Universal Polymers Pty Ltd v Greenzone Pest Innovations Pty Ltd
[2019] APO 23
•20 May 2019
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Universal Polymers Pty Ltd v Greenzone Pest Innovations Pty Ltd [2019] APO 23
Patent Application: 2015221449
Title:A Construction Element
Applicant: Greenzone Pest Innovations Pty Ltd
Opponent: Universal Polymers Pty Ltd
Delegate: Dr N. R. Madsen
Decision Date: 20 May 2019
Hearing Date: 28 February 2019, in Melbourne
Catchwords: PATENTS – a termite resistant foam construction element for expansion joints – section 59 – opposition to grant of a patent – grounds of inventive step, utility, clarity, sufficiency and support – the claims are not inventive – claims are useful, clear, sufficiently described and supported – opposition successful – regulation 5.23 requests refused – opportunity to amend – cost awarded against the applicant
Representation: Counsel for the applicant: Clair Cunliffe
Patent attorneys for the applicant: Marcus Caulfield and Marianne Repacholi of FB Rice
Counsel for the opponent: Ian Horak
Patent attorney for the opponent: Don Angus of Collison & Co
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2015221449
Title:A Construction Element
Applicant: Greenzone Pest Innovations Pty Ltd
Date of Decision: 20 May 2019
DECISION
The opposition is successful. All claims lack an inventive step.
I allow the applicant two (2) months from the date of this decision to propose amendments to overcome the deficiencies. In the absence of a suitable amendment, and subject to appeal, I direct the application be refused.
I award costs according to Schedule 8 of the Patents Regulations 1991 against Greenzone Pest Innovations Pty Ltd.
REASONS FOR DECISION
Background
This matter relates to patent application 2015221449 in the name of Greenzone Pest Innovations Pty Ltd (the applicant), 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.
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.
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).
At the hearing, grounds of inventive step, utility, clarity, sufficiency and support were pressed. While raised in the statement of grounds and particulars as a ground of opposition, no particulars were provided prior to the hearing in relation to sufficiency. In view of the inter-related nature of arguments presented by the opponent, and the closeness of issues under sufficiency and support, I decided at the hearing to provide opportunity to the parties to make submissions regarding sufficiency. Following execution of my power under section 60(3) of the Patents Act, I provided time periods to the parties to provide any further submissions relevant to sufficiency. To this end the applicant was provided fourteen days from the hearing to provide submissions, and the opponent was provided a further fourteen days to respond.
When filing their additional submissions regarding sufficiency, the applicant also filed short declarations from both of their experts, seeking consideration under regulation 5.23. These declarations both made clear the views of Mr Pittock and Mr Commerford that particular prior polymeric (polystyrene) foams were not suitable for use as an expansion joint, and that they did not intend to suggest generally that polystyrene could not be used as an expansion joint.
Another matter brought to my attention at the hearing was a request from the applicant, that the Commissioner consult further documents in accordance with regulation 5.23. The applicant provided a copy of the current and historical company extracts of the opponent, Universal Polymers Pty Ltd, identifying Philip Hannay as a director of the opponent. On this basis the applicant sought to question the independence of Mr Hannay, and thereby question the weight that should be given to his evidence. Introducing new evidence under regulation 5.23 was discussed in Merial Limited v Bayer Intellectual Property GmbH [2015] APO 16:
“I conclude that a decision under regulation 5.23 must have regard to the nature of the information and whether the information is likely, if not certain, to change the outcome of the opposition in a significant way.” (at [24])
In deciding the requests under regulation 5.23, I follow this test. I do not consider any of this information warrants consideration under regulation 5.23. As I discuss further when considering the nature of the experts and evidence, the matters are not so finely balanced that Mr Hannay’s relationship with the opponent could impact the outcome of the decision. Furthermore, the additional evidence regarding the nature of polymeric foams was not required for me to arrive at a clear understanding of the issues at hand. I was able to arrive at a construction of the claims and the evidence that was unaffected by these additional declarations of Mr Pittock and Mr Commerford, and therefore did not rely on this evidence under regulation 5.23 as it had no potential impact upon the opposition.
Finally, at the hearing the opponent also questioned the priority date and invited me to determine the correct priority date. Importantly, none of the issues before me turn on the question of priority date. All the evidence presented by the parties is relevant to the state of the art at or before 22 June 2010 (the earliest priority date). Furthermore, I note that there is no formal mechanism to challenge the priority date alone (e.g. in the absence of relevance to novelty or inventive step considerations) under a section 59 opposition. A more appropriate legislative instrument for correcting priority in the present circumstances may be to seek rectification of the patent register under section 191A. I will not consider the issue of priority any further.
The evidence
Evidence in this matter includes the following declarations and exhibits filed during the usual rounds of evidence in support, answer and reply:
Evidence in Support
·Philip Hannay dated 13 February 2018 (Hannay 1) with exhibits PH-1 to PH-13
·Phillip Cocking dated 13 February 2018 (Cocking) with exhibits PC-1 to PC-7
·Don Angus dated 13 February 2018 (Angus) with exhibits DA-1 to DA-14
Evidence in Answer
·Graham Pittock dated 8 May 2018 (Pittock) with exhibits GP-1 to GP-2
·Paul Anthony Commerford dated 8 May 2018 (Commerford) with exhibit PAC-1
Evidence in Reply
·Philip Hannay dated 12 June 2018 (Hannay 2)
The Specification
10. While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries 13 IPR 385, the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 at [118] – [120]:
"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification."
I also note that the requirement that the claims are clear is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim" (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59).
The invention described in the specification relates to the field of pest control, particularly the prevention of termites from entry into building structures where they can cause significant damage to timber. A range of barriers have been used in the past to guard against entry of such insects including physical barriers such as plastic sheets, stainless steel mesh and graded stone materials. Physical barriers are placed around the perimeter edge of a building structure, and in joints and penetrations of concrete, brickwork and subfloor constructions. Liquid chemical barriers comprising a termiticide are also used as an alternative to physical termite barriers.
The specification discusses some key issues with concrete structures in relation to termite ingress. Concrete structures are noted at page 2 of the specification to be subject to stresses that result from shrinkage and differential movement. Shrinkage is said to occur during hydration and differential movement by temperature changes and changes is loading. These stresses can cause issues such as cracking and may even result in structural failure. To control these stresses, expansion joint foam or “lagging” is commonly used to absorb pressure and allow for the expansion and contraction of a concrete slab against existing construction elements. This foam may be placed in the joints between successive slab pours, around service penetrations and against any infill slab structures. These points where stresses are minimised using expansion foam are all locations where termite ingress may occur.
The specification discusses that there are several commercially available physical termite barriers that are installed in cooperation with expansion joint materials. Here, the physical barrier is laid alongside the expansion joint. Often the expansion joint material has already been installed so in these circumstances the material must be removed and replaced after the termite barrier is installed. The creates a duplication of work. It can also be difficult to install physical termite barriers where a site is affected by challenges such as high winds, rain and pooling of water. Adhesives applied with a caulking gun or concrete nails are often used to secure the physical barrier.
The difficulties discussed above mean that often, to complete a compliant termite barrier system, multiple products, tools and materials are required. Furthermore, given the complexities of scheduling works on a building site there can be delays if required works of a pest controller need to be coordinated with for example, the preparation of concrete slabs. The specification notes that the claimed invention desirably seeks to provide a construction element which at least alleviates some of the problems I have mentioned.
The claims
16. The specification as accepted ends 26 claims with claims 1 and 26 being independent as follows.
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; 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.%.
26. A method of protecting a structure against the ingress of insects into the structure, the method comprising the step of positioning one or more construction element(s) at a position(s) during the construction of the structure to form a barrier to at least impede the entry of insects, 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 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; and
wherein the concentration of insecticide is between 0.2 to 4 wt.%.
The Person Skilled in the Art and Expert Evidence
The specification is to be construed through the eyes of the person skilled in the art being a notionally non-inventive skilled worker aware of the common general knowledge in the relevant field. In Root Quality v Root Control Technologies Pty Ltd [2000] FCA 980; (2000) 49 IPR 225 at [71], Finklestein J held that the skilled addressee would have the following characteristics:
“In Catnic Lord Diplock said (at 242) that skilled addressees are “those likely to have a practical interest in the subject matter of [the] invention”. A variety of people may have that interest. There are those who might wish to make or construct the invention, those who may wish to compound the invention and those who may wish to use the invention.”
To me a skilled addressee in the present case will have a practical interest in the design, manufacture and installation of expansion joints. They would also have a similar knowledge of pest barrier technology as was used in the art at the earliest priority date. The opponent has filed evidence from two experts, Mr Philip Hannay and Mr Phillip Cocking.
Mr Hannay is a professional pest control expert who specialises in commercial and domestic termite resistant products (Hannay 1 at [1]). He has over 40 years industry experience as a pest control technician before starting his own pest control business which particularly focusses on the control and eradication of termites (Hannay 1 at [4]). His educational background includes a Bachelor of Science majoring in entomology and ecology supplemented by various pest management qualifications (Hannay 1 at [6]). I am satisfied that Mr Hannay’s background makes him suitable to comment as an expert in the present matter, particularly in relation to pest control.
It is further noted that Mr Hannay is a co-inventor for several patents in relation to termite barriers, has approached the question of obviousness with knowledge of the specification, and has a relationship with Universal Polymers Pty Ltd. On these points the applicant seeks to question the weight that should be given to Mr Hannay’s evidence. Firstly, the applicant suggests that due to his history as an inventor, he cannot be characterised as representative of a non-inventive skilled worker. I accept in this regard that I must always tread with caution when assessing the expert evidence, particularly when dealing with questions of obviousness. Similar can be said of issues of hindsight. Secondly, the applicant filed documentation the subject of a regulation 5.23 request evidencing Mr Hannay as a director of Universal Polymers Pty Ltd thereby questioning his independence as an expert witness. In addressing this contention, I note that none of the issues before me were so finely balanced such that a mere relationship between Mr Hannay and the opponent would affect my decision in any significant way. Similar might be said of evidence filed by the applicant from Mr Paul Commerford, a director of the applicant. I hereby refuse the request under regulation 5.23 for documents related to Mr Hannay’s employment.
Mr Phillip Cocking also provides evidence in support of the opponent’s case. Mr Cocking is the manager for domestic sales and marketing for Sekisui Foam Australia (Cocking at [1], [3], [5]) having worked at Sekisui for 23 years starting in a Technical Sales and Marketing role. Sekisui Foam Australia is the leading manufacture of cross-linked polyethylene foam in Australia (Cocking at [4]). Mr Cocking has leading expertise in closed cell foam products and their application in building and construction, insulation, automotive, leisure and industrial markets (Cocking at [5]). I consider Mr Cocking a suitable expert in the context of foam product usage in the building and construction industry.
The applicant’s evidence consists of declarations and exhibits from Mr Graham Pittock and Mr Paul Anthony Commerford.
Mr Pittock founded Guardian Pest Control in 1985 and has 32 years of experience in the industry installing and maintaining physical and chemical termite barriers (Pittock at [1]). He holds a bachelor’s degree in applied science and worked as an analytical chemist from 1973 to 1978, after which time his work included installing concrete slabs and paving from 1982 to 1985 (Pittock at [2], [3]). His work since 1985 in the pest control industry now sees him employ and manage technicians under his direction (Pittock at [4]). His experience with termites and installing concrete slabs serves him well as an expert witness who can present knowledge of the person skilled in the art.
Mr Commerford began his career as an apprentice concreter in 1992 before moving into pallet manufacturing in 1994 followed by an apprenticeship in carpentry (Commerford at [2]). He is the founder and director of Greenzone Pest Innovations Pty Ltd (the applicant) as well as Termite Solutions Victoria and Green Zone Pty Ltd, with 15 years’ experience in the pest control industry including performing of services including termite inspections, pre-purchase pest inspections, termite treatments, installation of termite barriers and pest control services (Commerford at [1], [4]). He is also well equipped to outline the knowledge of the person skilled in the art.
I observe that all the expert witnesses appear suitable to provide information as to the knowledge of the person skilled in the art. Importantly, it appears to me that careful consideration and understanding of the expert evidence in the context of the specification is critical to proper construction of the claims. In particular, the outcome of the present matter relies heavily upon the proper construction of the scope of claim 1 in the context of the claim being directed to a polymeric foam, which forms a key aspect of a construction element that is suitable for forming an expansion joint.
Claim Construction
Claim 1 is directed to a construction element formed using a polymeric foam that is suitable for forming an expansion joint characterised by a range of parameters that are of particularly straight forward construction. In this regard claim 1 is directed towards a foam with at least one insecticide substantially distributed throughout wherein the cells forming the foam are of size approximately 0.5 to 2mm. On one side of the foam construction element is a water-resistant adhesive with a removable cover attached thereto. This backing adhesive is used to fix the foam in place, for example, by removal of the cover and subsequent attachment to a slab of concrete. The foam has density between 16 and 65 kg/m3, and insecticide concentration between 0.2 and 4 weight percentage. Dispute and difficultly arises with the construction of the claim when one seeks to define the scope of the claim’s suitability for forming an expansion joint. In other words, what properties of the claimed foam are additionally present beyond those explicitly claimed because the foam is explicitly suitable for forming such a joint? To answer this question, I will first turn to the specification before discussing the evidence of the experts.
As a key example, the specification begins by discussing that pests such as termites can enter a building via a perimeter edge, construction joint or penetration of a concrete slab construction. It is further noted that concrete structures are subjected to a variety of stresses resulting from shrinkage and differential movement that can ultimately lead to failure of the structure. Such stresses can be controlled by placing a material compressible by concrete in construction joints between slab pours, around service penetrations, and against any infill slab structures. Such material is noted in the specification to be commonly referred to as expansion joint foam or lagging, and is expected to be used in building practice to allow for expansion and contraction of the slab.
At page 4 of the specification, a specific embodiment of a suitable foam is discussed to be polyethylene-EVA polymeric composite foam impregnated with an insecticide known as bifenthrin. Later in the description, a range of foam characteristics are discussed. For example, at page 14 it is identified that the expansion foam of the present invention desirably has the following characteristics:
·Compression set (22 hrs) < 6% to max of < 10 %
·Target density of 25 kg/m3
·Tear strength > 2.5 kg/cm
·Elongation > 140%
·Tensile strength > 2.5 kg/cm2
·Production at less than 180°C
Quite clearly, the specification discusses an expansion joint foam that has compression and corresponding rebounding properties but does not necessarily limit the foam of the specification to having rebounding properties in all uses (see for example claim 26). With reference to the above characteristics, the compression set is a measure of the permanent deformation/loss of height of a foam after removal of force that is applied. This occurs due to bending or collapse of cells within the foam. A compression set of that described appears to refer to a reasonable degree of rebound after compression. A similar compression set is again noted for a flexible polyethylene foam on page 18 of the specification. The need for suitable rebound properties in an expansion joint foam is also discussed on page 12 as follows with reference to slab penetrations:
When a new concrete slab is poured, it should be recognised that the concrete may form an intimate seal with the utility penetration. However, this is not always the case. If the utility penetration is moved during the concrete pour, then a gap may be opened through the slab. Also, it is common plumbing practiced to place plastic sleeving or foam (for example, polyurethane) around pipes to allow for expansion and to prevent contact of copper pipes with cement. Both of these practices may lead to crawling pests-sized gaps. Also, during the lifetime of the slab, it is exposed to many pressures, including expansion and contraction of the concrete, expansion and contraction of the pipes, all of which may lead to gaps opening near utility penetrations.
To adequately fill gaps and to be suitable for use as an expansion joint it appears that a polymeric foam needs to have a satisfactory degree of both compression and rebound. Such a point may be contrasted with claim 26 which is clearly not limited to suitability for use as an expansion joint but is more broadly couched as merely a construction element. A foam as that defined in claim 26 therefore requires no rebound properties and may also be substantially rigid.
Turning to the testimony of the experts I first refer to the opponent’s experts. Mr Cocking noted that to be suitable for use as an expansion joint foam, which is generally a closed cell low density polyethylene foam, material often included properties such as: ready compressibility; low load transfer; was easy to cut; was non-absorbent; high temperature resistance; resistance to chemicals; flexibility; being lightweight (Cocking at [16]). Furthermore, he noted that expansion joint foam must have the required amount of flex and resiliency to allow the expansion joint foam product to perform as required in the expansion joint, thereby allowing the concrete slab to move freely with shrinking and expansion (Cocking at [23]).
Mr Hannay, in his analysis of prior art documentation refers to the inclusion of rigid thermoplastic polystyrene sheet foam material positioned between brickwork and concrete slab material (Hannay 2 at [8]) suggesting that this is an expansion joint foam, although not a great one. Having a mind to the specification and the evidence of Mr Cocking, I have trouble with this construction of an expansion joint foam. To me there must be a sufficient degree of flexibility and compression resilience within a foam to be regarded suitable for use in forming an expansion joint. I do not consider that a rigid polystyrene sheet would be considered a foam material that a person skilled in the art would label as suitable for forming an expansion joint. Such sheets appear to be commonly used as insulation.
This analysis is further supported with reference to the applicant’s evidence from Mr Pittock and Mr Commerford. For example, Mr Pittock states the following of an expansion joint at [26] of his declaration:
“I note that an expansion joint needs to have certain characteristics and features, including good rebound properties. Rebound properties or compressibility is required for expansion joints due to expansion and contraction of a structure, for example, concrete slabs.”
Mr Commerford also notes at [16] that:
“…[expansion joints] require compressible foam be installed to allow for expansion and contraction of the elements either side of the joint (movement caused mainly by temperature change). The use of an expansion joint minimises the occurrence of cracking,”
and further with reference to an expanding foam discussed as prior art he stated at [22] that:
“it is unlikely that the expanding foam product would rebound (recover to its original size) whereas, the properties of an expansion join allow recovering to its original size.”
Quite clearly, the applicant’s experts also make clear reference to the required property of rebound. As such I am satisfied that rebound properties are inherently included within the scope of claim 1 by means of the polymeric foam being suitable for forming an expansion joint. The question may then be asked, “To what degree is the property of rebound claimed?” At this point I turn to guidance from Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890; (2000) IPR 331 (and cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121; (2008) 77 IPR 229) where it was noted:
“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to their intended use. The consideration is whether, on any reasonable view, the claim has meaning. In determining this, the expression in question must be understood in a practical, common sense manner.”
The opponent does not question the clarity of claim 1 in terms of the relevant feature, and there is no evidence before me to suggest that the principle of a workable standard does not apply to the present case. It appears to me that the person skilled in the art would have adequate knowledge to decide whether a foam material was suitable for forming an expansion joint. They would appear to be aware of the nature of the pressures and stresses required in a construction expansion joint, and thus be able to provide useful meaning to the degree of flexibility, compressibility and subsequent rebound required in an expansion joint foam. Hence, I conclude that claim 1 is limited to a foam with flex, compression and rebound properties that are within the range for normally forming an expansion joint, whereby a substantially rigid and non-rebounding sheet does not fall within the scope of claim 1.
The opponent referred to the greater silence of the specification regarding rebound properties noting that there is no indication in the specification of any properties of when the foam would function as an expansion joint. Here the opponent points to properties discussed at page 7 and 8 of the specification identifying that there is no reference to any rebound properties let alone good rebound properties. The properties identified instead relate to cell size, foam thickness, constituent materials density, formation options, additives and concentrations. While the opponent is generally correct, this disclosure does not detract from the skilled addressee’s understanding of the scope of the limitation of a foam suitable for forming an expansion joint which as far as the evidence shows, requires for example, a sufficient degree of flex and compression resiliency.
The opponent also refers to the specification’s identification of foam materials such as polystyrene being suitable for the purpose of forming an expansion joint foam. Claim 6 is a perfect example whereby claim 1 is further limited using materials such as polyamide, polyvinylchloride, polyethylene, polystyrene, synthetic rubber, polymethyl acrylate, polypropylene, EVA polymer and polyurethane. They suggest that the applicant’s assertion that a prior art rigid and non-rebounding polystyrene would not be suitable as an expansion joint creates an inconsistency between claim 1 and 6. While I will address this further later in the decision, I note this does not pose an issue for claim construction whereby claim 6 is simply directed to the foams formed of material from this list, whereby suitable flex and compression resiliency are also present.
Importantly I would like to make clear that claim 26 is not in any way limited to a suitability for forming an expansion joint. This appears to me also consistent with the broader aspects of the teachings of the specification when read as a whole. The claim, which is a method of protecting a structure against the ingress of insects, essentially reflects the features of claim 1 aside from the need for a suitable level of compression and rebound properties. For example, claim 26 includes within its scope, rigid foams that can be placed in construction locations, preventing the ingress of pests such as termites.
Section 40
Clarity
The opponent simply referred to their statement of grounds and particulars in raising their contentions with the clarity of claims. They made no particular submissions at the hearing and nor did the applicant. I will briefly address the clarity issues raised by the opponent.
Claim 1 was said to lack clarity because it is not clear how the removable cover of claim 1 is “adapted” to be removed upon application of the construction element. Put simply, such a submission does not bring into question the scope of the claim. The removable cover is in some way physically attached such that when one is ready to apply the construction element, it can be removed. I would assume a person skilled in the art would be well equipped to apply removably covered adhesives to foams, there being no evidence to suggest otherwise.
Claim 7 was objected to with regard to the use of the term “preferably” within the feature wherein the polymeric foam may be manufactured primarily of polyethylene, preferably a linear low density polyethylene (LLDPE). The opponent argued that it wasn’t clear whether or not the feature was essential, thereby rendering the claim unclear. Importantly I see nothing in the specification to suggest that such a “preferable” feature is essential. The “preferable” aspect does not further limit the claim and it is clear.
Claim 9 recites that the polymeric foam further comprises one or more additives is (sic) selected from the group inorganic filers, pigment, lubricants, stabilizers, antioxidants, antifungal agents, acid scavengers, ultraviolet absorbers, flame retardants, processing aids, dispersion aids, extrusion aids, and the like. The opponent questions the scope of the terms “selected from the group” and “and the like”. No evidence before me suggests the claim is not clear. The list of additives is extremely functionally varied suggesting the use of the relevant broad terms is a reference to additives of the full range of varieties that are commonly added to foam products. I believe that the person skilled in the art would be equipped with such knowledge.
Claim 10 appends to claim 9 in reciting that the stabilizing agent is present in 0.1-10 wt%, there being no antecedent alleged present in claim 9. While this is strictly true, stabilizers are present in claim 9 which I consider provides adequate antecedent.
Claims 11, 16, 17 and 18 all recite various inclusions and parametrisations of the foam with reference to “preferable” or “more preferable” features. Similar to my finding in respect of claim 7, I do not consider these terms to further limit those claims beyond the features non-preferably defined. The claims are clear.
Claim 18 is said to be unclear in regard to the definition of “a tear strength”. In particular the opponent argues that this has no meaning as a sheet can be torn in several directions, for example along its length or width. I do not consider this claim unclear. The claim refers to a tear strength, and as such is directed to a tear strength in one of these tear directions.
Claim 20 recites the feature wherein the polymeric foam has an elongation of greater than 140%. The opponent argues that that the specification “does not contain any way on how this may be measured nor provides any example on how such a particular elongation % may be obtained”. Similar to the “tear strength” I do not see how this line of logic can render the claim unclear. There is nothing in the evidence to suggest that the person skilled in the art does not know what an “elongation” is, or how to measure it.
Claims 21 and 22 refer to the inclusion of a motif on the removable cover wherein the motif comprises words, logo, decorative design or novel construction element characteristic. The opponent contends that the terms “motif”, “decorative design” and “novel construction element characteristic” are not clear. I do not see any issue in construing these claims. Quite clearly a “motif” relates to some aspect of imagery, design, branding or marketing presented on the removable cover. Figure 3 of the specification shows this very clearly. A “decorative design” is clearly just a decorative inclusion in forming a motif. The further inclusion of a “novel construction element characteristic” appears to me to be nothing more than a reference to the idea of including some depiction of the features of the described construction element within the motif. I do not see the inclusion of the word “novel” as imposing any reference to the idea of novelty in Patent Law, but instead a reference simply to a marketing allegation of novelty. I construe the term as simply a depiction of a characteristic of the described construction element.
I find all of the claims are clear.
Sufficiency
Subsection 40(2)(a) requires that a complete specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art. In order to comply with sec 40(2)(a), the complete specification must provide sufficient information to enable the skilled person to perform the invention over the whole width of the claims, without undue burden or the need for further invention. (The Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011, and Biogen Inc. v Medeva PLC [1997] RPC 1 at 48).
The opponent points to the Explanatory Memorandum where it is stated that:
“If, on its face, the specification would appear to the skilled person to lack sufficient disclosure, the onus of establishing that the invention is described in enough detail lies with the applicant”.
I accept that as an administrative decision maker, I am entitled to consider the face of the specification using my imputed technical knowledge (Commissioner of Patents v Sherman [2008] FCAFC 182). I note however, that I must tread with caution as the present matter is an opposition matter where onus clearly initially lies with the opponent. In this regard, a submission of the opponent is that the evidence of the witnesses together with the specification’s disclosure, gives rise to such a shift of burden.
The central issue that the opponent focuses upon is the applicant’s expert’s distinguishing of a prior art document from the claimed invention. As I have discussed already in this decision, claim 1 as I understand it is limited to a foam having adequate flex and compression resiliency to perform as an expansion joint. In considering this construction, I concluded that the person skilled in the art would see these features as a workable standard in performing the invention. The aspect of the prior art document referred to is the disclosure of a rigid polystyrene material. Both of the applicant’s experts identify this example as a material that would not be considered an expansion joint. Most significantly, Mr Commerford states in the context of the relevant prior art document that:
“Polystyrene foam has poor compression rebound properties (poor compression set) which means that once the foam is compressed it will not typically rebound. I note that this type of foam is commonly used in safety applications such as helmets because it absorbs energy from impact and is design (sic) to deform and thereby protect the person (sic) head.”
I do not consider that this statement of Mr Commerford provides support for an allegation of a lack of sufficiency to the degree that there is a shift in onus. The statement was made entirely in the context of a particular disclosure of polystyrene regarding its common usage and typical properties. I don’t take this statement to imply that a person skilled in the art of foam construction could not routinely form a polystyrene based foam that is flexible and compression resilient. While the statement of Mr Commerford does confirm that some of the more common constructions and usages of polystyrene would not be commensurate with an expansion joint foam, this does not instil me with a significant amount of doubt such that I would consider that constructing an expansion joint foam in accordance with claim 1 from polystyrene would constitute undue burden or a need for further invention. I do not consider that the applicant’s evidence is sufficient to suggest that the person skilled in the art would not be capable of making a polystyrene polymer that is suitable for an expansion joint.
Regarding the specification the opponent points to embodiments that present certain features suggesting that these examples “do not provide teaching how to make a construction element for forming an expansion joint within the meaning of claim 1 and across its breadth”. Also noted by the opponent is the reference at page 21 of the specification to “key technical features”. Ultimately, the embodiments and key technical features referred to discuss the use of polyethylene foam at times in the form of linear low density polyethylene (LLDPE) or low density polyethylene mixed with low melting EVA polymer. Reference is also made to the failure of the specification to identify testing conditions to achieve a desired compression set using polystyrene. The absence of a disclosure of an embodiment involving any other polymer foams aside from polyethylene is identified by the opponent as an indicator that there is insufficiency in regard to at least polystyrene.
It appears to me, on the information at hand, the specification does no more than to suggest that the particular embodiments and “key technical features” point towards a best method of performing the invention. I have insufficient information before me to accept that the absence of a particular description of how to perform the invention has shifted the onus for demonstrating sufficiency to the applicant, even in light of the applicant’s evidence. I note that none of the opponent’s experts suggested that they would have any problem in seeking to perform the claimed invention across its entire breadth, and it has been entirely open to the opponent to file such evidence in light of the issues arising during the opposition and in the hearing. In summary, I do not consider that the onus now lies with the applicant to demonstrate that the claims are sufficiently described (or supported).
Turning now to the specific issues identified, the opponent submitted that the specification is insufficient because there is no disclosure of a density outside the range of 23-28kg/m3 nor is there a disclosure of a concentration of insecticide above 2.0 wt%. Quite clearly, the mere lack of a disclosure of the relevant feature in the body of the specification cannot give rise to a lack of sufficiency. In this regard I must decide whether the disclosure of the specification is sufficient to enable the scope outside the specifically embodied ranges. There is no evidence before me that there would be any burden or need for further invention in obtaining the claimed ranges. The claimed ranges appear normal ranges for such a foam material. This attack under section 40(2)(a) fails.
As discussed largely above, the opponent also points to the fact that claims 1 and 6 in particular, point to a wide range of polymers which is broader than the enabling aspect of the specification being merely polyethylene foam. As pointed out by the applicant and consistent with my construction of the claims, the applicant’s expert evidence referred to specific foams disclosed by the prior art and does not provide generalised comments about the suitability of different types of foams for use as expansion joint foams. Hence, the applicant’s evidence does not suggest there would be any difficultly in adapting for example, a form of polystyrene foam to be suitable as an expansion joint foam. Furthermore, as the applicant states in submission:
“There is no evidence to support the proposition that the specification does not disclose the use of the invention across the claimed range of polymers in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.”
I agree with the applicant. On the material before me, the specification provides sufficient disclosure.
Support
Subsection 40(3) requires that the claim or claims must be, inter alia, supported by matter disclosed in the specification. This requirement for support is intended to ensure that there is a basis in the description for each claim, and that the scope of the claims must not be broader than is justified by the extent of the description, drawings and the contribution to the art. There must also be consistency, or basis, for each claim in the description. This requires that:
“… the definitions in the claims [i.e. the claimed invention] should essentially correspond to the scope of the invention as disclosed in the description. In other words, … the claims should not extend to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art.” (Generics (UK) Ltd v H Lundbeck A/S [2009] RPC 13 at [36], affirming T 409/01)
The opponent mirrored the submissions to those presented under the ground of sufficiency in relation to the lack of an enabling disclosure of features related to density, insecticide concentration and range of polymers claimed. For the same reasons discussed in relation to that ground, the claims are supported. Under the ground of support, the opponent also pointed to an alleged failing of the specification to provide sufficient detail to create an expansion joint. This submission is equally problematic particularly in the absence of any evidence to suggest any difficulty in performing the claimed invention.
A similar submission related to the fact that there is no explicit disclosure in the body of the specification of claimed ranges of density (16-65 kg/m3) and insecticide concentration (0.2-4wt%). A lack of support can arise, aside from there being no undue burden or further invention when performing the invention, when there is a serious inconsistency between what is claimed and what is described. The particular claimed ranges are not explicitly disclosed and instead the body of the specification discloses a specific embodiment of a much narrower range of parameters in addition to a general consistory description of foam with no limitations of density or concentration. It appears to me that the general description of a foam forming a construction element that may be suitable for an expansion joint points the person skilled in the art in the direction of normal foam ranges such as those claimed. There appears to be implicit basis for the claimed ranges and a suitable correspondence between the claims and the description.
The claims are supported.
Utility
In Ranbaxy Australia Pty Ltd v Warner-LambertCoLLC [2008] FCAFC 82 at [141] it was stated that "the invention as claimed must attain the result promised by the patentee". Regarding the meeting of a promise, in Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd [2014] FCA 1366 at [340], Beach J proposed a three-question test when considering utility:
i. What has the patentee promised for the invention as described in the relevant claim?
ii. Is the promise useful?
iii. Has that promise been met?
While not specifically raised in the statement of grounds and particulars, the issue identified by the opponent reflects debate at the hearing in relation to claim and prior art construction. The opponent alleges that the specification:
“…promises that it will provide a useful construction element that will provide both a physical and chemical barrier to termites which can function, inter alia, as part of an expansion joint. The Applicant’s evidence is that some foams such as polystyrene cannot be used as an expansion joint. The claims expressly encompass foams that would not work and, as a consequence, are invalid for lack of utility.”
The key issue raised by the opponent is a failure to comply with the third question of the above test, being that the promise is not met. A range of general problems of termite ingress in construction are discussed in the specification, as is the more specific problem of simultaneous installation of expansion joint foam and a termite barrier. After a range of problems are discussed, the specification contends that it is desirable to provide a construction element that at least alleviates some of the identified problems. It is generally noted at the beginning of the specification that the invention relates to the formation of a construction element useful for the building, construction and pest industries (see Field of the Invention), while at the same time it is clear that the specification is largely focussed upon the production of expansion joint type foams. I consider that while the specification focuses upon expansion joint foam, there does not appear to be any identifiable promise made by the specification in relation to expansion joint foam.
On my understanding of the specification as a whole considered with regard to the difference in scope between claims 1 and 26, the promise is particularly broad and amounts to the provision of a construction element that is useful in the building, construction and pest control industries as a pest control barrier. The claimed invention meets this promise.
Therefore I find that all of the claims are useful.
Inventive Step
69. 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.”
70. 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]?”
71. The usual approach to determining inventive step is the problem-solution approach. Once the problem has been formulated and the common general knowledge and the prior art base has been determined, the question of whether the claimed solution is obvious must be addressed.
72. In determining the problem or ‘starting point’ for considering inventive step, I am mindful of the words of the majority of the Full Court in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [202]- [203] as follows:
“If the problem addressed by a patent specification is itself common general knowledge, or if knowledge of the problem is s 7(3) information, then such knowledge or information will be attributed to the hypothetical person skilled in the art for the purpose of assessing obviousness. But if the problem cannot be attributed to the hypothetical person skilled in the art in either of these ways then it is not permissible to attribute a knowledge of the problem on the basis of the inventor’s “starting point” such as might be gleaned from a reading of the complete specification as a whole.”
73. In other words, the Full Court has stated that when formulating the problem it is not permissible to incorporate information that is not available to the person skilled in the art as either common general knowledge or information available under section 7(3).
The Problem
74. As discussed earlier in this decision, the background to the invention in the specification describes the use of physical and chemical barriers around constructions to prevent termite ingress. Often these barriers are placed in concrete expansion joints to cooperate with compressible expansion joint materials. However, the inclusion of a termite barrier with a known foam expansion joint material can create duplication of work and additional difficulties when installing. The described invention seeks to overcome this problem.
75. With regard to independent claim 1, the particular problem of providing an improved insecticidal expansion joint product that reduces known difficulties of installation is solved by means of a suitably adapted polymeric foam material having an adhesive backing. Claim 26 is not so limited to suitability for use as an expansion joint and as such, does not solve this problem. Instead claim 26 solves the problem of providing an improved insecticidal construction product that reduces known difficulties of installation. To me these problems are clearly problems that are known.
Common General Knowledge and Prior Art Base
76. In discussing the state of the art, the opponent’s experts identify aspects that appear to constitute common general knowledge. Mr Hannay discusses known termite sheet barrier construction elements such as Kordon® and Trithor® (exhibits PH-03 and PH-04). These elements are of the type that do not appear to possess foam qualities commensurate with an expansion joint, but are instead thin sheets comprising a synthetic fibre blanket impregnated with insecticide often placed in locations in cooperation with a second foam product which serves the usual needs of an expansion joint (for example, in the two-stage process discussed in the background of the specification). Mr Hannay continues by discussing that prior to the priority date, it was well known in the pest industry that openings in building constructions presented a path for pests and that closed cell foams impregnated with insecticide were well known as in use (Hannay 1 at [19]).
77. Mr Hannay refers to a product known as TERM-sealTM which exemplifies the use of closed cell insecticidal foam, being a plastic based product impregnated with bifenthrin (at 0.1 or 0.2%wt) for use as a termite resistant construction element. The product was formulated in several modes in addition to a foam product (exhibit PH-08):
· As a plastic polyurethane foam material that is dispensed and thereby applied to a cavity, undergoing an exothermic reaction to set and fill the cavity
· As a poly-reinforced membrane strip for application
· As a sealant to be “caulked” into gaps
· As a coating for application using a brush
· As a plastic collar to fit around pipes
78. Mr Cocking discusses several aspects of expansion joint foam. He notes that expansion joint foam “is a flexible or semi-rigid closed cell foam product supplied in rolls or sheets, with or without an adhesive backing” (Cocking at [9]). Mr Cocking adds that expansion joint foams are made from a closed cell polyethylene, and typically a low density polyethylene (Cocking at [16]). A tear-off section (often referred to as a “zip-top” or “zip-strip”) was also common place at the priority date in expansion joint foams for installation between a vertical face and a slab whereby the strip could be removed for appropriate application of a sealant thus providing a neatly sealed joint (Cocking at [17, 18]). Typical characteristics of expansion joint foams are identified by Mr Cocking in exhibits PC-01, PC-03, PC-04, PC-05. Mr Cocking identifies densities as typical in the range of 25 kg/m3 up to 100 kg/m3 (Cocking at [20]).
79. In relation to the mode of attaching expansion joint foams to desired structures, Mr Cocking refers to the normal use of an adhesive applied to a surface of the foam material which is then covered in backing paper (Cocking at [22] and exhibits PC-03, PC-04). In relation to cell size of expansion joint foams Mr Cocking made the following comments at [23]:
“…cell size … is not a physical property that customers are concerned about. In my experience in the expansion joint foam industry the key requirement is that the expansion joint foam product must have the required degree of flex and resiliency to allow the expansion joint foam product to perform as required in the expansion joint, to allow the adjacent concrete slab to move freely as it shrinks and expands.”
80. Mr Cocking refers to exhibits PC-01, PC-03, PC-04, and PC-05 to point out the fact that such parameters are not identified in the relevant technical data sheets, however he suggests that parameters such as a cell size of 0.5 to 2mm were known to him at the priority date (exhibit PC-07).
81. In summary, it appears that the following can be said of the common general knowledge in the art in relation to insecticidal barriers:
· The use of chemical sheet barriers in the form of a thin fibre sheet impregnated with insecticide
· A dispensable and setting polyurethane foam that is impregnated with 0.2% bifenthrin
82. From the evidence before me, it does not appear common general knowledge that an expansion joint foam product, or a foam product for that matter, provided as a sheet or a roll, is further provided with an active insecticide distributed throughout the foam. This much appears confirmed by Mr Cocking who states at [26] of his declaration that “as far as I can see the only difference [between the state of the art and the claimed invention as he is aware] is that an insecticide has been added to the expansion joint foam. It appears to me that the following constitutes common general knowledge of expansion joint foam at the priority date:
· Expansion joint foam is flexible or semi-rigid in rolls or sheets and often has adhesive backing covered in paper
· Generally made from low density polyethylene
· Having tear-off strips to enable forming of neatly sealed joints
· Having foam density in the range 25 kg/m3 and upwards
· Having cell size of the order of millimetres
83. Having identified the relevant common general knowledge, I note that the opponent also relies on documents provided as exhibits PH-10, PH-11 and PH-13 for their attack under inventive step. These documents are:
· D2: US 6156328 A (Alcott et al.) 5 December 2000
· D5: US 7247311 B2 (Stein et al.) 24 July 2007
· D8: AU 2007201514 A1 (Creepy Crawly Pest Control Pty Ltd) 23 October 2008
84. Subsection 7(3) as amended on 15 April 2013 no longer restricts prior art information used for inventive step to those which the person skilled in the art, before the priority date of the relevant claim, could be reasonably expected to have ascertained, understood, regarded as relevant. Thus, I must consider each of these documents along with the common general knowledge.
Was the invention obvious?
Common General Knowledge
85. The opponent’s attack as to the claims lacking an inventive step in view of common general knowledge focuses upon the TERM-sealTM product and its uses. Quite clearly, the product is shown in the evidence (exhibit PH-8) in use around the perimeter of a house. It is used commonly as: a plastic collar around a pipe; as a sealant or coating for application to cracks/gaps or surfaces; as a thin sheet for application to surfaces; and most relevantly as a polyurethane foam product for dispensing, expansion and setting. The polyurethane dispensed foam has 0.2% wt bifenthrin impregnated within.
86. Both independent claims 1 and 26 refer to a particular form of a polymeric foam product. In this regard, the claims are directed towards a polymeric foam construction element that is formed with an insecticide therein, also backed with adhesive that is suitably covered, prior to any installation. I see no reason why the particular TERM-sealTM foam product relevant to the present attack would be routinely combined with the commonly known feature of an expansion foam adhesive backing. To me it appears simply contrary to the function of a foam dispensed into a cavity where it will therein expand, to further include an “adhesive backing” on that foam, and there is clearly no basis to suggest this would be routine. With particular regard to expansion joint foams the applicant notes:
“…the fact that expansion joint foams were known and that foams with termiciticide (sic) were known does not render it obvious to mix termiciticide (sic) into an expansion foam, particularly given the very different physical properties of TERM-sealTM and expansion foams.
87. Furthermore, as I have noted above it has not been demonstrated that it is common general knowledge that a foam-based construction element provided as a sheet or a roll, is further provided with an active insecticide within the foam. At best, the evidence shows that the use of chemical sheet barriers comprising a thin sheet of synthetic fibre impregnated with insecticide are commonly used. This does not establish that the presence of insecticides within foam materials, upon which one could place an adhesive and cover sheet would have been routine.
88. Therefore, the invention defined in the claims involves an inventive step in view of common general knowledge alone.
D2: US 6156328
89. Document D2 discloses a polymer foam sheet with thickness greater than 3mm and average cell size at least 0.1mm having at least one pyrethrum compound dispersed in the polymer matrix (abstract). The background to the invention discusses that the foam structures are sufficiently insect-repellent to deter insects from chewing through or nesting in the foam. The background also discusses the fact that rigid and flexible polymeric foams are used throughout the building construction industry in applications such as thermal insulation, protection boards and expansion/contraction.
90. Column 3 of document D2 refers to a variety of polymer compositions that may be used to form a suitably insect repellent foam sheet. Expressly disclosed are polyolefins such as polyethylene, polypropylene, polyethylene terephthalate and polyvinyl chloride, wherein it is further added that suitable polyethylenes include those of high, medium, low, linear low, and ultra low density types. Reference is made in column 4 to the fact that the foam sheet of the invention is preferably a rigid extruded polystyrene or expanded polystyrene bead foam board, such as one commonly used in thermal insulation. An illustrative embodiment is provided in column 6 in the context of a polystyrene foam.
91. It is clear that document D2 discloses a construction element that acts as a physical and chemical barrier against insect ingress formed from a polymeric foam containing an insecticide substantially distributed throughout. The primary contention regarding document D2 is in relation to whether there is disclosure or teaching of suitability for use as an expansion joint. As argued by the applicant:
“…D2 is directed to the use of a polymer foam sheet board, polystyrene. Polystyrene is not suitable for use as an expansion joint, since it has poor rebound properties (a poor compression set). Although D2 may refer to other polymeric foams [t]hese are not the focus of the document. The patent does not appear to describe expansion joints… The foams of D2 would not be used as an expansion joint. Nor would it be obvious in light of D2 to make an expansion joint foam with the claimed features.”
92. As I have already discussed in this decision, I accept that the polystyrene board embodied in document D2 does not amount to a teaching of an expansion joint foam. Furthermore, the evidence does not suggest that one would modify this particular teaching of document D2 to produce the expansion joint foam of claim 1. Importantly however, document D2 expressly teaches the inclusion of an insecticide in a foam sheet such as low, linear low, or ultra low density polyethylene. The evidence in relation to the common general knowledge suggests to me that the person skilled in the art is acutely aware that expansion joint foam is made from polyethylene, and in particular, low density polyethylene. To me, the person skilled in the art is directly taught to apply an insecticide to a polyethylene foam that they would consider as inherently suitable for use as an expansion joint foam.
93. Document D2 also discusses suitable properties of such foams. For example, suitable densities for polyethylene foam sheets in the range 8kg/m3 to 48kg/m3 are disclosed (column 5 lines 21-34). The use of pyrethrum compounds in the range 1 part per million (ppm) to 20,000ppm are also disclosed (abstract) amounting to a concentration of between 0.2 and 4 wt.%. Both claims 1 and 26 are directed towards a cell size of approximately 0.5 to 2mm. The document discusses the average cell size (column 5 lines 53-59):
The average cell size is preferably at least 0.01 mm, more preferably at least 0.1 mm, most preferably at least 0.15 mm, but is preferably no greater than 5 mm, more preferably no greater than 3 mm, and most preferably no greater than 1 mm…
94. I consider the disclosed range of average cell sizes is a direct teaching towards a range of cell sizes of approximately 0.5 to 2mm. Furthermore, the evidence discussed above in relation to the common general knowledge points to such claimed cell sizes being normal in the art, there being nothing in the body of the specification to suggest that any invention lies in the selection of the particular cell sizes.
95. Remaining for consideration is the claimed features relating to the adhesive attachment means and the removable cover. When faced with the problem of providing an improved insecticidal construction product or expansion joint product that reduces known difficulties of installation it would be a mere matter of design choice to apply normal fixing and adhesion techniques to a pre-fabricated foam sheet. In this regard I refer to the common general knowledge discussed earlier where Mr Cocking identifies the common use of adhesive backings on expansion joint foams.
96. Therefore, I am satisfied that the person skilled in the art would be directly led to the improved construction element of both claims 1 and 26 when considering document D2 in view of the common general knowledge. I will now consider dependent claims 2-25.
97. Claim 2 adds the limitation to a closed cell polymeric foam. D2 discloses closed cell polyethylene (column 5 lines 21-24). Claims 6 and 7 are also disclosed as they further add to claim 1 the use of polyethylene or polypropylene which are disclosed at the same reference in column 5. Claim 3 adds a limitation to a cell size of approximately 0.5mm to 1mm. Claim 3 is not inventive for reasons already discussed in relation to cell sizes. Claims 4 and 5 add limitations to thickness of approximately 0.5 to 30mm, or approximately 10mm respectively. D2 discloses these approximate thicknesses (column 2 lines 1-15).
98. Claim 8 adds the feature wherein the polymeric foam is a composite comprising linear low density polyethylene (LLDPE) and low melting EVA (ethylene-vinyl acetate) polymer. The document discloses polymer compositions such as linear low density polyethylene but does not disclose its use in a composite with low melting EVA polymer. The body of the specification of the present application details the use of such a composite in the preferred embodiments. With specific reference to the features of claim 8, Mr Cocking notes in exhibit PC-7 that “EVA/LDPE blends [were] common prior to 2010, however not necessary for expansion joint function”. I interpret this statement to say that the claimed blend was well known to the person skilled in the art, but simply may not have been used commercially. Regardless of infrequent use, it appears that such a blend would have been routine. On this basis I find the claim lacks an inventive step.
99. Claim 9 adds limitation to claim 1 in relation to the inclusion of one of a broad range of additives and finds disclosure in D2 (column 5 lines 35-43). Claims 10 and 11 further limit claim 9 to a range of stabilizing agents added in concentration of 0.1-10 wt.%, where claim 11 specifically refers to a high surface area inorganic silicate. Document D2 discloses the features by way of the use of calcium silicate within a range from about 0.01 to 5 wt.% (column 5 lines 44-54).
Claims 12-16 limit claim 1 further to groups/lists of insecticides, ultimately limited to the use of bifenthrin in a concentration of 0.25 to 2.0wt.%. Bifenthrin is disclosed in document D2 (column 2 line 32) as is a concentration in the claimed range (column 2 lines 46-55). Claim 17 is also disclosed by way of a density between 23 and 28 kg/m3 (column 5 lines 28-32).
Claim 18 refers to a tear strength of the foam between approximately 2.5 and 4.0 kg/cm. Mr Cocking identifies that this range was commonly used in the market for “20+” years (exhibit PC-7). Hence, I consider this limitation a matter of routine. Furthermore, a compression set at 22 hours of less than 6% and an elongation of 140% appear nothing more than standard parameters for an expansion joint/low density polyethylene foam rendering claims 19 and 20 also obvious (Cocking at [24] and PC-7), particularly in the absence of any further claimed aspects of testing conditions of the claimed compression set.
Claims 21 and 22 are directed to the application of a motif with design elements on the removable cover of claim 1. To me this amounts to nothing more than branding and the particular design of a marketing element on a construction product. Such practice is undoubtably routine and cannot contribute to providing an inventive step.
Claim 23 refers to a zipping strip along a top edge of the polymeric foam. As discussed in relation to the common general knowledge in the art, such a strip is common in expansion joint foams (“Tear-off strips” discussed in Cocking at [17, 18], and exhibit PC-1). Furthermore, document D2 discloses the use of a UV stabilizer (column 5 lines 35-38) and the use of the construction element of claim 1 for preparation of a construction joint (column 1 lines 9-13). Uses such as: a penetration wrap around a utility pipe or a tube to be applied to pipes, concrete panels, perimeter barriers or a stump cap are all identified by Mr Cocking to be common in the art (exhibit PC-7). Therefore claims 24 and 25 also lack an inventive step.
Therefore, I find claims 1-26 lack an inventive step in view of document D2 when combined with the common general knowledge.
D5: US 7247311
Document D5 discloses (abstract):
Insect barriers for building structures include rigid foam sheets and sheets of film or mesh formed of polymer material impregnated throughout with a synthetic pyrethroid insecticide such as permethrin. Foam sheets are applied to exterior and interior surfaces of foundation walls to provide both thermal and insect barrier functions. Film and/or mesh sheets are positioned around exterior and interior perimeters of foundation walls to form skirts serving as insect barriers.
There is discussion within document D5 (column 9 line 48-57) of the formation of a rigid thermoplastic polymer foam from polystyrene or an equivalent material, impregnated with an insecticide. Permethrin is identified as an insecticide of preferable use being present in a concentration of about 0.1 to 2.0 percent by weight of foam material. Further discussion is present within document D5 identifying a flexible insect barrier. In particular (column 10 lines 39-56) document D5 discusses a flexible barrier comprising a continuous film of polymer material impregnated throughout with insecticide. The flexible barrier may alternatively be an open mesh formed of the polymer that is impregnated with insecticide. The flexible barrier may be formed of thermoplastic polymers including polyethylene and polypropylene with 0.1 to 2 percent weight of insecticide.
Importantly, I see no disclosure within document D5 of a foam material impregnated with insecticide, that clearly and unmistakably possesses the necessary qualities of an expansion joint foam. As discussed earlier in this decision, I see claim 1 limited to a foam material with flex, compression and rebound properties that are within the range for normally forming an expansion joint. Document D5 discloses a rigid polystyrene foam material, and sheet material that does not appear to possess foam qualities. As it has not been established as routine that a person skilled in the art would create an expansion joint foam sheet type product having an active insecticide, I do not consider the person skilled in the art would be led to modify the teaching of document D5 to produce the foam material defined in claim 1.
Therefore, I must find claim 1 and associated dependent claims 2-25 inventive in view of document D5 when combined with the common general knowledge.
Claim 26 is not limited to possessing properties of an expansion joint foam. In this regard document D5 discloses features of claim 26 being: a method of preventing insect ingress into a structure using a construction element during construction; wherein the construction element is formed from a polymeric foam having at least one insecticide distributed throughout at a concentration between 0.2 and 4 wt. %. Document D5 does not disclose the claimed cell size, water resistant adhesive and backing cover, nor foam density.
Firstly I note that I am particularly sceptical of a finding that the person skilled in the art would not have routinely applied these features to a rigid polystyrene foam board as described in document D5. For example, on face value, the additional features relating to cell sizes and material density appear to me as commonly chosen parameters for general foam materials, wherein the specification appears to make no suggestion that inventiveness lies in these parameters. However, I note that the evidence of the opponent in relation to the common general knowledge only refers to these further features to the degree that they might render their inclusion obvious in an expansion joint foam. This may be due to the focus of the opponent’s evidence upon common expansion joint foams and associated products, and not upon the properties of foams in general, including rigid polystyrene foam. On this basis, I have insufficient evidence before me to conclude that the opponent has established its case for inventive step with respect to document D5 when combined with the common general knowledge. While successful in respect of document D2, the opponent has not discharged their onus regarding this particular attack.
Therefore, I find claim 26 also involves inventive step in view of document D5 when combined with the common general knowledge in the art.
D8: AU 2007201514
Document D8 discloses (page 9) a foam material that prevents termite ingress by:
…positioning of the foam between or at a junction of other termite resistant material such as concrete, PVC, mainstream bricks and blocks. Various installation methods involve the placement of foam between exterior soil and structures, on top of timber, brick piers and around structures in various installation methods.
As also described in the abstract of document D8, soft foam material is pre-cut into sizes and is adapted to absorb insecticide and termiticides. The foam can be inserted into crevices or building cavities and then impregnated with liquid termiticide. The termiticide can be replenished in time or maintained using a tubular reticulation system. Figure 17 of document D8 discusses the use of the foam in joint control (presumably as an expansion joint foam) between two slabs of concrete. The foam is also discussed as preferably being polyurethane (page 3 line 4).
The important distinction between the invention described in document D8 and independent claims 1 and 26 is that the foam of the claims is impregnated with insecticide prior to installation in that the foam is also prepared with an adhesive backing covered in a removable cover. Document D8 functions by way of first installing a foam, and then once the foam is installed, adding an insecticide to be absorbed and held by the foam in a sponge like mechanism. This functionality of the invention of document D8 teaches away from the combined features of the independent claims which require the presence of the limiting features before any installation. There is no evidence to suggest why and how a person skilled in the art would modify the teaching of document D8 to arrive at the claimed invention.
Therefore, claims 1-26 are inventive in view of document D8.
Conclusion
The opposition is successful. Claims 1-26 are not inventive. There may be patentable subject matter present in the specification as for example, specific foam preparations are described but not claimed. On this basis, I will provide the applicant a period of two (2) months to propose amendments to attempt to overcome the identified deficiencies. In the absence of a suitable amendment, and subject to appeal, I direct the application be refused.
Costs
Greenzone Pest Innovations Pty Ltd has not been successful in defending the application. It is normal for costs to follow the event. In this case, I see no reason to depart from the norm. I award costs against Greenzone Pest Innovations Pty Ltd.
Dr N. R. Madsen
Delegate of the Commissioner of Patents
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