The Court held that the Appeal Tribunal's question on review of a direction to amend is whether it is clear that the specification without amendment is NOT in accordance with the Act, not whether it is clear that it IS in accordance with the Act — a significant difference in the burden of persuasion.
Later decisions that cite Re Minnesota Mining & Manufacturing Co's Application
Decisions cited by Re Minnesota Mining & Manufacturing Co's Application
RE MINNESOTA MINING AND MANUFACTURING CO'S. APPLICATION [1961] HCA 82; (1961) 108 CLR 651
Patents
High Court of Australia
Menzies J.(1)
CATCHWORDS
Patents - Ambiguous claim - Direction to amend - Suggestion for amendment by Appeal Tribunal - Effect of adoption of suggested form - Acceptance of specification - Whether in accordance with Act - Patents Act 1955-1960 (Cth).
HEARING
Sydney, 1961, November 29, 30; December 8. 8:12:1961DECISION
December 8.2. Upon this appeal I am concerned only with the question whether the Acting Deputy Commissioner of Patents was correct in directing the amendment of claim 1 of the specification, which relates to the sheet itself independently of any method of making it, on the sole ground that the claim lacks the clarity and precision which s. 40 of the Act requires. Other grounds of objection to the specification as it stands, and to claim 1 in particular, are not here in issue. (at p652)
3. Claim 1 is as follows : - "A flexible unitary protective sheet comprising a polyester film and a readily heat sealable dissimilar polymer film, the polymer being an organic hydrogen-containing polymer having carbon atoms in the skeletal chain, the said films being inseparably self-unified, the strength of the bond between the films being greater than the internal strength of the polymer film." To understand what is claimed it is necessary to read into the claim the following definitions : - ". . . 'self-unified' films mean films unified directly with one another at their interfacially contacting surfaces without use of intervening adhesives, to form a 'unitary sheet' wherein the films forming the sheet resist separation from one another, as attained where there is some interfacial chemical bonding interaction between the contacting film surfaces." "The expression 'inseparably self-unified', as used in this specification, refers to the property of our film to resist mechanical delamination, as herein illustrated, and also to resist solvent delamination, by various solvents, as herein illustrated." (at p652)
4. At this point it is necessary to observe that although union by means of adhesives is expressly excluded by the definition of "self-unified", the definition of "inseparably self-unified" suggests that not only is union by lamination not excluded but that a union which resists chemical or solvent delamination must be a lamination. In the body of the specification it is, however, stated : - "Previous attempts to remedy this" (i.e., resistance to adhesion and heat sealing) "by combining with or applying to the polyester film, films or coatings of other materials that would supply the properties that the polyester film lacks, have been unsatisfactory. At best, the prior results have been mere laminations or coated films having distinct layers that loosen or separate upon aging (sic) and/or subjection to stresses and other adverse conditions. The present invention, however, combines a film of a desired second material with a polyester film to form, not a lamination, but a unitary sheet, the two films being self-unified, with the bond between them being greater than the internal strength of the said second material." The apparent contradiction between the body of the specification and the claim once the definition of "inseparably self-unified" has been read into it is probably to be explained by understanding that the applicant is not denying that the sheet to which the claim relates is a lamination but is asserting that it is not a "mere lamination" in the sense that, although the sheet is made from two distinct layers of films, they have been brought together in such a way that each film loses its identity in the resulting composite sheet so that once the sheet is formed its constituent films can never be separated one from the other. A minor ambiguity militating against this comparatively simple construction is, however, created by defining "inseparably self-unified" as referring to the property of the sheet "to resist the lamination" - that is, although the sheet is formed by the inseparable unification of the films, the suggestion is made, not that separation is impossible, but that the sheet has the property of resisting delamination (that is, the splitting of the sheet into the separate layers from which it was originally formed). Upon reading the specification as a whole I am, however, disposed to think that the claim is really directed to a laminated sheet formed without the use of any adhesive or other intervening substance which is of such a character that the polymer film cannot be separated from the polyester film without destruction of the polymer film. (at p653)
5. It appears, however, that the applicant is reluctant to make so comprehensive a claim because, if for no other reason, it apprehends that what may be called a physical bonding - that is, by molecular attraction between the constituent films such as occurs when they are held together by surface tension - is already known and it may be that films so unified cannot be separated without destruction of the polymer film. One possible limitation to guard against lack of novelty on this score would be to confine the claim to a chemical union of the two films, but it seems that there is some doubt whether the union resulting from irradiation by ultra-violet light is chemical in character. Another possible limitation would be to confine the claim to a sheet formed by irradiation with ultra-violet light, but the applicant, so I understand, desires, if it can, to avoid a limitation by reference to method. It is in these circumstances that, in attempting to make a wide claim that will be free from objection on the ground of lack of novelty, it has in claim I used the phrase "the . . . films being inseparably self-unified" and then by what seems to me an inappropriate and confusing definition it has said that films are "self-unified" when they are united without the use of adhesives to form a sheet in which they resist separation "as attained where there is some interfacial chemical bonding" and that they are "inseparably self-unified" when the film which they are unified to form resists delamination. (at p654)
6. I agree with the Acting Deputy Commissioner of Patents that the course which has been followed results in serious ambiguity. This is demonstrable by taking two instances. First, when a term requires definition it cannot be defined by reference to something which itself lacks any precision, as has been attempted by the use of the words "as attained where there is some interfacial chemical bonding" to describe the capacity of the unified films to resist separation. Secondly, the word "inseparable" to describe a union of two films in a sheet may be clear when it is used either without qualification or with a qualification to the effect that the strength of the union is greater than that of one of the films, as claim 1, when read without the definitions, would suggest, but when by definition it is said that the word "inseparable" refers to the property of the sheet - which I suppose is meant by the words "our film" - to resist delamination in particular ways, it becomes confusing, if not meaningless. I have, therefore, no doubt that the Acting Deputy Commissioner was right in directing amendment. This was done in general terms to give the applicant the greatest possible freedom, but I was invited by counsel for the appellant, in the event of my upholding the decision, to go further and either to direct a particular amendment or to indicate how claim 1 might be phrased to avoid non-acceptance on the ground of ambiguity. Counsel for the Commissioner saw no objection to this request. (at p654)
7. At the hearing I indicated that I would not dismiss the appeal without giving the appellant an opportunity to put forward its suggestion for a particular direction, but my further consideration of the matter has led me to the conclusion that it is probably impossible for me, having regard to other objections which are outstanding, to give a satisfactory particular direction as to the amendment of claim 1. I have, however, thought I should give some indication of the way in which I think the applicant might amend claim 1 to overcome the objection that, as it stands, it is not sufficiently clear and succinct to be acceptable. I do so, however, with the rider that the Commissioner may, of course, consider that the claim, framed in any one of the ways which I suggest, is open to objection on grounds other than ambiguity. Depending upon the course which the applicant desires to take, which is something for it to decide, it seems to me that if claim 1 were to take any one of the following forms, the objection to acceptance on the ground of ambiguity would no longer remain : - (i) A flexible sheet comprising a polyester film and a polymer film (to be described) inseparably unified without the use of any adhesive or other intervening substance. (ii) As above, but with the phrase "inseparably unified" defined either as meaning "unified so that the union is stronger than the polymer film" or "unified so that the films cannot be separated without destruction of the polymer film". (iii) As in (i), but with the inclusion after the words "inseparably unified" of the words "by chemical action" or by words accurately describing the process referred to in claim 10. (at p655)
8. As at present advised, I would have thought, as did the Acting Deputy Commissioner, that to adopt the lastmentioned form would clearly be the preferable course, but I say this without committing the applicant to adopt it because it is entitled, if it wants to do so, to take the chances that the making of a wide claim involves. (at p655)
9. It will, of course, be observed that to adopt any of the forms whic h I have suggested would require some amendment in the specification and particularly the deletion of what I regard as confusing definitions of "self-unified" and "inseparably self-unified". (at p655)
10. Having made these suggestions and having indicated that they do not amount to directions binding either the applicant or the Commissioner, I think I should add that if one of them were to be adopted, my conclusion that it is sufficiently clear and succinct for acceptance would, upon any proceedings for revocation or infringement, leave that question, along with every other question, open for final determination. It has in many cases - and most recently in Commissioner of Patents v. Microcell Ltd. [1959] HCA 71; (1959) 102 CLR 232, at pp 238, 244, 245 - been pointed out that the question whether a specification ought to be accepted is different from the question whether it is in accordance with the Act and on this point I should say that it seems to me that what I said in Ciba Ltd. v. Commissioner of Patents (1960) [1960] HCA 36; 103 CLR 526 is so general as to be misleading, for although the Appeal Tribunal will not interfere with a direction to amend unless it is satisfied that the direction is misdirection, the question for the Tribunal is not whether it is clear that the specification without amendment is in accordance with the Act ; it is rather whether it is clear that the specification without amendment is not in accordance with the Act : see Hopman v. Commissioner of Patents [1960] HCA 48; (1960) 103 CLR 24 . (at p656)
11. Here, as in the Ciba Case [1960] HCA 36; (1960) 103 CLR 526 , I am satisfied that the specification without amendment is not in accordance with the Act. (at p656)
12. Having regard to what was said at the hearing about what should be done if I were to decide that the specification requires amendment, I will not dismiss the appeal without giving the appellant an opportunity to consider what I have written. I am, however, strongly inclined to think that because of other outstanding objections the matter should be dealt with by the Commissioner without a particular direction from the Appeal Tribunal as to the amendment of claim 1, and accordingly the proper course now is simply to dismiss the appeal and extend the time for acceptance. (at p656)
13. The order I will not make is, therefore, that the appellant should have until 13th December 1961 within which to make submissions as to the form of order to be made disposing of this appeal, but, failing any such submission, the appeal is to be dismissed with costs and the time for acceptance extended until 30th June 1962. (at p656)
ORDER
Order accordingly.