Uni-Charm Corporation and Dai Nippon Printing Co. Ltd v Johnson & Johnson

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application: No. 709893 in the name of Uni-Charm Corporation and Dai Nippon Printing Co. Ltd.

Title: Container for wetted tissues

Action: S.59 Opposition by Johnson & Johnson, and application under Reg 5.10(4) by the opponent to serve further evidence. Hearing.

Decision: Issued .
Abstract:Opposition unsuccessful. Application to serve further evidence refused.
Inventive step. Evidence insufficient to enable the invention defined in the claims.
Multiple priority dates.

PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No.709893 in the name of Uni-Charm Corporation and Dai Nippon Printing Co. Ltd. Section 59 Opposition by Johnson & Johnson, and application by the opponent to serve further evidence.

BACKGROUND

Patent application 55968/96 in the name of Uni-Charm Corporation and Dai Nippon Printing Co. Ltd was filed on 14 June 1996. The application is a Convention application based on earlier applications filed in Japan on 15 June 1995 and 28 February 1996. The application was advertised accepted on 9 September 1999 as No.709893, a notice of opposition was served by Johnson & Johnson on 10 December 1999, a statement of grounds & particulars was served on 9 March 2000, and the opponent's evidence-in-support was completed by 9 April 2001. On 29 January 2002 the applicant advised that it would not be serving any evidence-in-answer.
On 7 June 2002 the opponent filed an application to serve further evidence and, on 13 June 2002, a request to amend the statement of grounds & particulars. The statement was amended on 11 July 2002.
The opposition and further evidence matters were heard in Canberra on 18 June 2002. The applicant was represented by Mr Brad Fitzpatrick, patent attorney, and the opponent was represented by Messrs Russell Davies and Denis Tuffery, patent attorneys.
The specification
The specification indicates that the invention relates to a container for wetted tissues with a movable lid which can be automatically opened by one-touch operation. The claims defining the invention are as follows:
"1.       A container for wetted tissues including a container body, a stationary lid member and a movable lid member each molded from a suitable synthetic resin material; wherein:
           said body has a first opening on an upper side thereof through which a stack of wetted tissues is packed thereinto;
           said stationary lid member includes an outer locking periphery adapted for detachably and sealably fitting on said first opening, a first upper surface region defined by said outer locking periphery and a first peripheral edge having spaced apart front and rear edges, a second upper surface region defined by said first peripheral edge, and a second opening formed in said second upper surface region substantially at a central zone thereof through which wetted tissues are picked out;
           said movable lid member includes a second peripheral edge projecting from an inner surface thereof so as to fit on said first peripheral edge thereby to define a space between said second upper surface region of said stationary lid and said inner surface of said movable lid member, having spaced apart front and rear edges and being hinged to said stationary lid member adjacent said rear edge;
           an elastic strip made of a nonmetallic material normally biasing said movable lid member to be opened extends across said rear edges of said stationary and movable lid members and held between said second upper surface region and said inner surface of said movable lid member wherein said elastic strip is at least partially curved generally in a U-shape or Ω-shape and charged with an elastic energy within said space as said movable lid member is closed;
           at least one of said front edges of said stationary and movable lid members opposed to each other upon closure of said movable lid member includes a locking projection adapted to be detachably engaged with the other; and
           said first upper surface region is provided adjacent said locking projection with an elastically deformable depressor means serving to release said engagement of said locking projection.
2.        A container according to Claim 1, wherein said stationary lid member is made of a material having an elastical deformability higher than the material for said movable lid member.
3.        A container according to claim 1 or claim 2, wherein at least one of said depressor means and a region in the proximity of said depressor means are formed so as to be elastically deformed more easily than the rest of said stationary lid member.
4.        A container according to any one of claims 1 to 3, wherein said elastic strip has an end fixed to one of said stationary lid member and movable lid member and said end is at a predetermined distance from said hinged portion toward said front edge of said lid member to which said end is fixed.
5.        A container according to Claim 4, wherein said fixed end of said elastic strip is fixed by a retainer means including a covering plate provided integrally with said lid member so as to cover said fixed end, a projection provided between said covering plate and said lid member, and an opening formed in said fixed end so as to receive said projection.
6.        A container according to claim 4 or claim 5, wherein said elastic strip is formed to be elongate and having said fixed end and a free end longitudinally opposite to each other so that said fixed end is fixed to an inner surface of said movable lid member while said free end bears against said second upper surface region without being thereto.
7.        A container according to any one of claims 4 to 6, wherein said second upper surface region is provided on a position at which said free end of said elastic strip bears against said second upper surface region with a first recess serving to receive and support said free end and between said first recess and said second opening with a second recess serving to receive a longitudinally intermediate curved portion of said elastic strip as said movable lid member is closed.
8.        A container according to any one of claims 1 to 7, wherein said second upper surface region is lower than said first upper surface region and formed substantially in a central zone thereof with a third upper surface region defined by a third peripheral edge, said third upper surface region being lower than said second upper surface region, and said third upper surface region is provided substantially in a central zone thereof with said second opening.
9.        A container according to claim 8, wherein said movable lid member is formed on an inner surface thereof with an annular wall adapted to fit on said third peripheral edge.
10.      A container according to claim 3, or claims 4 to 9 when appended to claim 3 onwards, wherein said portions formed to be elastically deformed more easily than the rest is formed to be thinner than at least the rest of said stationary lid member.
11.      A container according to any one claims 1 to 10, wherein said movable lid member is provided on the front edge thereof with said locking projection as a first locking projection while said stationary lid member is formed on the front edge thereof with a second locking projection adapted to be disengaged under said elastic deformation.
12.      A container according to claim 11, wherein said depressor means is molded as a depressor member separately of said stationary lid member wherein said depressor member is supported by said stationary lid member and formed on a free end thereof with said second locking projection.
13.      A container according to any one of claims 1 to 12, wherein said elastic strip is selectively made from any one of rubber and synthetic resin materials.
14.      A container for wetted tissues substantially as herein described with reference to any one of the embodiments illustrated in the accompanying drawings."
The specification indicates that conventional containers for wetted tissues typically include a container body, a stationary lid member, a movable lid member and a snap-locking means. The present invention is characterized particularly by the elastic strip and the depressor means.
S.59 OPPOSITION
Grounds & Evidence
It was evident from the Statement of Grounds & Particulars, the served evidence and the parties' submissions that the main issues of the opposition were: lack of inventive step and the claims not being fairly based on the basic documents. Novelty and some clarity issues were also raised.
The main items in the opponent's evidence are summarized as follows.
The most relevant prior art documents were:
· JP Patent 063-88965 (Exhibits RJD5 and RJD15).
A JP utility model patent for a pouring cap for a liquid container. The cap is constructed to fit on a liquid-containing body, it has some features similar to the present invention, viz. a main body (B), a spring-loaded "over-cap" (C), with "engagement projections" (7) and (10), and a "manually pressed projection section (8)."
· JP Patent 072-57617 (Exhibits RJD6 and RJD16).
A JP patent for a (sauce or shampoo?) container cap with a spring-operated lid section (15), a tube-in-hole (31)(21) type of lid locking mechanism, and a "lid-opening control" projection (32).
I will now refer to these documents as "the citations".
A declaration dated 6 April 2001 by Adam Laws.
Mr Laws is an independent industrial designer and academic, with experience in the design of tissue containers and container closure mechanisms. Inter alia, he declares that:
·    "auto-lift" one-touch opening mechanisms were well-known in Australia, before June 1995, in products such as cassette & CD players, kitchen bins, telephone indexes and the like,
·    snap-locking mechanisms and deformable depressor means were also well-known before the earliest priority date,
·    the invention discloses no unexpected advantages or results from using these said features, or from using the non-metallic elastic strip,
·    the citations would have been particularly relevant to the problem which is claimed to be addressed by the present invention; both specifications suggest one-handed operation to open the lid; RJD5 discloses, inter alia, locking projections and synthetic resin U-shape or Ω-shape springs, and RJD6 discloses, inter alia, a biasing rubber strip to open the top lid member,
·    there is no mention in the earlier Japanese basic document of:
(i) using only one elastic strip, or
(ii) the elastic strip taking the form of an Ω shape (ie. the embodiment of the invention described in Figs.14 to 20 of the present complete specification), and
·    "claim 1 is impossible to construe in that many of the identified features are open to multiple interpretations."
Declarations by Russell Davies and Christine Ruhotas; relating to the retrieval and production of, as exhibits, patent specifications, translations, and samples of packages for wetted tissue products. Ms Ruhotas declares that Exhibits CR1 to CR3 are examples of packages for wetted tissue products which were used in Australia prior to 15 June 1995.
Decision on S.59 Opposition
Novelty
Novelty was not pursued a the hearing but it is a ground referred to in the statement of grounds and particulars. In comparing claim 1 of the present specification with the disclosure in citation RJD5, whilst taking account of the similarities, I also note that there are a few differences:
·    The pouring cap is not (suitable) for dispensing wetted tissues, since the pour opening (6) is too narrow.
·    The pouring cap does not have an arrangement where a peripheral edge on the movable lid member fits on a peripheral edge on the stationary lid member (as defined in the fourth paragraph of claim 1), where that latter peripheral edge also defines the boundary between the first and second upper surface regions on the stationary lid member (as defined in the third paragraph of claim 1).
·    The pouring cap does not have a locking projection on a "front edge" of the stationary lid member (as defined in the 2^nd last paragraph of claim 1) where that front edge is also on the "first peripheral edge" (as defined in the third paragraph of claim 1). The locking projection on the stationary lid member in fact is on a side arm of the first upper surface region, not on the "first peripheral edge".
·     Also, it is arguable whether the depressor button (8) in the pouring cap is provided on the "first upper surface region" of the stationary lid member (as defined in the last paragraph of claim 1).
In comparing claim 1 of the present specification with the disclosure in citation RJD6, whilst taking account of the similarities, I also note that there are a few differences:
·    The container cap is not (suitable) for dispensing wetted tissues, since the opening (21) is too narrow.
·    The cap does not have a "locking projection" on the front edge of the stationary lid member at least; and it is arguable whether the tab (32) on the front edge of the movable lid member could be construed as a "locking projection". The locking mechanism in the citation is achieved by a sealing tube (31) which fits into the bore or opening (21), and these features are not on the front edges or on the peripheral edges of the lid members.
·    The tab (32) which is described as an "opening control" is also described as operating by "perhaps with the thumb … to push up the opening control". (It could possibly also be lifted with a finger). I don't think this mechanism can be construed as a "depressor means" as defined in present claim 1.
I have nothing before me to suggest that the features in these differences are not essential features of the invention, so I conclude that the present claims are novel in the light of citations RJD5 and RJD6.
Inventive Step
The opponent has submitted that the invention lacks an inventive step because some features in the tissue container are conventional, and the new features, such as the biased movable lid member and the depressor means, are generally well-known devices (some being known to be used in container-type devices), and that there are no unexpected advantages or results from using these known devices.
In my view however, these submissions and the evidence are insufficient to establish a lack of inventive step. It is apparent that the present invention is being claimed narrowly and specifically: the claims are not directed to the broad idea of using the known mechanical devices of a biased hinge and a depressor-released snap-locking mechanism in a container for dispensing wetted tissues, but in fact the claims are to a very specific application of these known devices. It would therefore be necessary for an opponent to address these specific applications in order to prove lack of inventive step, and in this case the opponent has not sufficiently addressed these specific applications.
The opponent seemed to place little significance on the "conventional" features in the invention. The present specification indicates that some of the features of the present invention generally are "conventional", but that does not mean that these features are to be construed as non-essential features in the claims. For example, stationary and movable lid members could be described as "conventional" but in this case they have been defined with specific features such as the fitting peripheral edges and the front and rear edges, and these specific features interact with other features such as the locking projections. The claims are to a combination of specific integers, and such a combination is not invalidated by a mere indication that in a general sense these types of integers are conventional or known.
Messrs Davies & Tuffery referred to Mr Law's assertion that the invention is a "routine" "choice of design" and that the opponent's evidence should be taken at face value since it has not been challenged by the applicant serving any evidence-in-answer. I agree that that is the correct approach with the evidence, however I think the evidence before me is of low probative value when considering the specifically-defined claims it is meant to invalidate. I accept Mr Laws' declaration that one-touch opening mechanisms, snap-locking mechanisms and deformable depressor means were generally well-known in Australia before the earliest priority date. However, to merely assert "that there are no unexpected advantages or results" in using these mechanisms is not enough. The issue is whether there is any inventive step in the adaptations, as claimed, of the known mechanisms.
It appears in fact that there are some advantages in the invention as claimed since the specification indicates that the disadvantages of the prior art have been overcome. Also, there is no requirement in law to establish inventive step that the advantages have to be unexpected: there can in fact be invention in a new combination of integers all of which are known if the combination itself is not obvious to the person skilled in the art having regard to the common general knowledge- the invention is in the selection of the best combination of integers to solve the problem at hand. Also, the combination claimed must be considered as a whole. It is insufficient to dissect a claimed invention into component integers, and establish that these integers are each pieces of common general knowledge. The opponent must establish that the combination of those integers, as claimed, is obvious to the person skilled in the art. In my view, the evidence is insufficient in this regard. See Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Limited (1980) 144 CLR 253 at page 293:
"The proper question is not whether it would have been obvious to the hypothetical addressee who was presented with an ex post facto selection of prior specifications that elements from them could be combined to produce a new product or process. It is rather whether it would have been obvious to a non-inventive skilled worker in the field to select from a possibly very large range of publications the particular combination subsequently chosen by the opponent in the glare of hindsight and also whether it would have been obvious to that worker to select the particular combination of integers from those selected publications. In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious. ... The opening of a safe is easy when the combination has been already provided."
Furthermore, in the present case the combination of features claimed has a working inter-relationship which produces an improved result. This suggests there is no lack of inventive step. The interaction of the depressor means with other integers for example: the depressor means releases the biasing energy in the elastic strip; and the depressor means being on the first upper surface region of the stationary lid member seems to provide an advantageous position to effect the movable lid opening action.
A relevant judgement was in Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd, (1998) 152 ALR 604, (1998) AIPC 91-401), the High Court referred to Welch Perrin & Co Pty Ltd v Worrell, (1961) 106 CLR 588 on combinations as follows:
"Referring to the specification, their Honours [the court in Welch Perrin & Co Pty Ltd v Worrell] said:
'It was not seriously disputed that it is for a combination, in the sense that word bears in patent law. That is to say, what is described is a machine, the elements of which are all well known and simple mechanical integers, but combined so that they are not a mere collocation of separate parts, but interact to make up a new thing.'
This notion of a 'new thing' includes a new result, 'that is, a new way of achieving an old purpose or the fulfilment of a new purpose' (Palmer v Dunlop Perdriau Rubber Co Ltd (1937) 59 CLR 30 at 67), and 'a new combination of features to obtain an improved result' (Meyers Taylor v Vicarr Industries Ltd (1977) 137 CLR 228 at 249). The significance of the exclusion of a 'mere collocation of separate parts' appears from the statement by Aickin J in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at 266 that it is 'the interaction' between the integers which is 'the essential requirement'. It is this which supplies the inventive step and denies an allegation of lack of subject-matter in the case of a valid combination patent."

Thus in my view the claimed invention does not lack an inventive step in the light of the common general knowledge (cgk); ie. that snap-locking parts, biasing springs and depressor means to release the locked parts are, in a broad sense, well-known mechanical devices to open lids or the like.
Inventive step in the light of the citations
Mr Davies submitted that in considering inventive step I should look at the citations in the light of the common general knowledge (in addition to considering the cgk by itself). He submitted that the mechanism in RJD5 for example is for liquid products, the citation therefore addresses the same person skilled in the art (PSA) as the present specification; it has a one-touch action, therefore addressing the same problem; and Fig. 3 even shows an Ω-shaped elastic strip.
Mr Fitzpatrick submitted that the RJD5 and RJD6 documents were not cited against the applicant's corresponding applications anywhere else in the world; that RJD5, being a Japanese Utility Patent, would be difficult to ascertain (not translated into English and not available on-line in 1995) and obtainable only from the Japanese Patent Office; and that RJD6 was not published before the earliest priority date of present claim 1.
The opponent's representatives submitted that the fact that a prior art document may be in a foreign language does not prevent the document from being considered. In Heating Elements Ltd [1978] IPD 169 a Japanese utility model was not excluded because of language difficulty.
Notwithstanding the issue of whether the citations could be ascertained by the PSA, in considering the disclosures in the citations along with the common general knowledge, I am still not sympathetic to the proposal that the present invention as claimed lacks an inventive step, since, as discussed above, there are some significant differences between the present invention and the container caps shown in the citations, and it has not been established that these differences are obvious. I don't think the citations are sufficiently enabling of the invention, and the evidence before me does not show how a person skilled in the art, given any one of the citations and the common general knowledge, would arrive at the invention presently claimed.
Considering citation RJD6 for example, there is no evidence as to why it would be obvious in the present invention to locate the locking projections on the front edges of the stationary and movable lid members and to locate the depressor means adjacent the locking projection on the former. I would imagine that these features could improve the operation of the device. Similarly, in considering RJD5, there is no evidence as to why it would be obvious in the present invention to have an arrangement of the fitting peripheral edges on the movable lid member and the stationary lid member, or to have the arrangement of the first peripheral edge and first and second upper surface regions on the stationary lid member as defined in claim 1.
Thus in my view the claimed invention does not lack an inventive step in the light of the citations and common general knowledge.
Fair Basis & Priority Dates
Mr Fitzpatrick submitted that the Ω-shaped embodiment disclosed in the later basic application (ie. the embodiment of the invention described in Figs.14 to 20 of the present complete specification) is also disclosed in the earlier basic application because the Ω shape is merely another version of the U-shaped strip shown therein. However, I tend to agree with the opponent's evidence and submissions that the two embodiments are sufficiently different to conclude that a PSA would not have envisaged the Ω-shaped embodiment as being within the disclosure of the earlier document.
I don't agree though that the earlier basic does not disclose using only one elastic strip: the drawings show two strips but the original abstract in the earlier basic refers to "a rubber strip 50" and the single article here suggests the possibility of using a single strip instead of two.
Mr Davies suggested that claim 1 is not entitled to the earlier priority date. The Ω-shaped embodiment of the elastic strip is not disclosed in the earlier Japanese basic document, but the U-shaped version is; so claim 1 can legitimately be accorded two priority dates, in accordance with S.43(3) of the Patents Act, and Reg. 3.12(1)(b).
This matter might have been important if for example there had been a relevant citation showing a dispenser with an Ω-shaped strip which was published between the earlier and later priority dates, and the shape of the strip was an important issue. However, this is not the case in the present circumstances. I note that citation RJD6 was published in this period (10-9-1995), but I have already decided that the present invention is novel and has an inventive step in the light of RJD6, because there are features in the claim, other than the shape of the strip, which confer novelty and inventive step.
Clarity
In paragraphs 74 to 77 of his declaration, Mr Laws discuses how it is difficult to construe parts of claim 1 in that many of the identified features are open to multiple interpretations. However, I note that these clarity issues are not discussed when he is construing claim 1 in the light of the citations, nor when he is discussing the appended claims: claims 2, 7, 8 and 11 for example, he seems to have no difficulties with understanding the nature and scope of the features claimed since he comments on, inter alia, the novelty and inventive step of the invention defined by these claims.
Notwithstanding Mr Laws' declaration, I have no difficulty with the interpretation of the claims, despite the large number of features referred to. Mr Davies suggested that claim 1 can only be interpreted when compared with the detailed description, and I agree that the claim is easier to interpret when reading onto the drawings, but, significantly, there are no construction difficulties when doing this, and this in itself is not a reason to conclude that the claim does not comply with the requirements of S.40(3). In fact it is a legitimate practice for claims to be interpreted by reading the specification as a whole. See British Thomson-Houston Ld v Corona Lamp Works Ld. (1922) 39 RPC 49. Also, no other issues were brought up at the hearing which indirectly raised clarity matters. Taking all these matters into account, in my view a person skilled in the art would not have any difficulty construing the present claims.
FURTHER EVIDENCE
Just prior to the hearing the opponent filed an application to serve further evidence, under Reg 5.10(4). The application was supported by declarations by the above-mentioned Mr Laws, and by Michael Small and Takeji Kadono. The declarations refer to a "wet wipes container … launched in Japan in October 1995" and to a brochure published in Japan in September 1995 by Kao Corporation. Copies of the brochure and of a translation thereof are attached as exhibits to the declarations.
The evidence indicates that the opponent is relying on the applicant not being entitled to its earlier priority date of 15 June 1995, since the brochure was published after that date. I have already decided that claim 1 is entitled to the early priority date insofar as it is directed to the elastic strip being curved in a U-shape, so for this invention defined by claim 1 the brochure is of no effect when considering novelty or inventive step.
With regard to the invention with the Ω-shaped strip defined by claim 1, the brochure was published before the priority date of 28 February 1996. On one page of the brochure there is shown a photograph of a tissue dispenser with the lid being opened (shown by a movement arrow) by a person pushing down with a fingertip on a button on the lid. The disclosure shows some of the features of present claim 1 but not all the features claimed, and significantly, there is no detail of how the lid is hinged back, let alone whether there is an elastic strip or whether it has an Ω shape. In my view the brochure falls far short of enabling the present invention as defined in claim 1, and therefore, if adduced as evidence, it would not have an important influence on the result of the opposition. Thus I think it is appropriate to refuse the application to serve further evidence.
CONCLUSION
I have found that the invention defined by the present claims is novel and involves an inventive step and there are no valid S.40 objections to the specification, so I conclude that the opposition is not successful. I direct therefore that the application proceed to sealing after 28 days from the date of this decision. Also, I have refused the application to serve further evidence. If the Commissioner is served with a notice of appeal before this time I direct that sealing not occur until the appeal has been decided or discontinued.
In matters before the Commissioner costs usually follow the event. In this case I see no reason why I should not follow the usual practice, so I award costs associated with the opposition and the application for further evidence against the opponent, Johnson & Johnson.
John Welsh
Delegate of the Commissioner of Patents
Patent attorneys for the applicant: Philips Ormonde & Fitzpatrick, Melbourne
Patent attorneys for the opponent: Baldwin Shelston Waters, Sydney

[2002] APO 32

5 September 2002