example the seal could be a transparent latex type material and the seal could be applied by dipping, with the solvent from the material evaporating off it to leave a completed seal.

Also, the seal could be composite with the ends made of a transparent material and the skirt being initially in the form of a circular member which can be crimped around the neck of the bottle in the form of the lead cap seal which were (sic) historically used.  In this case the surrounding material could be, say, thin aluminium foil and the end could be located in an aperture therein by an adhesive or possibly by a heat welding process.”

From these statements in the specification, I believe that the invention comprises a corked bottle with a cap seal, so that after it is applied over the lip and neck of a bottle, it is in the form of a seal having an end portion and skirt portion.  The cap seal is sufficiently or substantially transparent so that at least part of the cork is visible through the cap seal.

There are a number of preferred options for the cap seal.  The cap seal can be preformed by a number of processes including injection moulding and dipping.  In the case of a preformed cap formed by an injection moulding process, a shrinking process using heat follows.

I note that none of the other embodiments are disclosed as essentially involving shrinking by the application of heat.

The claims defining the invention are as follows:

“1. A cap seal which is applied to the neck of a bottle by shrinkage of the cap seal over the neck wherein the cap seal is made of transparent or semi-transparent material and covers the entire cork when the cork is in the bottle, which cap seal is adapted to allow the entire length and top of the cork to be viewed so as to enable examination of the cork and thereby determine the condition of the contents of the bottle.

2. A cap seal as described in claim 1, wherein the cap seal is made of a synthetic thermoplastics material.

3. A cap seal as described in claim 1, wherein the bottle described principally relates to a wine bottle.”

My reading of the claim is that it relates to a cap seal applied to the neck of a bottle by the process of shrinking a cap over the neck of the bottle.  The cap seal is transparent or semi-transparent and covers the entire length of the cork.  The claim is not well worded.  For example, the expression at line 4 of the claim “when the cork is in the bottle” could support an intention to define a cap seal per se.  However, I do not think that this is sufficient in itself to disturb the plain meaning of the claim.

THE STATEMENT OF GROUNDS AND PARTICULARS

The grounds relied on by the opponent include all those specified under s59.  The statement of grounds and particulars also alleges that the claims may not be entitled to the earlier priority dates of the filing of the complete specification or the provisional specification with which the complete specification is associated.  The grounds are supported by a number of particulars.  The main thrust of the particulars is to the ground of lack of novelty where a number of patent specifications, which were not filed in evidence, are listed.  In relation to this ground, the particulars also allege widespread prior use.  The particulars also support the grounds of obviousness and lack of compliance with s40.

THE EVIDENCE

The evidence in support consists of a statutory declaration by Allan Sturrock, the managing director of the opponent company.  The Sturrock declaration includes 5 exhibits.

I will refer to the contents of this declaration, where appropriate, in the body of my decision.

SUBMISSIONS

Mr Smith provided me with oral submissions at the hearing together with a written summary of those submissions.  The opponent's attorney provided written submissions the day before the hearing.  I will refer to the submissions of both parties, where appropriate, in the body of my decision.

In the course of writing this decision, I decided that it would be appropriate that I consider the specification of granted petty patent 668844.  Also, in considering the particulars provided by the opponent and the respective written submissions, I considered it would allow me to reach a fairer conclusion if I considered the AU patent specification 472911 referred to in the particulars.  As neither of these documents had been put into evidence, I notified the applicants, in a letter dated 5 May 1998, that I intended to inform myself of these documents in accordance with regulation 5.11(1).  In this letter, I also advised the applicants that I intended to review the priority dates of the present claims with a view to determining if the present claims lacked novelty in the light of the granted petty patent 668844.  I allowed the applicants one month from the date of the letter to provide written submissions on these issues.  The applicants duly provided written submissions on 26 May 1998.  I will refer to these submissions where appropriate in my decision.

DECISION

It is appropriate for me to deal with the ground of non-compliance with section 40, first, as my consideration of the other opposition grounds depends on the outcome of a number of section 40 issues.

SECTION 40 MATTERS

Before deciding on the s40 matters raised by the opponent, it is appropriate to consider the scope of claim 1 first.  In its statement of grounds and particulars, the opponent states:

(a) “it is not clear whether claim 1 of the opposed application is directed to a cap seal for use with a bottle, or is directed to a cap seal when applied to a bottle,”

(b) “it is not clear whether claim 1 of the opposed application is directed to a cap seal intended to be applied to or actually applied to the neck of a corked bottle,”

As I have indicated, earlier, in discussing the specification, the claim is sufficiently clear to indicate that it is directed to a cap seal applied to a corked bottle; it is not directed to a cap seal per se.  In other words, the claims are directed to a combination of a cap seal, bottle and cork.  The broadest form of the invention described in the specification, referred to beforehand, supports this interpretation.

Lack of clarity

In its statement of grounds and particulars, the opponent alleges that claim 1 does not clearly define the invention in that:

“claim 1 of the opposed application is not clear because the ability to view the cork cannot be dependent upon the transparency or semitransparency of the cap seal alone, it must also be dependent upon whether material is interposed between the cap seal and the neck of the bottle, and the nature of any such interposed material, and whether the neck of the bottle is or is not transparent.”

While this issue probably is more to do with lack of fair basis of the claims, I agree that the characteristics of the neck of the bottle are important if the cork is to be viewed.  However, in my opinion, this part of the claim appears to be what is known as "defining by result".  The combination of the cap seal and the neck of the bottle must be such that the entire length of the cork can be viewed when it is located in the bottle.  I do not believe that this can be achieved by having a bottle which is not either transparent or translucent.  I do not agree with the opponent that the claim is unclear in this respect.

The opponent raised a number of minor clarity matters (at 4.1 (e) and 4.1 (f) in its statement of grounds and particulars) in relation to the antecedent for “the cork” at line 4 of claim 1 and the meaning of ‘principally” in claim 3.  These are minor deficiencies and I do not think that there is any need to comment on them.

Fair Basis

The opponent alleges that the claims lack fair basis because:

(a) the body of the specification does not refer to a cap seal which extends over the entire length of the bottle cork and does not refer to a cap seal which allows the entire length of the bottle cork to be viewed;

(b) the cap seal of claim 1 does not have a skirt portion and an end portion as referred to at page 3, lines 1 to 5, of the specification of the opposed patent application; and

(c) claim 1 of the opposed application does not identify the mechanism whereby the cap seal is shrunk onto the neck of a bottle, whereas the specification of the opposed application only discloses shrinkage by application of heat.

The question of fair basis has been dealt with in CCOM Pty Ltd v Jiejing Pty Ltd 1994 AIPC 91-079 and Leonardis v Sartas (No. 1) 35 IPR 23. In these decisions, the court determined the fair basis of the claims by deciding whether or not there was a real and reasonably clear disclosure of the claimed invention in the body of the specification.

In relation to feature (a) above, I agree with the opponent that there is no explicit reference to the cap seal covering the entire length of the cork.  Nor can I find any explicit reference to the cap seal permitting the entire cork to be viewed.  Although there is clear support in the specification for the whole of the cap seal being transparent, there is no statement relating this to viewing of the cork.

There is no discussion in the specification of the rationale behind having the whole cap transparent (or semi-transparent) and that of the cap seal covering the whole of the cork.  Mr Smith directed my attention to the embodiment in the last paragraph on page 3 of the specification, which states that “the cap seal is adapted to be placed over the neck of the bottle”.  Mr Smith’s argument is that as the neck of a wine bottle is long and as the cork does not extend the whole length of the neck, necessarily the entire cork must be covered by the cap seal.  I cannot agree with this argument.  I do not believe that the words “over the neck” provide a real and reasonably clear disclosure of the entire length of the cork.

Although no mention was made of this at the hearing, the prior art refers to the cap seal extending “down the neck”.  Although this is a general statement of the prior art, it is not necessarily a general statement of the cap seal of this invention.  In view of the lack of evidence in this matter, there is in my view no basis for suggesting that placing a cap seal over the neck of a bottle means covering the entire cork.  Therefore I am in agreement with the opponent on this matter.  The specification only provides support for the fact that a cap seal is sufficiently transparent to allow inspection of the cork within the bottle, it does not include any real and reasonably clear disclosure of the cap seal wholly covering the cork.

Having said that, I have some considerable difficulty in accepting that a cap seal that covers the entire cork makes any substantial contribution above that of a cap seal that does not cover the entire cork.  The claim is directed to the combination of a cap seal, bottle and cork.  For the invention to be realised both the bottle and seal must be transparent or semi-transparent otherwise the viewability of the cork would not be realised.  In other words, the coverage of the cork by the cap seal is irrelevant so long as it is transparent.

Therefore I do not believe that there is any real and reasonably clear disclosure of the cap seal covering the entire cork.  Such a construction appears neither to be taught by the specification as filed nor the specification at acceptance.

Therefore, I find that the claims are not fairly based on the matter described in the specification.

In relation to (b), I agree with the opponent.  The broad statement of the invention (previously quoted) refers to a cap seal comprising a skirt portion and an end portion that extends over the lip and upper end of the bottle.  All of the embodiments are characterised by these features.  There is no real and reasonably clear disclosure of a cap seal without these features.

Therefore, I find that the claims are not fairly based on the matter described in the specification.

In relation to (c), it is clear that only shrinkage by the application of heat is mentioned in the specification.  The claims appear to have their source of fair basing from the embodiment in which the cap seal (produced by injection moulding process) is shrunk by heat onto the neck of the bottle.  However, the claims' use of the language “applied to the neck of the bottle by shrinkage” is broader than this.  I note that there was no evidence before me of what constitutes the common general knowledge in the art.  There is no evidence before me that suggests injection moulding would provide a real and reasonably clear disclosure of any process of shrinkage per se.  Therefore, there is no fair basis for shrinkage in general.

To summarise my findings on fair basis, I am of the view that the claims are not fairly based because they fail to define that the cap seal has an end potion and a skirt portion that extends over the lip and upper end of the bottle.  The invention as defined includes the feature of the whole of the cork being visible through the cap seal, such a feature not being disclosed in the specification as filed or as accepted.  The claims also include the feature of the cap being applied to the neck of the bottle by shrinkage other than by the application of heat, such a feature not being disclosed in the specification as filed.

Insufficiency

The opponent in its statement of grounds and particulars under the ground of insufficiency alleges that:

“There is insufficient information to enable a person skilled in the relevant field to perform the "invention" as described, without undue experimentation.  For example:
(a) The specification does not specify a suitable synthetic thermoplastics material.  As there are many different types of thermoplastics materials, a person skilled in the art would have to perform a substantial amount of experimentation to identify the best materials.
(b) “The method of preforming the cap seal disclosed in the specification is injection moulding.  However the typical method used for preforming the cap seal is forming or folding sheet material into a cylindrical shape.”

In my view point (a) is not relevant, as there is no evidence before me to suggest that a person skilled in the art would have any difficulty in carrying out the invention.

I am not sure what the opponent is intending to address with point (b).  The applicants are only required to provide the best method of performing the invention known to them.  There may well be other ways of preforming the cap seal but this does not mean that the specification lacks sufficiency.

I do not find that the specification is insufficient.

THE STURROCK DECLARATION

As I have indicated previously, the only evidence served by the opponent is the Sturrock declaration.  Both parties provided me with submissions on what weight I should give to this evidence.

The opponent states that:

“The declaration of Allan Sturrock has not been challenged and therefore substantial weight should be given to its content.  This proposition is supported in the decision of Bodenseewerk Perkin -Eilmer GMBH v Varian Australia Pty.  Ltd. (32 IPR 110 at 142 line 40).  In particular, the extent of common general knowledge existing in Australia at the priority date has not been challenged, nor have any of the statements regarding the existence and use of various relevant products in Australia.  It is therefore considered that the statements made in the Sturrock declaration accurately reflect the position as it existed in Australia before the priority date of the application.”

Mr Smith referred to a number of authorities that suggest that uncorroborated evidence from a witness who is not an independent witness does not have strong probative value:

“As is clear from precedent, the proof of prior user in opposition cases should be very clear. In the decision handed down in the Opposition matter of Raychem Ltd. and Global Lightning Technologies Pty Ltd. (36 IPR 572), the Delegate of the Commissioner, under the heading "Novelty", set forth a clear analysis of the precedents concerning prior user. As stated, in the case of prior user, some corroboration of evidence is usually required. In Seiller's application (1970 RPC 103) Graeme J. said at Page 106:

'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 1 say expressly that 1 am not attempting to lay down any rule as to what is or is not sufficient in any given case'.

The Delegate of the Commissioner in the Raychem decision also referred to the case Windsurfing International Inc. v. Petit; Windsurfing International Inc. v. Borsimex Pty.  Ltd. (1 984 AIPC 90-135) in which it was stated:

'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".

Whilst there are at least two Patent Office decisions where the uncorroborated evidence of an independent witness has been sufficient to establish the facts alleged in relation to prior use, namely, Glenwood Systems v. Gooden (1993 AIPC 90-985) and Endurequip v. Robin and Roelofs (1993 AIPC 91-037, 28 IPR 131), the situation in the present opposition does not fall into this category because the evidence of Mr Sturrock is not evidence of an independent witness.

In the Raychem opposition (Supra) three separate deponents from the opponent company declared to a specific fact of prior user and the hearing officer rejected this evidence in the absence of any physical or documentary evidence to substantiate what was stated in their declarations.  In the Delegate's opinion, this evidence should have been corroborated by actual examples of the prior user device.  Having regard to the requirement, on the authorities, that the proof be sufficient in the circumstances having regard to the gravity of the allegation, the Delegate found that the opponent had not satisfactorily established that prior user involving use of the device in question had occurred.

I submit in the present circumstances the situation is very similar to that in the Raychem v. Global Lightning Technologies opposition in that the opponents have not clearly established any examples of prior user.”

In considering the Sturrock declaration, I am unable to determine what Mr Sturrock is alleging is the extent of the common general knowledge.  Mr Sturrock lists a large number of products sold by his company to various customers but does not indicate if he believes that these products were part of the common general knowledge.  Therefore, I think that the opponent's argument that the extent of the common general knowledge has not been challenged is irrelevant.  The Sturrock declaration is directed more towards establishing prior use of the claimed invention.  To the extent that it is, I agree with Mr Smith's submissions that the proof needed to establish prior user should be very clear.  It seems to me that I should give the Sturrock declaration less weight than any evidence that might have been provided by an independent witness.  That is not to say, however, that I should ignore the evidence provided by Mr Sturrock.

NOVELTY

In relation to novelty, Mr Smith referred me to the reverse infringement test for novelty as set out by Aickin J in Meyers Taylor v Vicarr Industries (1977) CLR 228 as follows:

"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."

In Rodi Wienenberger AG v Henry Showell [1969] RPC 367 at page 391, infringement of a claim is said to occur when "each and every one of the essential integers" of that claim have been taken.

Thus in order to decide whether or not the claims lack novelty, I must determine whether or not each and every essential integer of the respective claim is disclosed in the earlier publication or article.

The Sturrock declaration has five exhibits which include a number of product samples and brochures.

I note that all the samples supplied are made of thin, very flexible transparent material.  Some of them are open at the broad end and closed at the narrow end.  I am far from convinced that the products referred to by the opponent are caps.  Therefore, I do not believe that these samples disclose all the essential integers of the claims.  In any event, the essential integers of the claimed invention include a corked bottle which none of the samples have.

I also conclude that the Sturrock declaration does not give any evidence as to injection moulding caps or any other caps as disclosed in the specification.

I also note that the product brochures do not disclose transparent cap seals or corked bottles.  Therefore, they do not disclose all the essential integers of the claims.

In my view paragraph 11 of the Sturrock is most critical to this ground of opposition.  The full quote from this paragraph follows:

“Prior to 1994 my company manufactured transparent shrink fit capsules for applications to the neck of a corked wine bottle.  Those capsules had a tubular body, which was open at one end and closed at the other.  The capsule was dimensioned such that when it was applied to the neck of a wine bottle by shrinkage the body of the cap extended for the full length of the bottle cork and the end wall of the capsule extended completely across the top of the cork.  The transparency of the capsule was such that it would permit visual detection of leakage at both the side and the end of a cork.  The capsule was essentially a smaller version of the products forming Exhibit AS2 and the product which my company supplied to Scholle Industries Pty Ltd in 1991.”

In response to this, Mr Smith for the applicants stated:

“Referring to paragraph 11 of the Sturrock Declaration, we submit that this paragraph contains a very vague and unsupported statement which at best is unconvincing.  The clear implication in this statement is that none of the capsules exhibited by the Exhibit "AS-2" of Sturrock were in respect of wine bottles for the purpose of permitting visual detection of leakage at both the side and the end of a cork.  If in 1994 his company manufactured transparent shrinkfit capsules for application to the neck of a corked wine bottle, we question why Mr Sturrock was unable to provide samples or examples of the capsules in question.  There is no manufacturing drawing, customer order, specification or anything else to support the vague statement in this paragraph of the Sturrock Declaration.  Likewise there is no explanation as to why samples of other products have been exhibited to his Declaration but no examples of what would surely be the most relevant product.”

I entirely agree with these comments made by Mr Smith.  I am not persuaded that the Sturrock declaration is of high probative value.  There is no corroborating evidence that one would expect in such a situation.  To my mind, in order to support a claim of prior use, this lack of corroborating evidence is fatal to the opponent's case.

In summary, I do not believe that the evidence before me establishes that the claims in suit lack novelty.

The opponent in its statement of grounds and particulars alleges that the invention as claimed is not novel having regard to the offer for sale, or sale, or use of numerous products from numerous manufacturers to numerous customers.

As there is no supporting evidence from these companies, I am unable to give these statements any weight.

I have found that the opponent has not established the ground of lack of novelty.

LACK OF INVENTIVE STEP

The Patents Act 1990 refers to inventive step as follows:

"7 (2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with either of the kinds of information mentioned in subsection (3), each of which must be considered separately.

(3) For the purposes of subsection (2), the kinds of information are:
     (a)  prior art information made publicly available in a single document or through doing a single act; and
     (b)  prior art information made publicly available in 2 or more related documents, or through doing 2 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;
     being information that the  skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area."

As to the question of how to determine what would have been obvious to a person skilled in the relevant art, I am guided by the question posed in Allsop & Another v. Bintag Ltd., (1989) AIPC 90-615 at page 39331:

"Would the hypothetical non-inventive person skilled in the art faced with the problem have taken as a matter of routine whatever steps might have led from the prior art to the invention claimed?"

The opponents allege that the invention as claimed was obvious and did not involve an inventive step because shrink-fit tubular caps or covers having a transparent skirt and a transparent end wall, formed part of the common general knowledge in Australia.  Furthermore they allege that such caps were known to be available as transparent, semi-transparent or opaque synthetic thermoplastics material.

In support of its allegations, the opponent relies upon the Sturrock declaration which it alleges establishes that the following products were known and used in Australia before the priority date of the patent application:

“(a) shrink-fit products for application to a variety of packages and other articles have been well known in Australia, for a period exceeding the past ten years (Sturrock paragraphs 3 and 13 to 16),
(b) before the priority date, the known shrink-fit products were commonly formed as shrink wraps, cut bands, sleeves, preforms and capsules (Sturrock paragraphs 3 and 13 to 16),
(c) before the priority date, shrink-fit products were produced in the form of transparent and semi-transparent tubes made of synthetic thermoplastic materials (Sturrock paragraphs 4, 5, 6 and 13 to 16),
(d) before the priority date, shrink-fit products were formed as transparent capsules for fitting to the pouring spout of a container, to enable detection of leakage of liquid held within the container through the spout (Sturrock paragraphs 7 to 10), and
(e) before the priority date shrink-fit products were formed as transparent capsules for fitting to the neck of corked bottles, the capsule extending the full length of the cork and fully across the top of the cork and permitting the cork to be examined in a manner allowing detection of any leakage of liquid past the cork (Sturrock paragraphs 11 and 12).”

At the hearing, Mr Smith contended that none of the opponent’s evidence establishes the state of common general knowledge in the art in Australia.  I agree with this view as I indicated earlier in considering the Sturrock declaration.

However, at the hearing, Mr Smith was prepared to concede points (a) and (b).  Even with this concession I am not convinced that the claims are obvious on the evidence filed.  There is no evidence as to what a non-inventive person skilled in the art would do with this information.

In summary, the opponent has not convinced me that the claims are obvious on the evidence filed.

However, this does not deal with all of the opponent’s submissions on obviousness.  Under the ground of obviousness, the opponent stated:

“The use of a cap as claimed, produces no surprising or unexpected result.  That is, it would be an obvious step, if one wished to observe the cork of a wine bottle, to adopt a transparent or semi-transparent cap of the kind well known in the prior art.  Therefore, there is no inventive merit in applying a known cap or cover in a known manner to a corked wine bottle, in order to observe through the cap, the stopper provided in the neck of the bottle.”

There is no evidence before me to say that the prior art referred to in the specification is either part of the common general knowledge or prior art information which was publicly available that the person skilled in the art would have readily ascertained, understood and regarded as relevant as required by s7(3) of the Patents Act. However, even if the prior art is considered to satisfy s7(3) because of the evidence in the Sturrock declaration, the opponent has not supplied any evidence of what the person skilled in the art would do when faced with the particular problem of not being able to detect the weeping or deterioration of corks in wine bottles. While the solution appears deceptively simple, the evidence before me does not establish that it would have been a matter of routine for the hypothetical non-inventive person skilled in the art to take the necessary steps to go from the prior art to the claimed invention.

I find that the opponent has not established that the claimed invention lacks an inventive step.

MANNER OF MANUFACTURE

The opponent, in providing submissions on the ground of lack of manner of manufacture, refers to Ramset Fasteners (Aust.) Pty Ltd v Advanced Building Systems Pty Ltd and Anor. 34 IPR 256. This is a decision of the full bench of the Federal Court. However this decision has since been overturned by the High Court. The thrust of the High Court's decision, as I understand it, was that the traditional principles of manner of manufacture should still be applied and that, by and large, one should consider whether the claimed invention is a manner of manufacture on the face of the specification, itself.

In the present case, I cannot say that, on the face of the specification itself, the claimed invention is not a manner of manufacture.

MATTERS ARISING SUBSEQUENT TO THE HEARING

AU 472911

As I indicated earlier, subsequent to the hearing I informed the applicants that, given the relevance of AU 472911, I intended to inform myself of this document in line with reg.5.11(1) even though the opponent had not put this document into evidence

Mr Smith’s written submissions at the hearing in relation to this citation are:

“This specification again relates to a tamper evident secondary closure which, although having a clear panel to view the inner layer, does not disclose a secondary cap allowing viewing of the entire length and top of a cork in the container.  Thus, there is no disclosure of the invention as claimed.”

The opponent in its written submissions states:

“This specification discloses a cap having each of the features of claim 1 of the opposed application, save that the cap is made of transparent material.  However the embodiment of figures 3 and 4 utilises a transparent panel 15 which overlies the top of the cork 12 and a transparent panel 5 extends down the length of the cork 2 (see page 6), and thus the cap is therefore semi-transparent.  There is no reason why the cap of this reference could not be made from a transparent form of material, given that the closure is made of a cellulosic material that could easily be fully transparent.  Thus, claim 1 is not novel over this reference.”

However a careful read of the specification discloses the following information.  The specification discloses that the secondary closure cap can be made of a heat shrinkable material such as polyvinyl chloride that is shrunk by heat onto the neck of the bottle over the primary cork closure.  The embodiments described indicate that the secondary closure entirely covers the cork.  The secondary closure can be completely transparent.  The secondary closure may shrink through the loss of moisture or through evaporation of some other solvent other than water that is contained in the material.  Secondary closures may be provided with perforations or a tear-off strip.  The specification discloses that located between the outside surface of the bottle and the secondary cap is a sensitive strip; the purpose of which is tamper indication.  There is clearly no disclosure of the use of the invention as a means for indicating the condition of the cork.

In his subsequent written submissions of 26 May 1998, Mr Smith argued that the citation was not relevant; a fact that, he submitted, was conceded by the opponent.  Mr Smith contended that the purpose of the invention of the prior art was different to the purpose of the present invention and that following the teaching of the prior art, there will be a strip of material covering part of the cork.  I entirely agree with Mr Smith on this matter.  However, this does not dispose of the issue.

Mr Smith further emphasised the fact that under the teaching of the prior art the entire length and top of the cork is not viewable.  However, I have already discussed this issue and have concluded that it is not essential to the working of the invention that complete viewability of the cork is required; the specification clearly points in the direction of substantial viewability.  This feature is clearly disclosed in the citation.

However the issue of the transparency of the neck of the bottle needs to be considered.  There is no disclosure in the citation of the requirement that the bottle be transparent.  At present there is no direct statement in the claims that the neck of the bottle is transparent.  However, I have already concluded that the claims can be said to define the invention by result and thus imply that the neck of the bottle is transparent.  Therefore, AU 472911 does not disclose all the essential features of the claimed invention.  Thus, I agree with Mr Smith that the claims do not lack novelty in the light of AU 472911.

Priority

The opponent alleges that:

“The claims of the opposed application are not fairly based on matter first disclosed in the provisional patent application PM 4612 filed 21 March 1994, or in the complete patent application 14871/95 filed 14 March 1995.  For the reasons set out in the Statement of Grounds and Particulars, the claims are not entitled to a priority date earlier than 27 June 1996.”

From the statement of grounds and particulars the opponent alleges that:

“(a) claim 1 of the opposed application requires the cap seal to cover "the entire cork" (emphasis added), and further requires the cap seal to allow the "entire length" (emphasis added) of the cork to be viewed,

(b) the opposed application claims priority from provisional application PM4612, filed 23 March 1994, but the specification of PM4612 does not disclose a cap seal which covers the entire cork, nor does it disclose a cap seal which allows the entire length of the cork to be viewed,

(c) the complete specification of patent application 14871/95 as filed on 14 March 1995, does not disclose a cap seal which covers the entire cork, nor does it disclose a cap seal which allows the entire length of the cork to be viewed, and

(d) the specification of the opposed application was amended on 27 June 1996, and that amendment introduced for the first time reference to the cap seal covering the entire cork, and introduced for the first time reference to the cap seal allowing the entire length of the cork to be viewed.”

As a result of my deliberations on the matter of fair basis and on the fact that, at the hearing, there was no discussion on the issue of the petty patent, I informed the applicants of my intention to inform myself under Patents Regulation 5.11 of the contents of the specification of the petty patent 668844 that was sealed on 16 May 1996.  The applicants provided written submissions on this matter on 26 May 1998.

Viewing the provisional document PM4612, the petty patent document and the opposed specification, I note that the bodies of the specifications are substantially identical.  The only differences between the provisional specification and the opposed specification are the claims and the broad statement of the invention (previously quoted):

“In its broadest sense the invention is a bottle having a cap seal, which cap seal comprises a skirt portion and an end portion which extends over the lip and upper end of the bottle, in which at least a part of the seal is sufficiently transparent to allow inspection of a cork within the neck of the bottle and adjacent to the upper end of the bottle.”

This matter is important for if I find that the opposed application does not have as its priority date the date of filing of the complete specification then the opposed application takes a priority date of 27 June 1996; the date of the proposed amendments (Patents Regulation 3.14).  As the divisional petty patent is identical to the opposed application, the priority date of the claims defining the invention in the petty patent divisional will be the priority date of 4 April 1996, the date of their amendments.

In his submissions, Mr Smith states that the essential features of the claim involve a cap seal that is applied to the neck of a bottle by shrinkage, is made of transparent or semi-transparent material and covers the entire cork when the cork is in the bottle.  The attorney also pointed out various paragraphs from the provisional specification.  I have reviewed these references but I do not see how they establish the point that Mr Smith is making. 

Mr Smith also submits that:

“any skilled person reading the provisional specification as a whole and particularly the passages referred to at page 3, would realise that in form the invention consists of a cap seal formed of transparent or semi-transparent material which covers the entire cork when a cork is in the bottle.”

The submission then goes on to state:

“Traditionally, all cap seals cover the entire cork and it virtually goes without saying that the cap seal of the present invention is intended to cover the entire cork.  By stating that the cap seal is placed over the neck of the bottle, effectively establishes that it extends over the entire cork because the neck of the bottle extends beyond the position in which the cork is installed.”

These submissions are crucial to the argument on fair basis.  However, no evidence supports these statements.  The failure to serve evidence is in my view fatal to these submissions.

I have already considered the fair basis issues and concluded that the claims of the opposed specification lack fair basis.  The inescapable conclusion is that the opposed application is not entitled to the priority date of the complete specification.  As a consequence, the claims are not novel in view of the granted divisional petty patent 668844.

CONCLUSION

The grounds that the invention as claimed is obvious and not novel have not been established.  However, the opposition is successful on the ground of non-compliance with s40 in that the claims lack fair basis.  Other s40 matters have not been established.

Although not a ground of opposition in itself, I have found that the claims are not entitled to the earlier priority dates of the dates of filing the complete or provisional specifications with the consequence that the claims are not novel in view of the disclosures in the applicant's petty patent 668844.

I have also found that the claims as accepted are novel in view of the disclosures in AU 472911.

I believe that if the claims are amended to overcome their lack of fair basis, they may no longer be disclosed in petty patent 668844.  Accordingly I allow the applicants 60 days from the date of this decision to propose amendments that overcome the s 40 issues.

COSTS

Costs normally follow the event.

Although Anthony Smith & Associates Pty Ltd made no appearance at the hearing, it has been successful in establishing the ground of non-compliance with s40. However, there was nothing in either the Sturrock declaration or the written submissions which assisted me in reaching this conclusion. As this lack of fair basis is a significant issue, I believe that Anthony Smith & Associates Pty Ltd is entitled to its costs in relation to items 1 and 2 of Schedule 8 of the Patents Regulations 1991. In relation to costs incurred after the serving of the statement of grounds and particulars, I believe that each party should bear its own costs. Therefore I award costs in relation to items 1 and 2 of Schedule 8 against Trevor McGregor and Shirley Clarke and in favour of Anthony Smith & Associates Pty Ltd.

With respect to Tamper Seal (Australia) Pty Ltd, it did not attend the hearing, nor did it provide any evidence in support, nor did it provide any written submissions.  While the particular fair basis issue was identified in the particulars provided by Tamper Seal (Australia) Pty Ltd, it is difficult to know if the opposition would have proceeded if the other opponent had not also been involved.  Also, both statements of grounds and particulars were prepared by the same agent.  In these circumstances, I believe it is appropriate to make no award of costs in the opposition by Tamper Seal (Australia) Pty Ltd.

R.W.Hallett
Delegate of the Commissioner of Patents

Patent attorneys for the applicants  :  Carter Smith & Beadle

Patent attorneys for the opponent   :  Phillips Ormonde & Fitzpatrick