Universal Polymers Pty Ltd v Greenzone Pest Innovations Pty Ltd
[2020] APO 37
•13 August 2020
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Universal Polymers Pty Ltd v Greenzone Pest Innovations Pty Ltd [2020] APO 37
Patent Application: 2015221449
Title:A CONSTRUCTION ELEMENT
Patent Applicant: Greenzone Pest Innovations Pty Ltd
Opponent:Universal Polymers Pty Ltd
Delegate:Mr Kevin Restrick
Decision Date: 13 August 2020
Hearing Date: Written submissions completed on 8 May 2020
Catchwords: PATENTS – a termite resistant foam construction element for expansion joints - section 59 – final determination – ground of inventive step - amendments overcome deficiencies identified in previous decision – application to proceed to grant
Representation: Patent attorneys for the applicant: FB Rice Pty Ltd
Patent attorney for the opponent: Collison & Co
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2015221449
Title:A CONSTRUCTION ELEMENT
Patent Applicant: Greenzone Pest Innovations Pty Ltd
Date of Decision: 13 August 2020
DECISION
The amendments to the specification overcome the deficiencies identified in the first decision in this s59 opposition and do not introduce new deficiencies.
Subject to an appeal of this decision, I direct the application proceed to grant.
REASONS FOR DECISION
Background
1.Patent application 2015221449 in the name of Greenzone Pest Innovations Pty Ltd (the applicant) was filed on 1 September 2015. The application is a divisional application of Australian application 2010356064 having a filing date of 14 October 2010. The earlier application claims priority from Australian provisional application 2010902706 giving an earliest priority date for the present matter of 22 June 2010.
2.The request for examination was filed on 8 October 2015. Consequently, substantive amendments to the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into effect on 15 April 2013 apply to the present patent application. This includes the addition of section 60(3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists.
3.The patent was examined and advertised as accepted on 11 May 2017. Following this, a notice of opposition was filed on 11 August 2017 by Universal Polymers Pty Ltd (the opponent).
4.The matter was heard in Melbourne on 28 February 2019 and a delegate of the Commissioner of Patents (the delegate) issued a decision on 20 May 2019[1] (the first decision) deciding that all the claims lack an inventive step. The delegate provided an opportunity for the applicant to file amendments to the claims based on the observation that there appeared to potentially be patentable subject matter present in the specification. The applicant was given a period of two months from the date of that decision to propose amendments that would overcome these adverse findings.
[1] Universal Polymers Pty Ltd v Greenzone Pest Innovations Pty Ltd [2019] APO 23
5.The applicant filed amendments to the claims on 18 July 2019. There was no issue found with the allowability of these amendments and subsequently a delegate of the Commissioner allowed the amendments on 6 January 2020.
6.Following allowance of the amendments, the applicant and opponent requested that the final determination be heard by written submissions. The opponent filed their submissions on 14 April 2020. The applicant’s submissions followed on 29 April 2020, and finally the opponent’s submissions in reply were filed 8 May 2020.
Applicable Law
7.It is well established that the decision of a delegate in opposition proceedings determines the matter finally, subject to appeal (R v Smith (Commissioner of Patents); Ex parte Mole Engineering Pty Ltd, [1981] HCA 25; (1981) 147 CLR 340 at 348-349). There is no scope for the Commissioner to re-open or re-hear matters that had already been determined in the previous decision. Thus, in a final determination the only questions are whether the amendments to the specification overcome the deficiencies identified in the previous decision and whether the amendments introduce any new deficiencies. New deficiencies are grounds of opposition that arise solely from the amendment of the specification. That is, pre-existing deficiencies are excluded (Iluka Midwest Ltd v Technological Resources Pty Ltd, [2002] FCA 1233 at [34]).
8.The outstanding issues to be decided in this decision is one of inventive step. The test for obviousness was provided by Justice Aicken 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.”
9.The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 at [51]- [53]; [2002] HCA 59; 212 CLR 411 at [51]-[53] approved this approach, in addition to that taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187 in which Graham J had posed the question:
“Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce a useful [desired result]?”
10.I also note Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9 (1980) 144 CLR 253 at page 293:
"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 Amendments
11.In the first decision, the delegate found that the claims lacked an inventive step in view of document US 6156328 to Alcott et al. designated D2. For that decision, claim 1 was as follows:
A construction element for forming an expansion joint, wherein the construction element acts as a physical and chemical barrier to impede the ingress of insects into a structure, the construction element comprising
a polymeric foam containing at least one insecticide substantially distributed throughout the polymeric foam;
wherein the polymeric foam has a cell size of approximately 0.5 to 2 mm; and
wherein on at least one outer surface of the construction clement there is a water resistant adhesive attached thereto and a removable cover releasably attached to the adhesive whereby the removable cover is adapted to be removed upon application of the construction element;
wherein the polymeric foam has a density of between 16 to 65 kg/m3; and
wherein the concentration of insecticide is between 0.2 to 4 wt.%.
12.The applicant proposed amendments to the claims on 18 July 2019. The specification as amended ends with 23 claims with claims 1 and 23 being independent. Independent claim 1 was amended by incorporating subject matter from dependent claims plus material from the description. I have reproduced claim 1 below where additions are indicated by underlining:
Claim 1 - A construction element for forming an expansion joint, wherein the construction element acts as a physical and chemical barrier to impede the ingress of insects into a structure, the construction element comprising
a polymeric foam containing at least one insecticide substantially distributed throughout the polymeric foam;
wherein the polymeric foam has a cell size of approximately 0.5 to 2 mm;
wherein on at least one outer surface of the construction element there is a water resistant adhesive attached thereto and a removable cover releasably attached to the adhesive whereby the removable cover is adapted to be removed upon application of the construction element;
wherein the polymeric foam has a density of between 16 to 65 kg/m3;
wherein the concentration of insecticide is between 0.2 to 4 wt.%;
wherein the polymeric foam has a compression set at 22 hours of less than 6% ;
wherein the polymeric foam is a closed cell polymeric foam; and
wherein the polymeric foam is manufactured at a temperature of less than 180°C and is prepared primarily from a blend of crosslinked polyethylene and a low melting ethylene-vinyl acetate (EVA) copolymer.
13.Independent claim 23 is directed to a method of protecting a structure against the ingress of insects into the structure. The claim was amended to a method comprising the step of positioning one or more construction elements that are defined by the same integers of claim 1. For succinctness I will not reproduce the claim here.
14.The applicant has also added new dependent claim 15 that reads as follows:
Claim 15 - The construction element according to any one of claims 1 to 13, wherein the polymeric foam has a density of between 23 to 40 kg/m3, preferably 28 kg/m3 to 35 kg/m3.
15.In allowing the amendments the examination delegate decided that that the claims as proposed to be amended met the requirements of S102 of the Patents Act and, inter alia, the disclosure of the invention was clear enough and complete enough and the claims were clear and supported by matter disclosed in the specification. There has been no submission to the contrary and I see no reason to consider there are outstanding S40 matters. It is these claims that this final determination is based upon and a consideration as to whether the claims are now inventive.
Inventive Step Considerations
16.As a final determination I am only considering whether the amended claims overcome the issues raised in the first decision. The outstanding issue from the first decision is whether the claims as amended involves an inventive step over prior art document D2.
17.The delegate in the first decision laid out in detail the legal basis for inventive step. Furthermore, the delegate identified the problem being addressed, the person skilled in the art, and the common general knowledge in the art [69] – [84].
18.At this point I note that the applicant’s submissions also include a copy of an expert declaration by Dr Katherine Dean which was submitted to the USPTO during prosecution of the corresponding granted US patent. While it is uncertain whether I am able to have regard to it in this proceeding, it is of no import since, in coming to my decision I found no need to refer to this material.
19.Claim 1 has been amended by the addition of a number of features either promoted from the dependent claims or from the description.
20.The first feature added to claim 1 is that the polymeric foam has a compression set at 22 hours of less than 6%. This feature was included as claim 19 in the claims considered in the first decision. The first decision at paragraph [101] found that this feature was “nothing more than standard parameters for an expansion joint/low density polyethylene foam”.
21.In the applicant’s submission filed 29 April 2020 they provide statements as to what would be understood by the PSA with regards to the term “compression set” and how the teachings of D2 would be understood and what common general knowledge the PSA would have. As a final determination this is not the place to consider these matters as they were considered by the delegate in the first decision. I refer back to paragraphs [29] – [30] of the first decision where the delegate considered the construction of the term and further at paragraph [101] where the assessment of inventive step was made.
22.The second feature added to claim 1 is the definition that the polymeric foam is a closed cell polymeric foam. This feature was included as claim 2 and considered in the first decision. Neither party has made submissions regarding this feature. The delegate at paragraph [97] of the first decision identified that D2 discloses closed cell polyethylene (column 5 lines 21-24).
23.The third addition to claim 1 is to define that:
“the polymeric foam is manufactured at a temperature of less than 180°C and is prepared primarily from a blend of crosslinked polyethylene and a low melting ethylene-vinyl acetate (EVA) copolymer.”
This feature was not addressed in the first decision and so I will consider it in detail now.
24.With regard to the addition of crosslinked polyethylene, the opponent’s submission filed 14 April 2020 argues:
“On the inclusion of the use of crosslinked polyethylene, this is already shown to be used before the priority date of the opposed patent, see for example Cocking declaration 13 February 2018, Exhibit PC-1, PC-2, PC-3, and PC-5.”
The Cocking evidence is directed to crosslinked polyethylene expansion jointing. For example, the Ziplon and Softlon brochure in PC-1 states:
“‘Softlon’ is made from a closed cell foam, crosslinked by irradiation to endow the foam with superior mechanical, thermal and chemical resistance”
The specification of Jointfill in PC-3 states:
“The joint filler shall be a Crosslinked, Closed Cell Polyethylene foam such as Jointfill or equivalent.”
And the Abelflex brochure in PC-5 states:
“Abelflex is a closed cell, cross-linked, 100% polyethylene foam expansion joint and space filler strip.”
25.My reading of these documents is that they simply show crosslinked polyethylene was routine in the context of polyethylene foam joint fillers. These documents do not show that a blend of crosslinked polyethylene and a low melting EVA copolymer manufactured at less than 180°C was part of the common general knowledge in the art, or that it would be routinely used to solve the applicant’s problem.
26.The opponent’s submissions also make reference to the first decision at paragraph [98] where the delegate relied on Cocking PC-7 to decide that blends of linear low-density polyethylene and low melting EVA polymer would have been routine. The Cocking PC-7 exhibit states:
“EVA / LDPE blends common prior to 2010, however not necessary for expansion joint function.”
Once again, this evidence does not show that the specific blend of crosslinked polyethylene and a low melting EVA copolymer manufactured at less than 180°C was part of the common general knowledge in the art, or a matter of routine at the priority date. Instead it only shows that a broader and more generic application of EVA/LDPE blends were commonplace.
27.Both the applicant and opponent have filed contrasting submissions as to what is taught by D2 regarding to processing temperatures and whether D2’s teaching is limited to processing the polymer at a temperature of at least 210°C. The opponent argues that
“In context, Alcott notes that if an extrusion process of the many prior art patents referred to is used then the foam can reach a temperature of at least 210°C. It is not a temperature or process described by Alcott as being a requirement or teaching.”
and refers to column 5 lines 21 – 33 of D2 for the disclosure of manufacturing inter alia a polyethylene foam “formed … depending on the needs of application”.
28.The applicant argues that the requirement in claim 1 that the processing temperature be kept below 180°C is in:
“…complete contrast to the methods described in Alcott which require that the processing temperatures are at least 210°C and in some cases as high as 240°C.”
Although the applicant has not specifically identified a portion of text of D2, I understand this statement refers to Column 5 lines 4 – 9 and claims 34 and 35 that relate to disclosure of a particular extruded foam formulation. Accordingly, the applicant states:
“Thus Alcott clearly teaches away from the feature that polymeric foam is manufactured at a temperature of less than 180°C”.
29.I consider that D2 would be read as teaching a range of combinations and permutations under the broad principle of manufacturing a foam sheet having an insecticide active ingredient. The specific disclosure of a processing temperatures at least 210ºC and in some cases as high as 240 ºC refers to a particular extrusion or molding process and does not limit the document’s broader teachings. As such I do not consider that D2 teaches away from manufacturing a polymeric foam at less than 180ºC. By the same sentiment, I do not consider D2 directly leads the reader as a matter of course to try manufacturing a blend of crosslinked polyethylene and a low melting EVA copolymer at a temperature of less than 180°C in the expectation that it might well produce a useful.
30.The opponent’s submission discusses whether the selection of a parameter such as the claimed density of polymeric foam or the claimed 180ºC achieves a technical effect or whether it is an arbitrary convenience:
“The Applicant has not submitted any support to advance any finding that the inclusion of the densities of polymeric foam as per claims 1, 15 (new) and 23 achieves or results in any technical effect. Such densities are generally disclosed in Alcott (column 5, lines 21-34) with respect to polyethylene foam sheets and nor should any such submissions be entertained given the previous decision of the Delegate.”
and
“The Applicant has not submitted any support to advance any finding that the inclusion of the foam manufactured at a temperature of less than 180°C achieves or results in any technical effect nor advanced any such argument in the course of the opposition.”
and the opponent further argues that:
“We submit that the feature of polymeric foam is manufactured at a temperature of less than 180°C is nothing more than an arbitrary convenience that does not involve any inventive step or reflect any discovery or scientific insight.”
31.Regardless of the lack of evidence from the opponent to support their view that the selection of the particular features of the claims is simply an arbitrary convenience, prima facie, when I consider the specification of the present application, there does seem to be a non-arbitrary purpose in the selected density, temperature, and material choice. The description as originally filed at page 7 line 35 – page 8 line 4 explains that the addition of low melting point EVA keeps the extrusion temperature below approx. 180ºC, which helps in the dispersion and melt mixing of the polymer and insecticide. Furthermore, at page 17 of the description as originally filed, the applicant explains that 180ºC is important because active ingredient bifenthrin degrades at higher temps. The specific requirement for 180 ºC in the manufacture of a polyethylene-EVA foam incorporating bifenthrin as an insecticide is the result of a thermogravimetric study. I am of the view that the parameters have been carefully chosen, are part of the invention and are related to a claimed advantage as part of the combination of the design. This combination was not found by accident or through the application of routine elements; the result appears more than arbitrary convenience and has not been shown in the evidence to be a matter of routine.
32.There is discussion from the Opponent that, having identified that bifenthrin degrades above 180ºC, one would find it obvious to manufacture at less that this temperature to avoid degradation:
“The Opposed Patent mentions that the degradation of the active (bifenthrin) can occur at about 180°C. We submit that it would be obvious therefore reduce the temperatures in the production of the material containing bifenthrin to be less than 180°C so as to avoid/reduce thermal decomposition or volatization, of any active present in the mixture.”
33.However apart from reference to the present application there is no evidence from the opponent to show the person skilled in the art would as a matter of routine have known this information. It is just not apparent from the evidence that the common general knowledge in the art includes knowledge that material containing bifenthrin is to be manufactured at less than 180°C so as to avoid/reduce thermal decomposition or volatization during the formulation of the claimed foam material.
34.The applicant has taken the opportunity to amend the accepted claims to better characterise their invention. The onus thus falls on the opponent to provide evidence and submission that support their position that a polymeric foam manufactured at a temperature of less than 180°C and prepared primarily from a blend of crosslinked polyethylene and a low melting EVA copolymer is known in the art and would have been routinely applied in seeking to solve the identified problem.
35.Before drawing my conclusion, I note that the opponent in their submissions appears to have extracted specific aspects of the feature that the polymeric foam is manufactured at a temperature less than 180°C and the polyethylene is crosslinked [emphasis added] and has constructed their argument and submissions focussing solely on these aspects of the claim and has not considered the final feature of the claim in its entirety.
36.The rules of construction for an Australian patent specification were summarized in the first decision at paragraph [10] - [11]. Further guidance on claims construction was provided by the Full Federal Court in Pfizer Overseas Pharmaceuticals v Eli Lilly [2005] FCAFC 224 that referred to a further rule (from Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56) stating:
“There is a danger in considering the integers of a claim individually and in isolation. This could yield a literal rather than a purposive construction – see Catnic Components Ltd v Hill and Smith Ltd [1982] RPC 183 183 at 243 (Lord Diplock)”
Consequently, I do not believe it is appropriate to dissect the claim in the way of the opponent. It is more appropriate to consider the final feature of the claim as the applicant has drafted it and as I have provided above in Paragraph 23.
37.The problem identified at paragraph [75] of the first decision is “providing an improved
insecticidal expansion joint product that reduces known difficulties of installation”. The applicant has solved this problem by a creating a foam blended from a very particular combination of plastics at a specific temperature that provides a benefit to the applicant.
38.Document D2 teaches the inclusion of an insecticide in a foam sheet such as polyethylene. However, there is no evidence to show that the claimed blend of crosslinked polyethylene and low melting point EVA manufactured at a temperature of up to 180°C is part of the common general knowledge, or would be routinely applied to D2 to overcome the applicant’s problem.
39.In the case of a combination patent such as this one, the invention lies in the selection of integers and the rejection of other possible integers. The prior existence of publications such as D2 and the opponent’s evidence revealing those integers as separate items, as well as other possible integers, does not of itself make an alleged invention obvious. In this case the applicant’s selection of the particular integers out of many possibilities in order to provide a special product and benefit over the prior art makes their claimed invention not obvious. I find that claim 1 involves an inventive step over D2.
40.Independent method claim 23 includes method steps that align directly with the material of Claim 1 and so for similar reasons is inventive.
41.New claim 15 is appended to claim 1 and hence is also inventive.
42.Dependent claims 2 – 14 and 16 – 22 add further features to claim 1 and hence are also inventive.
43.Therefore, I find claims 1-26 involve an inventive step over document D2 and the common general knowledge in the art.
CONCLUSION
44.The amendments to the claims overcome the lack of inventive steps findings in the first decision and do not introduce any new deficiencies. Subject to any appeal, I direct that the application proceeds to grant.
Mr Kevin Restrick
Delegate of the Commissioner of Patents
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