Varden Process Pty Ltd v Ecoinno (H.K.) Limited
[2023] APO 33
•9 June 2023
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Varden Process Pty Ltd v Ecoinno (H.K.) Limited [2023] APO 33
Patent Application: 2017222026
Title:Cellulose materials and methods of making and using same
Patent Applicant: Ecoinno (H.K.) Limited
Opponent: Varden Process Pty Ltd
Delegate: Leslie F. McCaffery
Decision Date: 9 June 2023
Hearing Date: 16 March 2023 by videoconference
Catchwords: PATENTS – opposition under section 59 to the grant of a patent – claim construction – novelty – claims 1, 2, 11 and 12 lack novelty – inventive step – claims 1 to 5, 11 and 12 lack inventive step – support – claims are supported – clarity – claims are clear – opposition successful– applicant given 2 months to propose amendment of the specification to overcome the issues – costs awarded.
Representation: Counsel for the applicant: Ben Fitzpatrick, Counsel
Patent attorney for the applicant: RNB IP
Counsel for the opponent: Ian Horak, SC
Patent attorney for the opponent: Argon IP
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2017222026
Title:Cellulose materials and methods of making and using same
Patent Applicant: Ecoinno (H.K.) Limited
Date of Decision: 9 June 2023
DECISION
The opposition is successful. Claims 1, 2, 11 and 12 lack novelty. Claims 1 to 5, 11 and 12 lack inventive step. The claims are otherwise clear and supported.
The applicant has two (2) months from the date of this decision to file amendments to overcome the deficiencies.
Costs according to Schedule 8 are awarded against the Applicant, Ecoinno (H.K) Limited.
REASONS FOR DECISION
Background
Australia Patent Application 2017222026 (the Application) was filed by Ecoinno (H.K.) Ltd (the Applicant) on 24 February 2017 and claims earliest priority date of 24 February 2016 based on US application 62/299,084. The application was advertised as accepted on 28 January 2021. A notice of opposition was filed by Varden Process Pty Ltd (the Opponent) on 28 April 2021. A Statement of Grounds and Particulars was filed on 28 July 2021.
Evidence in Support (EIS) consisted of a declaration by Ian Hedley Parker dated 28 October 2021, together with Annexures IP-01 to IP-04 (Parker 1). Dr Parker has worked with Australian Paper Manufacturers Ltd (APM Ltd, which subsequently changed name to Amcor Ltd), was Managing Director of Surface Technology Pty Ltd, and was an Associate Professor at Monash University until his retirement in 2008. He has since held positions as a Teaching Associate at Monash University, Manager, Standards in the Testing Standards Committee of the Australian Pulp and Paper Technical Association, and Chair of the Standards Australia Technical Committee PK-019 (Methods of Test for Pulp and Paper).
Evidence in Answer (EIA) consisted of a declaration by Eero Kontturi dated 30 January 2022, together with Annexures EK-1 to EK-6 (Kontturi). Professor Kontturi is an Associate Professor of Bio-based Materials in the School of Chemical Engineering at Aalto University in Finland. He has held various postdoctoral fellowships and visiting positions at the Université Pierre et Marie Curie, Imperial College London and University of Vienna.
Evidence in Reply (EIR) consisted of a second declaration by Dr Parker dated 1 April 2022 (Parker 2).
The matter was heard on 16 March 2023 by videoconference. The statement of grounds and particulars had included most available grounds of opposition,[1] but at hearing the Opponent only pressed the grounds of novelty, inventive step, clarity and support.
[1] The ground of opposition under section 40(2)(b) – that the claims do not define the invention – was dismissed on 1 March 2023.
Onus
The substantive amendments to the Patents Act 1990 (Cth) (the Act) brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) (the Raising the Bar Act) apply to the present case. The standard of proof in opposition proceedings is the balance of probabilities. If the Commissioner is satisfied, on the balance of probabilities, that a ground of opposition to the grant of the standard patent exists, the Commissioner may refuse the application. The opponent bears the onus of proof.
Principles of Construction
The principles underpinning construction are well-established. As noted by Middleton J in Eli Lilly and Company Limited v Apotex Pty Ltd:
“It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”[2]
[2] [2013] FCA 214; 100 IPR 451 at [139].
The task of construing the specification is undertaken from the viewpoint of a person skilled in the art and the prevailing common general knowledge at the priority date. The person skilled in the art is a hypothetical non-inventive person or team likely to have a practical interest in the subject matter of the invention.[3]
[3] Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 at [70]-[72].
The Full Court in Airco Fasteners Pty Ltd v Illinois Tool Works Inc.,[4] recently reiterated the principle that experts can give evidence on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on any unusual or special meanings that would be given by skilled addressees to words which might otherwise bear their ordinary meaning,[5] and the Court is to place itself in the position of some person acquainted with the surrounding circumstances as to the state of the art and manufacture at the time.[6] However, it is for the Court, not for any witness however expert, to construe the specification.[7] A similar approach is taken in matters before the Commissioner.
[4] [2023] FCAFC 7 at [48].
[5] Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd [1994] FCA 1529 (Sartas No. 1); (1994) 30 IPR 479 at [485]-[486].
[6] Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; 207 CLR 1 at [24].
[7] Sartas No 1, supra at [485]-[486].
The Opponent did not provide specific written submissions for hearing on the person skilled in the art or their common general knowledge. The Applicant submitted that the field of the invention lies in the field of advanced bio-based materials including cellulose-based fibres, in particular for the manufacture of consumer products including packaging, as well as manufacturing processes for making such materials. The relevant addressee would therefore include a person with a knowledge of such bio-based materials. I consider this a reasonable representation of the person skilled in the art, noting that the field specifically relates to paper and pulp-based products.
The parties both accepted that the experts were relevantly qualified to give evidence, but provided submissions in relation to the weight that the evidence provided by the experts should be given.
The Applicant acknowledged that Dr Parker has significant experience in pulp and paper making but noted that the use of nanocellulose in this industry has increased dramatically since around 2008, when Dr Parker retired from his position as Associate Professor at Monash University. They submitted that, given the invention relates to the use of nanocellulose, to the extent that there is a divergence in the opinions of Dr Parker and Professor Kontturi relating to the use of nanocellulose, the opinions of Professor Kontturi should be preferred.[8]
[8] Applicant’s written submissions for hearing (AS) at [22].
At the hearing the Opponent urged caution in accepting the evidence of Professor Kontturi, particularly where he deviated from the teaching of the specification. To the extent that Dr Parker did not have experience in nanocellulose, they argued that the specification is at a level of generality that does not require any specialist knowledge in terms of the features and the meaning that they would be given. They also noted that Dr Parker remained active in other positions after 2008, including teaching at Monash University.
Despite the issues raised by the parties, I am satisfied that both experts have relevant experience and knowledge to assist in the present determination. Professor Kontturi clearly has a high level of knowledge and experience of nanocellulose. Dr Parker has extensive experience in papermaking and other pulp-based products, and I am satisfied that he is at least aware of nanocellulose and its use in applications in the field of paper and pulp-making as of the priority date.[9] Nevertheless the parties have identified relevant factors that should be taken into account when determining the weight that can be given to the expert evidence provided in the opposition. Where necessary I have discussed those factors below.
[9] Parker 1 at [30] to [34].
The specification
Paper and other paperboard products are generally produced from raw plant fibre materials. Wood is the most common source for raw plant fibre material, but other “non-wood” sources can be used, including bamboo, bagasse (a waste product from sugar cane), cotton, and various kinds of straw. A pulp of separated cellulosic fibres is formed from the raw plant fibres by mechanical or chemical processes. Paper products are then made by forming a slurry of pulp which is formed into the desired shape, removal of the water by filtration and drying.
Raw plant fibres are composed of fibrils wound helically around a hollow centre. Refining cellulosic fibres by mechanical work progressively loosens and releases outer layers of fibrils. The properties of fibrillated cellulose have led to an increasing interest in their use in new applications, including the replacement of plastics with renewable materials.
The specification broadly states that materials are provided that comprise a pulp and a fibrillated cellulose, wherein the pulp and the fibrillated cellulose are independently from a plant fibre. The specification describes a number of different embodiments (layered products, composite materials etc.), but the embodiment defined by claim 1 and dependent claims is limited as follows:
“A material, comprising:
a first layer comprising a pulp; and
a second layer comprising a fibrillated cellulose;
wherein the pulp and the fibrillated cellulose are independently derived from a plant fiber, and wherein the first layer pulp is impregnated with the second layer to form a substantially continuous layer.”The Opponent observed that the specification “contains, in effect a list of different options without properly identifying a cohesive set of features that comprise the alleged invention”.[10] They noted that the description does not contain a consistory statement or passage of text that sets out the invention in clear terms.[11]
[10] Opponent’s written submissions for hearing (OS) at [15].
[11] OS at [14].
The most general disclosure given in the specification states that “in some embodiments, the pulp is impregnated with the fibrillated cellulose”,[12] but, as submitted by the Opponent, does not refer to any embodiments using the specific terminology used in claim 1 or provide an explicit definition or illustration of the meaning of several of the terms that are used to define the invention. However, this is not necessarily an issue as there is no prescribed requirement for consistory clauses that correspond to the claims. Furthermore, the terms used in claims are generally given the meaning that the person skilled in the art would afford them, so a dictionary of terms may not be necessary. Ultimately construction is a case-by-case determination. That said, the construction of the present case is not assisted by the “unconventional” style in which the specification has been drafted as a plethora of embodiments that appear to relate to different aspects of the invention, or indeed, different inventions.
[12] Specification at [0003].
The Opponent identified several terms in the claims that they considered problematic, and that consequently impacted on the determination of novelty, inventive step, and support. Moreover, the experts’ understanding of some terms appears at odds with that indicated by the specification and consequently the interpretation given to these terms also impacts on the interpretation of the prior art. I have considered some key issues in the following paragraphs.
“Fibrillated cellulose” (and similar terms)
The experts differed somewhat as to their understanding of the terms microfibrillated cellulose (MFC) and nanofibrillated cellulose (NFC). Dr Parker stated that fibrillated cellulose refers to cellulose that is derived from a natural source whose fibres have been broken down into their constituent fibrils, and that nanofibrillated cellulose refers to cellulose that has been further broken down into microfibrils having a diameter on the nanometre scale.[13] Professor Kontturi stated that fibrillated cellulose is a form of nanocellulose. According to Professor Kontturi, fibrillated cellulose is derived from pulp fibres by mechanical shear accompanied by optional enzymatic or chemical pre-treatments.[14] He considered that MFC and NFC are essentially synonymous terms, and that MFC corresponds to what is nowadays called NFC (or alternatively cellulose nanofibers),[15] although the processes of preparing these materials may vary and the end products can be “slightly different”.[16]
[13] Parker 1 at [33].
[14] Kontturi at [31].
[15] Kontturi at [39].
[16] Kontturi at [31].
While the specification does not provide a definition of MFC or NFC, the use of the terms appears consistent with the definitions provided by Dr Parker. The specification refers to the use of microcellulose and nanocellulose (separately) for reinforcing materials.[17] Nanocellulose is said to be provided as NFC, cellulose nanowhiskers or bacterial cellulose.[18] Notably MFC is not included in this group, which appears intentional since the specification states that:
“In some embodiments, micrometer-scale and nanometer-scale cellulose fibers, called micro-fibrillated cellulose (MFC) and nano-fibrillated cellulose (NFC) respectively, can be produced by fibrillation of micrometer-sized cellulose fibers, either by passing a pulp solution through a high-pressure homogenizer or grinders.”[19]
[17] Specification at [0056].
[18] Specification at [0034].
[19] Specification at [0033].
Example 2 also describes the separate preparation of MFC and NFC by two processes which differ in the number of passes used in the grinding process (1-5 for MFC, versus 10 for NFC). The specification does not provide the physical characteristics of the resulting products, but the processes would appear to give different levels of fibrillation.
On balance, I accept that MFC and NFC are both considered types of nanocellulose in the art. The mechanical process of fibrillation releases fibrils from cellulose fibres. While the term “microfibrillar cellulose” would suggest that the resulting material is on a micrometre scale, the ordinary meaning of MFC in the art is taken to include fibrils with diameters in the nanometre scale. More extensive processing breaks the fibrils into smaller nanometre-sized microfibril units, referred to as NFC. However contrary to the evidence of Professor Kontturi that the term “fibrillated cellulose” refers to a form of nanocellulose, I understand that the term MFC as used in the specification refers to a fibrillated material in the micrometre, rather than the nanometre, range. This does not impact on my interpretation of the claims, which by referring to fibrillated cellulose includes both nanocellulose and microcellulose, but I have been mindful of the differing terminology in my consideration of the prior art.
Dr Parker also stated that microfibrils are also known as microcrystallites.[20] Professor Kontturi suggested this is a conceptual error since microfibrillated cellulose is prepared by breaking fibres into their constituent microfibrils by a mechanical process of fibrillation, while microcrystallites are prepared by acid hydrolysis of cellulose.[21] Dr Parker responded[22] that his reference to microcrystallites was consistent with that used in Figure 1 of Pääkko et al.,[23] but my understanding of Pääkko et al is that a distinction is drawn between the rod-like microcrystalline fibril bundles obtained by acid hydrolysis, and microfibrillated cellulose obtained by mechanical shearing processes. I am therefore inclined to prefer Professor Kontturi’s evidence that the fibrillated cellulose according to the invention is prepared by mechanical processes and does not include microcrystallites formed by acid hydrolysis.
“Independently derived from a plant fiber”
[20] Parker 1 at [26].
[21] Kontturi at [36].
[22] Parker 2 at [5].
[23] Exhibit EK-5.
There was no apparent dispute between the experts’ understanding of the term “independently derived from a plant fiber” in relation to the fibre used to prepare the pulp and fibrillated cellulose. Dr Parker understood the phrase to mean that the plant type or species from which the pulp is obtained may differ from that from which the fibrillated cellulose is obtained. The Opponent suggested that Professor Kontturi adopted a broader interpretation requiring that the pulp and the fibrillated cellulose may be derived from different sources of plant fibres,[24] but I do not consider this differs significantly from Dr Parker’s interpretation. Notwithstanding the substantial agreement of the experts in this regard, the Opponent submitted that there is a difficulty in ascertaining the precise scope of this phrase because the meaning of the term “independently derived” is not explained in the specification.
[24] OS at [35].
The Opponent’s submissions were firstly, that the specification only supported the use of pulps and fibrillar cellulose from the same plant source; and secondly, that this feature was inessential. The first submission is essentially a support issue, so I will deal with it in greater detail under that ground. On the second point, I note that it is unusual for a feature in a claim to be considered inessential. The Opponent referred to the discussion of inessential features in Catnic Components v Hill and Smith:
“I think that one can venture upon the following generalisations on the question of essentiality. (1) If that feature of the claim which is under consideration is in fact essential to the working of the claimed invention, then it must be an essential feature of the claim. (2) If the feature is not in fact essential to the working of the claimed invention, the applicant for a patent may nevertheless have made it an essential feature of the claim, that is to say, he may by the terms of the claim as properly construed have clearly limited his claim to a subject matter having that particular feature. If so, that feature will be an essential feature of the claim and anyone who makes a product or carries out a process which has all the features of the claim except that particular feature will not infringe the claim. But (3), all claims are not perfectly framed. Sometimes a draftsman may include some feature in a claim, either explicitly or by implication, which is not in fact essential to the working of the claimed invention and which the applicant has not by the terms of his specification and claim clearly indicated as a feature which he regards as an essential feature of his monopoly. In such a case an alleged infringer may be held to have infringed the claim notwithstanding that his product or process does not incorporate the feature in question or substitutes some equivalent for it. (4) The fact that a claim incorporates a particular feature does not alone suffice to make that feature an essential one. If this were not so, no feature of a claim could ever be inessential, but the speeches in Rodi and Wienenberger[25] all assume that a claim may include an inessential feature."[26]
[25] Rodi and Wienenberger v Henry Showell Ltd (1969) RPC 367.
[26] (1982) RPC 183 at 228.
However, the Court in Catnic also stated that:
"An applicant for a patent will want his leading claim to be as wide as is possible consistently with its validity. He will wish to avoid any unnecessary restriction of it. So he will want to avoid claiming any feature which would unnecessarily restrict the scope of the claim. A well drawn leading claim will accordingly specify only those features which are essential to the invention claimed. It follows, in my opinion, that the applicant probably regards all the features of his leading claim as essential features of the invention."[27]
[27] Ibid at 227.
Thus, the initial assumption is generally that the features of a claim are essential. But even then, the issue does not lie in whether or not the feature is inessential – this in itself does not result in a claim being invalid – but rather what the implications are of the feature being inessential for other determinations such as novelty and inventive step.
The Opponent submitted that, reading the specification as a whole, the skilled person would readily understand that it makes no difference whether the fibrillated cellulose is derived from the same source, or a different source as that of the pulp fibre.[28] At the hearing they argued that the additional requirement in the claim that the pulp and fibrillated cellulose could be obtained from different plant sources had “no lifting to do” and was therefore inessential. They referred to the evidence of Dr Parker, who stated that:
“…when working with the microcrystallite,[29] the origin of that cellulose (i.e. the plant fibre from which that microcrystallite is obtained) is technically unimportant”;[30] and,
“the cellulosic fibre that is used as the raw material becomes largely unimportant. That is because, while the size of the microcrystallites varies from one source of cellulose to another, the variability in the number of microcrystallites in one element of the microfibrillated cellulose will dominate.”[31]
[28] OS at [39].
[29] Dr Parker referred here to microcrystallites, which as discussed above, is not the same as fibrillated cellulose. I have assumed that Dr Parker is using the term synonymously but note that it has little impact since the Opponent’s submissions on inessential features were not persuasive.
[30] Parker 1 at [55].
[31] Parker 2 at [8].
As an initial observation, the Opponent’s submissions on this feature appear somewhat inconsistent. On the one hand the argument is put forward that the skilled person would understand that the source of the fibrillated cellulose doesn’t matter, and on the other hand, despite references to alternative sources, the specification provides support only for the use of pulp and fibrillar cellulose from a single fibre source. The Applicant also noted at hearing that construction should be undertaken before the grounds are considered. They submitted that the Opponent’s arguments at hearing on this feature (and other construction issues) at times used the prior art or conflated issues to inform the claim construction, noting that each ground of opposition should be considered separately.[32]
[32] Lockwood Security v Doric Products [2004] HCA 58; 217 CLR 274; 212 ALR 1; 79 ALJR 260 at [43].
I agree that the proper approach is to construe the meaning of the terms used in the claims according to what the skilled person would understand and adhere to those meanings in the subsequent determinations under other grounds. That aside, I do not consider that the Opponent has established that the definition serves no purpose and is therefore inessential.
Firstly, the feature is characterised by being independently derived from a plant fibre. This is narrower than the description given in the specification which states that cellulose fibres may be from animals or plants,[33] and specifically refers to tunicates and bacteria as a source of cellulose.[34] Admittedly the cellulose from these sources appears to be directly obtained as a nanocellulose in bacterial cellulose, or as cellulose whiskers from tunicin, rather than through mechanical fibrillation of cellulose fibres. However, I am satisfied that the specification teaches that cellulose may be obtained from other non-plant sources. Furthermore, while Dr Parker stated that the source of the cellulose is “technically unimportant”, his evidence also indicates that the material from different sources is not identical. The definition provided in the claims is therefore not “redundant” inasmuch as it provides for the use of these different types of fibrillated cellulose. It follows that the additional characterisation of the pulp and fibrillated cellulose in the claim as being from different plant sources serves the purpose of excluding non-plant cellulose fibres, as well as providing for fibrillated cellulose from different sources which may have different properties.
[33] Specification at [0032].
[34] Specification at [0034].
In short, I understand the phrase independently derived from a plant fibre to take its ordinary meaning that the pulp and fibrillated cellulose may be derived from the same or different plant fibre sources. I also consider there is no basis to conclude that this is not an essential feature of the claimed invention.
“Impregnation of the pulp layer by the fibrillated cellulose layer”
Claim 1 defines discrete layers of pulp and fibrillated cellulose, wherein the first layer pulp is impregnated with the second layer (the fibrillated cellulose layer) to form a substantially continuous layer. The specific composition and structure of this product, and the extent to which the definition of the second layer impregnating the first layer limits the product to a specific method of manufacture, were probably the key issues in determining the opposition.
Dr Parker understood the claim to define that the fibrillated cellulose impregnates the pulp layer and “fills the pores, forming a continuous material, i.e. one without pores.”[35] In contrast, Professor Kontturi stated that claim 1 informed him that the material was prepared specifically using a wet pulp as a substrate for the fibrillated cellulose as described in the specification.[36] I have referred to this process as “wet layering” in the following discussion, but I note that this is not based on any understanding of the term being used in the art for this or any other process.
[35] Parker 1 at [56].
[36] Kontturi at [26].
Professor Kontturi stated that in dried paper the fibre-fibre bonds are fully established and most of the pores in the fibres have undergone irreversible closure or “hornification”.[37] The properties of the resulting product are also improved as the NFC is apparently able to partially penetrate into the bonds between the fibres and into the pores of the fibres themselves. This strengthens the paper to a more significant degree than in the case of a dried paper substrate.[38]
[37] Kontturi at [29].
[38] Kontturi at [30].
The Opponent cautioned against relying on the construction provided by Professor Kontturi, as he interpreted the term with reference to the process of preparing the material illustrated in Figure 4d in the specification.[39] They submitted that claim 1 of the specification defines a material, not a process. The claim broadly specifies the first layer as simply comprising pulp, and not that the pulp has any particular moisture content or history of formation.[40] However, the Applicant submitted that such a literal approach reflects a failure to construe the claim having regard to the nature and purpose of the invention – which is to improve mechanical strength and barrier properties of the material and the description of the invention including preferments.[41]
[39] OS at [48].
[40] OS at [51].
[41] AS at [115].
I agree with the Applicant’s submissions to the extent that the terms used in a specification should be given the meaning that they would be given by the person skilled in the art, and that this construction is informed by the background to the invention that is provided in the specification.[42] However, while the specification can provide context and inform the interpretation of terms, care must be taken to avoid “importing a gloss” by limiting or expanding the meaning of a term based on references in the specification.[43]
[42] Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69.
[43] Re Decor Corporation Pty Ltd v Dart Industries Inc. [1988] FCA 399.
The key question is whether there is any basis in the specification, or any art-specific meaning of the term, that requires a departure from this literal meaning and imports a limitation that the products are prepared by a wet layering process. On this point I share the concerns of the Opponent to the extent that Professor Kontturi appears to have relied heavily on the specific processes given in the description in support of his conclusions.[44] As a consequence I consider that his evidence can be afforded little weight on this point.
[44] Kontturi at [24]-[27].
I also agree with the Opponent that the language of claim 1 does not explicitly define that the product is made using a wet layering process. The literal meaning of the definition given in the claim simply requires that the material in the second layer interpenetrates the first layer to form a “continuous layer”, which I understand to mean that voids in the first layer are filled by microfibrillar cellulose. The language of the claim requires that the product consists of a layered arrangement, which would preclude other impregnation methods such as pre-mixing of the pulp and fibrillar fibres, but the claim does not appear to otherwise limit how the layered product is made.
Furthermore, there is no apparent basis to depart from the literal interpretation of the claim. Admittedly there was no dispute between the parties that the process set out in Example 3.3 and illustrated in Figure 4d provides NFC-impregnated products, even though these are referred to as layered samples and are only characterised at a macroscopic level by discrete NFC and pulp layers and not by any impregnation of the pulp layer by the fibrillated cellulose. But even if I were to accept the Applicant’s submissions that regard should be had to the preferments when construing the claims, I do not consider this would provide a basis for reading the claims as implicitly requiring a wet layering process. In addition to the specific examples which use wet layering, the specification also discloses embodiments including the preparation of surface-coated supports by filtration of a nanocellulose dispersion,[45] and coating of conventional fibre preforms with MFC and/or NFC fibres to enhance their barrier properties.[46] The specification goes on to state that in some embodiments the pores existing in conventional fibre preforms, which I understand to be pre-dried, are filled by MFCs and/or NFCs.[47] The language used in the claims appears to encompass such embodiments, and there is nothing that would distinguish these embodiments in terms of the nature and purpose of the invention as suggested by the Applicant. To read wet layering into the claim would be, in my opinion, taking an impermissible gloss from the description, and in particular the specific examples, rather than using the specification to assist with the interpretation of the claims.
[45] Specification at [0061] to [0063].
[46] Specification at [0057].
[47] Ibid, see also [0027].
As a further observation, while the specification does not provide an explicit definition of “impregnate” and the term is not used in the specification in relation to a layered product as defined by the claims, it is used in the specification to describe other embodiments. It would seem reasonable to assume, at least in the first instance and absent a suggestion to the contrary, that the term is being used consistently throughout the specification. To this end, MFC and/or NFC preforms may be impregnated with polymers, including using a post-impregnation where a fibre preform is impregnated with a liquid monomer.[48] I understand the pre-form in this case to be dried prior to impregnation. There is no apparent reason to conclude that the term “impregnate” as used in relation to polymers should take on a different meaning when used in relation to fibrillated cellulose. I therefore consider it reasonable to conclude that the term is being used consistently throughout the specification and does not limit impregnation with fibrillated cellulose to the use of a wet layering process.
[48] Specification at [0067] and Example 4.
In short, I understand that the product comprises discrete pulp and fibrillated cellulose layers. The pulp layer comprises at least a portion of a “continuous layer” in which voids in the pulp layer are filled by fibrillated cellulose fibres. There is no limitation on the initial moisture state of the pulp layer substrate or the process by which the layered product is prepared, provided the fibrillated cellulose fibres interpenetrate the pulp layer.
Novelty
An invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the prior art information.[49] It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor v Vicarr Industries:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”[50]
[49] Subsection 7(1) of the Patents Act.
[50] Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; [1977] HCA 19; 137 CLR 228 at [235].
This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed.[51] To meet this requirement, the prior art must contain “clear and unmistakable directions to do what the patentee claims to have invented”.[52] As noted in General Tire v Firestone:
“A signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee”[53]
[51] Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]; [1990] FCA 40; 16 IPR 545 at [549].
[52] The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at [486].
[53] Ibid.
The Opponent relied on US 5368695, in the name of Masaru Uryu, published 29 November 1994 (hereinafter Sony).
Sony describes a paper acoustic diaphragm prepared by depositing microfibrillated cellulose on a paper substrate by vacuum filtration. The invention aims to improve the sound properties of the paper diaphragm by lowering its air permeability. This is achieved by filling the voids in the diaphragm using the microfibrillated pulp material. The use of microfibrillated pulp, being of the same material as the paper diaphragm, is said to improve the sound properties while retaining other desirable properties including low density, high toughness and low losses.
A paper diaphragm is prepared by usual paper making techniques from any desired pulp material.[54] The microfibrillated cellulose may be obtained from plants, or alternatively may be bacterial cellulose.[55] The liquid pulp dispersion is sucked from the rear side of the diaphragm so as to be permeated through the diaphragm substrate. After forming the deposited layer, the substrate is processed with pressing to remove moisture and dried to provide the acoustic diaphragm.[56]
[54] Sony, column 3, lines 5 to 6.
[55] Sony, column 3, lines 10 to 18.
[56] Sony, column 3, lines 49 to 52.
Sony goes on to describe the preparation of paper diaphragm substrates comprising kraft pulp, sulfite pulp and manila hemp (Table 1). Examples 1 to 3 describe the deposition of fibrillated pulp on to these substrates. Examples 1 and 2 use a beaten Kraft pulp, while Example 3 uses a commercial microfibrillated pulp sold under the trade name of MFC by Daisel Kagaku Kogyo KK.
The Opponent submitted that two features were in dispute:
(1) the pulp and fibrillated cellulose are independently derived from a plant fibre. The Opponent argued that as this feature was inessential, and it therefore could not confer novelty on the present claims even if the feature was not disclosed by Sony. But even if this was not the case, Sony discloses that the first and second layers may each be made of any desired pulp material and discloses compositions that met this requirement.
(2) The first layer is impregnated with the second layer to form a substantially continuous layer. The Opponent submitted that Sony expressly teaches that microfibrillated pulp is deposited to fill up any voids in the substrate so that a deposited layer is formed on the surface of the substrate.[57]
[57] Sony, column 3, lines 23 to 30.
The Applicant sought to distinguish Sony on the basis that the present claims require that the product defined by the claims implicitly requires the use of a process using a wet pulp substrate. They noted that Sony does not refer to the first layer being impregnated by the second layer, but only discloses that microfibrillated pulp is sucked and deposited on the surface of a paper diaphragm. The diaphragm material used in Sony is a dried paper substrate as it is prepared in a conventional manner of papermaking. This differs from the present invention using wet layering since the NFC is able to partially penetrate into the bonds between the fibres and into the pores of the fibres themselves, strengthening the structure to a more significant degree than in the case of a preformed dried paper substrate. As a result of these differences the material described in the present application would be stronger and more resistant to gas permeation than the material described in Sony.[58]
[58] AS at [109]-[114].
On balance I consider that claim 1 is anticipated by Sony. As noted above, I do not consider that the claim is limited to products that are prepared by a wet layering process. The claimed invention therefore cannot be distinguished on the basis that Sony uses a dried paper substrate. Moreover, the Applicant’s submission that Sony was aimed at a different problem, and the aim was to ensure that the existing properties of the product were not disrupted is not persuasive. I acknowledge that the products obtained using a wet layering process may be inherently different to those obtained from a dried preform, but I do not consider that there is any implicit or explicit limitation as to the process that is used to prepare the present materials, or the properties that the product of such processes would provide.[59] Claim 1 merely requires that the microfibrillated layer impregnates the first layer to form a continuous layer. This is disclosed by Sony in the reference to the microfibrillated pulp dispersion permeating the substrate to fill any voids in the substrate.
[59] AS at [115].
I therefore consider that claim 1 lacks novelty in view of Sony.
The Opponent submitted that claim 2 lacks novelty insofar as the claim defines the pulp fibre and the fibrillated fibre being independently derived from a plant fibre selected from bagasse, flax, hemp, palm or wood. Sony discloses the use of Manilla hemp for the preparation of a paper diaphragm substrate. I am satisfied that claim 2 also lacks novelty in view of Sony.
Finally, while the Opponent did not press the ground of novelty in respect to any of the other claims,[60] I consider it appropriate to address whether Sony anticipates claims 4, 5, 11 and 12.
[60] OS, Annexure A – Claim Comparison Table.
In the case of claims 4 and 5, Dr Parker stated that he considered the microfibrillated pulp described in Sony would be equivalent to a fibrillated cellulose that has an average diameter of less than 100nm, and in the case of claim 5, less than 15nm or less than 5nm. I do not understand this to mean that the materials are necessarily the same. Professor Kontturi opined that the MFC used in Sony was made by mechanical filtration, presumably similar to the process described by Turbak et al. in the early 1980’s.[61] Turbak discloses the preparation of MFC having a diameter of 25-100 nm, but this material appears to use specific conditions for its preparation, including 20 passes of homogenization.[62] Sony characterises the MFC in terms of its Canadian Standard Freeness, and is silent as to the specific conditions used to prepare the MFC. Neither expert addressed whether the specific MFC disclosed in Sony, having a Canadian Standard Freeness of 300mL, would possess the average fibre diameter defined in claims 4 and 5. Under the circumstances there is insufficient evidence before me to conclude that the matter defined in claims 4 and 5 is disclosed by Sony.
[61] Kontturi, Exhibit EK-4.
[62] EK-4 at page 820.
Claims 11 and 12 are directed to consumer goods comprising the materials of claims 1 to 9 or the composites of claims 9 and 10. I understand consumer goods in this context to be products that are provided to a consumer. The acoustic diaphragms disclosed in Sony are used in speakers and the like, and therefore are a component of a consumer good. While it was not raised by the Opponent in their submissions, I am satisfied that claims 11 and 12 are also anticipated by Sony.
In summary claims 1, 2, 11 and 12 lack novelty in view of Sony. Claims 3 to 10 and 13 to 16 are novel in view of Sony.
Inventive step
Section 7(2) of the Act sets out that an invention is taken to involve an inventive step unless it would have been obvious to the person skilled in the art in the light of the common general knowledge, either considered alone or together with information of the kind set out in section 7(3) of the Act. The information set out in section 7(3) consists of any single piece of prior art information, or a combination of 2 or more pieces of prior art information that the skilled person could, before the priority date of the claim, be reasonably expected to have combined.
The courts have formulated different tests to determine whether a claimed invention is obvious. In Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (Wellcome), Aickin J considered whether faced with the same problem, it would have been a matter of routine to proceed to the claimed invention.[63] In Aktiebolaget Hassle v Alphapharm Pty Ltd (Alphapharm),[64] the High Court accepted the approach taken by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd (Olin Mathieson), where he posed the reformulated Cripps 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 combination] in the expectation that it might well produce a [useful or better result]?”[65]
[63] [1981] HCA 12; 148 CLR 262 at 286 (Wellcome).
[64] [2002] HCA 59 at [53]; (2002) 212 CLR 411 at [53].
[65] Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at [187].
These were considered by the High Court in Alphapharm to have an affinity.[66] The Opponent also submitted that the reformulated question in Alphapharm is not of universal application, emphasising the comments of Emmett J in Dynamite Games Pty Ltd v Aruze Gaming Australia Pty Limited that “for there to be an inventive step, there must be some difficulty overcome or some barrier crossed.”[67] However, as noted by the Full Court on appeal, while the primary judge referred to the reformulated Cripp’s question as “somewhat inapt”, the inventive step consideration was still made in the context of the Cripp’s question and, based on the facts of the case and the field of the invention in gaming machine technology, that the issue was not so much one of expectation that a particular effect might be produced (or might not) – but of obviousness of selection of the invention “in order to produce an enhancement of gameplay interest”.[68]
[66] Aktiebolaget Hassle v Alphapharm Pty Ltd supra at [53].
[67] [2013] FCA 163 at [95].
[68] Dynamite Games Pty Limited v Aruze Gaming Australia Pty Limited [2013] FCAFC 96 at [25]-[26].
Finally, in formulating the problem, care must be taken if incorporating information from the specification into the problem:
“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.”[69]
[69] AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [203].
The Opponent’s submissions related to obviousness in view of the common general knowledge alone, as well as obviousness in view of the common general knowledge together with US 5368695 (Sony). As I have found that claims 1, 2, 11 and 12 lack novelty in view of Sony, it follows that these claims are obvious in view of Sony since the skilled person would need only to follow the instructions given in Sony to arrive at the claimed invention. However, I have included a consideration of the obviousness of these claims with respect to the wet layering process.
The problem to be solved
The Applicant submitted that the problem to be solved lies in the deficiencies in mechanical strength and gas barrier properties of conventional paper/board in certain applications,[70] and that the invention addresses deficiencies in mechanical strength and gas properties of conventional paper/board in certain applications.[71] The Opponent submitted that the specification did not set out a specific problem, but their submissions at hearing were in relation to the problem as set out by the Applicant.
[70] AS at [50], citing specification at [31].
[71] AS at [51].
On balance, I consider that the problem relates not only to gas permeability but to improving the barrier properties of paper materials in general (including moisture permeability[72]). The invention also aims to improve the mechanical properties, and in particular the tensile strength, of existing paper products.[73] To this end, I note that the focus in the Applicant’s submissions was on gas-permeability and the advantages for food containers. However, the consumer products envisaged in specification are not limited to food packaging. The applications include non-food applications such as electronic components, clothing, placemats wipes and dental floss.[74] I consider the problem lies more broadly in improving the mechanical and barrier properties of paper products.
The common general knowledge
[72] See for example, specification at [0057].
[73] See for example, specification at [0003] and Table 3.
[74] Specification at [74].
There is no apparent dispute between the parties as to the common general knowledge in relation to the basics of pulp and paper making,[75] and therefore I have not further detailed them here.
[75] Parker 1 at [24], Kontturi at [16].
As previously discussed, mechanical treatment of cellulose fibres releases fibrils to form fibrillated cellulose, referred to as MFC and NFC.[76] Professor Kontturi stated that nanocellulose was introduced as a building block for material scientists in the early 1980s, but technical hurdles hindered its development until around 2007 when these hurdles were cleared.[77] This led to increased interest in cellulose-based nanoparticles and shift in mindset by manufacturers, with a greater focus on material science rather than the traditional pulp and paper focus.[78] Dr Parker stated that he was aware of cellulose fibrils having been used in applications as follows:
· As a coating material applied to substrates;
· To improve bonding between pulp fibres (to act in a similar capacity to starch);
· To form a transparent film; and
· Being combined with other materials as a part of the ‘furnish” to provide a similar but significantly enhanced role to that of fines,[79] by increasing the level of bonding between fibres, increasing the strength and stiffness of the paper.[80]
[76] Kontturi at [36].
[77] Kontturi at [18].
[78] Kontturi at [20] to [21].
[79] Particles smaller than 74 microns that are formed during the mechanical or chemical treatment of plant fibres.
[80] Parker 1 at [34].
Dr Parker also stated that pulped plant fibre is used in a broad range of applications in the field, including paper and board products, moulded trays and plates, reinforcement material in cement sheets, in electrical transformers and in insulation for thermal transfer.[81] Dr Kontturi did not dispute any of these statements, and while Dr Parker did not provide references or specific statements to the extent that this matter constituted the common general knowledge in the art, I am satisfied that the above may be considered part of the common general knowledge in the art.
[81] Parker 1 at [35].
Dr Parker stated multilayer paper products are well known and have been commercially available for many years.[82] He went on to state that in his experience the processes for preparing such products could be broadly classified as:
a) The conventional process comprising the general papermaking processes followed by depositing a coating on to the dried paper;
b) Processes in which two partially dewatered layers are brought together prior to pressing and evaporation;
c) Processes involving depositing a second wet layer onto a partially dewatered base layer prior to pressing and evaporation; and,
d) Co-extrusion of layer materials onto a drainage fabric prior to pressing and evaporation.[83]
[82] Parker 2 at [16].
[83] Parker 2 at [17].
Dr Parker stated that in the processes set out in (c) and (d) above, it is inherent that there will be a degree of mixing of the stock pulp materials, which can be the result of one layer penetrating into the other during dewatering and/or the result of intermixing during deposition of the layers. The resulting transition layer is desirable in many cases as this inhibits delamination of the final layered product.[84] Dr Parker went on to state that the multilayer process in (c) above was a feature of the Maryville Mill No. 4 Paper Machine which was built by Australian Paper Manufacturers during his tenure with APM and commissioned in 1977.
[84] Parker 2 at [20].
Dr Parker also stated that it is well-known that mechanical and chemical treatment of raw plant fibres produces fine cellulosic particles or “fines”, which include fibrillar fines that are comparable to microfibrillated cellulose. In this process pulp fines from the secondary pulp would penetrate into the primary pulp such that the final product would have a transition layer.[85] Fines can apparently enhance the strength characteristics of paper and pulp, but an excessive amount weakens the final paper product.[86]
[85] Parker 2 at [21].
[86] Parker 2 at [22] to [24].
The Applicant submitted that the fact that Dr Parker may have been aware of the various processes does not qualify them as forming part of the common general knowledge.[87] As noted by the High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd, information cannot be treated as part of the common general knowledge unless there is evidence of its general acceptance and assimilation.[88] In this regard, “evidence that consists of generalised and sweeping statements of opinion or recollection, unsupported by secondary materials such as text books, trade journals and technical publications, should be treated with caution and given little weight”.[89]
[87] AS at [152].
[88] [2002] HCA 59 at [31]; (2002) 212 CLR 411 at 426.
[89] Dynamite Games Pty Limited v Aruze Gaming Australia Pty Limited, supra at [104].
Based on the evidence before me, I accept that the conventional process for the manufacture of layered paper products from pulp represents common general knowledge in the art. However, Dr Parker’s statements concerning the intermixing of layers during deposition, impregnation of pulp by cellulose fines during layering (and their comparability with cellulose fibrils), and his specific experience with APM, even if routine, are not corroborated by any other evidence that establishes that this matter represents part of the common general knowledge at the relevant time. In any case, the evidence provided by Dr Parker on these matters appears to be directed towards pulp and layered pulp products, rather than fibrillated cellulose. I therefore consider that I must approach this evidence with some caution so far as it is purported to represent common general knowledge in the present art.
Obviousness in view of the common general knowledge alone
The Opponent submitted that the materials in the two defined layers are conventional materials from conventional sources which are, in turn, brought together using a conventional process of depositing a wet layer onto a partially dewatered base layer. They submitted that this combination would be arrived at as a matter of routine, referencing paragraphs [18] to [21] of Dr Parker’s evidence in reply.
The Applicant characterised this submission as “a single paragraph which fails to identify any relevant CGK and consists of a breezy assertion that the ‘combination’ is arrived at as a matter of routine”.[90] They submitted that no proper evidentiary basis had been provided for the assertion that the invention would be obvious in view of the CGK alone, and the evidence that was provided does not even seek to explain how the notional skilled person, faced with the problem, would have arrived at the combination of integers as a matter of routine.[91]
[90] AS at [150].
[91] AS at [153].
On balance, I am led to agree with the Applicant. While the individual components of the combination may be known, or even conventional, it is the obviousness of the combination of features that must be considered.[92] Even if I were to accept that the Opponent’s submissions that paragraphs [18] to [21] of Dr Parker’s evidence in reply is common general knowledge and the processes he describes are routine, I note that none of this evidence specifically relates to fibrillated cellulose and the common general knowledge of material scientists working in this field. Moreover, Dr Parker’s evidence in support was focussed on the Sony patent, and as noted by the Applicant, there was no consideration in the broader context of why the specific combination of features claimed would be obvious to the skilled person in view of the common general knowledge alone.
[92] Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9; 144 CLR 253 at page 293.
I therefore do not consider that the Opponent has made out this ground of opposition.
Obviousness in view of Sony in combination with the common general knowledge
The Opponent’s submissions were largely predicated on a finding that Sony does not disclose the use of independently derived plant fibres for the first and second layers. The Opponent also provided a claims comparison table which included statements concerning the obviousness of dependent claims. In short, the Opponent submitted that each of the features defined in the dependent claims was well known in the art and their use was a matter of routine. In so far as the present claims included the use of a wet filtering process, the Opponent submitted that there are different known processes for forming multilayer pulp/paper products, and it is routine to deposit a second layer onto a base layer.[93]
[93] OS at [94].
The Applicant cautioned that the avoidance of hindsight is especially important when, as is the case here, the invention claims a combination of (allegedly known) features. They referred me to several authorities including Aktiebolaget Hassle where the High Court stated that:
“In those circumstances, the warnings in the authorities against the misuse of hindsight are not to be repeated as but prefatory averments and statements of trite law. The danger of such misuse will be particularly acute where what is claimed is a new and inventive combination for the interaction of integers, some or all of which are known.”[94]
[94] Aktiebolaget Hassle v Alphapharm Pty Ltd supra at [21].
The Applicant submitted that the evidence of Dr Parker should be given lesser weight since it was apparent that in forming his views on the inventiveness of the claimed invention he was provided with the opposed application and art that has not been established as forming part of the common general knowledge.[95] They considered the comments of Middleton J in Eli Lilly & Co Ltd v Apotex Pty Ltd particularly apposite here:
“On this basis, even the most honest and competent witnesses will tend to exaggerate what could have been anticipated once they have the advantage of knowing of the invention and the process involved in reaching that invention.”[96]
[95] AS at [23].
[96] (2013) 100 IPR 451 at [473].
The Applicant submitted that the Opponent failed to explain why a skilled person, addressing the relevant problem, would have regard to the Sony patent. They argued that the Sony patent seeks to address the issue of high air permeability of the diaphragm material without affecting other properties of the acoustic material. Furthermore, there is no motivation, given the single purpose of the Sony bilayer paper structure, to make the modifications in the manner asserted by the Opponent to arrive at the invention defined in the dependent claims.[97]
[97] AS at [159] to [168].
Despite the Applicant’s submissions, I am satisfied that Sony does not relate to a different problem. As noted above, I consider that the problem relates more generally to improving barrier properties and strength in paper products. The applications of the products cover a broad range of different consumer goods. I consider Sony relates to the same problem, albeit in a specific application.
Turning to the claims, I have determined that Sony discloses a product as defined in claims 1, 2, 11 and 12. These claims therefore lack novelty and inventive step. Dependent claim 3 defines products in which the plant fibres are a combination of fibres from different plant sources. There does not appear to be any dispute between the parties that plant fibres may be sourced from other sources to those specifically used in Sony, though Professor Kontturi stated that grasses such as bagasse and bamboo would not be his first choices for replacing wood pulps.[98] Dr Parker stated, and it does not appear to have been disputed, that pulp from multiple sources is used in conventional pulps.[99] I am satisfied that it would be obvious to use combinations of different fibre sources in the Sony process and claim 3 therefore lacks inventive step.
[98] Kontturi at [43].
[99] Parker at [59].
Claims 4 and 5 further characterise the invention in terms of the diameter of the microfibrillar cellulose fibres. As noted above, Sony does not specifically disclose the defined diameters, and the experts did not provide evidence that would enable me to determine whether the MFC described in Sony falls within the defined ranges.
Furthermore, in the case of Claim 5, the key consideration is whether it would be obvious to use fibrillated cellulose having a diameter of ≤ 15 nm and optionally ≤ 5 nm in the process described in Sony. At the time evidence was provided by the experts, Claim 5 defined average fibre diameters of ≤ 15 µm and optionally ≤ 5 µm. However, an amendment was subsequently made to the claims to define average fibre diameters of ≤ 15 nm and optionally ≤ 5 nm. As a consequence, Dr Parker’s evidence was directed to the claim prior to amendment. Despite the lack of direct evidence from Dr Parker on this point, the opponent’s written submissions stated that Claim 5 lacks inventive step in view of Sony taken together with common general knowledge.
Dr Parker stated that the MFC described in Sony is equivalent to a fibrillated cellulose that has the average diameter defined in Claim 4. Similarly, Professor Kontturi considered that the MFC described in Sony would correspond to what is now referred to as cellulose nanofibers or NFC. He stated that the material would presumably have been prepared by a process like the one described in Turbak et al. The process described by Turbak et al. provides a fibrillated cellulose product having a diameter of 25 to 100 nm. Thus, while I am unable, based on the evidence before me, to determine that the product described by Sony necessarily possesses the average diameter defined by claim 4, I am satisfied that the evidence provided by Professor Kontturi supports a conclusion that it would be obvious to use fibrils having the claimed diameter range. Claim 4 therefore lacks inventive step in view of Sony.
While Dr Parker did not provide evidence on the specific diameter range defined by (present) Claim 5, the opponent referred to the evidence of Professor Kontturi, and exhibit EK-5 (Pääkko et al.).[100] Notably the fibrillated cellulose prepared by Pääkko et al. consists of fibrils having a diameter of 5-6 nm.[101] Professor Kontturi stated that nanocellulose had been introduced as a building block for materials scientists, as shown by Turbak et al., but a number of technical hurdles had hindered its further development. He went on to state that:
“Nanocellulose started attracting attention after a number of hurdles in its preparation were cleared in around 2007 (see, e.g., Pääkko et al…; Saito et al…; Abe et al…). As a consequence, the study and use of nanocellulose accelerated from around 2008.
The success of the newly described methods to produce nanocellulose in a more effortless fashion unleashed an unprecedented interest in cellulose-based nanoparticles as building blocks for new functional materials, amounting to thousands of scientific publications on the topic to date” [Citation details omitted].[102]
[100] OS at page 26.
[101] Exhibit EK-5, Abstract, Figure 1 caption and Conclusions.
[102] Kontturi at [18].
Pääkko et al. indicates that the technical difficulties referred to by Professor Kontturi related to the use of shear forces, and in particular:
“The preparation of MFC solely by shear forces is accompanied with a serious problem. To prepare MFC in a well controlled manner by this strategy, the shearing energy required is excessive, therefore requiring multiple passes through the homogenizer, and additionally the process is prohibitively unstable as the constrictions of homogenizers tend to quickly be blocked.”[103]
[103] Exhibit EK-5 at page 1935, column 2.
Thus, the technical difficulties overcome by Pääkko et al. (and others) were mainly the result of improvements in the preparation of NFC. The significant increase in publications in the field suggests that this information was so widely assimilated and accepted in the art that it may be considered common general knowledge.
The key consideration is whether it would have been obvious to replace the fibrillated cellulose in the process described in Sony with materials having the diameters defined in Claim 5. As an initial point I note that the applicant distinguished Sony based on their construction that the invention implicitly uses a wet layering process, and not did not specifically address the fibre diameter. However, the onus lies with the opponent to establish that the claims are invalid. While the evidence did not directly address this specific issue, I am satisfied that the evidence establishes that it would have been a matter of routine for the person skilled in the art to use fibrils having the diameter defined in Claim 5 in the process of Sony.
As noted above, the evidence suggests that the processes and products described in Pääkko et al. (and the others referred to by Professor Kontturi) were widely adopted and used in the art. Indeed the “unprecedented interest” these developments elicited suggests that they were at the forefront of research and development in this area. The processes described in these documents are said to provide greater control over the properties of the final products and improvements in the efficiency. The materials are also said to be potentially useful in applications in composite materials and surface applications.[104] It would therefore seem reasonable that the person skilled in the art would use such improved and widely adopted materials in the processes that had been described earlier in Sony in the expectation that they would provide suitable properties in the coated substrates. Claim 5 therefore lacks inventive step.
[104] Exhibit EK-5, Abstract.
Turning to the remaining claims, I am not satisfied that they are obvious in view of the evidence provided in the opposition. In particular, the evidence does not establish why the different types of composite materials and layered products as defined in claims 6 to 10 would be obvious in view of Sony. In this regard Dr Parker stated that he would have been “able to modify the materials described in the Sony Patent to have an additional layer”.[105] He also stated that he would have been able to “modify the materials described in the Sony Patent to have an additional polymer”, and that he did not consider there to be any “barriers or technical challenges to incorporating that additional polymer in the form of a fibre or a powder”.[106] I do not consider this evidence to be of assistance here. While the skilled person might be able to make a modification and there may be no technical barriers, this evidence is in the nature of a hindsight assessment of whether it could have been done with the knowledge of the invention, rather than being framed in terms of whether it would have been obvious to do so at the relevant time. This ground of opposition has not been made out for Claims 6 to 10.
[105] Parker 1 at [63].
[106] Parker 1 at [64].
As far as claims 13 to 16 are concerned, Professor Parker considered that the Sony patent describes a “concept and process to form an acoustic diaphragm that has the benefit of reduced air permeability”. He considered this application to be a principle that could be applied to other products by appropriate formation of the pulp fibre substrate, and that there are “many” applications that could utilize a material that is formed using the principle of the Sony patent.[107] I have determined that applications defined in Claims 11 and 12 lack novelty and am satisfied that this would extend to some of the generic applications defined in these claims. However, I am not satisfied that Dr Parker’s evidence provides a basis on which I could conclude that the skilled person would be led to employ the paper products disclosed in Sony process for the applications defined in claims 13 to 16. While Dr Parker referred to many applications that could implement the “principle” disclosed in Sony, he did not list any specific application, or provide details as to why the properties provided by the Sony products would make them suitable for those purposes. This is particularly pertinent to claims 13 to 16 which relate to food applications having specific barrier properties. No evidence was adduced that would establish that the skilled person would consider the acoustic paper products described in Sony as being applicable to food applications. Therefore, I do not consider that the Opponent has made out the ground of obviousness in relation to claims 13 to 16.
[107] Parker 1 at [68].
For sake of completeness, I satisfied that the invention, as far as it relates to products formed via a wet layering process, is not obvious. There is no teaching or suggestion in Sony of alternative means of preparing the acoustic diaphragms, nor do I consider that the evidence provided by the Opponent addresses the issue of why it would be obvious to replace the process using dry paper pre-forms as described in Sony with a wet layering process.
Professor Kontturi stated that the products obtained from the wet layering process would possess different properties as a result of the fibrillated fibres being able to penetrate into the bonds between the fibres and into the pores of the fibres themselves, thus strengthening the structure to a more significant degree than in the case of a dried paper substrate.[108]
[108] Kontturi at [29] to [30].
Dr Parker questioned whether fibrillated cellulose would be capable of entering the micropores of the undried pulp layer,[109] but stated that re-wetting of a dry pre-form would inherently occur during the filtration step.[110] However, Sony provides no disclosure of re-wetting to enable the MFC to impregnate the paper substrate, but instead the disclosure in this regard appears to relate to macropores in the dry material. To this end, Dr Parker stated that the Sony process involved microfibrils passing into the substrate. Once pores had been filled it would be difficult for microfibrils to pass through or even move into the substrate structure, so a surface layer forms.[111] This process and the formation of a surface layer of fibrils appears to me to limit the extent to which microfibrils would be able to enter between fibres, even if re-wetting occurs. This would appear consistent with the evidence of Professor Kontturi to the extent that wet layering provides different materials having different properties to those obtained by from dried substrates.
[109] Parker 2 at [33].
[110] Parker 2 at [14].
[111] Parker 1 at [44].
Even if this is not the case, no evidence was otherwise adduced that would enable me to determine that re-wetting and wet layering would be considered equivalent to the extent that one could be replaced by the other. On balance, I am satisfied that Sony discloses impregnation of the paper substrates to the extent that claims 1 and 2 lack novelty, but there is nothing in Sony, or indeed in the common general knowledge provided in evidence, that would teach towards the obvious replacement of the use of dry substrates by a wet layering step.
In conclusion, claims 1 to 5, 11 and 12 lack inventive step in view of Sony, insofar as they relate to the use of a dry paper pre-form. However, claims 6 to 10 and 13 to 16 are inventive in view of Sony since there is no suggestion of the use of multiple layers or the various applications of the defined products.
Clarity
Subsection 40(3) requires that the claim must be clear. A claim will lack clarity if a third party would be unable to ascertain whether an act would fall within the scope of the claim.[112]
[112] Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59.
The Opponent made submissions on two points:
· The scope of the term substantially continuous layer is unclear as the specification does not provide sufficient clarity as to the true boundaries of the term.
· The scope of the term independently derived from a plant fibre is unclear since it could alternatively refer to the layers being derived from (i) a different plant species; (ii) different plants, which may or may not be from the same species; (iii) different sources, notwithstanding they may be the same plants and/or species.
As noted previously, Dr Parker understood the term substantially continuous layer to mean that that the fibrillated cellulose fills the pores to form a continuous material, i.e., one without pores. I consider this a reasonable interpretation, and therefore do not consider that it causes a lack of clarity.
As far as the second point is concerned, I consider that a common-sense approach to the claim would provide that the term means that the fibre may be derived from different plant species, and that these may be the same or different for each of the pulp and fibrillated cellulose layers.
In short, this ground of opposition has not been made out.
Support
Section 40(3) of the Act requires that the claim must be supported by matter disclosed in the specification. At the heart of this consideration is the principle that the “extent of the patent monopoly, as defined by the claim, should correspond to the technical contribution to the art in order for it to be supported, or justified.”[113]
[113] EXXON/Fuel Oils (T409/91) [1994] OJ EPO 653.
The Opponent’s submissions under this ground related to the issue of the first and second layers being independently derived from a plant fibre. They submitted that the specification only discloses materials in which both the first and second layers are derived from the same plat fibre material, and more particularly from bagasse.[114] The Applicant noted that the Opponent’s arguments on this ground were inconsistent with their submissions that the feature was inessential, and submitted that there was no evidence that this would involve any technical difficulty and they should not be limited to preferred embodiments as the specification clearly provides support in reciting a range of sources.
[114] OS at [105].
On balance I agree with the Applicant on this point. As noted in Regeneron Pharmaceuticals Inc. v Kymab,[115] a claim which seeks to protect products which cannot be made by the skilled person using the disclosure in the patent will exceed the contribution to the art made by the patent, but:
“This does not mean that the patentee has to demonstrate in the disclosure that every embodiment within the scope of the claim has been tried, tested and proved to have been enabled to be made. Patentees may rely, if they can, upon a principle of general application if it would appear reasonably likely to enable the whole range of products within the scope of the claim to be made. But they take the risk, if challenged, that the supposed general principle will be proved at trial not in fact to enable a significant, relevant, part of the claimed range to be made, as at the priority date.”
[115] [2020] UKSC 27 at [56].
In the present case the evidence establishes that the source of the fibres is “largely unimportant”.[116] This is consistent with the general teaching in the specification. I therefore consider that the feature of the pulp and microfibrillar cellulose being independently derived from a plant fibre represents a principle of general application that supports the broader definition in the claim.
[116] Parker 2 at [8].
This ground of opposition fails.
Conclusion
The opposition has been successful. Claims 1, 2, 11 and 12 lack novelty and claims 1 to 5, 11 and 12 lack inventive step. However, claims 6 to 10 and 13 to 16 are inventive, and the claims as a whole are clear and supported.
Despite my determination, I consider that the specification includes patentable subject matter. I therefore allow the Applicant two (2) months from the date of this decision to propose amendments to overcome the issues identified.
Costs
Costs generally follow the event. I see no reason to depart from that approach. I award costs according to Schedule 8 against the Applicant, Ecoinno (H.K.) Ltd.
Leslie F. McCaffery
Delegate of the Commissioner of Patents
Annex
What is claimed is:
A material, comprising:
a first layer comprising a pulp; and
a second layer comprising a fibrillated cellulose;
wherein the pulp and the fibrillated cellulose are independently derived from a plant fiber, and wherein the first layer pulp is impregnated with the second layer to form a substantially continuous layer.
The material of claim 1, wherein the pulp fiber and the fibrillated cellulose are independently derived from a plant fiber, wherein the plant fiber is from one of the following: bagasse, flax, hemp, palm, or wood.
The material of claim 2, wherein the plant fiber comprises any combination of bagasse, flax, hemp, palm, or wood.
The material of any one of claims 1-3, wherein the fibrillated cellulose has an average diameter less than about 100 nm.
The material of any one of claims 1-3, wherein the fibrillated cellulose has an average
diameter of about ≤ 15 nm, optionally about ≤ 5 nm.
The material of any one of claims 1-5, wherein the material further comprises: a first layer that comprises the fibrillated cellulose; and
wherein the pulp layer is situated between the first layer and the second layer.
The material of any one of claims 1-5, wherein the material comprises: a third layer that comprises a pulp fiber; and
wherein the second layer is situated between the pulp layer and the third layer.
A composite that comprises the material of any one of claims 1-7 and an additional polymer.
The composite of claim 8, wherein the additional polymer is polylactic acid, chitin, sodium alginate, thermoplastic starch, polyethylene, chitosan, or polypropylene.
The composite of claim 8 or 9, wherein the additional polymer is in a form of fiber or powder.
A consumer product that comprises the material of any one of claims 1-9 or the composite of any one of claims 9-10.
The consumer product of claim 11, wherein the consumer product comprises a food package, a food serving container, a motor vehicle, a home appliance, an office appliance, an electronic device, a home furniture, an office furniture, or a children’s product; or for sport, automotive, or aerospace applications; or for construction industries.
The consumer product of claim 11 or 12, wherein the consumer product comprises a container or a capsule.
The consumer product of claim 11 or 12, wherein the consumer product comprises a sheet, a bag, a container, a plate, or a tray.
The consumer product of any one of claims 12-14, wherein the consumer product comprises a cover or a lid.
The consumer product of any one of claims 13, wherein the consumer product comprises a container for food or liquid adapted for airplane use.
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