Warner-Lambert Company v Goodman Fielder Mills Limited
[1995] APO 73
•28 December 1995
official notice
decision of a delegate of the commissioner of patents
Application : No. 617411 in the name of WARNER-LAMBERT COMPANY
Title: Polymeric materials made from destructurized starch and at least one synthetic thermoplastic polymeric material.
Action: Opposition under section 59 of the Patents Act 1952 by GOODMAN FIELDER MILLS LIMITED.
Decision: Issued
Abstract: Grounds of prior publication and obviousness discussed. Opposition was not successful on any ground.
Late notification of non-appearance not considered grounds for awarding actual costs.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 617411 by WARNER-LAMBERT COMPANY and opposition thereto under section 59 of the Patents Act 1952 by GOODMAN FIELDER MILLS LIMITED.
background
Patent application 28876/89 was lodged on 27 January 1989 by Warner-Lambert Company (Warner). The application claimed priority from GB application number 8802313, which was filed on 3 February 1988. Application number 28876/89 was advertised accepted on 28 November 1991 and assigned the number 617411.
A notice of opposition to the grant of a patent was lodged on 28 February 1992 by Goodman Fielder Mills Limited (Goodman). A request to amend the statement of grounds and particulars was made on 30 November 1992. This amendment was allowed on 22 January 1993. The service of evidence was completed on 12 October 1994.
Warner asked for leave to amend the specification on 10 September 1993. The amendments were advertised allowed on 8 December 1994.
The matter was set down for hearing in Canberra on 3 July 1995. Goodman advised on 30 June 1995 that it would not be represented at the hearing and would not be making any written submissions on the matter. Warner was represented by Ms Ruth Clarkson and Dr Ian Ernst, patent attorneys of Shelston Waters, Sydney.
THE SPECIFICATION
The specification relates to a blended polymeric material as obtained from a melt comprising a water-containing destructurized starch and at least one essentially water-insoluble synthetic thermoplastic polymer.
Destructurized starch is defined in the specification by reference to European patent application 118240. EP 118240 describes destructurized starch as the product of heating a starch, having a water content of 5 to 30% by weight, to a temperature above its glass transition and melting point in a closed vessel. The name "destructurized" relates to the disordering of the starch granules that takes place.
The problem with shaped articles prepared from destructurized starch alone is that in humid air they take up water from the air increasing their moisture content and leading to a loss of form stability.
According to the description, because thermoplastic materials must normally be processed in the absence of water or volatile materials and starch does not melt but decomposes at elevated temperatures in the absence of water, it was assumed that starch could not be used as a thermoplastic component together with hydrophobic water-insoluble polymeric materials.
It was found however that melts could be formed from water-containing destructurized starches and essentially water insoluble anhydrous thermoplastic synthetic polymers, and that shaped products formed from these melts are stable in moist air.
The specification as amended after acceptance contains a total of 61 claims. There are two independent claims and an omnibus claim. Claim 1 reads as follows:
"1. A blended polymeric material in the form of a thermoplastic melt comprising a water-containing destructurized starch, as herein defined, and at least one essentially water-insoluble synthetic thermoplastic polymer, as herein defined, wherein the thermoplastic polymer is selected from the group consisting of polyolefins, vinylpolymers, polyacetals;
polycondensates, polycarbonates, poly(alkylene therephthalates); polyarylethers;
thermoplastic polyimides; polyhydroxybutyrate (PHB) and high molecular weight essentially water-insoluble polyalkylene oxides or copolymers thereof, characterized in that the melt has been obtained by
(a) heating a starch having a water content of 5 to 30% by weight based on the starch/water component, in a closed volume to a temperature above the glass transition and the melting points of its components, at a pressure corresponding at a minimum to the water vapour pressure of water at the temperature used to effect the destructurization of the starch and heating for a time long enough to obtain a melting of the starch granules;
(b) mixing with the starch/water component at least one essentially water-insoluble synthetic polymer before or during melt formation and heating further until homogenization of the melt is obtained."
Claim 55 is directed to a process for preparing the blended polymeric material.
EVIDENCE
The evidence in support consists of statutory declarations by Kenneth J McNaught, Ian L Brown, Phillipa Gabelle, Paul C Whenman, Catherine Seaton, Ngare A Pettit-Young and Raymond M Hill.
The evidence in answer consists of statutory declarations by Norman K Matheson, Charles T Greenwood, Robert T Dombrowski and Jakob Silbiger.
The evidence in reply consists of a statutory declaration by Kenneth J McNaught.
Details of the evidence are quoted where relevant in this decision.
STATEMENT OF GROUNDS AND PARTICULARS
As the statement of grounds and particulars was filed before the application was amended it is directed to the specification as accepted.
The grounds of the opposition as set out in the statement are:
.the invention as claimed in claims 1 to 25 is not a patentable invention because the invention so far as claimed in any of those claims, was published in Australia before the priority date of those claims;
.the invention as claimed in claims 1 to 25 was, before the priority date of those claims, otherwise not novel in Australia;
.the invention as claimed in claims 1 to 25 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 those claims; and
.the complete specification does not comply with the requirements of section 40 of the Patents Act 1952.
SUBMISSIONS
The opponent made no submissions to the hearing and only relied on the evidence already served.
Details of the submissions by the applicant are quoted where relevant in the decision.
DECISION
This opposition is determined under the provisions of the 1952 Act and the Regulations associated with the 1990 Act by virtue of section 234(3) and regulation 23.3 of the Patents Act 1990.
The matters that have to be decided in this opposition are:
. section 40 matters;
. prior publication; and
. obviousness.
Before these matters can be decided it is necessary to construe the specification.
(a) Construction of the Specification
The invention is described as a thermoplastic melt comprising a destructurized starch and at least one essentially water-insoluble synthetic thermoplastic polymer. The key issue is the meaning of the term "destructurized starch". According to the description destructurized starch is obtained when "starch is heated above the glass transition and the melting temperatures of its components so that they undergo endothermic transitions. As a consequence a melting and disordering of the starch granules takes place."(page 2).
This transition is accomplished by "heating a starch having a water content of 5 to 30% by weight based on the starch/water component, in a closed volume to a temperature above the glass transition and the melting points of its components, at a pressure corresponding at a minimum to the vapour pressure of water at the temperature used to effect the destructurization of the starch and heating for a time long enough to obtain a melting of the starch granules." (page 3a and claim 1).
It is stated in the description at page 2 that this treatment of starch is described in EP application 118240.
In her submissions Ms Clarkson referred to the definition at page 2 of the specification and further stated that destructurized starch has no granular structure because of a melting of the molecular structure, that is the crystalline and granular structure. This was contrasted with gelatinized starch which was defined as being formed by swelling of the starch leading to a loss of bifringence (that is, a loss of the so-called maltese cross pattern), but it still retained its granular structure.
Ms Clarkson further submitted that the best way to determine if the starch is destructurized or gelatinized was via microscopic examination.
Paragraph 9 of the first McNaught declaration stated:
"Therefore such a structural disordering during the heating of starch with low moisture content should be viewed as a sort of melting phenomenon distinguishable from gelatinization." (his emphasis).
Therefore it seems to me that there is agreement that destructurized starch is different from gelatinized starch in that there must be heating of the starch, under conditions of low moisture content, the pressure being the vapour pressure of water and in a closed volume, such that the starch granules are melted.
This to me corresponds with the definition of destructurized starch in the specification.
(b) Section 40
The section 40 matters raised in the statement of grounds and particulars were addressed by the applicant in amending the accepted application.
(c) Prior Publication
The test for anticipation is the reverse infringement test. The formulation of this test is that presented by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228, at page 235:
"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".
This requires the alleged anticipation to disclose all the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 16 IPR 545 at page 549).
The Essential Features
In determining the essential features of the invention it should be initially assumed that all features of the independent claims are essential (Catnic Components v Hill & Smith Ltd [1982] RPC 183). A feature can be determined to be not essential if it does not materially affect the way that the invention works.
Turning now to claim 1 of the present application, the features of the invention are:
(i)a blended polymeric material in the form of a thermoplastic melt comprising:
(ii)a water containing destructurized starch; and
(iii)at least one essentially water-insoluble synthetic thermoplastic polymer, selected from:
.polyolefins, vinylpolymers, polyacetals;
.polycondensates, polycarbonates, poly(alkylene therephthalates);
.polyarylethers;
.thermoplastic polyimides;
.polyhydroxybutyrate (PHB); and
.high molecular weight essentially water insoluble polyalkylene oxides; or
.copolymers thereof,
(iv)wherein the melt is obtained by
.heating a starch having a water content of 5 to 30% by weight, in a closed volume to a temperature above the glass transition and the melting points of its components, at a pressure corresponding at a minimum to the vapour pressure of water at a temperature used to effect the destructurization of starch and heating for a time long enough to obtain a melting of the starch granules;
.mixing with the starch/water component at least one essentially water-insoluble synthetic polymer before or during melt formation and heating further until homogenization of the melt is obtained.
The Citations
Of the citations filed by Goodman and listed in the amended statement of grounds and particulars, documents numbered 22 to 40 were not filed as evidence and therefore I have not considered them.
The citations which were filed as evidence in support can be divided into five categories. These categories, including the citations are:
Group 1
. Wendlandt (1986), exhibit KM-5
. Australian Concise English Dictionary, exhibit KM-14
. Whistler & Daniel (1984), exhibit KM-15
. Mitch (1982), exhibit KM-25
. Cardarelli (1979), exhibit KM-26
. Cardarelli (1980), exhibit KM-27
. Food Chemicals Codex, exhibit KM-29.Group 2
. Burt and Russell (1983), exhibit KM-3
. Takahashi et al. (1982), exhibit KM-4
. Donovan (1979), exhibit KM-6
. Evans and Haisman (1982), exhibit KM-7
. Vergnes and Villemaire (1987), exhibit KM-16
. Eith et al. (1987), exhibit KM-17
. Mercier and Feillet (1975), exhibit KM-18.Group 3
. Narayan (1987), exhibit KM-9
. Mumma (1967), exhibit KM-13
. GB,A,2208652, exhibit KM-19
. US,A,3117014, exhibit KM-20.Group 4
. EP,A,118240, exhibit KM-2
. US,A,4076846, exhibit KM-22
. Otey et al. (1974), exhibit KM-23.Group 5
. Otey (1985), exhibit KM-8
. Kohn (1977), exhibit KM-10
. US,A,4337181, exhibit KM-11
. US,A,4133784, exhibit KM-12
. Otey et al. (1987), exhibit KM-21
. Otey and Westhoff (1984), exhibit KM-24
. Otey et al. (1980), exhibit KM-28.
The citations in group 1 do not make a reference to the features of having a blended polymeric material in the form of a thermoplastic melt comprising a destructurized starch and at least one essentially water-insoluble synthetic thermoplastic polymer (essential features (i), (ii) and (iii)), and therefore they do not need to be considered further.
The citations in group 2 refer to particular forms of destructurized or gelatinized starch. There is no mention of the feature of mixing this starch with at least one essentially water-insoluble synthetic thermoplastic polymer (essential feature (iii)), and therefore they do not need to be considered further.
The citations in group 3 refer to the preparation of polymers using starch or copolymers of starch, combined with plasticizers. They do not disclose the feature of mixing a destructurized starch, as defined above, with at least one essentially water-insoluble synthetic thermoplastic polymer (essential features (ii) and (iii)), and therefore they do not need to be considered further.
The citations in group 4 refer to the combination of starch and various proteins with water soluble polymers. They do not disclose the feature of mixing a destructurized starch with at least one essentially water-insoluble synthetic thermoplastic polymer (essential feature (iii)), and therefore they do not need to be considered further.
The citations in group 5 refer to the mixing of starch with a synthetic polymer of polyethylene co-acrylic acid, polyethylene or polyvinylchloride and thus are more relevant citations. I will discuss each of these citations in detail.
Publication Dates
The publication dates for each of the citations in group 5 are:
. Otey (1985), 6 November 1985
. Kohn (1977), before 3 February 1988
. US,A,4337181, before 3 February 1988
. US,A,4133784, 19 February 1979
. Otey et al. (1987), 26 August 1987
. Otey and Westhoff (1984), during June 1984
. Otey et al. (1980), before 3 February 1988.
Therefore all of the citations in group 5 were available to the public before the earliest priority date of the application.
The further citation filed as exhibit KJMcN1 in the evidence in reply was published after the priority date of the application and therefore I will not further consider it.
Disclosures of the Group 5 Citations
Exhibit KM-8 refers to the blending of a gelatinized starch with a synthetic polymer, specifically poly(ethylene co-acrylic acid). Ms Clarkson submitted that this citation does not refer to destructurized starch as defined in the present invention as there is no mention in preparing the starch of controlling temperature and pressure or the water content of the starch.
In paragraph 13 of the first McNaught declaration there is acknowledgment that the citation teaches the use of pregelatinized starches in starch/synthetic polymer blends. However, it has not been established that the citation clearly discloses a starch that meets the definition of a destructurized starch. Consequently, it has not been established that this citation prior publishes the claimed invention.
Exhibit KM-10 refers to combining starch with a plastic either as an integral part of the polymer, or using the starch as a filler or extender in a standard plastic formulation. Ms Clarkson submitted that the citation did not provide a process for the production of a destructurized starch, nor was there a discussion of the water content of the starch used in plastic formulation.
In paragraph 16 of the first McNaught declaration it is noted that the starch in the citation was used as an extender, and it is then concluded that as the product was near-transparent, the starch had to have "undergone partial or total melting or the resultant product would be quite opaque".
It has not been established that the citation clearly discloses a starch that meets the definition of a destructurized starch. Consequently, it has not been established that this citation prior publishes the claimed invention.
Exhibit KM-12 discloses biodegradable film compositions prepared from starch and ethylene acrylic acid copolymers. At column 2 lines 55 to 61 of the article it states that
"it is preferred that the starch materials be gelatinized. Gelatinization is effected by any known procedure such as heating in the presence of water or an aqueous solution at temperatures of above about 60o C. until the starch granules are sufficiently swollen and disrupted that they form a smooth viscous dispersion in the water."
Ms Clarkson observed that the citation disclosed gelatinization of starch rather than destructurization, alluding to the declaration by Mr Dombrowski in which he concluded from experiments that the starch produced according to the process of example 12 of the citation contained totally intact starch granules and thus confirmed that it was gelatinized and not destructurized.
In paragraph 20 of the first McNaught declaration it is noted that this citation "patented the combination of starch/polymer blends ... using a wide range of ratios." He did not suggest the starch used in the citation was other than gelatinized starch.
Although the process of this citation involves extruding the starch or starch/polymer blend at temperatures of between 50o-100o C and example 12 discloses starch extrusion at a temperature of 115o C with a water content of 17%, these conditions are outside those preferred for the production of destructurized starch according to the invention, i.e. a temperature of 130o-190o. Consequently I consider that it is not clear that the citation involves the use of destructurized starch, and thus it has not been established that the citation prior publishes the invention.
Exhibit KM-11 discloses formulations containing up to about 60% gelatinized starch and various levels of ethylene acrylic acid copolymer, and optionally polyethylene, which can be used to produce films. These formulations also contain a neutralising agent to neutralise the acidic part of the ethylene acrylic acid copolymer and the films are blown at a moisture content in the range of about 2-10%. The starches in this citation were partially or completely gelatinized.
Ms Clarkson stated that even though this citation disclosed extrusion temperatures to a maximum of 145o C the citation continues to mention that the starch is gelatinized and makes no mention of melting of the starch. Ms Clarkson also observed that the films produced by the citation required the addition of ammonia, noting that in example 12 of the citation that when ammonia was omitted "a clear, uniform film could not be obtained." (column 8 lines 32 to 33).
In paragraph 19 of the first McNaught declaration it is declared that this citation discloses the combination of a gelatinized starch and ethylene acrylic acid copolymer (EAA). McNaught then states that the "term gelatinized and destructurized are synonymous in this patent since it describes the use of starch and blends of EAA to produce a matrix under conditions of reduced water content."
However, destructurized starch is not simply the product of heating starch under conditions of reduced water content - the temperature must be sufficient to destructurize the starch. The citation makes no mention of the melting of starch granules and in examples 1 to 5 of the citation the extrusion is completed at a temperature of 120o-130o C which is outside the temperature range preferred in the opposed specification. In examples 6 to 10 although extrusion was completed at temperatures in the range of 125o-145o C there again was no mention of melting of the starch granules.
Also it is apparent from the citation that it is essential that ammonia is added to the films to neutralise the EAA. This step is not part of the invention in the present application.
Therefore I do not consider that it has been demonstrated that the citation discloses a destructurized starch, and thus it does not prior publish the invention as claimed.
Exhibits KM-21, KM-24 and KM-28 all refer to the addition of either urea (KM-21), strong alkali (KM-24) or ammonia (KM-28) to starch/polymer formulations to facilitate preparation and to improve the quality of starch-based films. Ms Clarkson stated that each of these citations are similar to exhibit KM-11 in that they refer to the addition of ammonia type compounds to the starch/polymer formulation but still refer to gelatinization of the starch instead of destructurization.
In paragraph 25 of the first McNaught declaration it is declared that exhibit KM-21 discloses the advantage of low moisture levels in starch/polymer blends. In paragraph 31 it is declared that exhibit KM-24 teaches the use of plasticizers to modify the properties of the moulded products of starch/polymer blends. In paragraph 35 it is declared that exhibit KM-28 discloses the concept of forming a starch/synthetic polymer melt using high temperatures.
These citations indicate that the starch undergoes gelatinization and also disclose the necessity of adding either urea, a strong alkali or ammonia to facilitate the preparation of a suitable film. However, there is no clear disclosure of destructurized starch, or conditions that would inevitably produce destructurized starch. Therefore it has not been established that these citations prior publish the invention of the present application.
Therefore I consider that the invention defined in the specification is not prior published by the citations listed in the evidence.
(d) Obviousness
The approach to considering obviousness under the Patents Act 1952 was set out in Minnesota Mining and Manufacturing Co. v Beiersdorf (Aust.) Ltd (1980) 144 CLR 253, and summed up by Aickin J in The Wellcome Foundation Limited v V R Laboratories (Aust.) Pty Ltd (1981) 148 CLR 262 at pages 270 and 286 in the following terms:
"It is as well to bear in mind that the question of obviousness involves asking the question whether the invention would have been obviousness to a non-inventive worker in the field, equipped with the common general knowledge in that particular field as at the priority date, without regard to documents in existence but not part of such common general knowledge ... The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
The citations to be considered in respect of obviousness are those listed in group 5 above.
The first issue to be determined is the problem to be solved. At page 2 of the specification it states that "in humid air destructurized starch takes up water from the air thereby increasing its own moisture content. ... a shaped article made from such destructurized starch loses its stability very quickly, which is an important disadvantage for many applications". Therefore the problem is to provide a destructurized starch containing material which has improved stability in moist air. This problem lies in the art of starch technology.
The next issue is to determine what would have been common general knowledge in the field of starch technology, as distinct from what was public knowledge. In so doing a convenient definition of common general knowledge was given by Aickin J in Minnesota Mining and Manufacturing Co. v Beiersdorf (Aust.) Ltd, supra, at page 292:
"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 in 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."
To determine common general knowledge I must rely on the evidence of those skilled in the art. There was disagreement as to whether the following matters were common general knowledge:
Destructurized starch
In the first McNaught declaration at paragraph 10 it is declared that notwithstanding that exhibits KM-3, KM-4, KM-6 and KM-7 do not use the term destructurized starch, "it is quite clear to me that all of these references disclose or teach the formation of "destructurized starch"." Thus in paragraph 11 it is concluded that:
""destructurized starch" refers to a material that is so well known in the art that it must be regarded as falling within the ambit of the common general knowledge. The formation of "destructurized starch" with a water content of between 1.5 and 50% is likewise well known."
Warner did not agree. In both the Greenwood and Matheson declarations it was declared that the term "destructurized starch" was not known to them, although on reading the specification and exhibit KM-2 the term was clear to both of them.
As it has not been established by Goodman that the citations presented as exhibits in the McNaught declaration are part of the common general knowledge in the art in Australia I must conclude that it has not been established that "destructurized starch" as defined in the specification was part of the common general knowledge in the art in Australia.
That a water containing starch could be combined with a hydrophobic polymer
At page 2 of the specification it states that because thermoplastic materials must be normally processed in the absence of water, and starch does not melt in the absence of water, but decomposes at elevated temperatures it was assumed that starch could not be used as a thermoplastic component together with hydrophobic water-insoluble polymeric materials.
Throughout the first McNaught declaration it is contended that on reading the accompanying exhibits it was obvious to him that combinations of a starch and polymer were well known before the priority date of the present application. This is particularly seen in his paragraphs 13 to 15.
The Greenwood declaration states at paragraph 4 that:
"I would not have expected that a hydrophobic synthetic polymer could be combined with a water containing starch as both components are naturally uncompatible (sic). I was surprized (sic) to learn from the specification that the combination would lead to a product having improved properties."
This was supported by paragraph 8 of the Matheson declaration.
As stated previously it has not been established by Goodman that the citations presented as exhibits in the McNaught declaration are part of the common general knowledge in the art in Australia. Therefore I must conclude that it has not been established that it was common general knowledge in the art in Australia that a starch could be combined in such a manner as disclosed in the specification.
The next step is to consider whether the invention as claimed is an obvious solution to the problem, in the light of the common general knowledge. Given that it has not been established that the critical information was part of the common general knowledge, there is no basis for finding that the invention was obvious.
I therefore consider that it has not been established that the invention, as defined by any claim, is obvious.
CONCLUSION
I find that the opponent has not succeeded on any of the grounds relied upon and, subject to any appeal being filed, I direct that the application proceed to sealing.
COSTS
The power of the Commissioner to award costs is based on section 210 and regulation 22.8. The power to award costs is discretionary, so I must take into account all relevant considerations (see American National Can Company v W R Grace & Co.-Conn (1994) AIPC 91-063).
I note that although the opponent has been unsuccessful in its opposition, the applicant did amend the specification during the opposition process. This could be considered a basis for reducing any costs awarded against the opponent. I do not consider this would be appropriate because: i) the opponent did not appear at the hearing or make written submissions as to why costs should not simply follow the event; ii) the hearing proceeded on the basis of all matters disclosed in the statement of grounds and particulars as filed; and iii) on the face of it, the amendment only seems to have addressed some section 40 issues and not the substantial issues on which the opponent was unsuccessful.
Ms Clarkson submitted at the hearing that as the opponent informed the applicant that it would not be attending the hearing at 5.00pm on 29 June 1995, actual costs should be awarded to the applicant.
The schedule of costs can be varied if an appropriate case is made out. In matters before the Commissioner it is not uncommon for appearances not to be advised until just before the hearing. While this is an inconvenient practice, I do not consider that it justifies varying the schedule of costs.
I award costs in accordance with Schedule 8 against the opponent, Goodman Fielder Mills Limited.
S D Barker
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Shelston Waters, Sydney
Patent attorneys for the opponent : F B Rice & Co, Sydney
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