Williams Advanced Materials, Inc v Target Technology Co., LLC - [2008] APO 25

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 765849 in the name of TARGET TECHNOLOGY CO., LLC.

Title: Metal alloys for the reflective or the semi-reflective layer of an optical storage medium.

Action: Opposition under Section 59 of the Patents Act by
WILLIAMS ADVANCED MATERIALS, INC.

Decision: Issued 17 September 2008.
Abstract

The application related to reflective or semi-reflective layers used in optical storage media (“OSM”) for reflecting laser light from the information sections of OSM for reading data. The particular examples of OSM to which the invention was applicable were compact discs (“CDs”) and digital versatile discs (“DVDs”) of read-only, recordable and re-writable type. The reflective layers were generally made of silver-based alloys. The invention pertained to OSM with reflective layers having particular alloys.
The opposition succeeded on the ground of lack of novelty. Claims 43, 44, 45, 54, 56 and 81 of the application were found not novel in the light of a Japanese patent specification.
The applicant was allowed sixty (60) days from the date of this decision to propose suitable amendments to overcome the above findings.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent application 765849 by TARGET TECHNOLOGY CO., LLC, and opposition thereto, under Section 59, by WILLIAMS ADVANCED MATERIALS, INC.

BACKGROUND

Target Technology Co., LLC (“Target”) filed patent application 765849 on 2 May 2001. The application claims priority from two US patent applications, the earliest of these being filed in the US on 21 July 2000. The Patent Office advertised acceptance of patent application 765849 on 2 October 2003.
Williams Advanced Materials, Inc (“Williams”) filed a notice of opposition to the grant of a patent on application 765849 on 23 December 2003. Williams subsequently filed a statement of grounds and particulars in support of the opposition on 23 March 2004.
Target and Williams completed the stages of evidence-in-support, evidence-in-answer and evidence-in-reply on 20 June 2006. During these evidentiary stages Target also requested leave to amend the specification of patent application 765849. The Patent Office advertised allowance of the amendment on 23 February 2006 and the specification was re-published in its amended form on that date.
On 21 May 2007 Williams made an application to serve further evidence on Target under Patent Regulation 5.10(4). Two statutory declarations accompanied that application. The application to serve further evidence was granted on 25 June 2007 and Target was given an initial period of three months to serve evidence in response. Target subsequently requested a few extensions of time which were granted. Target served its evidence in response on 20 February 2008.
On 16 June 2008 Williams filed a further statutory declaration. The admissibility of this evidence was dealt with at the hearing.
The hearing was held in Sydney on 18 June 2008. Dr Linda Govenlock, assisted by Ms Ruth Clarkson, both patent attorneys of Spruson & Ferguson, represented Target. Ms Angela Bowne of counsel, assisted by Mr Derek Baigent, of Mallesons Stephen Jaques, represented Williams.
THE SPECIFICATION
The specification describes the invention as relating to reflective or semi-reflective layers used in optical storage media. The layers are made of silver-based alloys. Optical storage media (“OSM”) such as compact discs (“CDs”) and digital versatile discs (“DVDs”) consist of several layers, usually at least a substrate and a reflective layer. An information section is usually juxtaposed between the substrate and the reflective layer. The optical disc is read by pointing a laser beam through the substrate and onto the reflective layer with sufficiently small resolution to focus on the data in the information section. The data is recorded in the form of very small pits in information tracks on the disc. The reflective layer serves to reflect the laser light back from the disc to a detector which detects the reflected light for subsequent decoding to discern the information in the information section.
Single DVDs with multiple information sections and multiple reflective layers are mentioned in the background section of the patent specification. Such multiple sections and layers enable increased information density on a DVD. This also requires the reflective layers to be semi-reflective or highly reflective depending on their positioning on the DVD. For such DVDs where reading of data is performed from one side only, there is a base reflective layer that is highly reflective. Any intermediate reflective layer, associated with an intermediate information section, needs to be semi-reflective to enable the laser beam to also transmit through to the base reflective layer and associated base information section. The thickness of the reflective film as well as its composition plays a part in the reflectivity characteristics of the film.
The specification states some desired characteristics of the reflective layers. They should have highly reflective or semi-reflective characteristics according to their intended purpose. They should also have better resistance to corrosion than pure silver and sufficient thermal conductivity, and be cost-effective. The alleged invention aims to provide alloys that address these needs.
The alleged invention is claimed in 81 claims. Claims 1, 15, 29, 43, 57, 70, 80 and 81 are independent claims. Claim 1 is recited below.
An optical storage medium comprising:
a first layer having a pattern of features in at least one major surface; and
a first semi-reflective coating adjacent the first layer, the first coating including a first metal alloy; wherein the first metal alloy includes silver and zinc; and wherein the relationship between the amounts of silver and zinc is defined by Ag_xZn_y where 0.85 < x < 0.9999 and 0.0001 < y < 0.15.
At page 14 the specification refers to “atomic percent” or “a/o percent”. This is defined as the ratio of atoms of a particular element or group of elements to the total number of atoms identified to be present in a particular alloy. For interpreting the notation in claim 1, the specification provides the example that an alloy that is 15 atomic percent element A and 85 atomic percent element B could be referenced by the formula A_0.15B_0.85.
Claim 15 differs from claim 1 essentially in defining an OSM with an alloy of silver and aluminium in a specific range of proportions. In claim 29 the alloy is of silver, zinc and aluminium in a specific range of proportions. In claim 43 the alloy is of silver and manganese in a specific range of proportions. In claim 57 the alloy is of silver and germanium in a specific range of proportions. In claim 70 the alloy is of silver, copper and manganese in a specific range of proportions. Claims 80 and 81 are omnibus claims.
STATEMENT OF GROUNDS AND PARTICULARS
Williams’ grounds of opposition are that the invention is not a manner of manufacture, is not novel, does not involve an inventive step, is not fully described, and that the claims are not clear and succinct and fairly based on the matter described in the specification. Williams has provided particulars to support each of these grounds of opposition.
EVIDENCE
Williams’ evidence in support consists of statutory declarations by Professor David Young and Ms Kathryn Higgs. At the time of his declaration, Professor Young was a professor at the School of Materials Science and Engineering at the University of NSW. He has provided an analysis of the disclosures of three Japanese patent publications (using certified translations into English) against the alleged invention as claimed. At the time of her declaration, Ms Higgs was a solicitor for Mallesons Stephen Jaques. She has provided evidence from the Patent Office confirming the prior publication of the three Japanese patent publications, amongst others.
Target’s evidence in answer consists of statutory declarations by Associate Professor Trevor Finlayson and Professor Simon Ringer. At the time of his declaration, Associate Professor Finlayson held this position at the School of Physics at Monash University. He has challenged Professor Young’s analysis for its dismissal of the importance of the claimed invention’s application to OSM and for the relevance placed on the Japanese publications. At the time of his declaration, Professor Ringer held this position and directors’ positions at facilities involved in microscopy, microanalysis and nanostructural analysis at the University of Sydney. Professor Ringer’s declaration has largely concurred with Associate Professor Finlayson’s account.
Williams’ evidence in reply consists of a further statutory declaration by Professor Young. He has noted the amendment made by Target during the opposition to introduce the specific feature of semi-reflectivity into some of the claims. Professor Young has asserted that the structure of the OSM as claimed in some claims fails to meet the requirement of semi-reflectivity. In any case Professor Young also states that thinness of the layer determines reflectivity and that this was well known before the priority date of the application. Furthermore he has asserted that the Japanese documents’ descriptions of thin films mean that the documents teach the films to be semi-reflective.
The further evidence served by Williams under Patent Regulation 5.10(4) consists of statutory declarations by Professor Young and Mr Derek Baigent. Professor Young’s declaration has provided an analysis of a further Japanese patent publication against the alleged invention as claimed. Mr Baigent is employed by Mallesons Stephen Jaques. He has conveyed the circumstances, in support of Williams’ application to serve further evidence, which led to the locating of this Japanese publication and its identification as relevant to this opposition.
Target’s evidence in response to Williams’ further evidence consists of a further statutory declaration by Associate Professor Finlayson. He has challenged the relevance of the latest Japanese document relied upon by Williams.
The further evidence filed by Williams on 16 June 2008 was a further statutory declaration by Mr Baigent. This evidence provided the publication date of the further Japanese patent publication mentioned above.
I will come back to the evidence where appropriate in my decision.
DISCUSSION
PRELIMINARY MATTERS
At the start of the hearing I dealt with Williams’ further evidence of 16 June 2008. Dr Govenlock had no objection to this evidence being admitted, subject to an application to serve further evidence being made by Williams. She also indicated that Target did not intend to serve evidence in response. I allowed Williams’ further evidence, noting an application under Regulation 5.10(4) from Williams to serve this evidence as further evidence would need to be forthcoming.
Ms Bowne indicated at the beginning of the hearing that Williams would press only three of the original grounds of opposition. These were lack of full description of the invention, lack of novelty and lack of manner of manufacture.
FULL DESCRIPTION OF THE INVENTION
The person to whom the specification would be addressed (“addressee”) would appear to be someone versed in the area of metal alloys and their use in OSM. Professor Young has extensive experience as an academic in metal alloys. The experience appears to be largely at a theoretical level. Nonetheless the content of his declarations also indicates an understanding of the application of alloys in the field of OSM. Associate Professor Finlayson and Professor Ringer also have extensive experience as academics in metal alloys and their properties. Like Professor Young, while much of their experience is theoretical, the content of their declarations indicate an understanding of the application of alloys to OSM as well. I am satisfied that the declarants from both parties are suitable addressees.
Ms Bowne submitted that Target has not given sufficient disclosure of the invention to enable an addressee of the specification to produce something within the scope of each claim. She relied on Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2004) 217 CLR 274 at [60]. This passage states it is enough that there is disclosure to enable the addressee to produce something within each claim without new inventions or additions or prolonged study of matters presenting additional difficulty. Ms Bowne submitted Target’s specification failed in two ways to meet this criterion.
Firstly the claims of the specification define alloys where the proportions of the elements making up the alloys vary across relatively wide ranges with the stipulated figures defining the ranges being arbitrary (Williams Advanced Materials Inc v Target Technology Co LLC, (2004) 63 IPR 645 at [48]). For instance, for claim 1, the amount of silver could vary between 85% and 99.99% and correspondingly the amount of zinc could vary between 0.01% and 15%. She submitted that the descriptive part of the specification, on the other hand, presented a handful of examples with narrower ranges of variance to achieve the objectives of the invention and that by Professor Young’s evidence, significant experimentation or testing would be required to determine the suitability of alloys across all the claimed ranges to achieve these objectives.
Dr Govenlock relied on a similar statement to the Lockwood (supra) statement above in Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd, (2004) 61 IPR 442 at [331]. Specifically that the evidence of Associate Professor Finlayson and Professor Ringer showed that there were no problems to overcome to produce something within each claim without further inventions.
Professor Young’s evidence, first declaration at [32] - [34], states the patent application does not provide information on the choice of the specified range of silver-zinc proportions and what within this range is preferable. He expresses concern that adding zinc up to 15% is too high and would not satisfy the objectives of the patent application. Professor Young expresses the same concerns in respect to the other alloys claimed.
Associate Professor Finlayson in his first declaration at [24] – [28] states the examples in the specification clearly identify what are the preferred amounts and why the claimed amounts have been chosen. Moreover the specification identifies a range of properties that may be achieved by varying the ratios of metals. He considers the claimed ranges of proportions of metals are a reasonable extrapolation from the data provided.
There are four objectives outlined in the specification, at pages 8 and 9. They are appropriate reflectivity in the reflective layer, sufficient thermal conductivity, better resistance to corrosion than pure silver, and cost effectiveness. The specification and the evidence from both parties clearly demonstrate that these objectives do not all align the same way. That is, there is a compromise involved in achieving these objectives collectively. For instance, pure silver has higher reflectivity and thermal conductivity than gold but its corrosion resistance is relatively poor. Further the reflectivity characteristics of the layer need to be suitable for both semi-reflective and highly-reflective use, although it is also mentioned that the thickness of the reflective layer is also significant as to reflectivity. The compromising nature of the environment of the claimed invention suggests that variances in the ratios of metals are to be expected. In respect to silver-zinc proportions it is correct that the examples described do not cover the full range claimed for example in claim 1. The same holds for other claimed alloys. On the other hand the case law, Lockwood (supra) and Gambro (supra), seems not to require this. It is sufficient that the addressee be able to produce something within each claim without new inventions or additions or prolonged study of matters presenting additional difficulty.
Professor Young suggests undue experimentation would be required and that the extremes of the claimed ranges would not satisfy the stated objectives. Table 1 on page 31 of the specification shows several silver-based alloys of varying metal proportions and their corresponding reflectivities for a multi-layer DVD. In that table zinc is up to 13%. The claimed range for zinc is up to 15%. In the same table, compositions of 1.5% and 3.1% manganese in silver based alloys are disclosed, compared with a claimed range of up to 7.5% manganese (Claim 43). Furthermore pages 24 – 28 discuss several embodiments mainly consistent with the broadest claims of the application. In many instances these embodiments are tempered by disclosures of preferred ranges of metals of those alloys. Nonetheless the embodiments are largely consistent with the claims. Furthermore, it is unclear how undue experimentation would be required in this case where alloys are all at least 80% silver and the alloys have small amounts of other elements and where preferred ranges within those bounds are described.
Professor Young makes much of a need to know the most preferred ranges and why these are so preferred. In this respect he appears to have upgraded the objectives outlined in the specification from sufficient reflectivity, sufficient thermal conductivity, etc, to good or even superb characteristics. Professor Young’s evidence seems to be tainted by expectations of having the invention defined by its most preferred options, as distinct from options that also adequately or sufficiently achieve the objectives. The specification as a whole is not aiming for a solution that provides superb qualities in the OSM. While there may be some specific embodiments that may achieve such a high level of quality, the specification also envisages the compromises necessary in this field, in collectively achieving the stated objectives, and presents corresponding variances in the nature of the alloys, particularly around pages 24 – 28. Furthermore, the Kimberly Clark Australia Pty Ltd v Arico Trading International Pty Ltd decision, (2001) 207 CLR 1 at [16] supports the position that the complete specification referred to in S 40(2)(a) of the Patents Act is the whole document inclusive of the claims. That is, the claims may form part of the disclosure of the invention. In any case, I am unable to find anything in the present claims that would indicate unreasonable extrapolation or inconsistency in the claimed ranges of proportions of metals from what is disclosed in the body of the specification. I conclude the specification is not deficient in this respect.
Ms Bowne’s second point was that the invention related to alloys per se. She suggested the specification is deficient because insufficient instructions are given to enable the addressee to make the OSM having the structural or physical characteristics as claimed. For example, for OSM with multiple reflective layers, an invention in respect to the alloys of the second or more reflective layers is not supported as the specification does not instruct properly in this regard. In support, Ms Bowne referred to Williams Advanced Materials (supra) at [108].
From the specification, multiple reflective layers in OSM clearly perform varied functions. The intermediate reflective layers need to be semi-reflective while the last layer needs to be highly reflective. It is also apparent from the specification that the composition of the alloys significantly determines reflectivity characteristics (pages 23–29). Further the same alloys can be used as the reflective or the semi-reflective layer. A reduction in the thickness of the reflective layer can form a semi-reflective layer from the alloys disclosed in the specification for use in DVD dual-layer applications (for example, see page 38, lines 21–26). I find no deficiency in the present specification in respect to describing the making of OSM with multiple reflective layers and the alloys that make up the reflective layers.

I conclude the description is sufficient to enable an addressee to produce something within each claim without undue difficulty.
NOVELTY
The Meyers Taylor Pty Ltd v Vicarr Industries Ltd decision, (1977) 137 CLR 228, provides an appropriate test for novelty. The test is also known as the "reverse infringement test". Aickin J., at page 235, states:
"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."
The Rodi and Wienenberger AG v Henry Showell Ltd decision, (1969) RPC 367, states that infringement occurs where each and every one of the essential features of a claim is taken.
Both parties accepted this was an appropriate test. A practical application of the above decisions suggests a claim lacks novelty if a prior citation discloses all of the essential features of a claim.
The Bristol-Myers Squibb Company v FH Faulding & Co Ltd decision, (2000) 46 IPR 553 at 576, states that what the authorities contemplate is that a prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention.
I will apply these tests to the present case.
Essential Features v Inessential Features of Claims
Much of the discussion at the hearing and in the evidence concerned the essentiality of several features of the claimed invention. Relying on Professor Young’s evidence, Ms Bowne put the position that various features of the OSM claimed are not essential elements because the invention related to alloys per se and not to the structural or physical characteristics of OSM. Furthermore, such characteristics of OSM were well known at the priority date of the application.
Dr Govenlock cited several cases to support the position that all claimed features were to be regarded as essential features of the claims. In Austal Ships Pty Ltd v Stena Rederi Aktiebolag (2005) 66 IPR 420 at [71], Bennett J observed that the essential integers of the claims are those made essential by the patent applicant. In Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254 at [30] the question arose as to whether the feature of the front and rear panels of a plastic garbage bag being joined along three straight sides was an essential element. Stone J concluded:-
“While the shape of the fourth side [of the bag] might accurately be described as the novel feature … claimed, the patentee has chosen by the language of the claims to make the requirement that the front and rear panels be joined along straight sides an essential feature.”
In Rhone-Poulenc Agrochimie SA v UIM Chemical Services Pty Ltd (1986) 6 IPR 394 at 402 and 404 the presence of a surfactant in a fungicidal composition involved no element of inventive step. On the contrary it was accepted practice that fungicides, intended to be applied to plants, would contain a surfactant. Nonetheless, each claim in that case involved three distinct elements or integers, one of which in each case was a surfactant. The claims were held to be limited to compositions that included a surfactant.
In the present case, the claimed structural features of the OSM were well known before the priority date of the present application. Target claims no novelty or inventive step on this aspect. Nonetheless each claim of the present application defines structural features of the OSM. The applicant has clearly confined its claimed monopoly to the use of particular alloy compositions in particular layers of OSM, with the layers themselves having particular structural relationships with each other. In following the above-mentioned case law, I regard the claimed structural characteristics of the OSM as essential features of the claims.
Citations
Williams provided the first three Japanese patent publications, mentioned below, in its evidence in support. The fourth document comes from Williams’ further evidence under Patent Regulation 5.10(4). Williams provided certified translations of the Japanese documents.
JP 02-192046
JP 02-192046 discloses a magneto-optical recording medium where the reflective film is constituted of silver and manganese. For a binary alloy of silver and manganese, the amount of manganese is disclosed by Ag-Mn_x with 2 atomic percent =< x =< 32 atomic percent. This overlaps the range claimed in claims 43, 44 and 54 of the present application.
Reflective film thicknesses as low as 200A (20 nm) in OSM are disclosed in JP 02-192046. Page 10 of the Japanese document further states that when the reflecting film is formed below 300A (30nm), the reflection characteristics deteriorate. This amounts to disclosure of a reflecting film that is a semi-reflective layer.
Dr Govenlock submitted the claimed invention differed from the disclosure of the Japanese document as the latter did not describe a substrate layer having a pattern of features in at least one major surface as claimed. Rather JP 02-192046, on page 4, describes the recording of information directly into a magnetic film.
Ms Bowne referred to the evidence of Target’s Associate Professor Finlayson. At paragraph 29 of his second declaration Associate Professor Finlayson states that in any optical recording medium the patterning on one of the recording layers is integral to the whole device. Ms Bowne appeared to rely on this and similar statements by Associate Professor Finlayson to state that the patterning was understood by skilled addressees in this field to be inherent to all OSM before the priority date of the application. Further that the patterning was therefore inherently disclosed in the Japanese document.
The above statements by Associate Professor Finlayson are mainly in answer to Professor Young’s views that the patterning, amongst other things, is an inessential integer of the claims. Nonetheless it is telling that patterning seems to have been regarded as integral to OSM. In any case, if this were not so, it would seem to render the provision of reflective layers irrelevant within OSM for writing or reading data to or from the OSM.
In magneto-optical recording as described in the Japanese document, an external magnetic field is applied and in that state a laser beam is focused on a magnetic layer. The magnetic layer, locally heated by the laser beam, has a lower coercive force. At this time the external magnetic field, carrying the recording information, writes the information into the magnetic layer. Information may also be written by the pit length and/or interval of the laser. The present application at page 5 describes magneto-optical recording as the use of a laser to change the phase or magnetic state of the recording layer. This is enabled by modulating the laser beam to produce micro-structural changes in the recording layer. Some phase-change or magneto-optical materials in recording layers may be repeatedly transformed between first and second states. These materials are usable for rewritable CDs (“CD-RWs”). Generally, magneto-optical recording on OSM involves the use of a laser focused on a magnetic layer in a disc to heat the layer to reduce its coercivity. This enables the magnetisation of the layer to be altered by applying a magnetic field from a magnet. When the magnetic layer cools, its coercivity rises back to a level such that the magnetic data, recorded in the layer, cannot be compromised. Magneto-optical systems have generally used polarised light to read data from the recording layer. The light polarisation of the reflected beam will change slightly if it is reflected from a magnetised surface. The magnetised areas, also known as pits, cannot be seen in regular light but only in polarised light. The change in direction of magnetisation could be associated with binary 0s and 1s, making the technique useful for binary storage. While it could be suggested that the magnetised areas do not constitute a visible pattern of features, there is nothing in the present claims to exclude a pattern of features invisible to the naked eye from the scope of the claims. Also, in the field of OSM, miniaturisation is the essence of high density data storage. In this case, I regard the magnetised areas as forming a pattern of features in the recording layer. I am satisfied a pattern of features in at least one major surface, as claimed in the present application, is inherently disclosed in JP 02-192046.
I have earlier found the silver and manganese percentages disclosed in JP 02-192046 overlapped the range claimed in claims 43, 44 and 54 of the present application. The structural characteristics of the OSM of these three claims are also disclosed in the Japanese document. I conclude claims 43, 44 and 54 are not novel. The remainder of the claims appended, directly or indirectly, to claim 43 define further structural features of OSM and/or further selections of elements making up the recording or reflective layers of the OSM. JP 02-192046 describes the simpler single recording layer and single reflective layer types of OSM. I conclude claims 45 and 56 are also not novel over the Japanese document, the latter claim insofar as it relates to tin.
Ms Bowne submitted that claim 81 should not be allowed. Claim 81 is an omnibus claim defining an OSM substantially as described with reference to the drawings in the specification. The drawings illustrate layered structures of various types of OSM together with the pathways of incident and reflected laser light through the media. Ms Bowne’s point was that the drawings do not and cannot show the alloys used in the reflective layer(s) and consequently the drawings omit the essential features of the described invention.
Claim 81 by definition is limited to the essential integers of the invention described in the body of the specification as limited by the drawings. That is, an OSM having at least an information section and a reflective layer, the layer in turn having the broadly defined allegedly inventive alloys as disclosed in the descriptive part of the specification. The drawings do not show alloys and consequently place no further limitation on the scope of the alloys of claim 81. To the extent that claim 81 claims the OSM of claim 43, the scope of claim 81 encompasses the prior art. Consequently claim 81 is also not novel over JP 02-192046. A similar conclusion was reached in Williams Advanced Materials (supra) at [60].
JP 10-011799
JP 10-011799 is concerned with an optical recording medium having a silver-based reflective layer of specific average crystal particle size. At paragraph [0021] it is stated that the crystal particle size for the silver reflective layer can be controlled by setting the amount of addition of impurities in the silver.
Dr Govenlock suggested that an addition of impurities does not amount to the deliberate creation of alloys as in the present case. On the other hand, whether they are impurities or not, the express direction in the Japanese document is to add other metals to the silver.
At paragraph [0022] of the document, there is a statement of several metals that could be added in the silver layer. One of those is zinc and an amount of 0.1 to 5 atomic percent is ideal. This is within the range claimed in claims 1 and 2 of the present application.
Dr Govenlock submitted there is no disclosure of a semi-reflective layer in the Japanese document as required by claim 1 of the present application. She referred to paragraph [20] where the thickness of the reflective layer is described as greater than 70 and less than 150 nm. Dr Govenlock indicated this meant the layer was highly reflective rather than semi-reflective.
The current application has 15 examples describing the alloy compositions of the reflective layers. Many of the examples also discuss the thicknesses of the reflective layers. The thicknesses vary depending on their application. Across the examples it seems that generally if the thickness of the reflective layer is greater than about 50nm then it is regarded as a highly reflective layer. If the thickness is less than about 25nm, more commonly 8 -12nm, then the reflective layer is regarded as semi-reflective.
Ms Bowne referred to Professor Young’s evidence. In his evidence in reply, Professor Young discusses that the use of metal films as both reflective and semi-reflective layers has long been known. Further, at paragraph 7, that it was long known that the same metal can be used to construct either reflective films or semi-reflective films simply by controlling the film thickness. Professor Young acknowledges at paragraph 8 that the use of semi-reflective layers in OSM is more recent but was known before the priority date of the present application. He also refers, at paragraph 24, to examples in the present application where it is stated that the same alloy can be used as a highly reflective or semi-reflective layer depending on the layer’s thickness.
The reflectivity of the reflective layer is influenced significantly by the alloy composition. Aside from this influence, the thickness of the reflective layer is also determinative. It seems to be that reflective layers over 50nm are regarded as highly reflective, and not semi-reflective. There is no disclosure in the Japanese document of a reflective layer less than 50nm. It may be that it was known that the same metals could be used for forming both highly-reflective and semi-reflective layers. On the other hand, the law is replete with cases for lack of novelty where the requirement is that the alleged anticipation must sufficiently disclose all features of the claimed invention in clear and unmistakable terms. See for example Flour Oxidizing Co Ltd v Carr & Co Ltd, (1908) 25 RPC 428, and Nicaro Holdings Pty Ltd v Martin Engineering Co, (1990) 16 IPR 545 at 549. In the absence of any further disclosure in the Japanese document of the reflective layer being semi-reflective, by nature of alloy composition or otherwise, it seems it cannot be fairly said that the reflective layer disclosed therein is a semi-reflective one.
Dr Govenlock further submitted there is no pattern of features in at least one major surface as claimed in the present application. She referred to paragraph [3] of the Japanese document to indicate that recordable compact discs (CD-Rs) differ from read-only CDs by the provision of a recording layer instead of the pits on the substrate surface.
Ms Bowne submitted a pattern of features in a major surface is disclosed. Paragraph [2] describes the features of Figure 1 where an optical recording medium is shown. The medium is comprised of and illustrated with pits.
In any case paragraphs [2] and [3] state the information on both a CD-R and a read-only CD is in the form of pits. In the former case, a recording layer is irradiated by a laser to undergo a physical or chemical change to record information in the form of pits. In the latter case, the pits are present in the substrate surface. Clearly the pits form a pattern. I find the patterning of features in at least one major surface is adequately disclosed in the Japanese document.
JP 10-011799 discloses substantial portions of the claimed invention. On account of the absence of a clear disclosure therein of a semi-reflective layer in the OSM, I conclude the present claims are novel over this Japanese document.
JP 09-212915
JP 09-212915 discloses an optical recording medium having a light-absorbing layer, a thin metal layer, a silver reflecting layer and a protective layer. Much of the disclosure of this document is concerned with the constitution of the thin metal layer rather than the silver reflective layer. The thin metal layer is comprised of Ti, V, Cr, Cu, Zn or W (paragraph [0007]). Cadmium and manganese are also mentioned, though not as preferred as the above elements (paragraph [0022]).
It is also stated that the thin metal layer, because it is extremely thin and lacking a clear layer structure, may be a mixed layer with part of the silver reflective surface (paragraph [0027]). Ms Bowne relied on Professor Young’s evidence at [63] of his evidence in support to submit that this taught that the metal layer and silver reflective surface may be combined and made up of a mixture or alloy of the range of metals specified above. Dr Govenlock referred to paragraph [0008] of JP 09-212915 to note the layers are successively stacked and therefore the combined layers could not be considered to be an alloy. Professor Ringer at [29] in his evidence in answer states the successive layers in the Japanese document are discrete entities each with a specific function. He refers to paragraphs [0026], [0027] and [0034] of JP 09-212915 wherein the metal layer and the silver reflecting layer are laid down separately. Professor Ringer acknowledges the metal layer may be discontinuous such that it may exist as a mixed layer with part of the silver surface. He further adds though this is not a description of an alloy.
It may be that alloys are a mixture of metals. Further though, alloying is about combining metals to form a substance with unique properties. Mixtures of metals brought about by an extremely thin or discontinuous layer associated with another layer do not, of themselves, amount to an alloy. I conclude the silver-based reflective layer and metal layer of JP 09-212915 do not constitute an alloy.
The proportions of the elements that constitute the alloys in the OSM in the present application are a feature of all the claims. On the other hand, JP 09-212915 is silent on the proportions of elements to constitute the thin metal and silver reflecting layers. Ms Bowne suggested the relevant disclosure is at paragraph [0021] of the Japanese document. There it is stated that the introduction of the metal layer is of a quantity effective in preventing a decline in light reflectivity. Ms Bowne indicated that Professor Young’s evidence demonstrates that he was able to deduce the proportions of metals (for example paragraph [64] of Professor Young’s evidence in support). Professor Young noted paragraph [0023] of JP 09-212915 defines sufficient light reflectivity as at least 90% of that of pure silver prior to any endurance test. From the tables in the current patent application, amongst other sources, he deduces that reflectivity at this level corresponds to additives of about 5 atomic percent. Ms Bowne suggested the claimed proportions are inherently disclosed in the Japanese document.
Dr Govenlock relied on several decisions to state the above disclosure was insufficient to challenge the novelty of the claims. The cited decisions were Bristol-Myers (supra) at [67], Flour Oxidizing Co Ltd (supra) and Nicaro Holdings (supra). From these decisions, the alleged anticipation must sufficiently disclose all features of the claimed invention in clear and unmistakable terms. Dr Govenlock indicated the addition of metals of a quantity effective in preventing a decline in light reflectivity is insufficient disclosure to anticipate the claims of the present application.
JP 09-212915 contains nothing about quantities of metals relative to each other. It may be that certain deductions could have been made by a skilled addressee. Even so, it seems to be quite a stretch to suggest that an indication in the Japanese document about what is meant by sufficient light reflectivity would lead to particular elements out of the options given at paragraph [0022] being inherently selected and put together with silver in the proportions as claimed in the present application.
I conclude the claimed invention is novel over JP 09-212915.
JP 07-320324
JP 07-320324 (1995) discloses a magneto-optical recording medium with a semi-reflective thin film layer composed of one or more elements selected from gold, silver or copper. It is suggested that manganese is one of many elements that may be added. There is nothing in this document about proportions of metals to make up an alloy.

Ms Bowne challenged the novelty of claims 43, 70 and several of their dependent claims based on the addition of manganese at [0021] in the Japanese document. Ms Bowne referred to Professor Young’s evidence to submit the skilled addressee would have deduced the level of manganese from the Japanese document’s stated objectives of reducing alloy thermal conductivity whilst retaining high reflectivity and corrosion resistance. Professor Young (paragraph 9 of his further evidence) states that, from his background knowledge of manganese before the priority date of the present application, the addition of manganese at around 1 atomic percent would be expected to produce a significant change in thermal conductivity, and that the solubility limit of manganese in silver is around 20 atomic percent. Consequently the concentration range for manganese would be between 1 and 20 atomic percent.
The Bristol-Myers (supra), Flour Oxidizing Co Ltd (supra) and Nicaro Holdings (supra) decisions are pertinent again. Professor Young may well have been able to make certain deductions about elements and amounts thereof to use. On the other hand, JP 07-320324 is significantly more open. The semi-reflective layer may be composed of one or more of gold, silver or copper whereas the claimed invention is to purely a silver-based layer. A significant range of further elements are recommended that may be selectively added to reduce thermal conductivity (paragraph [0021] of the Japanese document), one of which may be manganese. There is nothing in JP 07-320324 in clear and unmistakable terms that the elements claimed in the present application would have been inherently selected in the claimed proportions to make up the layers as claimed in the present application. Professor Young’s points seem to apply more to the question of whether there is an inventive step in the claimed invention.
I conclude the claimed invention is novel over JP 07-320324.
INVENTIVE STEP
Williams did not pursue the ground of lack of inventive step at the hearing. For completeness and since some of the argument at the hearing in any case concerned inventive step I will deal with it briefly.
Under section 7(2) of the Patents Act, an invention is taken to have an inventive step unless it would have been obvious to a person skilled in the art in light of the common general knowledge in the patent area before the priority date of the claims. Under sections 7(2) and 7(3) the common general knowledge may be considered either on its own, or together with prior art information which the skilled person could, before the priority date of the claim, be reasonably expected to have ascertained, understood and regarded as relevant.
The Wellcome Foundation Ltd v VR Laboratories (Aust.) Pty Ltd decision, (1981) 148 CLR 262 at 280, states the question is whether the invention would have been obvious to a hypothetical skilled addressee armed with the common general knowledge at the priority date. Also from that decision at page 286, an appropriate test is whether a person skilled in the relevant field, and 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.
The Aktiebolaget Hassle v Alphapharm Pty Limited High Court decision, (2002) 56 IPR 129 at [50]-[53], appears to approve of the Wellcome (supra) test. In discussing what was meant by a matter of routine the High Court noted and accepted an affinity with the approach in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd, (1970) 87 RPC 157, of whether the person skilled in the art would directly be led as a matter of course to try what was claimed in the expectation that it might well produce a useful alternative. In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [No. 2] (2007) 235 ALR 202, general principles regarded to be of continuing relevance, at [50]-[52], were that “obvious” means “very plain”, a scintilla of invention remains sufficient to support the validity of a patent, there must be some difficulty overcome, some barrier to be crossed, and an invention must be beyond the skill of the calling.
From the above, a crucial test for inventive step in this case is what the person skilled in the art would have done in the light of the common general knowledge at the priority date of the application. Ms Bowne acknowledged that Williams’ evidence was lacking in respect to what was common general knowledge at the time. Consequently I cannot conclude there is a lack of inventive step in the light of any available common general knowledge alone.
The absence of evidence of common general knowledge also affects the use of the earlier Japanese documents in assessing inventive step. For instance, JP 10-011799 differs from the invention claimed in claim 1 by the latter claiming the reflective layer to be semi-reflective.
As mentioned previously, Professor Young has stated that the use of metal films as both reflective and semi-reflective layers has long been known but that the use of the latter in OSM was more recent. From this evidence it appears difficult to suggest that semi-reflective layers in OSM were common general knowledge before the priority date of the present application. Professor Young has not gone so far as to say that was common general knowledge.
I have insufficient evidence before me to indicate the progression from the reflective layer disclosed in JP 10-011799 to the semi-reflective layer of claim 1 of the present application was common general knowledge or a matter of routine in the field or otherwise non-inventive at the priority date of the application. Similarly in respect to Professor Young’s deductions discussed earlier, there is insufficient evidence to indicate those deductions were common general knowledge or would have been made as a matter of course.
I conclude Williams’s evidence is insufficient to support a finding of lack of inventive step further to the above findings on lack of novelty.
MANNER OF MANUFACTURE
Ms Bowne submitted that the mere use of known elements for their known properties in an existing OSM, and where the choice of alloy composition is within an arbitrary range, cannot be patentable.
Dr Govenlock submitted that at least the claimed alloys were neither known nor an arbitrary selection of amounts of component metals. They have been claimed in precisely defined amounts not known previously and still further provided in OSM that consequently have the advantages stated in the specification over known OSM.
The discussion by Ms Bowne appears to align with an argument of lack of inventive step. I have already dealt with this ground.
There is also a threshold requirement that an invention must be apparent on the face of the specification. See the NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd decision, (1995) 32 IPR 449. The present specification as a whole asserts the invention is in the various silver-based alloys to be used in existing types of OSM to achieve the objectives of appropriate reflectivity, better resistance to corrosion, sufficient thermal conductivity and cost-effectiveness. I am satisfied there is an invention apparent on the face of the specification.
I conclude the claimed invention is for a manner of manufacture.
DECISION
The opposition succeeds on the ground of lack of novelty. Claims 43, 44, 45, 54, 56 and 81 are not novel in the light of JP 02-192046.
I allow Target sixty (60) days from the date of this decision to propose suitable amendments to overcome the above findings. If such amendments are not forthcoming within that time then I will refuse the application.
COSTS
The parties principally submitted that costs should follow the event on the usual basis. Williams has been successful on one of its grounds of opposition. That ground is a major ground, being lack of novelty. In this case, it may be viewed that the award of costs should reflect the degree of success by Williams on all of its grounds of opposition and the withdrawal by Williams of some of its grounds of opposition at the hearing. On the other hand, I think a prudent applicant would well have understood the case to defend on seeing the evidence presented by Williams. Target’s evidence itself appeared to indicate that Target well understood the case to answer. I had no indication from Target that it was disadvantaged by the course adopted by Williams in its evidence and at the hearing.
I see no reason to depart from the usual approach that costs follow the event. Williams has been successful in this opposition. I award costs against Target.
M. G. Kraefft
Delegate of the Commissioner of Patents
17 September 2008
Patent attorneys for the applicant : Spruson & Ferguson, Sydney
Lawyers for the opponent : Mallesons Stephen Jaques., Sydney