FEDERAL COURT OF AUSTRALIA
United States Gypsum Company v CSR Building Products Ltd [2017] FCA 595
ORDERS
Applicant | ||
AND: | Respondent | |
DATE OF ORDER: |
THE COURT ORDERS THAT:
2. The decision of the delegate of the Commissioner of Patents made on 4 July 2016 in relation to Australian patent application 2007322350 be reversed.
3. The amendments requested by United States Gypsum Company in relation to the said patent application on 28 November 2014 be allowed.
4. The matter be listed for mention on a date to be fixed.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
MOSHINSKY J:
Introduction
1 On 9 October 2007, the applicant (USG) filed International Patent Application PCT/US2007/021573, which subsequently entered the Australian national phase as Australian patent application 2007322350 (the Patent Application).
2 On 29 May 2008, the Commissioner of Patents (the Commissioner) published the complete specification as filed for the Patent Application (the specification as filed).
3 On 10 May 2010, USG requested examination of the Patent Application, pursuant to s 44 of the Patents Act 1990 (Cth).
4 On 30 January 2012, prior to the Commissioner’s acceptance of the Patent Application, USG filed a request for amendment of the specification under s 104 of the Patents Act (the first requested amendments). This request was made as part of a response to an examination report.
5 On 6 March 2012, the Commissioner issued a notice of acceptance of the Patent Application, indicating that the examiner had incorporated the first requested amendments into the complete specification.
6 On 15 March 2012, the Commissioner published a notice of the acceptance of the Patent Application in the Official Journal, pursuant to s 49(5)(b) of the Patents Act. In these reasons, which concern a second request for amendment (referred to below), the version of the specification as accepted will be referred to as the specification before amendment.
7 The publication of the Commissioner’s acceptance of the Patent Application triggered the commencement of the three month period within which any person could file a notice of opposition to the Patent Application: Patents Act, s 59; Patents Regulations 1991 (Cth), reg 5.3(1).
8 On 15 June 2012, the respondent (CSR) filed a notice of opposition to the grant of the Patent Application (the substantive opposition). Subsequently, in or about September 2016, CSR withdrew the substantive opposition. The substantive opposition was withdrawn before any hearing on the merits of that opposition had taken place.
9 On 28 November 2014, USG filed a request for amendment of the specification as accepted (the second requested amendments).
10 On 16 April 2015, the Commissioner issued a notification of advertisement of amendment to the specification.
11 On 14 May 2015, CSR filed a notice of opposition to the second requested amendments (the procedural opposition).
12 On 17 March 2016, the procedural opposition was heard in Canberra by a delegate of the Commissioner (the delegate).
13 On 4 July 2016, the delegate issued a decision on the procedural opposition (the Decision). The delegate decided that CSR’s opposition succeeded and, consequently, refused the second requested amendments.
14 USG ‘appeals’ to this Court under s 104(7) of the Patents Act against the Decision. Although referred to as an appeal, the proceeding is in the Court’s original jurisdiction. USG contends that the Decision was affected by two key errors of principle:
(a) the delegate failed to consider and apply the limiting words “as a result of the amendment” as they appear in ss 102(1) and 102(2) of the Patents Act; and
(b) the delegate undertook an erroneous search in the specification for a discrete unitary disclosure of each claimed combination of features, rather than considering the specification as a whole and finding disclosure of the relevant features in parts thereof.
15 USG contends that on a proper application of ss 102(1), 102(2)(b) and 40(3) of the Patents Act, and in light of the expert evidence, the delegate ought to have found that no grounds had been made out under those provisions to refuse the amendments sought.
16 For the reasons that follow, I have concluded that the second requested amendments are allowable.
Procedural matters
17 On 8 August 2016, CSR filed a notice stating that it submitted to any order the Court may make in this proceeding, save as to costs. Accordingly, CSR did not take part in the hearing of the appeal.
18 At a case management hearing, I directed USG to write to the Commissioner to ascertain whether, in circumstances where CSR did not propose to appear, the Commissioner wished to appear at the hearing of this matter. By a letter to USG dated 20 September 2016, a copy of which was provided to the Court, the Commissioner stated that she did not wish to appear at the hearing of the matter.
19 In light of the above, the hearing of the appeal proceeded in the absence of a contradictor.
The specification as filed
20 The specification as filed describes the background of the invention as relating to industrial and building products made from gypsum, such as gypsum wallboard. The specification explains that gypsum is a plentiful and generally inexpensive raw material which, through a process of dehydration and rehydration, can be cast, moulded or otherwise formed into various shapes. The base material from which gypsum wallboard and other gypsum products are manufactured is the hemihydrate form of calcium sulphate commonly termed ‘stucco’. The specification indicates that although conventional gypsum-containing products such as gypsum wallboard have many advantages, they are susceptible to dust generation during handling and installation. The specification notes that it would accordingly be desirable to find a way “to produce a low density wallboard in which such dust generation is significantly reduced”.
The specification before amendment
21 On 30 January 2012, USG filed a request for amendment of the specification. These amendments (referred to herein as the first requested amendments) involved deleting pages 3 and 30 to 37 and inserting new pages 3 to 3c and 30 to 36. Following these amendments (which are not in issue in the appeal) there were 22 claims set out in the specification. As noted above, the specification with these amendments was accepted by the Commissioner.
The second requested amendments
22 On 28 November 2014, USG filed a request for amendment of the specification as accepted. The proposed amendments comprised: (a) cancelling claim pages 31 to 36 and substituting new claim pages 31 to 41; and (b) cancelling figure pages 1 to 5 and substituting new figure pages 1 to 5. It is convenient to set out by way of ‘mark-up’ the way in which the substitute claims differ from the accepted claims (with added text underlined and deleted text struck through). The following mark-up is drawn from the Decision. USG accepted on the appeal that it correctly reflected the proposed amendments.
1. A light weight gypsum board comprising:
a set gypsum core disposed between two cover sheets;
the set gypsum core comprising a gypsum crystal matrix having a pore size distribution comprising (i) voids having a pore size less than about 50 microns in diameter, (ii) voids having a pore size from about 50 microns to about 100 microns in diameter, and (iii) voids having a pore size greater than about 100 microns in diameter such that the voids having a pore size greater than about 100 microns in diameter comprise at least about 20% of the total void volume of the set gypsum core, wherein the voids are measured using scanning electron photomicrograph imaging;
the gypsum crystal matrix is formed such that the set gypsum core has an average core hardness of at least about 11 pounds (about 5 kg) as determined in accordance with ASTM C-473; and
the board having a density of about 35 33 pcf (about 560 530 kg/m3) or less.
2. A light weight gypsum board comprising:
a set gypsum core disposed between two cover sheets;
the set gypsum core comprising a gypsum crystal matrix having a pore size distribution comprising (i) voids having a pore size less than about 50 microns in diameter, (ii) voids having a pore size from about 50 microns to about 100 microns in diameter, and (iii) voids having a pore size greater than about 100 microns in diameter such that the voids having a pore size greater than about 100 microns in diameter comprise at least about 20% of the total void volume of the set gypsum core, wherein the voids are measured using scanning electron photomicrograph imaging;
the gypsum crystal matrix is formed such that the set gypsum core has an average core hardness of at least about 11 pounds (about 5 kg) as determined in accordance with ASTM C-473; and
the board having a density of about 35 pcf (about 560 kg/m3) or less,
wherein at least one of the following apply:
a) the set gypsum core is formed from a slurry comprising water, stucco, foam, and pregelatinised starch in an amount from about 0.5% to about 10% by weight based on the weight of the stucco;
b) the average air void size is less than about 100 microns in diameter;
c) the majority of air voids have a diameter of about 100 microns or less;
d) the air void size having greatest frequency is a diameter of about 100 microns or less;
e) at least about 75% of the total void area of a scanning electron photomicrograph image at 50X magnification of the set gypsum core in cross-section is formed of air voids having a pore size greater than about 50 microns in diameter;
f) at least about 70% of the total void area of a scanning electron photomicrograph image at 50X magnification of the set gypsum core in cross-section is formed from air voids having a pore size greater than about 100 microns in diameter; and/or
g) the volume ratio of air voids to water voids is from about 1.8 to 1 to about 9 to 1.
4. 3. A light weight gypsum board comprising a set gypsum core disposed between two cover sheets, wherein (a) the set gypsum core comprises air voids and water voids in a volume ratio of air voids to water voids from about 1.8 to 1 to about 9 to 1, (b) the set gypsum core comprises voids having a pore size greater than about 100 microns in diameter such that the voids having a pore size greater than about 100 microns in diameter comprise at least about 20% of the total void volume of the set gypsum core, wherein the voids are measured using scanning electron photomicrograph imaging, and (c) the board has a density from about 24 pcf (about 380 kg/m3) to about 35 pcf (about 560 kg/m3), and a ratio of density (pcf) to average core hardness (lb) of less than about 3.2, wherein the core hardness is determined in accordance with ASTM C473.
6. 4. A light weight gypsum board comprising:
a set gypsum core disposed between two cover sheets;
the set gypsum core comprising a gypsum crystal matrix having a pore size distribution comprising (i) voids having a pore size less than about 50 microns in diameter, (ii) voids having a pore size from about 50 microns to about 100 microns in diameter, and (iii) voids having a pore size greater than about 100 microns in diameter such that the voids having a pore size greater than about 100 microns in diameter comprise at least about 20% of the total void volume of the set gypsum core, wherein the voids are measured using three-dimensional imaging acquired by X-ray CT-scanning analysis (XMT);
the board, when at a thickness of about ½ inch (about 1.3 cm), has a nail pull resistance to average core hardness ratio from about 4 to about 8, each as determined in accordance with ASTM C473; and
the board having a density of about 35 33 pcf (about 560 530 kg/m3).
5. A light weight gypsum board comprising:
a set gypsum core disposed between two cover sheets;
the set gypsum core comprising a gypsum crystal matrix having a pore size distribution comprising (i) voids having a pore size less than about 50 microns in diameter, (ii) voids having a pore size from about 50 microns to about 100 microns in diameter, and (iii) voids having a pore size greater than about 100 microns in diameter such that the voids having a pore size greater than about 100 microns in diameter comprise at least about 20% of the total void volume of the set gypsum core, wherein the voids are measured using three-dimensional imaging acquired by X-ray CT-scanning analysis (XMT);
the board, when at a thickness of about ½ inch (about 1.3 cm), has a nail pull resistance to average core hardness ratio from about 4 to about 8, each as determined in accordance with ASTM C473; and
the board having a density of about 35 pcf (about 560 kg/m3) or less,
wherein at least one of the following apply:
a) the set gypsum core is formed from a slurry comprising water, stucco, foam, and pregelatinised starch in an amount from about 0.5% to about 10% by weight based on the weight of the stucco;
b) the average air void size is less than about 100 microns in diameter;
c) the majority of air voids have a diameter of about 100 microns or less;
d) the air void size having greatest frequency is a diameter of about 100 microns or less; and/or
e) the volume ratio of air voids to water voids is from about 1.8 to 1 to about 9 to 1.
7. 6. A light weight gypsum board comprising:
a set gypsum core disposed between two cover sheets;
the set gypsum core comprising a gypsum crystal matrix having a pore size distribution comprising (i) voids having a pore size less than about 50 microns in diameter, (ii) voids having a pore size from about 50 microns to about 100 microns in diameter, and (iii) voids having a pore size greater than about 100 microns in diameter such that the voids having a pore size greater than about 100 microns in diameter comprise at least about 20% of the total void volume of the set gypsum core, wherein the voids are measured using three-dimensional imaging acquired by X-ray CT-scanning analysis (XMT);
the gypsum crystal matrix is formed such that the set gypsum core has an average core hardness of at least about 11 pounds (about 5 kg) as determined in accordance with ASTM C-473; and
the board having a density of about 35 33 pcf (about 560 530 kg/m3) or less.
7. A light weight gypsum board comprising:
a set gypsum core disposed between two cover sheets;
the set gypsum core comprising a gypsum crystal matrix having a pore size distribution comprising (i) voids having a pore size less than about 50 microns in diameter, (ii) voids having a pore size from about 50 microns to about 100 microns in diameter, and (iii) voids having a pore size greater than about 100 microns in diameter such that the voids having a pore size greater than about 100 microns in diameter comprise at least about 20% of the total void volume of the set gypsum core, wherein the voids are measured using three-dimensional imaging acquired by X-ray CT-scanning analysis (XMT);
the gypsum crystal matrix is formed such that the set gypsum core has an average core hardness of at least about 11 pounds (about 5 kg) as determined in accordance with ASTM C-473; and
the board having a density of about 35 pcf (about 560 kg/m3) or less,
wherein at least one of the following apply:
a) the set gypsum core is formed from a slurry comprising water, stucco, foam, and pregelatinised starch in an amount from about 0.5% to about 10% by weight based on the weight of the stucco;
b) the average air void size is less than about 100 microns in diameter;
c) the majority of air voids have a diameter of about 100 microns or less;
d) the air void size having greatest frequency is a diameter of about 100 microns or less; and/or
e) the volume ratio of air voids to water voids is from about 1.8 to 1 to about 9 to 1.
8. The light weight gypsum board of any one of claims 2, 3, 5 and 7 wherein the board has a density of about 33 pcf (about 530 kg/m3) or less.
9. The light weight gypsum board of any one of claims 1 to 8, wherein the board density is from about 24 pcf (about 380 kg/m3) to about 35 pcf (about 560 kg/m3).
9. The light weight gypsum board of any one of claims 1 to 8 wherein the board has a density of about 32 pcf (about 510 kg/m3) or less.
10. The light weight gypsum board of any one of claims 1 to 9 wherein the board has a density of about 31 pcf (about 500 kg/m3) or less.
11. The light weight gypsum board of any one of claims 1 to 10 wherein the board has a density greater than about 10 pcf (about 160 kg/m3).
12. The light weight gypsum board of any one of claims 1 to 11 wherein the board has a density from about 10 pcf (about 160 kg/m3) to about 30 pcf (about 480 kg/m3).
13. The light weight gypsum board of any one of claims 1, 2 and 4 to 12, wherein the board has a density greater than about 24 pcf (about 380 kg/m3).
2. 14. The light weight gypsum board of claim 1 any one of claims 1 to 13, wherein at least about 75% of the total void area of a scanning electron photomicrograph image at 50X magnification of the set gypsum core in cross-section is formed from air voids having a pore size greater than about 50 microns in diameter.
3. 15. The light weight gypsum board of claim 1 or claim 2 any one of claims 1 to 13, wherein at least about 70% of the total void area of a scanning electron photomicrograph image at 50X magnification of the set gypsum core in cross-section is formed from air voids having a pore size greater than about 100 microns in diameter.
5. 16. The light weight gypsum board of claim 4 any one of claims 1 to 15, wherein the volume ratio of air voids to water voids is from about 2.3 to 1 to about 9 to 1.
17. The light weight gypsum board of any one of claims 1 to 16, wherein the volume ratio of air voids to water voids is from about 2.3 to 1 to about 9 to 1.
8. 18. The light weight gypsum board of any one of claims 1 to 7 17, wherein at least about 50% of the total void volume are voids having a pore size greater than about 50 microns in diameter.
10. 19. The light weight gypsum board of any one of claims 1 to 9 18, wherein the voids having a pore size less than about 50 microns in diameter comprise voids having a pore size of from about 10 microns to about 50 microns.
11. 20. The light weight gypsum board of any one of claims 1 to 10 19, the set gypsum core formed from a slurry comprising water, foam, stucco, naphthalenesulphonate dispersant, and pregelatinised starch.
12. 21. The light weight gypsum board of any one of claims 4, 6 or 9 to 11 1 to 20, the set gypsum core formed from a slurry comprising water, stucco, foam, and: (i) starch present in an amount from about 0.5% to about 10% by weight based on the weight of the stucco, the starch effective to increase the core hardness of the gypsum board relative to the core hardness of the gypsum board without the starch; or (ii) a trimetaphosphate compound chosen from the group consisting of sodium trimetaphosphate, potassium trimetaphosphate, lithium trimetaphosphate, and ammonium trimetaphosphate, the trimetaphosphate compound being present in an amount from about 0.12% to about 0.4% by weight based on the weight of the stucco; or (iii) naphthalenesulphonate dispersant present in an amount from about 0.1% to about 3.0% by weight based on the weight of the stucco; or (iv) any combination of (i) – (iii).
13. 22. The light weight gypsum board of claim 12 21, wherein at least (i) is present and the starch is a pregelatinised starch.
14. 23. The light weight gypsum board of claim 1 or 4 any one of claims 1 to 22, wherein the board, when at a thickness of about ½ inch (about 1.3 cm), has: (i) a dry weight from about 1000 lb/MSF (about 5 kg/SQM) to about 1400 lb/MSF (about 6.8 kg/SQM); or (ii) a nail pull resistance to core hardness ratio from about 4 to about 8, each as determined in accordance with ASTM C473; or (iii) a nail pull resistance of at least 65 lb (29 kg), as determined in accordance with ASTM C473; or (iv) an average flexural strength of at least 36 lb (16 kg) in a machine direction and/or 107 lb (48.5 kg) in a cross-machine direction, as determined in accordance with ASTM C473; or (v) any combination of (i) – (iv).
24. The light weight gypsum board of any one of claims 1 to 23 wherein the average air void size is less than about 100 microns in diameter.
25. The light weight gypsum board of any one of claims 1 to 24 wherein the average air void size is between about 10 microns in diameter to about 100 microns in diameter.
26. The light weight gypsum board of any one of claims 1 to 25 wherein the average air void size is between about 20 microns in diameter and about 100 microns in diameter.
27. The light weight gypsum board of any one of claims 1 to 26 wherein the majority of air voids have a diameter of about 100 microns or less.
28. The light weight gypsum board of any one of claims 1 to 27 wherein the air void size having greatest frequency is a diameter of about 100 microns or less.
29. The light weight gypsum board of any one of claims 1 to 28 wherein the set gypsum core has a total void volume from about 75% to about 95%.
30. The light weight gypsum board of any one of claims 1 to 29 wherein the set gypsum core has a total void volume from about 80% to about 92%.
15. 31. The light weight gypsum board of claim 7 any one of claims 1 to 30, wherein the set gypsum core has a total void volume from about 75% to about 92% of the core volume.
32. The light weight gypsum board of any one of claims 1 to 31 wherein the voids having a pore size greater than about 100 microns in diameter comprise at least about 20% and less than about 40% of the total void volume of the set gypsum core, wherein the voids are measured using scanning electron photomicrograph imaging.
33. The light weight gypsum board of any one of claims 1 to 32 wherein voids having a pore size of more than about 10 microns and voids having a void [sic] size of less than about 5 microns are in a ratio from about 2.3:1 to about 9:1.
34. The light weight gypsum board of any one of claims 1 to 33 wherein about 10% to about 35% of the voids are less than about 5 microns in diameter.
35. The light weight gypsum board of any one of claims 1 to 34 wherein the set gypsum core has about 20% to about 40% of the voids having a pore size in the range of about 10 to about 50 microns.
36. The light weight gypsum board of any one of claims 1 to 35 wherein the set gypsum core has about 30% to about 50% of the voids in the range of about 10 to about 100 microns.
37. The light weight gypsum board of any one of claims 1 to 36 wherein about 70% to about 90% of the pores have a pore size of more than about 10 microns.
38. The light weight gypsum board of any one of claims 1 to 37 wherein not more than about 20% of the voids have a pore size of more than about 100 microns.
16. 39. A method of making a light weight gypsum board, the method comprising:
(A) preparing a gypsum slurry having foam dispersed therein;
(B) disposing the gypsum slurry between a first cover sheet and a second cover sheet to form a panel;
(C) cutting the panel into a board of predetermined dimensions;
(D) drying the board;
such that a set of gypsum core comprising a gypsum crystal matrix is formed between the cover sheets such that:
(1) the set gypsum core has a pore size distribution comprising (a) voids having a pore size less than about 50 microns in diameter, (b) voids having a void size from about 50 microns to about 100 microns in diameter, and (c) voids having a pore size greater than about 100 microns in diameter such that the voids having a pore size greater than about 100 microns in diameter comprise at least about 20% of the total void volume, wherein the voids are measured using scanning electron photomicrograph imaging,
(2) the set gypsum core has an average core hardness of at least about 11 pounds (about 5 kg) as determined in accordance with ASTM C-473, and
(3) the dry board density is about 35 33 pcf (about 560 kg/m3) or less.
40. A method of making a light weight gypsum board, the method comprising:
(A) preparing a gypsum slurry having foam dispersed therein;
(B) disposing the gypsum slurry between a first cover sheet and a second cover sheet to form a panel;
(C) cutting the panel into a board of predetermined dimensions;
(D) drying the board;
such that a set of gypsum core comprising a gypsum crystal matrix is formed between the cover sheets such that:
(1) the set gypsum core has a pore size distribution comprising (a) voids having a pore size less than about 50 microns in diameter, (b) voids having a void size from about 50 microns to about 100 microns in diameter, and (c) voids having a pore size greater than about 100 microns in diameter such that the voids having a pore size greater than about 100 microns in diameter comprise at least about 20% of the total void volume, wherein the voids are measured using scanning electron photomicrograph imaging,
(2) the set gypsum core has an average core hardness of at least about 11 pounds (about 5 kg) as determined in accordance with ASTM C-473, and
(3) the dry board density is about 35 pcf (about 560 kg/m3) or less,
wherein at least one of the following apply:
a) the gypsum slurry comprises water, stucco, foam, and pregelatinised starch in an amount from about 0.5% to about 10% by weight based on the weight of the stucco;
b) the average air void size is less than about 100 microns in diameter;
c) the majority of air voids have a diameter of about 100 microns or less;
d) the air void size having greatest frequency is a diameter of about 100 microns or less;
e) at least about 75% of the total void area of a scanning electron photomicrograph image at 50X magnification of the set gypsum core in cross-section is formed from air voids having a pore size greater than about 50 microns in diameter;
f) at least about 75% of the total void area of a scanning electron photomicrograph image at 50X magnification of the set gypsum core in cross-section is formed from air voids having a pore size greater than about 100 microns in diameter; and/or
g) the volume ratio of air voids to water voids is from about 1.8 to 1 to 9 to 1.
17. 41. The method of claim 16 39 or claim 40, wherein at least about 50% of the total void volume comprises voids having a pore size greater than about 50 microns in diameter.
18. The method of claim 16 or 17, wherein the board density is from about 24 pcf (about 380 kg/m3) to about 35 pcf (about 560 kg/m3).
42. The method any one of claims 39 to 41, wherein the board density is greater than from about [sic] 24 pcf (380 kg/m3).
19. 43. The method of any one of claims 16 to 18 39 to 42, the set gypsum core formed from a slurry comprising water, stucco, foam, and: (i) starch present in an amount from about 0.5% to about 10% by weight based on the weight of the stucco, the starch effective to increase the core hardness of the gypsum board relative to the core hardness of the gypsum board without the starch; or (ii) a trimetaphosphate compound chosen from the group consisting of sodium trimetaphosphate, potassium trimetaphosphate, lithium trimetaphosphate, and ammonium trimetaphosphate, the trimetaphosphate compound being present in an amount from about 0.12% to about 0.4% by weight based on the weight of the stucco; or (iii) naphthalenesulphonate dispersant present in an amount from about 0.1% to about 3.0% by weight based on the weight of the stucco; or (iv) any combination of (i) – (iii).
44. The method of claim 43, wherein wherein [sic] at least (i) is present and the starch is a pregelatinised starch.
21. 45. The method of claim 16 any one of claims 39 to 44, wherein the board, when at a thickness of about ½ inch (about 1.3 cm), has (i) a dry weight from about 1000 lb/MSF (about 5 kg/SQM) to about 1400 lb/MSF (about 6.8 kg/SQM); or (ii) a nail pull resistance to core hardness ratio from about 4 to about 8, each as determined in accordance with ASTM C473; or (iii) a nail pull resistance of at least 65 lb (29 kg), as determined in accordance with ASTM C473; or (iv) an average flexural strength of at least 36 lb (16 kg) in a machine direction and/or 107 lb (48.5 kg) in a cross-machine direction, as determined in accordance with ASTM C473; or (v) any combination of (i) – (iv).
22. 46. A light weight gypsum board according to any one of claims 1 to 15 38 or a method of making a light weight gypsum board according to any one of claims 16 to 21 39 to 45, substantially as hereinbefore described with reference to the examples.
The Decision
23 CSR filed evidence in support of the procedural opposition consisting of declarations by Mr Gregory Neil and Dr Bob Bruce. USG filed evidence in answer consisting of a declaration by Professor Qingxia Liu. CSR did not file any evidence in reply.
24 On 17 March 2016, the procedural opposition was heard by the delegate. On 4 July 2016, the delegate decided that CSR’s opposition succeeded and, consequently, that he would refuse the second requested amendments. The Decision grouped the proposed amendments in accordance with certain ‘features’ that had been identified and relied upon by CSR in its evidence and submissions filed in respect of the procedural opposition. USG’s responsive evidence and submissions also addressed these identified features. The features were outlined in the Decision as follows:
(a) Feature 1 was “the board having a density of about 33 pcf or less” (Decision, [34]). (The specification explains that ‘pcf’ is a measure of board density in terms of pounds per cubic foot.)
(b) Feature 5 was “the board has a density of about 32 pcf or less” and feature 6 was “the board has a density of about 31 pcf or less” (Decision, [65]).
(c) Feature 7 was “the board has a density of greater than about 10 pcf” and feature 8 was “the board has a density of about 10 pcf to about 30 pcf” (Decision, [68]).
(d) Features 2-4 and 9-18 were listed in the Decision at [73] as follows:
feature 2: “the average air void size is less than about 100 microns in diameter”;
feature 3: “the majority of air voids have a diameter of about 100 microns or less”;
feature 4: “the air void size having greatest frequency is a diameter of about 100 microns or less”;
feature 9: “the average air void size is between about 10 microns in diameter and about 100 microns in diameter”;
feature 10: “the average air void size is between about 20 microns in diameter and about 100 microns in diameter”;
feature 11: “the set gypsum core has a total void volume from about 75% to about 95%”;
feature 12: “the set gypsum core has a total void volume from about 80% to about 92%”;
feature 13: “the voids having a pore size greater than about 100 microns in diameter comprise at least about 20% and less than about 40% of the total void volume of the set gypsum core, wherein the voids are measured using scanning electron photomicrograph imaging”;
feature 14: “wherein voids having a pore size of more than about 10 microns and voids having a [pore] size of less than about 5 microns are in a ratio from about 2.3:1 to about 9:1”;
feature 15: “wherein about 10% to about 35% of the voids are less than about 5 microns in diameter”;
feature 16: “wherein the set gypsum core has about 20% to about 40% of the voids having a pore size in the range of about 10 to about 50 microns”;
feature 17: “wherein the set gypsum core has about 30% to about 50% of the voids in the range of about 10 to about 100 microns”; and
feature 18: “wherein about 70% to about 90% of the voids have a pore size of more than about 10 microns”.
The notice of appeal
25 USG appeals under s 104(7) of the Patents Act against the Decision. USG relies on the following two grounds:
1. The delegate ought not to have found, and erred in finding, that as a result of the amendment the specification would claim or disclose matter that extends beyond that disclosed in the specification of the Application as filed.
2. The delegate ought not to have found, and erred in finding, that as a result of the amendment the specification would not comply with s 40(3) of the Act.
26 The appeal was effectively conducted on the basis of the same evidence as was before the delegate. USG relied on an affidavit of Andrew James Scott annexing the evidence below. USG also tendered a letter from IP Australia dated 16 April 2015.
Applicable principles
27 In circumstances where USG requested examination of the Patent Application before 15 April 2013, the legislative amendments to ss 40(3) and 102(1) of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) do not apply to the application to amend the Patent Application: see s 3 and Sch 1, items 9, 29, 55(1) and 55(9) of that Act. Reference will therefore be made to the relevant provisions as they stood immediately before that Act came into operation.
28 At all relevant times, s 104 of the Patents Act has provided:
104 Amendments by applicants and patentees
(1) An applicant for a patent or a patentee, may, subject to this Act, and subject to and in accordance with the regulations, ask the Commissioner for leave to amend the relevant patent request or complete specification, or any other filed document, for any purpose including either or both of the following:
(a) removing a lawful ground of objection to the request or specification, whether that objection is raised in the course of an examination or re-examination or otherwise;
(b) correcting a clerical error or an obvious mistake.
(2) Where an applicant or patentee asks for leave to amend a patent request or complete specification, or any other filed document, the Commissioner must consider and deal with the request in accordance with the regulations.
(4) The Minister or any other person may, subject to and in accordance with the regulations, oppose allowing an amendment.
(5) The Commissioner must not allow an amendment that is not allowable under section 102.
(6) On the allowance of an amendment, the amendment is to be taken to have been made.
(7) An appeal lies to the Federal Court, against a decision of the Commissioner allowing, or refusing to allow, a requested amendment, other than a prescribed decision.
29 An appeal under s 104(7) is not an exercise of appellate jurisdiction; it is an exercise of the original jurisdiction of the Court exercising for the first time the judicial power of the Commonwealth: New England Biolabs Inc v F Hoffman-La Roche AG (2004) 141 FCR 1 at [23], [44] per Kiefel, Allsop and Crennan JJ. The Court approaches the matter for the first time, not in order to decide whether the executive decision-maker was right or wrong, or otherwise to correct error in the executive decision, but to deal with a subject matter, a controversy, for the first time: New England Biolabs at [44]; see also, in the context of s 60(4), Commissioner of Patents v Sherman (2008) 172 FCR 394 at [18] per Heerey, Kenny and Middleton JJ.
30 As applicable to the present case, s 102 of the Patents Act relevantly provided:
102 What amendments are not allowable?
Amendment of complete specification not allowable if amended specification would claim matter not in substance disclosed in the filed specification
(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.
Certain amendments of complete specification are not allowable after relevant time
(2) An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2) or (3).
(Emphasis added.)
31 The parts of the Decision adverse to USG turned on ss 102(1), 102(2)(b) and 40(3).
32 As applicable to the present case, s 40(3) provided:
The claim or claims must be clear and succinct and fairly based on the matter described in the specification.
33 In the discussion that follows, it will be convenient to refer in the present tense to the relevant provisions as they stood prior to the Intellectual Property Laws Amendment (Raising the Bar) Act.
34 The language used by the Patents Act directs attention to the effect of the amendment being considered. Thus, it has been said that the application of s 102(1) involves a two stage process. In RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd (1998) 89 FCR 458, the Full Court of this Court (Burchett, Carr and Goldberg JJ) said at 466:
That subsection requires one first to identify precisely what is the amendment. In this case that is done by identifying the difference between the specification as accepted (and as it stood at the hearing of the motion at first instance) on the one hand and, on the other hand, as the specification would read if amended in the manner sought. Then one reads the specification as a whole (as so amended in the manner sought) to see whether as a result of the amendments sought (which must mean by reason of the amendment sought) the specification would claim matter not in substance disclosed in the specification as filed. The subsection focuses on the amendment proposed and it must be that amendment which has the result of pushing the claimed matter over the line defined by the expression “matter not in substance disclosed in the specification as filed”. The key point to keep in mind is, as counsel for the respondent contended (in our view correctly), that the words “as a result of the amendment” are not to be confused with the expression “after the amendment”.
(Emphasis in original.)
35 In Bristol-Myers Squibb Co v Apotex Pty Ltd (2010) 87 IPR 516 at [38], Yates J reiterated that the analysis undertaken pursuant to s 102(1) must be confined to a consideration of the result of the proposed amendments:
[T]he key point is that the words “as a result of the amendment” in s 102(1) are not to be confused with the expression “after the amendment”. The amendment is identified by considering the specification as it stands with how it would stand after the proposed amendment. It is only by that step that one can determine what matter results from the amendment. Once that is determined, the next step is to read the specification as a whole (that is, amended in the manner proposed) and to compare it with what is “in substance disclosed” in the specification as filed. If by reason of the amendment proposed, and for no other reason, the specification would then claim matter not in substance disclosed in the specification as filed, the amendment would not be allowable.
36 The phrase “if, as a result of amendment” has the same meaning when used in s 102(2). In this respect, it has been observed in Bodkin C, Patent Law in Australia (2nd ed, Thomson Reuters, 2014) at [13230] that:
The expression “as a result of the amendment” has the same meaning in the context of s 102(2) as it does in the context of s 102(1) (see [13220]); that is, in s 102(2)(b) the appropriate question is whether any failure to comply with s 40(2) or (3) would arise because of an amendment that is proposed, and did not exist before.
(Footnote omitted.)
37 It has been held that the requirement of “in substance disclosed” in s 102(1) is at least very similar to, and has a close relationship with, the test for fair basis: see Bristol-Myers Squibb Co v Apotex Pty Ltd at [39]; Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (2000) 49 IPR 321 at [18] per Burchett, Heerey and Lehane JJ; ICI Chemicals & Polymers Ltd v Lubrizol Corporation Inc (2000) 106 FCR 214 at [118] per Lee, Heerey and Lehane JJ. Indeed, the Full Court of this Court has expressed the view that it will “be a rare case indeed where a claim which claims matter in substance disclosed in the specification as filed is not, equally, fairly based on the matter described in the specification (and vice versa)”: ICI Chemicals & Polymers Ltd v Lubrizol Corporation Inc at [118].
38 It is “a well settled approach that the requirements of s 102 should generally be given a liberal construction”: Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (1999) 48 IPR 625 at [25] per Tamberlin J. The phrase “not in substance disclosed” should be interpreted in “a broad common sense way”: Ethyl Corporation’s Patent [1972] RPC 169, applied in Gambro at [25]. It has also been said that a liberal approach should be adopted “so as to permit any fair amendment which had previously been disclosed”: Gambro at [25], citing Ethyl Corporation’s Patent.
39 It has been held that the disclosure in an unamended specification of an optional feature of the claimed invention is sufficient for that feature to have been in substance disclosed within the meaning of s 102(1): see RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd at 468 per Burchett, Carr and Goldberg JJ.
40 This is consistent with the principle expressed by Fullagar J in Société des Usines Chimiques Rhône-Poulenc v Commissioner of Patents (1958) 100 CLR 5 at 11, that fair basis “cannot be limited to cases where the subject matter of the later application has been made the subject of a specific claim in the earlier application”.
41 In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2004) 217 CLR 274, Gleeson CJ, McHugh, Gummow, Hayne and Heydon JJ, relying on the judgment of Fullagar J in Société des Usines Chimiques Rhône-Poulenc v Commissioner of Patents, stated:
68 … The comparison which s 40(3) calls for is not analogous to that between a claim and an alleged anticipation or infringement. It is wrong to employ “an over meticulous verbal analysis”. It is wrong to seek to isolate in the body of the specification “essential integers” or “essential features” of an alleged invention and to ask whether they correspond with the essential integers of the claim in question.
69 … Section 40(3) requires, in Fullagar J’s words, “a real and reasonably clear disclosure”. But those words, when used in connection with s 40(3), do not limit disclosures to preferred embodiments.
“The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification.”
Fullagar J’s phrase serves the function of compelling attention to the construction of the specification as a whole, putting aside particular parts which, although in isolation they might appear to point against the “real” disclosure, are in truth only loose or stray remarks.
(Footnotes omitted.)
42 In Lockwood v Doric, the High Court (at [57]) approved the following observations of Barwick CJ in Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236 (at 240):
The question whether the claim is fairly based is not to be resolved … by considering whether a monopoly in the product would be an undue reward for the disclosure. Rather, the question is a narrow one, namely whether the claim to the product being new, useful, and inventive, that is to say, the claim as expressed, travels beyond the matter disclosed in the specification.
43 In applying s 102(1) with principles concerning fair basis in mind, it has been held to be appropriate to have regard to the “travelling beyond” notion of Olin and Lockwood v Doric and to ask “would the matter claimed by the specification as a result of the amendment travel beyond matter in substance disclosed in the specification as filed?”: Emperor Sports Pty Ltd v Commissioner of Patents (2005) 146 FCR 159 at [82] per Lindgren J.
44 It follows that where the amendments would merely narrow the scope of the invention claimed, they are likely to have been in substance disclosed and fairly based: see, eg, Emperor Sports at [80], [86] per Lindgren J. In other words, a claim that is more limited in scope than the invention as described can be, and perhaps usually will be, fairly based on the description given: see Bodkin C, Patent Law in Australia (2nd ed, Thomson Reuters, 2014) at [5840].
45 Ultimately, the question under both ss 102(1) and 40(3) is, effectively, whether there is “a real and reasonably clear disclosure” in the relevant specification of what is claimed in the amended claim, such that “the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification”: Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 95 per Gummow J.
46 A helpful understanding of the appropriate level of generality sufficient to make out an in substance disclosure is provided by reference to the ‘Mond Nickel questions’. In F Hoffman-La Roche & Co Aktiengesellschaft v Commissioner of Patents (1971) 123 CLR 529 at 538-539, Gibbs J cited the three questions posed by Lloyd-Jacob J in Re Mond Nickel Company Ltd’s Application for a Patent [1956] RPC 189 at 194, as a guide to determining whether a claimed invention is “fairly based on matter disclosed” in a specification:
(1) Is the alleged invention as claimed broadly (i.e. in a general sense) described in the basic application?
(2) Is there anything in the basic application which is inconsistent with the alleged invention as claimed?
(3) Does the claim include as a characteristic of the invention a feature as to which the basic application is wholly silent?
47 In Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd, Gummow J (at 93) restated those three Mond Nickel questions as they apply to fair basing under s 40(3) as follows:
(a) Is the alleged invention as claimed broadly (ie, in a general sense) described in the body of the specification?
(b) Is there anything in the body of the specification which is inconsistent with the alleged invention as claimed?
(c) Does the claim include as a characteristic of the invention a feature as to which the body of the specification is wholly silent?
48 In CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 at 280, the Full Court (Spender, Gummow and Heerey JJ) cautioned that the use of the term “inconsistent” in the second Mond Nickel question above is “somewhat unfortunate” insofar as it might encourage an over meticulous verbal analysis or discourage reference to drawings in addition to verbal descriptions.
49 USG submits that the rule against making a ‘mosaic’, applicable in the contexts of determining whether a claim lacks novelty and identifying the common general knowledge for the purposes of determining whether a claim lacks an inventive step, has no application to the determination of fair basis and whether claimed matter has been “in substance disclosed” in a specification. USG relies on Lockwood v Doric, in which Gleeson CJ, McHugh, Gummow, Hayne and Heydon JJ stated at [68]-[69] that the comparison which s 40(3) calls for is not analogous to that between a claim and an alleged anticipation and that one must consider the specification as a whole.
50 USG submits that the case law provides numerous examples where this Court has found in substance disclosure of a claimed invention from different parts of a specification. USG relies on the following examples:
(a) In Leonardis v Sartas No 1 Pty Ltd (1996) 67 FCR 126 (at 134, 138, 144), Burchett, Hill and Tamberlin JJ held that each of two claims was “fairly based on matter disclosed” in two separate provisional specifications when read together.
(b) In Novartis AG v Bausch & Lomb (Australia) Pty Ltd (2004) 62 IPR 71 (at [47], [60]-[61]), the proposed amendments sought to include a particular ion permeability value being taken from Tables E and F in the specification. Merkel J found that the amendment was allowable because there was a disclosure of this particular value in the specification, even though elsewhere in the specification different ranges described for this value might cause some confusion for a person skilled in the art.
(c) In Bristol-Myers Squibb Co v Apotex Pty Ltd, Yates J held that an amendment would be permissible which involved a consolidation of certain seemingly redundant claims into one claim. The key claim (claim 12) was formed by combining original claims 12, 14, 16, 17 and 18, which were all independent claims defining the same product (Anhydrous Aripiprazole Crystals B) in different ways. The new claim 12 required the product to exhibit each of the features of previous claims 12, 14, 16, 17 and 18.
51 It may be accepted that the applicable principles relating to fair basis and determination of whether claimed matter has been “in substance disclosed” in a specification do not specifically encompass the rule against making a mosaic as it applies in the contexts of issues of novelty and inventive step. Nevertheless, as the above description of the applicable principles indicates, it is necessary to consider whether there has been “a real and reasonably clear disclosure” in the specification of what is claimed in the amended claim.
Consideration
52 It will be convenient to consider the proposed amendments to the specification under two broad headings, namely “Density” and “Void size”, which describe the broad topics of the amendments. Within each of those headings, the amendments will be considered by reference to the ‘features’ referred to in the evidence before the delegate (as set out in [24] above). The amendments to be considered are as follows:
(a) Density
(i) feature 1;
(ii) features 5, 6, 7 and 8.
(b) Void size
(i) features 2, 9-12, 15 and 18;
(ii) feature 3;
(iii) feature 4;
(iv) feature 13;
(v) feature 14;
(vi) features 16 and 17.
53 In relation to each feature, the issue to be addressed is whether the relevant amendments are not allowable under s 102. In particular, the amendments will not be allowable: if, as a result of the amendments, the specification would claim matter not in substance disclosed in the specification as filed; or if, as a result of the amendments, the specification would not comply with the fair basis requirement in s 40(3).
54 In circumstances where CSR has not appeared to oppose the appeal, I am content to accept as correct the parts of the Decision that were favourable to USG, including the delegate’s disposition of CSR’s objection based on s 102(2)(b) read with s 40(2)(a) (at [82]-[99] of the Decision).
Density
Feature 1
55 Feature 1 is “the board having a density of about 33 pcf or less”. This feature relates to proposed claims 1, 4, 6, 8 and 39. It describes the density of the gypsum wallboard including both the cover sheets and the gypsum core (as distinct from core density, which pertains only to the latter).
56 I note the following matters, based on the evidence:
(a) Each of the expert witnesses effectively agreed that feature 1 was disclosed in the specification as filed. Professor Liu stated that:
Table 7 provides several board weights that can be readily converted to densities, as understood by one of ordinary skill. The board weights, in lbs/MSF, of 1400, 1300, 1200, 1100, 1000, 900, 800, and 500 for a 1/2 inch board convert to pcf values of 33.6, 31.2, 28.8, 26.4, 24, 21.6, 19.2 and 12, respectively.
(b) Mr Neil stated that: “It is apparent to me that some of the examples disclosed in Table 3, Table 6 and Table 7 of the Application include a gypsum board with a density ‘of about 33 pcf or less’, with Trial Board 6 in Table 7 having a board density of 33.6 pcf”. Mr Neil also stated that “[s]ome examples in Tables 3, 6 and 7 of the specification satisfy this feature”.
(c) Dr Bruce stated that “some examples in Table 7 satisfy this feature”.
(d) Professor Liu observed that:
[T]he text of the Examples shows that the Examples are to be considered in light of the application as a whole. For instance, Example 6, paragraph [0067] describes trials that were performed using Formulation B (Example 1) as in Example 2, in which the formulation was modified. Table 6 then provides physical characteristics of the lightweight boards made in Example 6.
The next example, Example 7, describes at paragraph [0070] that trials were performed as in Example 2, again using Formulation B of Example 1 with modifications based on those in Example 6. Table 7 provides void characteristics of the lightweight boards made in Example 7.
It is, therefore, clear that Examples 6 and 7 would not be read in isolation. They would be read in the broader context of the application by one of ordinary skill. Based on this, one of ordinary skill would consider the physical characteristics of Table 6 and the void characteristics of Table 7 as achievable in a single lightweight board. Also, one of ordinary skill would not stop at Examples 1, 2, 6, and 7 and isolate them from the rest of the application.
(e) Professor Liu further explained:
The application also discloses the boards with these densities can be made with the claimed void sizes and distributions, when read in its entirety. For instance, one of ordinary skill would recognize that Table 7 shows board with a variety of void characteristics, such as foam void volume (i.e., air void volume), foam pore size distribution (i.e., air void size distribution), evaporative void volume (i.e., water void volume), evaporative pore size distribution (i.e., water void distribution), and total core volume. In addition, the application in paragraphs [0025] and [0026] discuss specific void sizes and distributions as included in the claims. One of ordinary skill would understand that the samples as shown in Tables 6 and 7 should be read in light of the teaching as in paragraphs [0025] and [0026], which is consistent with the claims.
(f) As noted in the Decision at [49], CSR did not tender any evidence in reply.
57 In light of the above, I consider that there was a real and reasonably clear disclosure of feature 1 in the specification as filed. In particular, in relation to proposed claims 1, 4, 6 and 39, feature 1 is merely narrowing the density range from the range that was previously claimed. Consistently with Emperor Sports, it is difficult to see how an amendment of this nature was not in substance disclosed by the specification as filed. In relation to proposed claim 8, which claims feature 1 in combination with other claims, on the basis of the evidence of Professor Liu set out in [56](d) and (e) above, which was not contradicted, this proposed claim was in substance disclosed in the specification as filed. Accordingly, neither s 102(1) nor s 102(2)(b) read with s 40(3) presents an obstacle to the requested amendments insofar as they relate to feature 1.
58 In my respectful opinion, the delegate’s contrary decision in respect of feature 1 was affected by an approach which was erroneous in two respects:
(a) the delegate failed to consider and give effect to the limitation in each of ss 102(1) and 102(2)(b) that the relevant lack of in substance disclosure or fair basis arises “as a result of the amendment” (see, in particular, the Decision at [42], [59]-[60]); and
(b) the delegate proceeded on an erroneous search through the specification as filed for a discrete unitary disclosure of the claimed combination of features in each of those proposed claims, rather than considering the specification as a whole and finding disclosure of the relevant features in parts thereof (see, in particular, the Decision at [60]).
Features 5, 6, 7 and 8
59 Feature 5 is “the board has a density of about 32 pcf or less” and feature 6 is “the board has a density of about 31 pcf or less”. These features relate to proposed claims 9 and 10 respectively. Feature 7 is “the board has a density of greater than about 10 pcf” and feature 8 is “the board has a density of about 10 pcf to about 30 pcf”. These features relate to proposed claims 11 and 12 respectively.
60 Each of the expert witnesses effectively agreed that features 5 and 6 were disclosed in the specification as filed:
(a) Mr Neil stated, in relation to proposed claims 9 and 10, which reflected features 5 and 6, that:
It is apparent to me that the above features of claims 9 and 10 of the Amended Claims are encompassed by some examples in Tables 3, 6 and 7 of the specification ...
(b) Dr Bruce stated, in relation to claims 9 and 10, that “some examples in Table 7 satisfy this feature”.
(c) Professor Liu stated that:
Table 7 discloses board densities of about 32 pcf or less and about 31 pcf or less, features of claims 9 and 10, respectively.
61 In relation to features 7 and 8, I note the following matters:
(a) Mr Neil stated that:
Whilst similar densities to those claimed in claims 11 and 12 appear to be disclosed in the description at Table 7, paragraphs [0001], [0008], [00071] and in the Abstract, the densities disclosed are actually the density of the set gypsum core, not of the gypsum board as a whole.
However, this matter is addressed by the board density conversion figures calculated by Professor Liu as outlined at [56](a) above.
(c) Although expressing the view that features 7 and 8 were not disclosed (for similar reasons as Mr Neil), Dr Bruce accepted that both features were “discussed in the specification”.
(d) Professor Liu stated that:
A board density greater than about 10 pcf (claim 11) and a board density of about 10 pcf to about 30 pcf (claim 12) are disclosed in the patent application.
62 In light of the evidence described above, I consider that there was a real and reasonably clear disclosure of features 5, 6, 7 and 8 in the specification as filed. Accordingly, neither s 102(1) nor s 102(2)(b) read with s 40(3) presents an obstacle to the requested amendments insofar as they relate to these features.
63 In my respectful opinion, the delegate adopted in relation to features 5, 6, 7 and 8 the same erroneous approach as for feature 1, that is, searching for a unitary disclosure of all of the claimed features in combination (see [66]-[67] and [71]-[72] of the Decision).
Void size
64 It is convenient to note at this stage that, as disclosed in the specification as filed, there are two types of voids, namely air voids and water voids. The specification indicates (at [0021]) that air voids are generally greater than about 10 microns in diameter, while water voids are generally about 5 microns or less in diameter.
Features 2, 9-12, 15 and 18
65 As noted in the Decision at [74], it was not in dispute that features 2, 9-12, 15 and 18 (which related to void size) were each individually disclosed in the specification as filed. Accordingly, I will proceed on the basis that there is no obstacle under s 102 to these amendments.
Feature 3
66 Feature 3 is “the majority of air voids have a diameter of about 100 microns or less”. This feature relates to claims 2, 5, 7, 27 and 40.
67 The following disclosures are made in the body of the specification as filed:
(a) At [0008] and at [0011], it is stated that in a preferred embodiment of the invention, “at least 60% of the total void volume comprises air voids having an average diameter less than about 100 microns”.
(b) At [0026], it is stated in the first sentence that it is preferred that “the average air (bubble) void size be less than about 100 microns in diameter”. It is also stated that in a preferred embodiment, “the void/pore size distribution within the set gypsum core is: greater than about 100 microns (20%), from about 50 microns to about 100 microns (30%), and less than about 50 microns (50%). That is, a preferred median void/pore size is about 50 microns.”
68 It is relevant to take into account that, as disclosed in the specification as filed at [0021]), air voids generally have a diameter of greater than about 10 microns, and water voids generally have a diameter of about 5 microns or less.
69 To the extent that Mr Neil sought to discount the disclosures in [0008] and [0011] on the basis that total void volume is “quite a different limit to a majority of air voids”, I note that Professor Liu commented in response: “One of ordinary skill would understand that smaller diameter air voids necessarily contribute less to the total void volume than the larger air voids, and it follows that the at least about 60% of the total void volume would be due to the majority of the number of air voids being less than 100 microns in diameter”. CSR had the opportunity to adduce any evidence in reply to this analysis of Professor Liu, but did not do so.
70 It may be that, given that the first sentence of [0026] refers to air voids, the following sentences of that paragraph should be read as referring to air voids alone. I note that, at [76] of the Decision, the delegate considered that this was the only way in which [0026] could sensibly be read. However, that does not appear to be the way in which Professor Liu read that paragraph. For example, at [39] of his declaration, he treated the ranges in [0026] as including water voids. In light of this evidence, I do not read [0026] as referring to air voids alone.
71 Taking into account the above evidence and matters, I consider that there was a real and reasonably clear disclosure of feature 3 by the specification as filed. Although [0008] and [0011] refer to total void volume rather than air voids specifically, the reasoning of Professor Liu in relation to those paragraphs (set out above) suggests that there was in substance disclosure of this feature. Further support is provided by [0026] of the specification.
72 Accordingly, neither s 102(1) nor s 102(2)(b) read with s 40(3) presents an obstacle to the requested amendments insofar as they relate to this feature.
73 The delegate did not consider it necessary to reach a conclusion as to whether features 3, 4, 13, 14, 16 and 17 were disclosed in the specification as filed, on the basis that the delegate upheld CSR’s objection that the specification as filed did not disclose each of these features in combination with the other claimed features (see the Decision at [79]-[81]). However, as with feature 1, in my respectful opinion this approach was erroneous as it did not reflect the limitation arising from the words “as a result of the amendment” in ss 102(1) and 102(2).
Feature 4
74 Feature 4 is “the air void size having greatest frequency is a diameter of about 100 microns or less”. This feature relates to claims 2, 5, 7, 28 and 40.
75 I note the following in relation to the expert evidence:
(a) The evidence of Professor Liu was that this feature is disclosed by [0026] of the specification as filed. Professor Liu stated that:
Paragraph [0026] of the patent application provides a number distribution of voids: greater than about 100 microns (20%), from about 50 microns to about 100 microns (30%), and less than about 50 microns (50%). This is a distribution that shows in a simple manner that voids less than 100 microns in diameter occur more frequently than do voids greater than about 100 microns in diameter.
(b) CSR did not adduce any evidence contradicting Professor Liu’s analysis.
76 There is no requirement that there be absolute precision in the scope of the disclosure in order to allow, by way of amendment, the introduction of the claim limitation found in feature 4. As discussed above, the test is that there be “a real and reasonably clear disclosure”. In circumstances where the effect of feature 4 is to limit the scope of various claims by reference to a matter disclosed with reasonable, if not exact, clarity in [0026] of the specification as filed, there has been real and reasonably clear disclosure.
77 Accordingly, neither s 102(1) nor s 102(2)(b) read with s 40(3) presents an obstacle to the requested amendments insofar as they relate to feature 4.
Feature 13
78 Feature 13 is “the voids having a pore size greater than about 100 microns in diameter comprise at least about 20% and less than about 40% of the total void volume of the set gypsum core, wherein the voids are measured using scanning electron photomicrograph imaging”. This feature relates to proposed claim 32.
79 In support of its amendment to include this proposed new claim, USG submits:
(a) Each of the expert witnesses agreed, to varying extents, that this feature was disclosed in the body of the specification.
(b) Paragraph [0008] discloses that “60% of the total void volume comprises air voids having an average diameter less than about 100 microns”. Paragraph [0011] discloses that “at least 60% of the total void volume comprises air voids having an average diameter less than about 100 microns and including water voids having an average diameter less than about 5 microns”.
(c) In the specification as filed, claim 16 included the feature “wherein at least 60% of the total void volume comprises air voids having an average diameter less than about 100 microns”.
(d) Mr Neil stated that: “While I note that paragraphs [0006], [0008] and [0011] describe certain parameters relating to the percentage of air voids greater than about 100 microns in the set gypsum core, the feature of claim 32 above is not specifically limited to air voids, but rather relates to all voids in the set gypsum core”.
(e) Dr Bruce stated that: “While this feature is discussed in the specification, no supporting void pore size diameter measurement data” is disclosed and, further, that “SEM and XMT data” is not disclosed anywhere in the patent.
(f) Professor Liu stated that feature 13 “is supported in the specification” and relied particularly upon [0011] of the specification as filed. That paragraph states that one embodiment of the invention features a board “wherein at least 60% of the total void volume comprises air voids having an average diameter less than about 100 microns”. This is the inverse of feature 13, which requires at least about 20% and less than about 40% of the total void volume of the set gypsum core to comprise voids having a pore size greater than about 100 microns.
(g) To the extent that Mr Neil asserted that feature 13 is not limited to air voids, this is correct, but not problematic. It is apparent from [0011] of the specification that the voids being discussed are not limited to air voids, but also include “water voids having an average diameter less than about 5 microns”. Further, it is apparent from [0021] that water voids are “generally about 5 microns in diameter, or less, normally less than about 2 microns in diameter”. Accordingly, it is clear that water voids of more than 100 microns in diameter (which seems to be the concern being expressed by Mr Neil) are unlikely in the extreme. Neither Dr Bruce nor Professor Liu had any difficulty understanding feature 13.
(h) In the course of oral submissions, USG amended its written submissions by deleting the first sentence of [141] of those submissions.
80 In my view, the specification as filed contained a real and reasonably clear disclosure of feature 13. The paragraphs of the specification relied on by USG (namely, [0008] and [0011]) describe an embodiment of the invention “wherein at least 60% of the total void volume comprises air voids having an average diameter less than about 100 microns”. (I put to one side an oddity in the wording of [0011], namely that it refers to “at least 60% of the total void volume comprises air voids having an average diameter less than about 100 microns and including water voids having an average diameter less than about 5 microns” (emphasis added). The wording on its face appears to suggest that water voids are included in air voids.) On the basis of [0008] and [0011], the specification as filed in effect describes an embodiment in which voids having a pore size greater than about 100 microns in diameter comprise less than about 40% of the total void volume (this being the inverse of the limitation expressed in [0008] and [0011]). Although those paragraphs do not provide for a ‘floor’ of 20% (namely that voids having a pore size greater than about 100 microns in diameter comprise at least about 20% of the total void volume), this involves a narrowing of the claim. In these circumstances, I consider the feature to have been in substance disclosed in the specification as filed.
81 I note for completeness that in Professor Liu’s declaration at [42] he states, in reference to this feature: “Since claim 1 sets a lower limit of about 20% for voids having a pore size greater than about 100 microns in diameter, the range of at least about 20% and less than about 40% is fully supported”. However, this reference to claim 1 would appear to be to claim 1 in the specification before amendment rather than the specification as filed. Claim 1 in the specification as filed was not so limited. Accordingly, in considering whether there has been a real and reasonably clear disclosure of feature 13 in the specification as filed, this part of Professor Liu’s evidence does not assist.
82 Accordingly, neither s 102(1) nor s 102(2)(b) read with s 40(3) presents an obstacle to the requested amendments as they relate to feature 13.
Feature 14
83 Feature 14 is “voids having a pore size of more than about 10 microns and voids having a [pore] size of less than about 5 microns are in a ratio from about 2.3:1 to about 9:1”. This feature relates to proposed claim 33.
84 I note the following matters:
(a) Each of the expert witnesses agreed, to varying extents, that these features were disclosed in the body of the specification.
(b) Professor Liu considered that feature 14 is disclosed in [0025] of the specification. That paragraph explicitly states: “the ratio of air voids (greater than 10 microns) to water voids (less than 5 microns) within the set gypsum core ranges from about 2.3:1 to about 9:1”. That is almost a verbatim statement of feature 14.
(c) Dr Bruce stated that “[w]hile this feature is discussed in the specification, no supporting void pore size measurement data” is disclosed. There is no need for such supporting data for the purposes of making an in substance disclosure of feature 14.
(d) Mr Neil stated that “similar wording to this feature is disclosed at paragraph [0025] of the description, but there are some discrepancies”. Mr Neil expressed the view that the alleged discrepancies “have the potential to cause confusion” and that this feature is not disclosed “in combination with” other features of claim 33.
85 While Mr Neil considered there to be a risk of confusion, it is apparent that both Dr Bruce and Professor Liu accepted feature 14 to be discussed or disclosed, without any confusion. To the extent that Mr Neil stated that feature 14 is not disclosed “in combination with” other features of claim 33, this approach is to be rejected for the same reasons as set out in relation to feature 1.
86 In light of the above, I consider that there was a real and reasonably clear disclosure of feature 14 in the specification as filed, in particular at [0025]. Accordingly, neither s 102(1) nor s 102(2)(b) read with s 40(3) presents an obstacle to the requested amendments insofar as they relate to this feature.
Features 16 and 17
87 Feature 16 is “the set gypsum core has about 20% to about 40% of the voids having a pore size in the range of about 10 to about 50 microns” and feature 17 is “the set gypsum core has about 30% to about 50% of the voids in the range of about 10 to about 100 microns”. These features relate to proposed claims 35 and 36 respectively.
88 In support of its amendments to include these proposed new claims, USG submits:
(a) Mr Neil stated that he could not identify any disclosure of a board with these features in the specification as filed.
(b) By contrast, CSR’s other expert, Dr Bruce, concluded that both of these features are “discussed in the specification”.
(c) The evidence of Professor Liu was that [0025] and [0026] of the specification as filed, when read together, disclose features 16 and 17. Professor Liu explained that:
The distribution of paragraph [0026] shows 50% of the voids having a diameter less than about 50 microns, which include both water and air voids as taught in paragraph [0025]. Paragraph [0025] also provides a range of about 10% to about 30% of the total voids as water voids, thereby indicating that between about 20% and about 40% of the voids having a diameter less than about 50 microns would be air voids. Paragraph [0025] states that air voids are generally greater than 10 microns in diameter, supporting the claimed pore size range of about 10 to about 50 microns.
Paragraph [0026] shows that 80% of the voids are less than about 100 microns in diameter and that voids from about 50 microns to about 100 microns, which are generally air voids, are 30%. Paragraph [0025] provides a range of about 30% to about 35% of total voids as water voids, which would be less than 100 microns in diameter. Based on paragraph [0025] and [0026] read together, of the 80% of total voids, up to about 50% of the total voids could be air voids. This supports a range of from about 30% to about 50% of air voids up to about 100 microns, which generally have a diameter greater than 10 microns as stated in paragraph [0025]. Thus, the features of claims 35 and 36 are supported in the application.
(d) In other words, a person skilled in the art would understand that feature 16 is disclosed as follows:
(i) [0026] discloses that 50% of total voids can have a diameter less than about 50 microns;
(ii) water voids are typically less than 5 microns in diameter (as stated at [0021]), so all of the water voids can be within this range of less than 50 microns, and within the 50% of total voids;
(iii) [0025] discloses that the range of total voids being water voids can be about 10% to about 30%;
(iv) given that air voids equal total voids minus water voids, it is apparent that:
(A) 50% total voids minus 10% water voids equals 40% air voids;
(B) 50% total voids minus 30% water voids equals 20% air voids;
(C) it follows that there is a disclosure of a range of between about 20% and about 40% air voids;
(v) air voids are typically greater than 10 microns (as stated at [0021]), so there is disclosure of a range of about 10 microns to about 50 microns.
(e) Similarly, a person skilled in the art would understand that feature 17 is disclosed as follows:
(i) [0026] discloses that 80% of total voids have a diameter less than about 100 microns (30% at 50-100 microns + 50% at 0-50 microns);
(ii) water voids are typically less than 5 microns in diameter (as stated at [0021]), so all of the water voids can be in this range (i.e. within the 80%);
(iii) [0025] discloses a range of water voids of about 30% to about 35%;
(iv) given that air voids equal total voids minus water voids, it is apparent that:
(A) voids of 50-100 microns are typically air voids (which can be 30% as in [0026]);
(B) also, 80% total voids minus 30% water voids gives 50% air voids;
(C) it follows that there is disclosure of a range of between about 30% to about 50% air voids;
(v) air voids are typically greater than 10 microns (as stated at [0021]), so there is disclosure of a range of about 10 microns to about 100 microns.
89 In my view, the specification as filed contained a real and reasonably clear disclosure of features 16 and 17. Paragraphs [0025] and [0026] of the specification as filed describe various embodiments by reference to (among other things) the void/pore size distribution. The void/pore size distribution concerns the number of voids having a diameter within a particular range. When the ranges described in [0025] and [0026] are combined (which I consider to be permissible for this purpose) the limitations contained in features 16 and 17 are in substance disclosed in the specification as filed. This is perhaps easier to demonstrate in relation to feature 16 (on the basis of the reasoning in USG’s submissions, set out above) than with feature 17. However, even in relation to feature 17, the combination of [0025] and [0026] approximates the limitation in feature 17.
90 Accordingly, neither s 102(1) nor s 102(2)(b) read with s 40(3) presents an obstacle to the requested amendments insofar as they relate to features 16 and 17.
Conclusion
91 For the reasons set out above, I have concluded that the second requested amendments are allowable. I will make orders accordingly.
I certify that the preceding ninety-one (91) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Moshinsky. |
Associate:
