Vaw Aluminium AG v Alcan Deutschland GmbH

[1994] APO 68

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 637877 in the name of Vaw Aluminium AG

Title:    Roller Shutter rod of stable shape and method for its manufacture

Action: Opposition under section 59 of the Patents Act 1952 by Alcan Deutschland GmbH

Decision:    Issued            .

Abstract:    Specification and claims do not comply with section 40.  Grounds of Novelty and obviousness not established.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 637877 by Vaw Aluminium AG and opposition thereto, under section 59 of the 1952 Patents Act by Alcan Deutschland GmbH.

background

Vaw Aluminium AG (Vaw) filed patent application no. 637877 on 12 March 1991 as 72807/91 which claims priority from German basic applications made on 12 March 1990 and 15 November 1990.

The application was advertised as accepted on 10 June 1993.

Alcan Deutschland GmbH (Alcan) filed notice of its opposition to the grant of a patent on application no. 637877 on 1 September 1993.

As the application was filed before but accepted after the commencement of the Patents Act 1990, section 59 of the Patents Act 1952 and Chapter 5 of the Patents Regulations 1991 apply in respect of the opposition.

The statement of grounds and particulars was served on 30 November 1993.

Evidence in support was served on 8 February 1994, and no evidence in answer was served.

The matter was set down for hearing in Canberra on 8 August 1994.  Mr Raymond Hind, patent attorney of Davies Collison Cave, represented the applicant at the hearing, and Mr Ron Halliday, patent attorney of Cullen and Co. represented the opponent by telephone.

STATEMENT OF GROUNDS AND PARTICULARS

The statement of grounds lists those grounds of opposition specified in paragraphs (f) through (i) of section 59(1) of the Patents Act 1952 viz. lack of a manner of manufacture, obviousness, lack of novelty, and non compliance with section 40.

At the hearing, the only grounds pursued were those of obviousness, lack of novelty and non-compliance with section 40.

The particulars refer to a number of foreign patent specifications in support of the grounds of obviousness and lack of novelty.

In relation to non-compliance with section 40, the particulars raise the following points:

.The claims  are not clear or fairly based due to the use of the terms "plastic coating", "thermally consolidated" and "bonded".

.In addition the claims are not clear due to the use of the terms "individual plastic layers", "heating", "portions of said aluminium strip are arranged in a double layer" and "individual layers".

SPECIFICATION

The specification indicates that the invention relates to a roller shutter slat of stable shape formed from an aluminium strip, and to a method for the manufacture of such a stable roller shutter slat.  The specification indicates that the prior art is unsatisfactory, as the roller slats are formed of plastic material which has disadvantages when exposed to weathering, especially when exposed to solar radiation or low temperatures.  The invention thus provides durability by providing resistant aluminium in the areas exposed to weathering.  Improved bending strength is also provided, due the fact that in the area of the double aluminium strip layers a shifting of same in the opposite direction, especially under torsional strain is resisted.

The specification includes a consistory statement which sets out the structure of a roller shutter slat of stable shape.  This statement is essentially equivalent to claims 1 and 12.  In the subsequent description, four different embodiments of the invention are described with reference to figures 1 to 4.

The specification ends with 24 claims of which claims 1 and 12 are independent claims.  These read as follows:

1.A roller shutter slat of stable shape, formed from an aluminium strip to provide a structure having a hollow cross section, said aluminium strip having a plastic coating along one of its sides which faces said hollow section, the hollow section being bounded by spaced side walls and by first and second connector portions which are each adapted to be connected to a respective adjacent slat, wherein portions of said aluminium strip are arranged in a double layer with a thermally consolidated double layer of plastic coating between the individual layers of said double layers of aluminium strip, said individual layers of said double layers of aluminium strip in at least one of said first and second connector portions being at least partially bonded to each other via said thermally consolidated double layer of plastic coating.

12.A method of manufacturing a roller shutter slat of stable shape from an aluminium strip having a plastic coating along one of its sides, comprising roll forming said aluminium strip into a structure having a hollow cross-section with said plastic coating facing said hollow section, the hollow section being bounded by spaced side walls and by first and second connector portions which are each adapted to be connected to a respective adjacent slat, wherein portions of said aluminium strip are arranged in a double layer with a double layer of said plastic coating between the individual layers of said double layers of aluminium strip, and bonding said individual layers of said double layers of aluminium strip in at least one of said portions to each other by heating said plastic coating so as to form a consolidated plastic layer.

Other claims which are also relevant to this decision are:

1. A roller shutter slat according to any one of the preceding claims, further comprising a mechanical connector bonding said individual layers of aluminium strip to each other.

11.A roller shutter slat according to any one of the preceding claims, wherein said plastic coating has a thickness in the range between 40 and 120µm.

EVIDENCE

The evidence-in-support of the opposition consists of a statutory declaration by Johann Henkenjohann.  The original declaration is written in German.  A verified translation has been provided.  The declarant states that he is the manager of a firm which is concerned with the production of roller shutter slats.  The declaration is accompanied by exhibits JH-1 to JH-12, (exhibits JH-8 to JH-12 being English language translations of some of the earlier exhibits).  This comprises the major part of the evidence in support.

There is also a statutory declaration by Ronald Arthur Halliday, registered patent attorney.  This declaration has two exhibits RAH-1 and RAH-2, concerning the publication date of certain patent specifications.

No evidence in answer was served.

SUBMISSIONS

I have summarised the main submissions made by Mr. Halliday at the hearing as follows:

.The main document relied on by Mr Johann Henkenjohann is DE 2814825.  This document in combination with the disclosure in the present specification on page 1A, lines 30-37 discloses all but the feature of the partial bonding of the individual layers of double layers of aluminium strip and the connector portions.  This difference, the bonding of the layers, does not contribute to the invention as it does not contribute to the viable features that the applicant wants, namely to improve durability of the roller slat and increased bonding strength.

.These improved characteristics are not a result of this difference at all, and therefore this difference does not contribute to the invention, the difference is inconsequential, and the claimed invention is disclosed in the German document.

In relation to section 40, Mr Halliday introduced 18 points with regard to fair basis and clarity.  At the hearing, I queried the extensive nature of these points.  However, Mr Hind undertook to respond to these points if I allowed him sufficient time (2 weeks) after Mr. Halliday filed a written list of these section 40 issues.  I agreed to  this course of action.  I will refer to what I consider to be the main points raised by Mr. Halliday later in the decision.  Other points are mainly directed at the dependent claims and are of such a minor nature that I do not believe that I need to consider them further.

I have summarised the main points made by Mr. Hind at the hearing as follows:

.The terms "plastic coating", "thermally consolidated" and "bonded: are fairly based and clear, with clear disclosure given in the specification at page 3 line 13, and page 6 lines 18-20.  The term "thermally consolidated" expresses the concept that action of heat is used to combine the two plastic layers and hence bond the double layers between the aluminium strip, with the use of heat clearly disclosed on pages 5, 6 and 8, and reference to "bonded" given on pages 3, 4, 6 and 8.  The specification has significant disclosure of the coupling of the double aluminium layers by what is plainly a bonding action achieved through the plastics layer applied to the parts.  Therefore these terms are fairly based on the matter disclosed.

.These terms are clear and it is difficult to understand the nature of the opponent's objections.  The particulars of these objections could have been expanded on in the opponent's evidence in support but the evidence is completely silent of any points of clarity.  The main declaration of Mr Henkenjohann indicates he had no difficulty himself in understanding the meaning of these terms as he has used similar terminology in various places in his discussion of the prior art.  Clearly he understood the invention and explicitly said so.

.The terms "individual plastic layers" and "heating", and the phrase "portions of said aluminium strip are arranged in a double layer" are similarly quite clear and unambiguous.

.In relation to the main document relied on by the opponent, DE 2814825 does not disclose a thermally consolidated double layer of plastic coating.  Evidence of this is also established by the opponent's witness in his statutory declaration.  It is this bonding which contributes to the improved strength and improved resistance to torsional strain of the claimed slat.

.The relevant authority for obviousness is Minnesota Mining & Manufacturing Co v Beiersdorf Australia Ltd 1980 40 CLR 253, where it was held that obviousness can only be considered in relation to that which is common general knowledge in Australia. The common general knowledge in Australia could only be established by evidence. The only evidence that has been presented was that of Mr Henkenjohann, who was not in any position to know what is or is not common general knowledge in Australia.

.Mr Henkenjohann's evidence on obviousness is a dissection of the claimed invention into a collection of different integers and mosaicing the various documents.  Mosaicing is not a practice which the courts have approved of and, in any event, the opponent has not established that the disclosures in the prior art documents form any part of the common general knowledge in Australia.  Accordingly the opponent has failed to establish a case of obviousness.  

Mr Hind lodged subsequent written submissions in reply to the 18 section 40 points raised by Mr Halliday at the hearing.  I will refer to those relevant to the main points raised by Mr. Halliday later in the decision.

Mr Hind also submitted in his written submissions that a substantial number of the section 40 points raised by the opponent at the hearing were not predicated or particularised in the particulars and, specifically, this applies to the objections raised against a number of the dependent claims.  Mr. Hind referred to The Manual of Practice and Procedure, Volume 3, Part 11 section 11.2.1 and 11.2.3, with regard to giving the applicant fair notice and identifying and defining the issues of the opposition.  Mr Hind submitted that the failure of the opponent to comply with these sections was a denial of natural justice and must have a bearing on costs in the event that some amendment is required as a result of those submissions.

DECISION

Section 40

I have earlier indicated that a large number of section 40 matters were raised for the first time at the hearing and subsequently responded to by the applicant via written submissions after the hearing. These section 40 matters were not particularised and as such the applicant was not aware of the potential full case it had to answer until the day of the hearing. This is contrary to the main intention of Chapter 5 of the Patent Regulations 1991 which is to let the applicant know at an early stage (when the statement of grounds and particulars has been served) what case it has to answer.

Nevertheless, as these matters are before me and as both parties have provided submissions on these issues, I propose to consider them.  However, I agree with Mr. Hind that the lack of particularisation of these matters should be taken into account in any award of costs.

Before considering the various section 40 matters raised by the opponent, I believe that I need to resolve just what the specification teaches is the invention as this impinges on some of these section 40 matters.  I must admit that the specification gives me some difficulty in this respect.  This is due mainly to at least some of the four different embodiments of the invention provided in the specification not being consistent with what is indicated as being the inventive concept in the consistory statement.

The first embodiment appears to be similar in most respects to the slat defined in claim 1 and described in the corresponding consistory statement.  However, this embodiment describes the slat as being formed from an aluminium strip which has been coated on its entire inside with a bonding agent.  I assume this is equivalent to the plastic coating defined in the claim.

The second embodiment restricts the bonding agent to areas at the connector portions.  In this embodiment, the aluminium strip does not have a plastic coating along its side which faces the hollow section of the slat.

The third embodiment does not to appear to include any plastic coating or bonding agent. The double layers in the connector portions are fastened to each other by rivets.

In the fourth embodiment, various means for bonding are referred to and there may or may not be a plastic coating on the inside of the aluminium strip.

Therefore the embodiments seem to suggest that the plastic coating is not essential because at least two of the embodiments do not disclose such a plastic coating which faces the hollow section of the slat.

The embodiments also seem to suggest that the inventive concept involves the fastening of the double layers of the aluminium strip in at least one of the connector portions by any one of a  number of different methods including:  rivetting, the use of screws, hot or cold gluing, welding or soldering.  Thus these embodiments suggest to me that the use of some kind of fastening means is essential but that it is not essential that this fastening means is a thermally consolidated double layer of plastic coating.  This view is supported by the wording on page 4, lines 11 to 18, which is as follows:

"Alternatively or additionally to the hot-melt adhesive coating, the partial bonding can be formed also by a welded joint.

If the partial bonding of the double aluminium strip layers is formed by a riveted, screwed or clinched connection, it is possible to achieve a good and, if desired, also detachable mechanical fixing."

Therefore, despite my initial misgivings that the specification does not fully describe the invention, I believe that a person skilled in the art on reading the specification would be able to determine what the inventive concept is despite the apparent inconsistency between the consistory statements and embodiments 2, 3 and 4.

I now turn to consider whether the claims are fairly based on the matter described in the specification.  The question of fair basis has been extensively dealt with by the Full Bench of the Federal Court in CCOM Pty Ltd v Jiejing Pty Ltd 1994 AIPC 91-079.

In this decision the court determined the fair basis of the claims by deciding whether or not there was a real and reasonably clear disclosure of the claimed invention in the body of the specification.

The following are what I believe to be the main points raised by the opponent in relation to the question of lack of fair basis:

(a)The opponent argued that the requirement of lines 3-5 of claim 1 for the aluminium strip having a plastic coating along one of its sides which faces said hollow section is not fairly based on the description.  This is because it implies that, on the other side which faces the hollow section, there need not be a plastic coating, which is not recited in the specification. The applicant submitted that it is quite clear within the context of the claim that the plastic coating on one side of the aluminium strip will, when the strip is shaped to form the hollow shutter, present a double layer plastic coating in the portions of the shutter where the double layer of aluminium strip exists.

Given my finding below in relation to point 2 in the matters dealing with lack of clarity, I do not find the applicant's submissions helpful.  However, I find that the specification quite clearly describes the aluminium strip having a plastic coating along the one of its sides which faces the hollow section and that there is no plastic coating on the other side.  The other side does not face the hollow section.  In coming to this interpretation, I am equating a "side" of the strip to a "face" of the strip.  However I believe that the opponent is arguing that the wording in the claim  suggests that there are two sides of the strip facing the hollow section and that there is no support for such an arrangement in the specification.  I agree.  I consider that there is not a real and reasonably clear disclosure of two sides facing the hollow section in the specification.  Thus, I find claim 1 is not fairly based in this respect.  I note that there is not a corresponding defect in the other independent claim, claim 12.

(b)The opponent argued that claim 4 is not fairly based on the specification and is unclear, as it specifies that the plastic coating is hot melt adhesive yet it also specifies that the thermally consolidated double layers (which are the plastic coatings) are glued together.  It does not make sense to glue together two layers of hot melt adhesive, and such a situation is not disclosed.

The applicant pointed out that claim 4 is restricting the form of the plastic coating to a coating in the form of a hot melt adhesive.  This is quite clearly disclosed on page 8, paragraph 4 and page 10, paragraph 2.

I have no difficulty in finding fair basis for claim 4. I agree that page 8, paragraph 4 and page 10, paragraph 2 provide a clear disclosure of the use of hot melt adhesive coatings.  I believe the opponent has interpreted the claim to mean that there is a further adhesive used to glue the adhesive layers together.  I note the opponent's submission that this does not make sense.  I agree that this does not make sense and therefore I believe that the proper interpretation is that the layers are glued together because they are made of hot melt adhesive and not because further adhesive or glue is used.

(c)The opponent contended that claim 5 is not fairly based as it defines the use of a mechanical connector in addition to the plastic coating bond.  There is no disclosure of such a double bond in the specification.  The applicant submitted that there is disclosure of a mechanical connection in addition to that formed by the thermal consolidation on page 9, final paragraph, page 10, and Figures 3 and 4.

Although the first paragraph of page 10 uses the words "in addition", I do not believe that, on a fair reading of this particular passage, this means that there can be a double bonding using a plastic coating bond and a mechanical connection.  I believe that this paragraph is rather saying that in addition to the list of alternative bonding means listed on the last paragraph of page 9, mechanical connections are also applicable.

However, I believe that a more relevant part of the specification is that on page 4, lines 11 to 13 to which I have referred earlier.  I think that there is a real and reasonably clear disclosure of both a hot melt adhesive bond and a welded joint in this passage.  I think that the specification also indicates that mechanical connections can be used instead of welded joints.  Thus I believe that there is a real and reasonably clear disclosure of both a plastic coating bond and a mechanical bond.  Therefore I find claim 5 fairly based in this respect.

(d)The opponent argued that claim 11 is not fairly based as there is no disclosure of a plastic coating having the stated thickness.  The applicant conceded that this is so but that this can be easily remedied by amendment.

I cannot find a real and reasonably clear disclosure of the claimed range of thickness in the body of the specification.  Therefore I find that claim 11 lacks fair basis.

(e)The opponent contended that claim 12 is not fairly based as there is no detailed description of a method of manufacturing a roller shutter slat whereas the applicant referred me to the disclosure particularly on pages 6, 8 and 9.

I agree with the applicant that there is a real and reasonably clear disclosure of the method of manufacturing a roller shutter slat, particularly on pages 6, 8 and 9.  For example the first paragraph on page 9 discloses the roll forming of the shutter which is the first step in the method of claim 12.  Thus I am satisfied that claim 12 is fairly based.

I now turn to the clarity of the opposed claims.  In my view, the following are the main points at issue:

1. Alcan argued that claim 1 lacks clarity as lines 13-15 refer to "said individual layers of said double layers of aluminium strip in at least one of said first and second connector portions".  There is no prior statement in the claim that double layers of aluminium strip comprise the connector portions.  On the other hand, the applicant submitted that it is quite clear within the context of the claim that the plastic coating on one side of the aluminium strip will, when the strip is shaped to form the hollow shutter, present a double layer plastic coating in the portions of the shutter where the double layer of aluminium strip exists.  Also, the fact that there is no prior reference to lines 13-15 is a total irrelevance and it does not affect clarity and understanding.

In considering the claim, I find that it defines the hollow section as being bound by spaced side walls and by first and second connector portions which are each adapted to be connected to a respective adjacent slat.  The claim continues with the wording "wherein portions of said aluminium strip are arranged in a double layer".  It seems to me that the issue is whether or not the term "wherein" refers back to the connector portions or the connector portions and the spaced side walls.  In reading the claim as a whole I am in no doubt that double layers of aluminium strip occur in the connector portions.  However, I am uncertain whether or not the claim intends for there to be double layers in the spaced side walls.  Therefore I believe the claim is ambiguous in this respect although not for the reason put forward by the opponent.

2. The opponent submitted that claim 1 lacks clarity as lines 4-5 refer to a "plastic coating" and lines 11-12 refer to a "thermally consolidated double layer of plastic coating".  Therefore it is not clear whether these terms refer to the same material or whether one is additional to the other.  I note that the terms "plastic coating" and "thermally consolidated" were also referred to in the statement of particulars in relation to lack of clarity. The applicant's view was that the claim is quite plainly speaking about the "same" plastic coating throughout.

I am of the opinion that the phrasing "a plastic coating" and "a thermally consolidated ...plastic coating" can reasonably be interpreted as defining two separate and distinct coatings, with no apparent connection between them.  I agree with the opponent that it is unclear whether or not these terms are referring to the same material.  I note that claim 12 refers to a "double layer of said plastic coating" (my underlining) so that the same problem does not exist in this claim.  I find that claim 1 lacks clarity in this respect.

3. The opponent was of the opinion that claim 1 line 15 lacks clarity as it refers to the layers of aluminium strip in the connector portions being "partially bonded" to each other.  It is not clear what is meant by partially bonded, as the usual meaning is not complete, however the only illustration in the specification of bonding with an adhesive appears to be complete bonding as shown in figures 1, 2 and 4. The applicant however argued that the phrase "at least partially bonded to each other" is referring to the double layers of aluminium strip in the connector portions.  It is quite clear that it is not necessary for the whole of the double layer construction of the connector portion to be bonded in this way and that it will suffice for only part of the connector portion to be bonded in this way.

As I understand the opponent's argument, the term "partial" relates to the strength of the bond and not to the area over which the bond extends which the applicant refers to.  The specification refers to a partial bond in a number of passages without really indicating whether the bond is partial because of the area of coverage or the strength of the bond.  (See, for example, page 3, line 15, page 4, lines 12 and 20, page 5, line 13 etc.)  I believe the applicant's view is the more appropriate one mainly because I do not think that "partial" is a term that could qualify the strength of a bond.  I believe that a person skilled in the art would consider that a bond can be weak or strong but a partial bond is referring to the area of the bond.  Therefore I do not see a problem with the clarity of the claim in this respect.

4. The opponent argued that claim 7 is inconsistent with claim 6 to which it is appended, as claim 6 requires contact to be at adjacent aluminium strip layers.  However claim 7 states that the side walls which are composed of aluminium strips are spaced, and it is unclear how a contact point can be between spaced side walls. The applicant's view was that "contact" in claim 6 does not necessarily imply direct face-to-face contact and can include an indirect contact through the intermediary of the connection "means".  This in itself does not preclude the side walls from being in direct or indirect contact at one end or other positions and this is clearly predicated in Figure 4.

I am of the opinion that the specification plainly describes that it is possible to provide contact points between the spaced side walls.  I agree with the applicant that this possibility is depicted in Figure 4.  Therefore I find that claim 7 does not lack clarity in this respect.

5. The opponent contended that claim 8 lacks clarity as it is inconsistent with claim 6. Claim 6 defines the contact as between the aluminium strips whereas claim 8, which is appended to claim 6, requires the contact to be by way of the plastic coating.  The applicant maintained that claim 1 does not preclude the side walls from being in direct or indirect contact at one or more positions.

While I am not sure of the relevance of the applicant's argument, I disagree with the opponent's viewpoint.  Claim 6 indicates that the layers are connected to each other at a contact point.  Claim 8 indicates how the layers are connected to each other at this point.  I do not see any inconsistency in this.  I do not believe that claim 8 lacks clarity in this respect.

1. The opponent argued that omnibus claim 24 is inconsistent with the subject matter of claim 1.  For instance Figures 2, 3 and 4 do not describe a slat produced from a strip of aluminium having a plastic coating along one of its sides.  The applicant's rebuttal was that insofar as omnibus claim 24 is directed to the roller blind slat or method substantially as herein described with reference to the drawings, this claim must, by definition, be fairly based on the subject matter disclosed.  There is no inconsistency with claim 1 but in any event inconsistency is not a proper ground of objection under section 40.  This is a standard omnibus claim which is fairly based and clear.

I agree with the applicant that the omnibus claim 24 does not have to be consistent with claim 1.  However, I can appreciate the opponent's concerns about claim 24 in relation to the embodiments illustrated in Figures 2, 3 and 4. This is because Figures 2, 3 and 4 appear to be directed to slats which have different features to the slat shown in Figure 1 and claimed in claim 1.

In Witty v. Turbon Engineering Co. Pty. Ltd., (1961) AOJP 2760, it was held that an omnibus claim containing the phrase  "substantially as described in the specification with reference to the accompanying drawings" did not restrict the claim to the full representation shown in the drawings but only restricted it to the essential features of the invention as shown.

As I have indicated earlier, I believe that it is not essential to use a thermally consolidated double layer of plastic coating to provide a partial bond in one of the connector portions.  Therefore I believe that claim 24 is only restricted to the use of any fastening means which will provide a partial bond.  As such it is much broader in scope than claim 1.  Nevertheless it is fairly based on the matter described and is clear.

I have found that claims 1 and 11 lack fair basis and claim 1 lacks clarity.

Novelty

The basic test for anticipation is set out in Meyers Taylor Pty. Ltd. v Vicarr Industries Ltd. (1977) 137 CLR 228 at page 235, that is:

"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement"

As to what constitutes infringement,  I am guided by the view expressed by Lord Upjohn in Rodi & Wienenberger A.G. v. Henry Showell Ltd. 1969 RPC 367 at 391 which view was adopted by Gibbs J. of the High Court of Australia in Olin Corporation v. Super Cartridge Co. Pty. Ltd. and Another 14 ALR 149 at 157. The relevant words of Lord Upjohn are:

"To constitute infringement the article must take each and every one of the essential integers of the claim.  Non-essential integers may be omitted or replaced by mechanical equivalents; there will still be infringement."

It follows that if a citation discloses all the features of the claim, the claim will lack novelty.  If the citation does not disclose all the features of the claim, the claim will still lack novelty provided the citation discloses all the essential features of the claim, but if the essential features are not disclosed in the citation, the claim is novel; Nicaro Holdings v Martin Engineering 16 IPR 545 and  Catnic Components Ltd. v Hill and Smith [1982] RPC 183.

The issue of determining essential features was discussed in Catnic Components.  It was concluded that a feature is essential to a claim if:

(a) it was essential to the working of the invention or if it materially affected the way in which the invention worked, or

(b) the applicant or patentee regarded the feature as essential.

In my view the thermal consolidation of the double plastics layers is an essential feature of the claimed slat, as it materially affects the way in which the claimed slat works, providing improved bending strength and improved resistance to torsional strain, and the applicant regards the feature as essential.

I consider DE 2814825 to be the only citation of particular relevance.  The other listed citations clearly omit several of the essential features and therefore do not anticipate the claimed invention.

DE 2814825 is the main document on which Mr Johann Henkenjohann  relies.  This does not disclose a thermally consolidated double layer of plastic coating, evidenced by Mr Henkenjohann in his statutory declaration.  The opponent states that this feature was known.  However for the purposes of considering the question of anticipation, a document should be considered in the light of the common general knowledge in the art at the time of publication of the document.  In relation to DE 2814825 there is no evidence to suggest that the thermal consolidation of the double plastics layers was a part of the common general knowledge before the priority date of the claims let alone before the publication date of the document.

Even if I were to assume that the thermally consolidated double layer of plastic coating was not essential but that any form of fastening means capable of binding the double layers of aluminium strip together was in fact the essential feature, I still could not say that the German document disclosed such an arrangement or that such an arrangement was part of the common general knowledge.

I have found that DE 2814825 does not clearly disclose this feature which is essential to the claims.  This citation does not therefore anticipate the claimed invention.

I therefore find that the claims are novel in relation to the evidence before me.

Obviousness

The relevant authority is the Full Bench decision of the High Court in Minnesota Mining and Manufacturing Co. v Beiersdorf Australia Ltd. (supra) where Aicken J stated:

"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade.  It forms the background knowledge and experience which is available to all in the trade considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."

Mr Halliday in his submissions states that the thermal consolidation of the double plastics layers is known.  However it must be common general knowledge in Australia to be relevant for the purposes of obviousness.  The only evidence on what is common general knowledge in Australia is that provided by Mr Henkenjohann of Germany.   As I have previously mentioned, Mr Henkenjohann's declaration was made in the German language and Mr Henkenjohann resides overseas.  Therefore, I do not believe that Mr Henkenjohann is a person qualified to identify the state of the common general knowledge in Australia before the priority date of the claims in question. 

As I do not have any evidence before me as to the state of the common general knowledge in the art before the priority date of the opposed claims, I cannot say that the claimed invention is obvious.

CONCLUSION

I have found that the opposition has succeeded on the ground of non-compliance with section 40 but has failed on the grounds of lack of novelty and obviousness.

I believe that the section 40 defects can be overcome.  To this end, I allow 60 days from the date of this decision to propose relevant amendments to overcome these defects.

COSTS

The normal rule for the award of costs before the Commissioner is that costs follow the event.However while I have found that the opponent has been successful in establishing the ground of non-compliance with section 40, the section 40 defects do not go to the substance of the application. In addition, with the exception of one minor point, these section 40 matters were first raised at the hearing not having been earlier particularised.  As a consequence, I believe that the applicant has been disadvantaged because it has not known the full case it has had to answer even immediately prior to the hearing.  I therefore award costs against Alcan, the opponent.

R. W. HALLETT
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :   Davies Collison Cave; Melbourne 

Patent attorneys for the opponent   :   Cullen and Co; Brisbane