Viskase CORPORATION v W.R. Grace & Co Conn
[1997] APO 68
•19 December 1997
official notice
decision of a delegate of the commissioner of patents
Application: No.611601 in the name of VISKASE CORPORATION
Title: Irradiated Multilayer Film for Primal Meat Packaging
Action: Opposition by W.R.GRACE & CO.-CONN.; hearing.
Decision: Issued
Abstract: Opposition not successful, application to proceed to sealing.
Claims amended after service of evidence-in-support; costs affected.
Claims found novel:
Combination not anticipated (pp.11,13)
Invention not obvious:
Opponent’s crucial evidence of common general knowledge in Australia not from an independent expert and not corroborated (p.14)
Not a mere workshop variation (p.16)
Not “obvious to try” the combination of features claimed (p.16)
Manner of new manufacture:
The Ramset case is not an authority which allows an objection of lack of inventive merit based only on disclosures in patent specifications (p.17)
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No.611601 by VISKASE CORPORATION and opposition under section 59 of the Patents Act 1952 by W.R.GRACE & CO.-CONN.
background
Application no.611601 (46002/89) by VISKASE CORPORATION (VISKASE) is entitled "Irradiated Multilayer Film for Primal Meat Packaging". The application was filed on 8 December 1989 as a divisional of Patent No. 591648 claiming priority from a United States application No. 677362 filed on 3rd December 1984. The application was advertised accepted on 13 June 1991.
W. R GRACE & CO.-CONN. (GRACE) filed a notice of opposition on 13 September 1991. Therefore the procedures of the Patents Act 1990 apply to this opposition (regulation 23.3). A Statement of Grounds and Particulars was served on the applicant on 14th October, 1991. The Evidence-in-Support, Evidence-in-Answer and Evidence-in-Reply was duly completed, with some extensions of time, on lst October 1992, 24th January 1994 and 18th November 1994 respectively.
Several sets of amendments were proposed to the specification in 1993, after the evidence-in‑support was served. Amendments proposed on 7 May 1993 were advertised on 14 October 1993 and allowed on 24 February 1994.
On 26 June 1995 VISKASE filed a request to serve further evidence and on 10 July 1995 the Commissioner allowed GRACE 21 days to make representations on this matter. GRACE then requested deferral of the hearing of the section 59 opposition and VISKASE requested postponement of this hearing. The Commissioner deferred the hearing of the section 59 opposition in a letter to the parties dated 1 August 1995. The requests to amend the Statement and the application to serve further evidence were heard on 8 August 1995 and a decision on those matters issued on 5 December 1995. The Commissioner’s delegate refused the proposed amendments to the Statement and refused to adduce the further evidence, but allowed one month for the opponent to file an amended Statement which referred to documents discussed in the evidence-in-answer. The opponent filed an amended Statement on 5 January 1996 and the amendment was allowed on 5 March 1996.
I heard the substantive opposition in Melbourne on 12 and 13 August 1997. Mr Richard Baddeley, patent attorney of Watermark, represented VISKASE. GRACE was represented by Mr Michael Angliss, patent attorney of Davies Collison Cave, who was assisted by Mr Andrew Dark of that firm.
THE SPECIFICATION
The specification indicates that the invention relates to plastic film suitable for use in the manufacture of bags for packaging meat. The meat is usually packaged in such a way that air is prevented from contacting the meat during shipping and handling in order to minimize spoilage and discolouration. One desirable way to package meat cuts so as to protect them from contact with air is to shrink package them with a packaging material that has properties such as:
oxygen barrier properties, eg. polyvinylidene chloride (PVDC) film,
abrasion resistance and flexibility at storage temperatures of, for example, 30o to 50o F, and
conventional thickness of 1.5-2.0 mm, thicker films being expensive and difficult to handle
The specification indicates that one approach to the provision of a suitable film is to employ a multilayer film, one layer of which is PVDC having a minimum amount of plasticizer. The other layer or layers of such a multilayer film are selected so as to provide the requisite low temperature properties and abrasion resistance which are lacking in PVDC film containing little or no plasticizer. Other desirable properties of such films are:
the film must be biaxially stretched in order to produce shrinkage characteristics,
the film must be heat sealable in order to be able to fabricate bags from the film,
the film must resist puncturing by sharp edges such as bone edges during the heat shrinking operation, and
there must be adequate adhesion between the several layers of the film so that delamination does not occur.
The specification refers to some prior art multilayer films which include one layer of PVDC and at least one other layer of ethylene-vinyl acetate (EVA) copolymers. The prior art also teaches that the multi-layer films may be strengthened by “cross-linking” by electron-beam irradiation. The present invention is characterized by irradiating all layers of a multilayer film only after biaxial stretching, such a process producing films of relatively improved properties.
Claim 1, as accepted read as follows:
“1. A multilayer film comprising first and second layers comprising a thermoplastic ethylene polymer and a third layer comprising a barrier film disposed between the first and second layers wherein said multilayer film has been biaxially stretched and then each of the first, second and third layers of the biaxially stretched film having been irradiated to a dosage level of between 1 and 5 megarads.”
Claim 1, as amended on 24 February 1994, reads as follows, with my italics showing the changes from the accepted claim:
“1 . A multilayer film comprising first and second layers comprising ethylene vinyl acetate copolymer and a third barrier layer comprising vinylidene chloride copolymer disposed between the first and second layers wherein the multilayer film has been biaxially stretched and thereafter the entire body of the biaxially stretched film is irradiated as the sole irradiation treatment in a dosage level from 1 to less than 4 megarads, whereby said multilayer film is not significantly discoloured by the irradiation and is able to withstand higher sealing temperatures than a similar film which has not been so irradiated.
The other claims defining the invention, as amended on 24 February 1994, read as follows:
2. A multilayer film in accordance with Claim 1 wherein said third barrier layer comprises a polyvinylidene chloride copolymer containing at least 65 weight percent of vinylidene chloride, based on the weight of said polyvinylidene chloride copolymer.
3. A multilayer film in accordance with Claim 2, wherein said polyvinylidene chloride copolymer contains a maximum of 5 weight percent plasticizer, based on the weight of said polyvinylidene chloride copolymer.
4. A multilayer film in accordance with any one of Claims 1, 2 or 3, wherein the remainder of said polyvinylidene chloride copolymer is selected from the group consisting of vinyl chloride, acrylonitrile, and acrylate esters.
5. A multilayer film in accordance with any one of Claims 1 to 4, wherein the ethylene vinyl acetate copolymer in the first and second layers has a melt index of 0.1 to 1.0 decigrams per minute.
6. A process for making a biaxially stretched multilayer film comprising:
(a) forming a multilayer film having first and second layers comprising ethylene vinyl acetate copolymer and a third barrier layer comprising vinylidene chloride copolymer disposed between the first and second layers;
(b) biaxially stretching said multilayer film; and
(c) uniformly irradiating the entire body of said biaxially stretched multilayer film in a dosage level from 1 to less than 4 megarads, wherein said irradiation is the sole irradiation and whereby said multilayer film is not significantly discoloured by the irradiation and is able to withstand higher sealing temperatures than a similar film which has not been so irradiated.7. A process in accordance with Claim 6, wherein said third barrier layer comprises a polyvinylidene chloride copolymer containing at least 65 weight percent of vinylidene chloride, based on the weight of said polyvinylidene chloride copolymer.
8. A process in accordance with Claim 7, wherein said polyvinylidene chloride polymer contains a maximum of 5 weight percent plasticizer, based on the weight of said polyvinylidene chloride copolymer.
9. A process in accordance with Claims 7 or 8, wherein the remainder of said polyvinylidene chloride copolymer is selected from the group consisting of vinyl chloride, acrylonitrile, and acrylate esters.
10. A process in accordance with any one of Claims 6 to 9, wherein the ethylene vinyl acetate copolymer in the first and second layers has a melt index of 0.1 to 1.0 decigrams per minute.
11. A bag made from a multilayer film produced by the process in any one of Claims 6 to 10.
12. A bag made from a multilayer film according to any one of Claims 1 to 5.
13. A bag according to Claim 11 or 12, which comprises two confronting layers of said multilayer film peripherally heat sealed one to the other having an opening for insertion of a product into the bag.”
statement of grounds and particulars
The opponent’s Statement of Grounds and Particulars, allowed 5 March 1996, is as follows:
“Locus of the opponent:
“We are manufacturers and marketers in Australia of irradiated multilayer shrink wraps and grant of a patent on the application would be prejudicial to our business interests.
“Grounds of the Opposition
“1. The invention, so far as claimed in any claim, was published in Australia before the priority date of that claim.
“2. The invention, so far as claimed in any claim, is not a manner of manufacture within the meaning of Section 6 of the Statute of Monopolies.
“3. The invention, so far as claimed in any claim, was obvious and did not involve an inventive step having regard to what was known or used in Australia on or before the priority date of that claim.
“4. The invention, so far as claimed in any claim, was, before the priority date of that claim, otherwise not novel in Australia.
“5. The complete specification does not comply with the requirements of Section 40.
“Statement of Particulars
“1. The invention, as claimed in any one of claims 1 to 17, is disclosed in, or differs only in matters amounting to
(a)workshop variations;
(b)mechanical equivalents;
(c)variations making no substantial contribution to the invention or involving no inventive step and contributing no merit to the invention;
from the following patent specifications available in Australia before the respective priority dates of the claims:
Claims 1 to 17:US 3741253US 3821182 US 4112181 US 4044187
US 4391862US 4352844 US 4318763 US 4064296
US 4278738FR 2450205 AU 14459/83 JP 34567/72
JP 34565/72JP 57-199626 AU 52686/79 DE 3241021
AU 18296/76 US 4547433 US 4448792 US 4247584
Claims 11 to 14:
AU 53128/86 AU 56844/86 AU 55956/86
“2. The invention as claimed in any one of claims 1 to 17 is not a manner of manufacture in that the claims each define a mere collocation of known integers each performing their known roles without a new or improved result.
“3. The invention as claimed in any one of claims 1 to 17 is obvious and does not involve an inventive step having regard to the widespread knowledge in Australia before the respective priority dates of the claims of:
(a) oriented shrink wrap films of the structure EVA/PVDC/EVA, EVA/EVOH/EVA and EVA (blend)IPVDC/EVA (blend) widely marketed in Australia by the opponent and by Kureha KKK
(b) expertise in the irradiation of multilaminate shrink wrap films amongst thermoplastic film chemists, engineers and technicians established through monitoring the internationally published literature (including the patent specifications recited at clause 1 above), international seminars
(c) the installation and use in Australia of irradiation apparatus for the production of oriented multilaminate shrink wraps commencing in at least 1974.
“4. The invention as claimed in any one of claims 1 to 17 is otherwise not novel in Australia as it differs only in matters amounting to
(a)workshop variations;
(b)mechanical equivalents;
(c)variations making no substantial contribution to the invention or involving no inventive step and contributing no merit to the invention;
from irradiated films, and processes for making same, of the type described in clause 3 above.
“5. The specification does not comply with Section 40 for the following reasons:
Claims 1-17
· ‘thermoplastic ethylene polymer’ is not defined in the description or claims. The invention is said to be directed towards multilayer films having outer layers of ethylenevinyl-acetate copolymers having specific chemical and physical properties.
· inadequate support for barrier layer(s) other than PVDC having specific chemical and physical properties
· PVDC barrier layers irradiated within the specified range are discoloured
· the respective thicknesses of the layers are not defined
· the multilayer film is not restricted to being suitable for packaging meat
· the claims in essence define the same invention claimed in the parent patent 591648
Claims 11-13
· omission of an orientation step before irradiation is inconsistent with the description of the invention
Claim 12
· defines the same invention as claim 13
Claim 14
· the claim is ambiguous as to whether irradiation is before or after orientation. Irradiation before orientation is inconsistent with the description of the invention.”
THE evidence
The opponent’s evidence-in-support is directed, inter alia, to the present specification as accepted; the evidence comprises the following:
A declaration dated 17 September 1992 by Ian Woollard.
Mr Woollard is the development manager of W.R.Grace Australia Limited, the Australian subsidiary of the opponent company. He declares that he has had 28 years’ experience in technical, marketing and development positions and he regards himself as well versed in the art in Australia at the priority date of 3 December 1984. He also declares that multilayer films of the kind described in the present specification were well known and that irradiation to induce polymer cross-linking, before and after biaxial stretching the film, was well known practice before the priority date of the present application.
I note Mr Woollard’s and others’ evidence use the term “Grace” to refer to either the opponent, its Australian subsidiary or to “the multi-national Grace group of companies”. For convenience, I shall use the word with the same scope of meaning.
A declaration dated 28 August 1992 by Mario Gillio-Tos.
Mr Gillio-Tos is a technical consultant to the W.R.Grace group of companies, he has extensive experience in plastics packaging technologies. He declares that vinylidene chloride (VDC) copolymers, such as vinylidene chloride - vinyl chloride (VDC-VC), are well-known barrier layers, that EVA copolymers are well-known outer layers in multi-layer films, that biaxial stretching and irradiation are well-known, and that low levels of irradiation minimises discolouration of VDC copolymers. He indicates that Grace did not irradiate their VDC layers, not because of discolouration, but because it tended to cause molecular breakdown, with a concern that the breakdown might result in components of unknown toxicological properties. Mr Gillio-Tos states:
“It is for this reason that manufacturers such as Grace have avoided irradiating VDC, and have instead irradiated the EVA layers first and then laminated the VDC layer to the irradiated EVA layer.”
On the issue of irradiating after stretching, Mr Gillio-Tos states:
“It is also known to technical persons in the packaging industry ... that film can also be irradiated after stretching and before sealing the film transversely to produce bags ... Viskase prefer to irradiate the film after stretching....”
Mr Gillio-Tos cites some US patents which comprise the prior art and he indicates that each of the features at least in claim 1 as accepted are disclosed in these citations.
A declaration dated 2 September 1992 by Ian R Harrison.
Prof Harrison is a professor of polymer science at Pennsylvania State University, he has had some practical experience in polymer science whilst employed at Dow Chemical Co, and he makes similar points in his declaration to those made by Mr Gillio-Tos.
Declarations dated 9 September 1992 and 1 October 1992 by Elizabeth Eadie and exhibits EE 1-16 accompanying the former and exhibit EE-1 accompanying the latter. These exhibits are copies of the prior art and information relating to publication thereof.
The evidence-in-answer comprises the following:
A declaration dated 21 December 1993 by Stanley Lustig.
Mr Lustig is a director of VISKASE, one of the inventors of the present invention, and to establish his expertise, he lists 32 US patents in which he has been named as an inventor. He disputes the opponent’s statements that post-stretching irradiation of multilayer films was well-known at the priority date, and he argues that the prior art cited by the opponent does not address the problems which have been addressed by the present invention. He declares that the state of the art was characterized by irradiating one of the outer olefin layers, and by not irradiating the PVDC barrier layer, because of the known problem of irradiation-induced degradation and discolouration of PVDC. In paragraph 17 Mr Lustig declares:
“...at the time VISKASE decided to employ irradiative crosslinking of its multilayer biaxially stretched films, we considered the polyolefin substrate layer irradiation system for a subsequently formed polyolefin/PVDC/polyolefin film but recognized its inherent disadvantages. These included high power costs (because of the need to irradiate a thick primary tube), high equipment costs (because of the need to contain high voltage equipment in concrete walls) and a relatively weak outer polyolefin layer (because unlike the inner layer it is not irradiated)....”
He declares that the post-irradiation feature and other features of his invention were not simply a matter of choice and that the invention has unexpected advantages over the prior art. Mr Lustig’s declaration refers to the specification in its form as proposed to be amended, and he declares that the combination of features claimed is not disclosed in the prior art cited by the opponent.
A declaration dated 12 January 1994 by David Henry Solomon.
Prof Solomon declares that he is Professor of Chemistry at the University of Melbourne, that he has had industrial experience at CSIRO, ICI and Dulux. He lists many awards, books and publications and indicates that his research interests have been in polymer science, in the interaction of minerals with organic entities and free-radical polymerization as it applies to the synthesis of polymers, inter alia.
Prof Solomon discusses what he deems to be improvements of the invention over the prior art. For example in paragraph 2.4 he states:
“The patent addresses the problem of minimising or avoiding degradation of the PVDC by the irradiation used by orienting [biaxial stretching] a preformed laminate before subjecting the laminate or any of the layers in the laminate to irradiation. Consequently thinner films of laminate are exposed to the irradiation step. By this sequence of steps ie. coextrusion, (or any other methods of forming the laminate) orientation, then irradiation of the oriented but previously non-irradiated laminate film the opposed patent achieves the desirable processing efficiency of a coextrusion process, avoids or minimises degradation of the PVDC layer and yet improves toughness and the heat sealing properties of the ethylene vinyl acetate layers by broadening the heat sealing temperature range. This improvement is attributed to the crosslinking of the EVA layers brought about by the irradiation process. Moreover these improvements are achieved with minimum power and equipment requirements for the irradiation.”
Prof. Solomon distinguishes the invention, as claimed in the specification as amended, from each of the prior art specifications cited by Mr Woollard and he comments on the declarations of Messrs Woollard, Gillio-Tos and Harrison. He comments in paragraph 4:
“In my opinion none of the prior art patents disclose or even suggest the opposed patent. That is they do not preform the laminate, orient the film and only then, as the sole irradiation, irradiate the laminate.”
The opponent’s evidence-in-reply is addressed to the specification as amended and comprises the following:
A declaration by Mr Woollard, dated 18 November 1994 and Exhibit INMW-1.
Mr Woollard comments on the Lustig and Solomon declarations and he suggests that he, Woollard, is in the best position to know the state of common general knowledge in Australia at the priority date. In particular, he declares that:
Lustig would not be familiar with the state of the art in Australia at the priority date
Solomon, being an academic, would not be aware of the technical information upon which commercial decisions are based, as distinct from chemical principles.
the prior art does disclose irradiation after stretching as the sole irradiation process, and in particular, AU 14459/83 (EE-11) recognised that there might be some commercial advantage in post-irradiating
Grace did not irradiate the whole multi layer film because it believed that irradiated PVDC containing films would not comply with United States and German food law compliance regulations
the opponent was aware that VISKASE had government approval for its film, but Grace still had doubts re the potential risks
it was well known that discolouration of PVDC or VDC layers could be avoided by using low levels of irradiation
the real difference in cost of pre- versus post-irradiation is small relative to the total product cost
On the fourth point referred to above, paragraph 13 of Mr Woollard’s declaration reads as follows:
“If Grace had decided that it would be desirable to irradiate its EVA/PVDC/EVA film after formation of the film and after biaxial stretching it would have been obliged to conduct tests in order to satisfy the FDA that the polymer is not changed by being irradiated. Grace was unwilling to invest the money in conducting these tests when prior to the priority date, Grace was aware that irradiation of multilayer films after biaxial stretching was an option but decided in the case of PVDC containing films not to commercially irradiate the PVDC layer because it did not believe that such films met FDA concerns. However, the opponent has several patents in which PVDC as well as other components of multilayer structures was irradiated.”
Two declarations dated 18 November 1994 by Elizabeth Eadie and exhibits EE 17-35. These exhibits are copies of further prior art and information relating to publication thereof.
submissions
The opponent’s submissions are summarized as follows:
The field of the invention is the broad concept of “multilayer films suitable for manufacture of bags for shrink packaging meat” and Prof Solomon has no experience in the field.
Mr Woollard’s evidence with regard to the state of the art carries more weight than the applicant’s evidence.
Post-irradiation of multi-layer films with a PVDC barrier layer is known, the present invention is not novel and lacks an inventive step and in the light of the prior art and it was “obvious to try” the features claimed.
The scope of the claims is unclear.
The applicant’s submissions are summarized as follows (written submissions were filed at the hearing):
The opponent’s evidence is not probative. For example, Mr Baddeley submitted that “other than Woollard’s assertions, we don’t know what’s been produced in Australia”, that most R&D done by Grace is in the US and Italy and that the opponent’s evidence is from its employees and agents.
Prof. Solomon is an independent expert.
The invention claimed is novel and has an inventive step in the light of the cited prior art.
The technical field of the invention is narrower than as stated by the opponent; eg. as stated in parag 2.2 of Prof. Solomon’s declaration:
“The technical field of the patent application is that of oriented (ie. shrinkable) irradiated multi-layer films in which the barrier layer is of the PVDC type (polyvinylidene chloride) copolymers and the first and second layers on either side of the barrier layer ... comprise copolymers of ethylene and vinyl acetate (EVA).”
The Statement of Grounds and Particulars is deficient with respect to the particulars relating to novelty; there are 23 specifications cited “without any precision”
decision
Novelty
I shall first consider the prior art which appears to be most relevant in the light of all the evidence, verbal and written submissions, and the Statement of Grounds and Particulars.
US 4,448,792 to Schirmer (EE-23), equivalent to AU 14459/83 (EE-11)
This patent relates to a “pasteurizable cook-in shrink bag” comprised of a 6-layer film treated in a manner similar to the film of the present invention. The patent discloses copolymers of vinylidene chloride as the barrier layer in the multilayer film. There is no EVA layer in the invention claimed in Schirmer but conventional 3-layer films with EVA copolymer outer layers are recognized as prior art. Post-stretching irradiation of the film, as the sole irradiation process, is also disclosed, in this case to crosslink adhesive layers within the film. The recommended and claimed irradiation dosage is 4-12 megarads. The US patent reads at column 5 lines 43-46:
“At this minimum dosage, it is necessary that irradiation be conducted following orientation of the film. This general scheme is referred to as post-irradiation.”
And at column 6 lines 46 -49 and 55-57:
“Thus it is seen that there is commercial advantage in post-irradiating as opposed to pre-irradiating in that a lesser dosage is required in the post-irradiation method.” ...”optical clarity was degraded somewhat in the 4MR post-irradiation case, but not being of practical significance.”
Table 1 in the citation shows the results of tests done, with variations of properties of the film set out against irradiation doses of “0 MR, 4 MR/pre, 6 MR/pre and 4 MR/post”
In paragraph 61 of his second declaration, Mr Lustig declares that in Schirmer
“... the film is selectively irradiated to render the film delamination resistant and not to improve the mechanical properties of the film as is the case for the present invention which provides a broader sealing temperature range and produces a film with acceptable colour.”
Prof Solomon comments on the citation in paragraph 6.12 of his declaration as follows
“... the degradation of mechanical properties that EE-11 discloses suggests to me that if the intended use is not cook-in processing where improved delamination resistance is essential, irradiation of all layers, after orientation poses problems that one should avoid. “
Mr Woollard declares in paragraphs 50-53 of his declaration that US Patent 4,448,792 discloses
that post-irradiation might be advantageous due to the lesser dosage required
that the end use of the film is irrelevant; the prior art cook-in bag “is still packaging”
high-temperature resistant seals
a film of commercially acceptable colour
that the decrease in tensile strength after irradiation is not commercially significant
The invention disclosed in US 4,448,792 and its Australian equivalent has a similar inventive concept to the present invention, ie. the concept of post-stretching irradiation, and is therefore worthy of a close analysis. There are close parallels in the stated advantages of each invention, but there are also two features of the present invention which prima facie are not disclosed in the citation. I will now discuss those two features.
The first feature relates to the radiation dosage. Table 1 shown in the US patent, referred to above, shows dosages of 0 and 4 MR, but I note firstly that there is no breakdown within this range and secondly that the recommended and claimed irradiation dosage is 4-12 MR. The lower limit of the invention therefore seems to be 4 MR.
The second feature relates to the material in the film layers. The film of the invention in US 4,448,792 does not have EVA outer layers. The citation does indicate in column 2 however that EVA layers are known and the evidence filed in this opposition suggests that EVA outer layers are a matter of common general knowledge. It is acceptable practice that a patent specification is to be read in the light of the common general knowledge, but I have some doubt whether this means that the citation can be construed to disclose a multilayer film where the well-known EVA layers replace some of the layers in the 6-layer film of that invention. It seems to be a more reasonable proposition that the six-layer arrangement is teaching away from the conventional EVA-PVDC-EVA arrangement than a proposition that the EVA layers are simple equivalents to some of the layers in the 6-layer film. It is not immediately obvious for example which of the six layers would be equivalent.
Looking at either one of these differences between the disclosure of the citation and the present claims, I might have had some doubt whether each was of enough significance to conclude that the present claims were novel, but when taking the combined affect of these differences into account I am not convinced that US Patent 4,448,792 has “clear and unmistakable” directions” to do what is claimed in present claim 1.
US 4,318,763 to Bieler (EE-7)
This patent relates to sealing multi-layer films. Claim 1 reads as follows:
“A method of making a flexible, heat shrinkable receptacle from thermoplastic film having improved high temperature seal strength comprising the steps of
(a) selecting a thermoplastic film having at least one layer selected from the group consisting of poly-ethylenes and ethylene vinyl acetate copolymers which have been cross-linked by ionizing radiation, said film having a sealing surface wherein the material forming the surface is selected from the group consisting of polyethylenes and ethylene-vinyl acetate copolymers;
(b) orienting said film to render it heat shrinkable;
(c) placing said sealing surfaces in a face-to-face relationship;
(d) heat sealing selected portions of said surface together to form a receptacle;
(e) irradiating said sealed together surfaces with ionizing radiation to a dosage level of at least 2 MR thereby increasing the high temperature strength of the seals of said heat shrinkable receptacle.”
The patent specification indicates that the invention is applicable to EVA-Saran-EVA laminates. The evidence in the present case suggests that Saran is a term well known in the art to mean a family of thermoplastic resins, viz. vinylidene chloride polymers and copolymers of vinylidene chloride with other monomers such as vinyl chloride, the Saran comprising at least 50% vinylidene chloride. Thus I consider that the particular layers of the film of the present invention, as claimed in claim 1 of the present specification, are disclosed in Bieler patent. Low irradiation dosage levels are also disclosed in the citation.
The main prima facie differences between the present claim 1 and the Bieler patent are as follows. In the latter:
The irradiation treatment of the seals is not the sole irradiation treatment- one of the EVA layers is cross-linked before sealing.
The low-level “post-irradiation” is applied only to the seals, not to the whole body of the film
Mr Woollard declares, in paragraph 45 of his second declaration, that this citation illustrates that
“...it was known in Australia ... that all the layers of a PVDC containing film could be successfully irradiated (without discolouration which could render the product non-commercial) after biaxial stretching...”
In paragraph 46 of his second declaration, Mr Woollard contradicts Mr Lustig’s assertion that only the seal area is irradiated, Mr Woollard states:
“... but in fact this is not so- part of or the total bag would be irradiated commercially, but the dramatic result of seal strength improvement is the novel aspect.”
I am not convinced by Mr Woollard’s comments on this citation. Firstly I note that there is definitely no reference in the patent specification of the post-irradiation affecting any parts of the receptacle other than the seals, eg. column 2 lines 60-64 read:
“Electron irradiation of polymeric materials is well known in the art but the irradiation or post irradiation of specific seal areas is a novel process and results in seals stronger than are obtainable by any currently practiced method.”
Secondly, there is no reference to avoiding discolouration, which seems appropriate since it is only the seals which are the focus of the invention.
In my view the present claims are novel in the light of US 4,318,763. Different inventive concepts are involved because, even though there is “post-irradiation” used in both inventions, in the citation it is not post-irradiation of the entire body of the biaxially stretched film. Thus the abovementioned differences between present claim 1 and the citation are significant differences which render the present invention novel.
US 4,044,187 to Kremkau (EE-4)
This patent discloses a method of improving the properties of polymeric film laminates where the film substrate is irradiated before forming the laminate and where the whole laminate is subsequently irradiated. In the paragraph bridging columns 4 and 5 there is a reference to not irradiating the substrate, viz:
“While preparing laminates having constructions similar to the preferred embodiment, it was found that if the substrate were not irradiated then great difficulty was encountered in establishing and maintaining a trapped bubble for continuous production as the bubbles too easily rupture. Furthermore, it was found that if all layers were given the total irradiation dosage at once that the tubing was too resistant to expansion to successfully stretch it.”
Mr Angliss submitted (1) that this paragraph disclosed the “sole irradiation” feature of the present claim 1 and that therefore claim 1 was not novel and (2) that there is no inventive merit in the present invention in the light of this citation.
In my view the paragraph referred to above in the citation is teaching away from the present invention; the citation therefore cannot be seen as an anticipation. The inventive concept in Kremkau is clearly a two-step irradiation process and so the essential feature of “sole irradiation” in present claim 1 has not been found.
On the matter raised by Mr Angliss relating to whether there is any inventive merit in the present invention in the light of the disclosure in Kremkau, I comment that there is no currently available legal test to determine whether, under the Patents Act 1952, there is any inventive merit the in the light of a single paper anticipation.
The other specifications cited in the opponent’s evidence are less relevant than the abovementioned specifications. Generally, the combination of features claimed in the present claims are not disclosed in any one citation. This point in fact is generally conceded by Mr Woollard in paragraph 82 of his second declaration and I accept the applicant’s experts’ rebuttal of the opponent’s arguments relating to these citations. I am satisfied that the present claims are novel in the light of the cited prior art.
Obviousness
The application was filed under the Patents Act 1952 so I have to consider whether the invention was obvious in the light of the common general knowledge in the art at 3 December 1984.
It is appropriate at this stage to make some general comments on the experts’ evidence in this case.
Firstly I note that Messrs Gillio-Tos, Harrison and Lustig have little if any experience in the art in Australia, so in the matter of determining the nature of the common general knowledge in Australia, their evidence prima facie may be of low probative value. Nevertheless I have taken some account of their evidence; Mr Lustig for example is familiar with the state of the art in the United States, and since that is where the research is done in the present technology, prima facie, it seems unlikely that any matter related to the technology which is not common knowledge in the United States could be common knowledge in Australia. I think the onus is on the opponent to prove otherwise. Prof Solomon is an independent expert and resident in Australia, and his comments are therefore of some significance, but because he has not worked in the immediate field of the invention I think it is appropriate to reduce the weight given to his comments about the supposed economic advantages of the invention- relating to cost of power consumption and the like.
Mr Woollard’s evidence in this matter is paramount because he seems to be the only expert with in-depth knowledge of the art in Australia at the priority date. There are several matters worth noting about Mr Woollard’s evidence:
He does not state his technical qualifications. This though is not a major issue since he has had experience in “technical” positions with WR Grace Australia and his declarations demonstrate an understanding of the technical issues in the case.
He is an employee of the Australian subsidiary of the opponent company, and therefore his evidence cannot be said to be that of an independent expert. At the hearing it was suggested that Mr Woollard may in fact be the only expert in Australia, that his company is the only producer of irradiated, shrinkable multi-layer thermoplastic films in Australia, and that there is no-one who can corroborate his evidence. My view on this matter is, if that in fact is the case, then it may be a cross the opponent has to bear for the privilege of exclusive knowledge. If Mr Woollard had provided some documentary evidence corroborating his statements on the state of the art, I could give his evidence more weight, but no such evidence has been adduced, so I feel it is appropriate to reduce the weight of his evidence because of his direct association with the opponent.
Parts of his evidence suggest that his conclusions on what constitutes common general knowledge in Australia are based substantially on disclosures in US Patent specifications; especially those parts relating to irradiation after stretching and the allegation that “the stage at which irradiation is used to induce cross-linking is merely one of a range of options which were well-known to me...” Paragraphs 37-45 of his first declaration and paragraph 10 of his second declaration for example. Relying on patent specifications is of course not an inappropriate way to prove common general knowledge, but it is a way which relies on a large number of specifications, and, even though Mr Woollard seems to have made a reasonable attempt to show that “post‑irradiation” in some form or another may have been well-known, I don’t think his evidence is conclusive on this point. It is even less conclusive on other features of claim 1 such as the “sole treatment” and the relatively low irradiation doses. Forms of proof other than patent specifications may have carried more weight. See my decision in Glenwood Systems Pty Ltd v Gooden (1993) AIPC 90-985 at 39,343. In paragraph 8 of his second declaration Mr Woollard declares:
“The opponent has a highly developed information dissemination system, particularly in relation to new developments by the opponent or its related companies and by competitors, and the information contained in the patent specifications of the opponent referred to in paragraph 7 was part of my general knowledge by 3 December 1984. One method by which I acquired this knowledge was by visiting the opponent every year or so for detailed discussions on developments and other matters. In addition, reports are prepared and circulated every month on in-house developments (both local and overseas) and on competitors’ developments.”
I note here the comments on in-house reports which, if relevant, may have provided some corroboration of Mr Woollard’s evidence.
Turning now to the common general knowledge, the evidence as a whole is rather vague about the state of the art at the priority date, and this may be understandable since it was seventeen years ago. Nevertheless I am reasonably satisfied that the evidence indicates:
that 3-layer EVA-PVDC-EVA thermoplastic films were well-known in the packaging art,
that it was common general knowledge that such films could be biaxially stretched at some stage in their manufacture to allow heat shrinking at the packaging stage,
that electron-beam irradiation could be used to cross-link and strengthen one of the EVA layers, and
that generally it was a good idea to avoid irradiating PVDC because it would cause discolouration and possible deleterious effects.
However the evidence does not prove that it was common general knowledge to irradiate the entire body of a 3-layer film after biaxially stretching and at the low levels claimed in present claim 1. Mr Woollard’s and other declarants’ evidence suggest that some of the features in claim 1 were separately well-known, but there is no indication in the evidence of the combination of features claimed being well-known.
Nevertheless, the opponent alleges that, in the light of the common general knowledge:
the present invention doesn’t solve any particular problem, and
is a workshop variation, and
that it was “obvious to try” the combination of features of the invention, in the light of the Federal Court judgement in WR Grace v Asahi Kasei KKK (1993) AIPC 90-974 and the Commissioner’s decision in Acushnet Co v Spalding Australia Pty Ltd (1988) AIPC 90-467.
I will now comment on these points of obviousness raised by the opponent.
Firstly, I don’t agree that the present invention doesn’t solve any particular problem. The specification suggests that it is the object of the invention to produce a multi-layer film for packaging meat with the film having all the desired and specified physical properties previously discussed. The problem seems to be to overcome the known barriers to producing such a film in a cost-efficient manner, and the combination of features claimed in the present invention is directed to solving this problem.
Secondly, with regard to whether the invention is a workshop variation, I will consider the parties’ evidence and weight that evidence according to my comments above.
The applicant’s evidence indicates that, in the light of the state of the art in the US at least, there is some merit in the invention, because:
it was generally accepted that irradiation would deteriorate PVDC layers, but the film of the invention has manufacturing advantages by post-irradiating the whole film, including the PVDC layer, and
the film of the invention has improved physical properties, as previously discussed.
In my view, the opponent’s evidence is insufficient to prove that the state of the art was any different in Australia than in the US; in particular that there was more common knowledge in Australia than in the US. As stated above, Mr Woollard’s assessment of the common knowledge seems to be substantially based on US patent specifications, which are of course available in both the US and Australia. Thus I do not think that the opponent’s evidence on the merit of the invention is substantially more probative than the applicant’s evidence, and I am not convinced that that the opponent has provided sufficient proof that the invention as claimed has no merit in the light of the common general knowledge in Australia at the 1984 priority date.
The applicant’s experts have indicated that there are some manufacturing advantages and improved physical characteristics in films manufactured according to the invention. These advantages over the prior art are due to the combination of features of the invention, some of which are not part of the common knowledge, ie. irradiating at low dosages the entire body of the 3-layer film after biaxially stretching. The opponent’s submissions on obviousness are mainly to the issue of post-irradiation- whether it was a mere choice of when to irradiate, but its submissions did not take sufficient account of other claimed features such as the low dosage levels. The degree of merit or inventive ingenuity in the present invention is small, but I think that is sufficient in such a narrow field of technology. Therefore I am satisfied that the invention is not a mere workshop variation.
Re whether it was “obvious to try” the combination of features of the invention, I comment as follows.
In the WR Grace v Asahi Kasei KKK case, supra, the prior art evidence adduced against the patent (also for a thermoplastic multi-layer packaging film) was significantly stronger than in the present case. In the former case some of the evidence comprised a set of articles published in trade magazines in the field of the invention, and some of the evidence came from of one of the patentee’s experts who stated that had he known about the new material he would have investigated its use in laminates. The patent was found to be obvious, not novel, and the “mere use of a known product” in the light of the evidence.
In the Acushnet v Spalding case, supra, which related to a golf ball with a fluorescent cover, it was known that a fluorescent cover would be a desirable feature on a golf ball but prior art attempts were unsuccessful because there was no suitable material. The Commissioner’s delegate decided that when new improved compositions became available it was then obvious to try these new compositions to solve the known problem. I don’t think there is any parallel in the present case, which can be construed as a non-obvious combination of features which provides an improved result over previous different combinations. It is not a matter of selecting a new material to solve a known problem. In my view the weight of the opponent’s evidence, in the light of the applicant’s evidence, is insufficient to lead me to conclude that it was obvious to try the combination of features of the invention as claimed.
Taking all these matters into account, I find that the present invention as claimed is not obvious in the light of the common general knowledge in the art.
Manner of new manufacture
The opponent submitted that the invention lacks inventive merit and therefore should be considered as not being a manner of new manufacture in the light of the Federal court judgement in Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1996) 34 IPR 255, and the Commissioner’s decision of 8 January 1997 on application 625497, ie. Asahi Kasei KKK v WR Grace & Co.-Conn, which used the Federal court judgement as authority to consider whether an invention has any inventive merit in the light of a paper published in a technical journal in Australia.
In the Ramset judgement the Federal court found that, under the Patents Act 1952, the patent under consideration was novel and not obvious, but that it was invalid because it lacked “an element of inventive merit” in the light of the prior art, and that in determining inventive merit one is “not restricted to the body of the specification” for disclosure of the prior art. The law relating to “use of a known substance” was also considered. The prior art comprised the total disclosure of (1) an admitted disclosure in a prior patent and (2) three “public” advertisements.
In my view the Ramset case is not an authority which allows an objection of lack of inventive merit based only on disclosures in patent specifications. The public nature of the advertisements cited in the Ramset case demonstrates that a higher level of disclosure than patent specifications is required. If the court had intended its judgement to include an objection of lack of inventive merit based only on disclosures in patent specifications, then it is most likely that the court would have distinguished or at least commented on well known authorities which teach against “mosaicing” patent specifications (eg. Minnesota Mining and Manufacturing Co v Biersdorf (Australia) Limited (1980) 144 CLR at 293), but the court did not distinguish any of these well-known authorities.
In the present case the opponent’s allegations of the state of the art rely mainly on (1) the evidence of a non-independent expert and (2) disclosures in patent specifications, and the evidence does not fully cover all the features in the present claims. These issues have already been discussed. The higher level of disclosure required for an objection based on the Ramset judgement has not been made out in the present circumstances. Also, the present invention cannot be considered in the “use of a known substance” or “use of a known device” categories, since it is more of a true combination of features.
Section 40
A few particulars in the Statement of Grounds and Particulars relate to S.40 matters; and some of these were referred to at the hearing. In my view, these objections, such as the meaning of “comprising” in claim 1, are of minor importance and/or do not raise issues which affect the scope of the claims. I note also that there are no S.40 issues discussed by the parties’ experts and all parties seem to have been able to satisfactorily interpret the scope of the claims to comment on the abovementioned novelty and obviousness issues. I thus reject the opponent’s objections to the claims under S.40.
conclusion
I have found that the opposition is not successful because the invention defined by the claims in specification 611601 is novel, not obvious and is a manner of new manufacture, and that there are no S.40 objections to the specification. I direct therefore that the application and complete specification proceed to sealing, subject to any appeal.
COSTS
Both VISKASE and GRACE made submissions on costs. At the hearing I allowed both parties 14 days to make written submission on costs; submissions were filed by the opponent on 27 August 1997. Costs normally follow the event in opposition matters, so prima facie they should be awarded against the unsuccessful opponent, GRACE. However, the amendments to the specification proposed in 1993 seem to have been as a direct result of the evidence-in-support, and in this sense the opponent has been successful. I thus award costs against the applicant, VISKASE, up to the date of advertisement of the amendments, ie. 14 October 1993, and after that date I award costs against the opponent, GRACE.
John Welsh
(Delegate of the Commissioner of Patents)
Patent attorneys for the applicant : Watermark, Melbourne and Perth
Patent attorneys for the opponent : Davies Collison Cave, Melbourne
0
0