CSR Building Products Ltd v United States Gypsum Company [2025] APO 26

APO|2025-08-11|Before: Middleton J

The application was examined and advertised as accepted by the Commissioner on 5 October 2023. CSR Building Products Ltd (the Opponent) filed a notice of opposition to grant on 22 December 2023 under section 59 of the Act.[1] This decision concerns the opposition to grant under section 59 (this opposition).

The Statement of Grounds and Particulars (the SGP) was filed on 22 March 2024 and identified all of the available grounds of opposition. Amendments to the SGP were allowed on 14 August 2024. The Applicant did not file evidence in answer nor request to be heard in relation to the opposition. The Opponent was heard by written submissions. In the Opponent's submissions, only the grounds of lack of a clear enough and complete enough disclosure, lack of support and lack of novelty and inventive step were pressed.

The evidence in support comprises the following declarations:

As noted above no evidence in answer was filed, and accordingly there is no evidence in reply.

Before commencing to construe the specification, I note what Middleton J said about approaching patent specifications in Eli Lilly v Apotex Pty Ltd:

"It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date."[4]

To properly construe the specification, it is essential to obtain an idea of the technology the invention relates to and obtain a picture of the person skilled in the art. I will therefore review the background.

The specification relates to gypsum boards or panels. These panels are said to be well-known in a general sense and are made of gypsum (calcium sulfate dihydrate) set in a core which is sandwiched between two cover sheets such as paper. These boards are used in dry wall and may include a denser layer of gypsum (skim coat) on either side of the core usually at the paper-core interface.[5]

During manufacturing of the boards stucco is made by mixing the calcine gypsum (calcium sulfate hemihydrate or anhydrate) with water and other ingredients. The stucco is painted onto the paper, with an optional skim coat, and then dried. It is the specific hydration of the calcined gypsum that enables the formation of the interlocking matrix of set gypsum. The drying step is often said to use heat, such as in a kiln, to remove un-interlocked water.[6] Driving off the excess water with heat is said to be inefficient in the specification.[7] Another challenge is said to be reducing the weight of the gypsum board while maintaining strength. Strength of the board is said to be measured using nail pull resistance, sometimes just called nail pull.[8]

With this background in mind I will now characterize the person skilled in the art.

The concept of the PSA has long been considered by the courts when construing patent specifications. Finkelstein J described the PSA with the following words in Root Quality[9]:

"He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious." [10]

Finkelstein J also cited Lord Diplock in Catnic[11] where he said the PSA is likely to have a practical interest in the subject matter:

"My Lords, a patent specification is a unilateral statement by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his invention (i.e. 'skilled in the art')"[12]

This approach to the PSA having a practical interest in the subject matter was approved by the Full Federal Court with Heerey, Emmett and Dowsett JJ stating:

"The uninventive but skilled worker is likely to have a practical interest in the subject matter of the claimed invention."[13]

Kiefel J (when she was still on the Federal Court) added to this statement that the person would be acquainted with the surrounding circumstances of the art and manufacture and may often work in the art with which the invention is connected.[14]

In any art it is hard to find a skilled person whom I would comfortably call uninventive, instead the PSA is an artificial construct used as a tool of analysis. This concept of using an artificial construct was articulated in AstraZeneca[15]:

"The notional person is not an avatar for expert witnesses whose testimony is accepted by the court. It is a pale shadow of a real person - a tool of analysis which guides the court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step."[16]

The Opponent's declarant in this opposition is the same as that used in the Parent Opposition, Mr Sucech. In the Parent Opposition the delegate noted:

"Mr Sucech is a technical consultant providing technical assistance and guidance in operations of gypsum board manufacturing as well as developing new gypsum formulations and additives. A significant portion of his experience includes his employment with the Applicant, during which time he developed and implemented new products, formulation additives and processes. This is detailed in Sucech #1 at [8]-[11]."[17]

Much like the parent application, the field of the relates to gypsum boards. In the Parent Opposition the delegate noted that:

"On the face of the specification, there is little doubt that the notional person skilled in the art includes a person with experience in making gypsum boards, and in particular composite gypsum boards. Such persons would have knowledge of the various ingredients and processes used in manufacturing these boards. It is clear that the person skilled in the art would also need to possess an understanding of the effect of altering the ingredients or making modifications to the manufacturing processes on the final product and properties required for the product type."[18]

After considering the declarants the delegate in the Parent Opposition stated:

"I consider the person skilled in the art to include laboratory technicians and plant engineers who, respectively, formulate slurry compositions and set up the production equipment to make gypsum boards. While these are the critical members of the team of persons skilled in the art, in the present case, nothing turns on the inclusion or exclusion of the other additional members who are involved in the production aspects."[20]

This divisional application is almost identical to the parent, although there are some differences in the claims, I see no reason to depart from the Delegate's findings in the Parent opposition on the person skilled in the art. I therefore consider that Mr Sucech has a practical interest in the field and is in a position to provide evidence as to what the PSA would have known or done.

After outlining the background the specification provides a section entitled "brief summary". In this summary the specification is said to provide a composite gypsum board comprising a board core made from at least stucco, water and optionally an enhancing additive. There is also said to be a concentrated layer on one side. With the concentrated layer said to contain the enhancing additive, water and a cementitious material such as stucco.[21]:

This description of the gypsum board is easily visualised with reference to FIG. 1 which is introduced at [0015]. I have reproduced FIG. 1 below, the gypsum core is the central part 24 and the concentrated layer is 18 which sits on top of it. The top and bottom faces are covered with paper sheets, 12 and 30. Between these layers are the interfaces, such was the paper-core interface 28 and 32, or the paper-concentrated layer interface 16 and 20.

The concentrated layer 18 is said to contain a higher weight percentage of the enhancing additive.[22] The presence of this additive is said to provide one or more efficiencies in the process and concentrating the additive in a smaller section (the concentrated layer) reduces the overall use of enhancing additives in the board. This is said to maintain the strength of the board and may give a lighter board overall.[23] Having the enhancing additive in the concentrated layer is also said to be beneficial when the enhancing additive is something that requires water in the slurry, such as when pregelatinized starches are used. By reducing the amount of enhancing additive in the core, the water demand in the core slurry can be reduced therefore not requiring as much heating to drive off the excess water.[24]

The Opponent has highlighted the following discussion on the enhancing agent:

"The enhancing additive provides desired strength properties.... Examples of suitable enhancing additives help provide strength, such as starch, polyvinyl alcohol, boric acid, gypsum-cement, nano-cellulose, micro-cellulose, or any combination thereof. The use of the singular term enhancing additive herein is used for convenience but will be understood to encompass the plural..."[25]

Then further adding that when the enhancing agent is starch specifically the specification states:

"With respect to starch, any suitable strength enhancing starch can be used, including hydroxyalkylated starches such as hydroxyethylated or hydroxypropylated starch, or a combination thereof, uncooked starches, or pregelatinized starches, which are generally preferred over acid-modifying migrating starches which generally provide paper-core bond enhancement but not core strength enhancement. However, if desired, the acid-modifying migrating starch can be included with the enhancing additive in some embodiments."[26]

Cooked starches are also discussed in further detail:

"Cooked starches are sometimes referred to as pregelatinized starches... Preferred starches, whether cooked or uncooked, are different than acid-modified migratory starches which do not confer the same strength properties and are used in the art for paper-core bond enhancement as they migrate to the paper-core interface due to their smaller chain lengths."[27]

The Opponent submitted that the above paragraphs teach that pregelatinized starches are preferred over acid-modifying starches and that acid-modifying starches provide paper-core bond enhancement - which the Opponent submits is a form of strength enhancement. Furthermore, the Opponent argues that these passages teach that acid-modifying starches can be included "as part of" the enhancing additive". They are said to be "part of" because they do not provide core strength enhancement but instead provide paper-core bond enhancement.

The specification contains 10 examples. In example 1 three boards are made, two of which have a concentrated layer, with the thickness of the concentrated layer in board 2 being 0.035 in and the thickness in board 3 being 0.050 in. The boards are then tested for nail pull resistance with board 3 having the greatest pull resistance at 76.3 lbf followed by board 2 at 70.9 lbf and board 1 - with no concentrated layer having the lowest pull resistance at 60.2 lbf. The enhancing additive used in the concentrated layer is pregelatinized corn starch.

Example 2 tests the effects of starches on strength in gypsum disks as a representation of the concentrated layer. The discs were prepared by making a stucco slurry containing the starch and heated at 300 F (149 C) for 60 mins followed by drying at 43 C for 48 hours. The final discs had dimensions of 4 in and a thickness of 0.5 in. Strength was tested by measuring both compressive strength and nail pull resistance. The nail pull resistance was said to have been tested in accordance with ASTM 473-10 method B. The results of this experiment are given in a table which has been reproduced below. I note that many of the starches used have a nail pull resistance comparable to or higher than the pregelatinized corn flour (2B), see last column.

The Opponent noted that these disks are not a full composite gypsum board as they do not have the core or outer paper layers. The Opponent also noted that these disks are thicker than the concentrated layers actually used in the composite gypsum boards by a factor of ~5-25. Finally the Opponent also noted that the drying step of 43 C over 48 hours differs from commercial production in that in a commercial dryer such as a kiln with high temperatures where up to 315 °C can be used.

The Opponent asserted that the specification does not state that the starches tested in table 3 would themselves enable the pull test to be met, or explain how that could be done for composite boards. They highlighted the following passages

"In embodiments where starches are used in the concentrated layer, this example illustrates that both cooked and uncooked starches have benefit as enhancing additive for improving strength as shown by the improvement in performance on strength... "[28]

**"**The improvement in strength seen in the disks shown from both cooked and uncooked starches, in accordance with various embodiments of the invention, indicates the utility of these starches in the concentrated layer of a gypsum wallboard in accordance with some embodiments because the desired starches provide extra bonding between gypsum crystals for strength improvement. The starches were effective to improve strength, thereby suggesting lack of migration, contrary to the case with a migratory acid-modified starch. Therefore, the example shows that the starches would be effective in a concentrated layer."[29]

I note that the above passage points to the lack of migration of the acid-modified starch in this example. This supports the opponent's argument that drying at 43 C over 48 hours rather than in a kiln is different to commercial boards. I also note the following passage which does appear to suggest that the improved strength is the result of starch:

"As seen from Table 3, the uncooked and cooked starches showed considerable improvement in strength over the comparative composition without the starch, with many of the values being more than about 50% higher than the strength of the control without starch, more than about 75% higher than the strength of the control without starch, or more than about 100% more than the strength of the control without starch."[30]

The remaining examples 3-10 all test composite boards. Of note in all of these examples is that the only starch used is pregelatinized starch. In example 3, fibre glass is added to the composition and in examples 4-10 the benefits of the concentrated layer being present in the board is tested with various stucco formulations, as previously noted all with various amounts of pregelatinized starch as the enhancing agent.

The Opposed Application ends in 23 claims. Of these claims claim 1, 12 and 17 are independent.

The approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd:

"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification" [31]

This approach of reading the specification as whole through the PSA's eyes with the Common general knowledge (CGK) in mind provides context and the intention behind what is meant.[32] This is commonly referred to as a purposive construction.[33]

Claim 1, 12 and 17 are independent with claims 2-11 being dependent on claim 1, claims 13-16 being dependent on claim 12 and claims 18-21 being dependent on claim 17. Claims 22 and 23 are dependent on claims 1-21. Claim 1 reads as follows:

a) a board core comprising set gypsum formed from a first slurry comprising at least water, stucco, and optionally, a strength enhancing starch, the first slurry having a first water-stucco ratio, the core having a first density, the core defining first and second core faces in opposing relation;

b) a concentrated layer formed from a second slurry comprising at least water, stucco, and the strength enhancing starch, the second slurry having a second water-stucco ratio, the concentrated layer disposed in bonding relation to the first core face, the concentrated layer having a dry density of at least about 1.1 times higher than the dry density of the board core, wherein:

(i) the amount of strength enhancing starch in the first slurry by weight of the stucco is less than the amount of strength enhancing starch in the second slurry by weight of the stucco;

(ii) the board core has a thickness greater than the thickness of the concentrated layer, the latter thickness being from 0.05 cm to 0.23 cm;

(iii) the second water-stucco ratio is at least about 1.2 times higher than the first water-stucco ratio; and

(iv) the board has a nail pull resistance according to ASTM C473-10, Method B of at least 30.8 kg or 302.48 N.

The claim is directed to a composite gypsum board, which has both a core and a concentrated layer where the concentrated layer contains a strength enhancing starch. These features are shared with the claims of the parent and were construed by the delegate in the Parent Opposition.[34]

A key difference between the claims in this opposition and that of the parent is that the current claims require the concentrated layer contains a strength enhancing starch, whereas the parent only required an "enhancing agent".

The Opponent submitted that the term "strength enhancing starch" is "a starch 'that is effective to increase the dry strength of the composite gypsum board relative to the strength of the composite board without the ingredient such as starch', thus providing 'desired strength properties'." I note that the specification discusses starches under the enhancing additive definition. The parent's sole independent claim referred to enhancing agents more broadly, which include a large number of alternatives. In this case the claims refer to a strength enhancing starch. The specification does not provide a definition of a strength enhancing starch but does state:[35]

The starch can be cooked or uncooked. Uncooked starches are characterized as being cold water insoluble and having a semi-crystalline structure. Typically, uncooked starches are obtained by wet milling and are not modified by heating wet starch as in the case of cooked starches. Cooked starches are characterized by being cold water soluble and having a non-crystalline structure. Cooked starches are prepared by heating wet starch, and can be prepared, e.g., by extrusion techniques. See, e.g., co-pending US patent applications 14/494,547; 14/044,582; and 13/835,002, which extrusion techniques are incorporated by reference.

Cooked starches are sometimes referred to as pregelatinized starches, because the crystalline structure of the starch granules melts, and results in starch gelatinization, which is characterized by the disappearance of the birefringence under a microscope with a polarized light. Preferred starches, whether cooked or uncooked, are different than acid-modified migratory starches which do not confer the same strength properties and are used in the art for paper-core bond enhancement as they migrate to the paper-core interface due to their smaller chain lengths. The acid-modified migratory starches have minimal molecular weight, typically below about 6,000 Daltons. In some embodiments, preferred starches in accordance with embodiments of the disclosure have higher molecular weights, e.g., at least about 30,000 Daltons."

As outlined above these are not preferred since they do migrate when heated and instead enhance the bond at the interface with the paper. Mr Sucech appeared to consider that such starches were not strength enhancing:

"I also note that each of the claims of the Patent requires a 'strength enhancing starch'. I understand from the paragraphs of the Patent I have set out at my [96] above, that while pregelatinized starches are "generally preferred" as strength enhancing starches, "any suitable strength enhancing starch can be used" and that the starch needs to be "effective to increase the dry strength of the composite gypsum board". I understand for a starch to be a 'suitable strength enhancing starch' the starch should not be a starch that migrates during production of the plasterboard (i.e. during drying), though how the Patent defines a migrating starch is not clear to me."[36]

When one turns to the examples, and specifically example 2, it appears that the disks are heated in a manner which does not cause this migration. Indeed it would appear that the starches used in example 2, including the acid-modified starches, would all be considered strength enhancing starches in the sense that all of them appeared to show better nail pull resistance compared to the disk made without starch. Sucech notes that:

"It is surprising to me that no board line examples have been given in which a starch other than pregelatinized starch is used as the strength enhancing starch. This is strange, especially given that pregelatinized starch was apparently not the best performing starch according to the results given in lab example 2, which I discuss in more detail below. If the other starches of example 2, such as the acid-modified starches, also performed well in board line trials, I would have expected such results to also be provided. This suggests to me that pregelatinized starch is the only strength enhancing starch that performed well in composite boards, produced on a real board line."[38]

In my view, Mr Sucech is speculating here that the starches of example 2, other than the pregelatinized starch, were tried in a composite gypsum board and were unsuccessful. Mr Sucech does, however, provide some later explanations as to why he thinks this might be the case and it is because of the atypical conditions used in example 2:

"It is surprising to me that, despite many of the different starches apparently producing higher nail pulls than pregelatinized starch, none of these other starches appear to have been used in any of the other Examples of the Patent. The only starch that appears to have been tested on a board line is pregelatinized starch. Again, this suggests to me that the higher nail pull results given for the disks containing starches other than pregelatinized starch, are likely attributable to the particular conditions employed in example 2, which are not representative of a board line. If these results could be generalised to a board line, acid-modified starches would be greatly preferred over pregelatinized starches, as they are cheaper and impact the process less (e.g. require less water and have less impact on foaming). However, all of the remaining examples in the Patent (and importantly all the board line examples) use pregelatinized starch instead. I can only assume that the acid-modified starches were not used as 'strength enhancing starches' in the board line trials, because acid-modified starches readily migrate under commercial drying conditions and do not contribute to core strength improvement in composite boards. I note that no indicative board line compositions are given for boards containing any of the starches of example 2, other than pregelatinized starch.[39] (my emphasis).

Further technical reasons are also provided by Mr Sucech as to why the conditions in example 2 are different to those used in examples 4-10:

"The foam used in example 2 (PFM-33) is also different to that of the board line examples (examples 4-10 use a mixture of CS230 and Polystep 25). Given the wide variety of starches used and the large amount of starch in example 2, this would have a significant impact on the foaming properties, particularly for the pregelatinized starches which are known to be mild defoamers (as I have stated above at my [50] to [70]). This would be another variable that would need to be assessed for the different starches, if they were to be used as 'strength enhancing starches' in real composite boards."[40]

"Given the atypical drying conditions used in example 2, which are very different to what would be used to produce composite gypsum boards on a board line as I have noted at least at [275], I do not agree with the statement at [0151] of the Patent. Starch migration under the conditions used for example 2, particularly for acid-modified starches, cannot be generalised to composite gypsum boards under commercial conditions. I would expect completely different results on a board line. Further, the composition for the core and the concentrated layer would likely need to be altered to accommodate each different starch, as each starch is likely to have different effects on water demand, foaming, setting time, etc."[41]

Given the specification's own discussion on acid-modified starches and the evidence from Mr Sucech, acid-modified starches are not within the scope of a strength enhancing starch. They would not act in the same way in a composite board as they do in the discs of example 2. Given the fact that acid-modified starches are known to migrate through the stucco at high temperatures when gypsum boards are being made, they act differently to strength enhancing starches and cannot be considered to fall within the scope of the claims.

There are more starches used in example 2 and in the field than just acid-modified starches and PG starches that could be within the scope of the term "strength enhancing starches". Mr Sucech was asked about what he would consider this term to mean more generally:

"Griffith Hack asked me if I would consider any of the starches to be 'strength enhancing starches', based on CSR's results. I understand from the Patent that a 'strength enhancing starch' is a starch which, when included in the disk, increases the strength of the disk compared to the disk without the starch. As such, I consider a 'strength enhancing starch' would significantly increase the nail pull of the disk. Based on this understanding of a 'strength enhancing starch', I would consider both Manildra and Bunge pregelatinized starches to be strength enhancing starches. This is because the inclusion of each of these starches in the disks increased the nail pull, compared to the disk with no starch.[42]

"I would not consider any of Gemgel S90, LC211, SCAC 0302 Tapioca or Clinton 277 starches to be strength enhancing starches. This is because the presence of these starches in the disks did not appear to affect the nail pull of the disk. Notably, each of these starches are examples of acid-modified starches, which I would expect to substantially migrate under typical commercial board making conditions and not contribute to core strength."[43]

"Based on these results, I maintain my view that 'strength enhancing starch' as referred to in the Patent should refer to a pregelatinized starch."[44]

Therefore, I consider that strength enhancing starches is broader than the one pregelatinized starch used in examples 4-10, furthermore it has been chosen as a term to be pursued in this divisional and I note that claims limited to pregelatinized starches have been granted on the parent. The term strength enhancing starch does not include migratory starches, such as acid-modified starches. I consider that hydroxyalkylated starches such as hydroxyethylated or hydroxypropylated starch, or a combination thereof, uncooked starches, cooked starches, including pregelatinized starches would be within the scope of this term.

a) board core comprising set gypsum formed from at least water, stucco, and

optionally, a strength enhancing starch, the core having a dry density, the coredefining a first core face; and

b) a concentrated layer formed from at least water, stucco, and the strength enhancing starch, the concentrated layer disposed in bonding relation to the first core face;

(i) the concentrated layer is formed from at least about 1.2 times the strength enhancing starch than in forming the board core;

(ii) the dry density of the core is about 30 pcf (about 481 kg/m3) or less;

(iii) the concentrated layer has a dry density at least 1.1 times higher than the board core dry density; and

(iv) the board has a nail pull resistance according to ASTM C473-10, Method B of at least 30.8 kg or 302.48 N.

Claim 12 is an independent claim with similar features to claim 1. It is also to a composite gypsum board with a core and a concentrated layer. This claim also refers to a strength enhancing starch which is present in the concentrated layer but only optional in the board core. I note that the concentrated layer and core do not refer to a slurry but instead are formed from at least water, stucco and, if present, the strength enhancing starch.

This claim also defines the dry density of the core which is said to be about 30 pcf (about 481 kg/m3. Board core density is discussed at paragraph [0064], Mr Sucech said that back calculating the board core density from other parameters is provided.[45] He noted that the exemplified densities are from about 25 pcf (example 10) to about 30 pcf (example 4).[46]

a) board core comprising set gypsum formed from at least water, stucco, and optionally, a strength enhancing starch, the core having a density, the core defining a first core face;

b) a concentrated layer formed from at least water, stucco, and the strength enhancing starch, the concentrated layer disposed in bonding relation to the first core face, the starch concentrated layer having a density of at least about 1.1 times higher than the density of the board core; wherein:

(i) the concentrated layer is formed from a greater amount of the strength enhancing starch than the amount used in forming the board core;

(ii) the concentrated layer has a Young's modulus that is at least about 1.5 times higher than a Young's modulus of the board core; and

(iii) the board has a nail pull resistance according to ASTM C473-10, Method B, of at least about 68 lbs of force (about 302 N).

Like claim 1 and claim 12, claim 17 is to a composite gypsum board with a core and concentrated layer. Like claim 12 these layers do not need to be formed from a slurry. The difference between claim 17 and claim 12 is that instead of requiring a dry density of the core, claim 17 requires the concentrated layer to have a Young's modulus that is at least about 1.5 times higher than that of the board core. This feature is discussed at paragraph [0084], Mr Sucech noted that he could not see this feature measured in any of the examples but stated:

"I understand that the Young's modulus of a material tends to increase proportionally with the hardness of a material. I would therefore expect the concentrated layer to inherently have a higher Young's modulus than the core, given its purpose in providing additional strength to the composite board and the fact that it has a higher density than the core. However, it is not clear to me from the Patent how to make a board in which the Young's modulus of the concentrated layer is at least 1.5 times that of the board core."[47]

The amendments brought about by Raising the Bar introduced the following piece of legislation under s 40 (2):

(a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art;"

In Merck Sharp & Dohme Corporation v Wyeth LLC (No 3[48]) (MSD), Burley J considered the law of support[49] and also considered s 40(2)(a). His Honour consulted the Explanatory Memorandum, which discussed how the change brought about by Raising the Bar was intended to align the Australian disclosure requirements with those overseas.[50] His Honour then considered s 40(2)(a) in comparison to the EPC and UK Act. He noted that s 40(2)(a) is expressed in terms that are virtually the same as in s 14(3) of the UK Act[51] but noted that the highest courts of the UK have emphasised the influential effect of the EPO Technical Board. I note that his approach is consistent with the approach taken by this office in CSR Building Products Limited v United States Gypsum Company[52] (CSR) which involves the following three steps:

(1) Construe the claims to determine the scope of the invention as claimed,

(2) construe the description to determine what it discloses to the person skilled in the art, and

(3) decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.[53]

When deciding the third question the delegate in Evolva[54] included the following two questions:

(4) Is it plausible that the invention can be worked across the full scope of the invention?

(5) Can the invention be performed across the full scope of the claims without undue experimentation?

In Cytec Industries Inc. v Nalco Company[55] Burley J cited the above office decisions and confirmed that this was the correct approach with the Full Federal Court in Jusand[56] confirming this approach.

The Opponent has argued that the claims should be limited to a pregelatinized starch, which would mirror the outcome in the parent. They argue it in two contradicting ways, one being that the acid-modified starches are within the scope of the claims, and these are not enabled, and the other is that the claims should be limited to pregelatinized starches because this is used in examples 4-10.

The Opponent has made similar arguments to those made in the Parent Opposition. In the Parent Opposition the delegate was considering the term "enhancing additive". This term does not include the word "strength" and furthermore, "additive" is clearly broader than a "starch" as currently claimed. Nonetheless it is useful to consider the delegate's decision in that case. Relevantly the delegate found:

"I consider that the specification, at best, provides a starting point for further research to be conducted by a person skilled in the art. However, changing the enhancing agent from pregelatinized starch is not a simple matter of substituting like for like. Mr Sucech stressed the impact of changing the enhancing additive in the slurries in Sucech #1 at [116]:

"Changing the compositions provided in the examples, to replace pregelatinized starch with one of the other claimed enhancing additives (different starches, polyvinyl alcohol, boric acid, gypsum-cement, nanocellulose, and/or microcellulose), may necessitate a complete reformulation of the slurry composition and changes to the processing parameters for the boards. This is because different additives can have different effects on slurry fluidity, water demand, drying conditions, setting time etc."

Here, many other enhancing additives are discussed along with the different starches and it could be argued that changing from a pregelatinized starch to another strength enhancing starch is a far less cumbersome exercise. However, the Applicant choose not to file evidence in this opposition and therefore there is no evidence for me to weigh that possibility. Instead I only have the evidence of Mr Sucech who explains:

"[C]hanging a parameter such as the type of strength enhancing starch or even the amount of strength enhancing starch, is not necessarily straightforward. This is because so many aspects of the board core/concentrated layer composition interact e.g. the type of additive, the amount of water required, the effect on foaming, whether a dispersant is needed, etc. As the composition changes, the conditions required to produce the slurry, set and dry the board etc. also change. It would take substantial trial and error for the skilled person to successfully substitute the pregelatinized starch used in examples 1 and 3 to 10 with each of the different potential strength enhancing starches noted in the Patent (such as hydroxyalkylated starches, other uncooked starches, acid-modified starches, etc.) and/or change the amount of strength enhancing starch in a board so as to achieve a lightweight board with the required strength properties, according to the Patent."[57]

Here Mr Sucech has said it would take substantial trial and error to substitute the pregelatinized starches with another strength enhancing starch as many other factors are affected, such as foam and the amount of water.

Example 2 does test a range of starches in a disk which are purportedly representative of the concentration layer. However, as I have noted above the conditions used include drying at low temperatures. This clearly affected the migratory starches,[58] with them appearing to be strength enhancing when they are not. Mr Sucech also noted the presence of STMP and the long drying time would have allowed for greater crosslinking. Mr Sucech also noted that:

"The strength results reported for the disks, certainly for those containing migrating starches with STMP, would have benefited from the unrealistic drying conditions of 110°F for 48 hours. I do not believe that these results would be generalisable to composite gypsum boards, particularly for the wide range of starches suggested, without significant alterations to the formulations for the composite boards." [59]

Although these appeared to provide greater nail pull resistance, they are unlikely to be transferable to the composite boards as claimed. Furthermore, there is no evidence to the contrary that other starches would be easily enabled.

The Opponent has provided compelling evidence as to why the conditions of example 2 would not be directly transferable to a composite board of the current claims and their expert has said that "substantial trial and error" would be needed to substitute the pregelatinized starches in examples 1 and 3 to 10. In my view, the question of whether or not this "substantial trial and error" would amount to an undue burden could have been argued by the Applicant with either evidence or through submissions. Given that the Applicant has chosen not to file either I am left to decide solely based on the evidence in front of me, that of the Opponent. On the balance of probabilities I consider that the "substantial trial and error" amounts to an undue burden and the specification lacks a clear enough and complete enough disclosure for composite boards made with strength enhancing starches other than the pregelatinized starches.

Optional strength enhancing starch in the board core

The Opponent argued that the claims do not require a strength enhancing starch in the board core. They asserted that the patent application does not provide clear enough and complete enough disclosure of a gypsum board where a no strength enhancing starch is used in the board core that meets the nail pull requirements. This argument was made in the Parent Opposition where the delegate found that it would not be an undue burden for a person skilled in the art to prepare a composite board as claimed without an enhancing additive in the core.[60] The Opponent has not provided any evidence in this opposition that would make me consider that making a core without a strength enhancing starch would be an undue burden. It follows that I do not consider this argument to succeed.

The Opponent has argued that if the strength enhancing starch encompasses the acid-modified starch, then the claims would be invalid. The example experiments run by the Opponent in SS-18, indeed show there would appear to be an issue if acid modified starches were used. However, based on the evidence of Mr Sucech, I have construed the term "strength enhancing starch" not to extend to the acid-modified starches. Therefore, this alternative argument does not require further treatment as it is not within the scope of the claims.

The Opponent argued that the construction of claims 12 to 23 is that these claims do not require the composite gypsum board to be made from separate slurries. Their argument focuses on the use of the words "forming" used when the specification is describing how the core is made. This argument was also made in the Parent Opposition, in that decision the delegate found that since there are two distinct layers in the composite board, that being the concentrated layer and the core, nothing turns on how the slurries must be made.[61] I agree with the delegate in that decision. Both the independent claims 12 and 17 require that the concentrated layer has more strength enhancing starch than the board core. Even if a single slurry were made at first adjustments would need to be made to the concentrated layer. There is no evidence that any particularly way of making the boards with these would be an undue burden. Based on the evidence and the submissions I do not see how this argument can succeed for lack of a clear enough and complete enough disclosure.

Once again, the Opponent pressed this argument in the parent, and once again, there are no new evidence or submissions that would warrant a different outcome. The claims are to a large range of thickness of the concentrated layer, 0.05 cm to 0.23 cm, however, in the examples the thickness of the concentrated layer range from 0.0635 cm to 0.1016 cm. I do not consider that it would be an undue burden for a person skilled in the art to adjust the thickness of the concentrated layer. The upper limit of 0.23 cm is said to be unusually thick,[62] but not that such a thickness would be an undue burden to make. This does not cause a lack of clear enough and complete enough disclosure.

Young's modulus of the board core compared to the concentration layer

The Young's modulus is a mechanical property of a material. The thrust of the Opponent's argument is that this property has not been measured in the examples. Mr Sucech stated that since it is not measured, it is not clear how it is done for the individual layers:

"Integer e defines that the concentrated layer has a "Young's modulus that is at least about 1.5 times higher than a Young's modulus of the board core". I do not consider this to be exemplified in the Patent. The Young's modulus is not measured in any of the examples. Thus, it is not clear to me how to make a board that satisfies this requirement. Furthermore, no explanation of how to measure the Young's modulus of the concentrated layer in isolation of the composite board is provided anywhere in the Patent. To my knowledge, the Young's modulus (or modulus of elasticity) is not commonly measured for gypsum boards and certainly not for isolated concentrated or hardfacing layers."[63]

Although it may be uncommon to measure this feature in gypsum boards, this does not appear to be an undue burden for the PSA to put into practice. The Opponent's submissions did not focus on the issue of measuring the Young's modulus of the layers separately. Given that I consider the board to be made of distinct layers I am not convinced making a piece of concentrated layer and a piece of board core and measuring the Young's modulus would be an undue burden.

There is no evidence that a PSA could use the teachings from the specification, such as those of example 2, to make composite gypsum boards having the required pull strength using starches other than pregelatinized starches. It would be an undue burden to work the invention using starches beyond these. The term "strength enhancing starch" is used in independent claims 1, 12 and 17, none of the dependent claims narrow to the use of only pregelatinized starches, consequently, all of the claims lack a clear enough and complete enough disclosure.

The amendments brought about by Raising the Bar introduced the following piece of legislation under s 40 (3):

"The claim or claims must be...supported by matter disclosed in the specification."

Burley J discussed the law of support in MSD. His Honour accepted the rationale outlined in the CSR decision.[64] In Jusand the Full Federal Court took the same approach[65]

In CSR the delegate provided a three-step approach:

(1) construe the claims to determine the scope of the invention as claimed,

(2) construe the description to determine the technical contribution to the art, and

(3) decide whether the claims are supported by the technical contribution to the art.[66]

The technical contribution may be a general principle:

"if [the patentee] has disclosed a beneficial property which is common to the class, [the patentee] will be entitled to a patent for all products of that class (assuming them to be new) even though [the patentee] has not himself made more than one or two of them."[67]

The Opponent relied on their submissions on s 40(2)(a) for support but added that the same reasoning applies where there is a lack of a clear enough and complete enough disclosure then it follows that the technical contribution to art is also left wanting and thus results in a lack of support. In many cases, the inquiries into sufficiency and support are two sides of the same coin.[68]

In the opposition to the parent the delegate found that the technical contribution was limited to a gypsum board with pregelatinized starch [132]:

"The Applicant's contribution to the art resides in producing a composite gypsum

board with a concentrated layer enhanced by pregelatinized starch. Although the specification names other candidates for the enhancing agent, given the varied mechanisms for imparting strength and suggested quantities for each of the alternatives, the specification does not enable the full breadth of the enhancing agents in the composite gypsum board."

The delegate then concluded that claims were not supported by stating at [138] and [139]:

"I agree with the Opponent that, despite the specification providing some additional information on the alternative enhancing agents at [0115]-[0118], the claimed invention exceeds the technical contribution the specification makes to the art. As noted in CSR 2015 at [110], an important consideration when considering support is whether the technical contribution is a general principle or the specific examples in the specification. The contribution to the art made by the present application resides in the use of pregelatinized starch in the concentrated layer, which forms part of the body of a composite gypsum board. While the pregelatinized starch may have been added for the purposes of enhancing the concentrated layer, a broad term such as an enhancing agent does not constitute a principle of general application. In the absence of a principle of general application, the specific use of pregelatinized starch in the composite gypsum boards is the Applicant's contribution to the art."

Given that there is no new evidence that would support the technical contribution including strength enhancing starches more broadly, I have no reason to depart from the decision above. Therefore the claims lack support.

The Opponent also argued further points from s 40(2)(a), I have found that these did not give rise to a lack of clear enough and complete enough disclosure, it follows that these points do not result in a lack of support.

The claims lack support because the technical contribution relates to pregelatinized starches and the scope of the claims extends to other strength enhancing starches. This issue is present in each of the independent claims 1, 12 and 17 and none of the dependent claims narrow the board to use PG starch. Consequently, all of the claims 1-23 lack support.

It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, is novel. Subsection 7(1) states that an invention is considered novel unless it is not novel compared to prior art information. The Act then states that prior art information can be information made publicly available in a single document.[69]

The well-established test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd:

"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".[70]

This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed.[71] In reviewing a citation one must look at the citation to determine what it tells the skilled reader to do. Determining what is taught or disclosed can require some treatment.

Australian courts have often cited with approval the words of the UK Court of Appeal in the General Tire[72] case which provides guidance on assessing a disclosure for novelty. It is useful to look at that discussion in full from pages 485-486:

"If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee's claim if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated.

If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee's claim the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented. A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee."[73] (citations omitted).

In General Tire, the requirement for clear and unmistakable directions in the prior publication is well known. However, it also states that if carrying out the directions in the prior art leads inevitably to doing something within the scope of the claim in suit, then there will be a lack of novelty. This inevitable consequence of carrying out the directions in the prior art occurred in Novozymes v Danisco[74] with Jessop J providing the following guidance with Yates J and Greenwood J concurring:

"In my view, the General Tire approach, if taken at all, may be taken only with respect to the whole of any claim asserted to have been anticipated. The "precise destination" at which the flag must have been planted is one which includes every integer of the claim. The approach cannot, in my view, be taken for some integers only, leaving others to be dealt with by reference to the understanding of the skilled addressee. In the present context, what this means is that, to the extent that the appellants' case is based on General Tire, it is not sufficient that they be able to point to passages in the Novo patent from which it would appear to the skilled addressee that inactivation was contemplated or intended by the earlier inventors. It is necessary that they show that, if example 20 were worked as directed, it would inevitably, as a matter of hard fact, have involved inactivation of the enzyme (to the standard set up under Claims 1 and 7 of the patent in suit as identified by the primary Judge) at the baking stage." [75]

The Opponent raised the same document which was raised in the Parent Opposition, D1:

In the Parent Opposition the delegate found the following:

"I agree with the Opponent insofar as the facing core layer of D1 being comparable to the concentrated layer as defined in the present application if and when it is formulated to have a higher concentration of strength additives and a higher density than the non-facing core layer. However, as noted by the Applicant, D1 does not provide clear and unmistakable directions for making a composite gypsum board with a facing core layer having the required dry density with the required thickness range and including a strength additive, where such a board would also have a minimum nail pull resistance according to ASTM C473-10, Method B, of at least 30.8 kg."

"a board comprising, consisting essentially of, or consisting of a multilayer core comprising, consisting essentially of, or consisting of a first cementitious layer having a first density and a first thickness, and a second cementitious layer having a second density and a second thickness. The first density is higher than the second density, and the ratio of the first thickness to the second thickness is from about 1:1 to about 1:3."[76]

The multilayer board in D1 is said to have a nail pull resistance of a minimum nail pull resistance according to ASTM C4 73, Method B of about 77 lbs of force.[77] This nail-pull resistance converts to 34.9 kg.

There are three figures from D1 which illustrate the boards made, one of them being figure 2 which is reproduced below:

FIG. 2 schematically illustrates a two-layer core board 200 in accordance with an embodiment of the present invention. The board has facer material 11 and 12 and skim coats 21 and 22. The core has two cementitious composition layers 32 and 41. The core layer 41 has a higher density than the density of core layer 32. Increased nail pull resistance is realized when a nail punctures the facer material 11 and skim coat 21 and enters the core layer 41 of 200, as compared to when the nail punctures the facer material 11 and skim coat 21 and enters core layer 31 of 100, as in accordance with the present invention.[78]

D1 has three examples. Each of these make ½ inch boards with some being a single layer or two-layered. In all three examples pre-gelatinized corn starch is used. Foams are also used in some of the examples. In the examples 2 and 3 many of the boards are thicker than the 0.05 to 0.23 cm of the 1st layer (concentrated layer). Example 2 reads as follows:

The boards made using this protocol appear to be outlined in tables 9 and 10. The thickness of the boards is given in fractions of inches, which are a system of measurement which has not been used in the Australian building and construction industry since 1976. I will convert them to metric where appropriate.

The nail pull resistance of these boards is also given in the table below.

More boards with multiple cores with increased nail-pull resistance are made using the protocol in example 3 shown below:

The boards made using this protocol are said to have starch in the second layer noting that only board C has two layers.

The density and nail-pull resistance of these boards is given below.

The current claims require the thickness of the concentration layer to be between 0.05 cm to 0.23 cm. For reference 1/8th of an inch is 0.3175cm, 1/16th of an inch is 0.15875cm and 3/16th of an inch is 0.47625cm. As can be seen from the table above only board 7 (in table 10) has the first layer thickness of 1/16th of an inch (0.15875cm), however, this board does not use the pregelatinized starch (PG starch) and is therefore not within the scope of this feature of the opposed claim 1. Claim 1 also requires that the second water-stucco ratio be at least about 1.2 times higher than the first water-stucco ratio. The experimental data given in D1 does not teach a difference in the water-stucco ratios between the two layers.[79] D1 does discuss different densities between the layers[80] and does teach that density can be achieved by lowering the water-stucco layer of a particular layer,[81] however, varying the layers as defined in the claim is not specifically disclosed.

Claim 12 requires that the concentrated layer is formed from at least about 1.2 times the strength enhancing starch than in forming the board core. Mr Sucech said that in his opinion this feature is "not explicitly disclosed".[82] There are, however, examples where the strength enhancing starch is used in the 1st layer and not in the second layer. In my view, this is greater than at least about 1.2 times the strength enhancing starch of the core. Boards 13 and 14 in example 2 have PG starch in the 1st layer and not the second layer. I note that board C in example 3 (table 11) has equal quantities of PG starch in both boards.

Claim 12 also requires that the dry density of the core is about 30 pcf (about 481 kg/m3) or less. Only boards 13 and 14 have PG starch in the 1st layer and not the second layer which satisfies 1.2 times the strength enhancing starch. The density of the core is not given on its own, however, the dry density of boards 13 and 14 is given in table 10. Board 13 has a density of 27.68 pcf and board 14 has a density of 30.71 pcf. Given that the figure in the claim is said to be "about" and no decimal places are given I consider both boards 13 and 14 would have a core density of about 30 pcf or less.

The next feature of claim 12 is that the dry density of the concentrated layer is at least 1.1 times higher than the board core dry density. This feature is not specifically disclosed in the examples of D1,[83] however, D1 does discuss embodiments where the layers have different densities:

"The core layers of the present invention can have various densities. In some embodiments, for a two-layered or three-layered core board as described herein, the density of the first core layer can be from about 35 lbs/ft3 to about 70 lbs/ft3"[84]

"In some embodiments, the density of the second core layer can be from about 25 lbs/ft3 to about 40 lbs/ft3.[85]"

It is clear that there is some overlap between 35-70 lbs/ft3 and 25-40 lbs/ft3 which would include embodiments were the first layer is 1.1 times higher than the second layer. Certainly D1 envisages that the first layer is denser than that of second layer, this is further supported by the following disclosure:

"An embodiment of the present invention includes where the second core layer, having the lowest density, is in-between the first core layer and the third core layer, the first core layer and the third core layer each having higher densities than the second core layer."[86]

It is also relevant to consider boards 13 and 14 which have a concentration layer which contains PG starch and a layer which does not contain PG starch. In this scenario the concentration layer is likely to have a dry density that is higher than the board core. However, the specific ratio as claimed cannot be readily determined on the disclosure of D1 alone and the evidence presented only points to the disclosure above.[87] Indeed there is overlap between the ranges of 35-70 pcf and 25-40 pcf disclosed in D1 which would result the ratio of 1.1, but there are also ratios which are not. Based on the limited evidence on this I do not consider that the Opponent has discharged its burden of proof on the balance of probabilities that this ratio would be arrived at if the clear and unmistakable directions of D1 are followed.

Claim 17, like claims 1 and 12, requires that the concentration layer contains at least about 1.1 higher density in the concentration layer compared to the core layer but also that the concentration layer be formed from a greater amount of strength enhancing starch than the core and also contains a feature about the Young's modulus. Claim 17 requires the concentration layer have a Young's modulus that is at least about 1.5 times higher than a Youngs modulus of the board core. I note that claim 17 does not list the nail pull resistance in kg but instead states 68 lb of force and about 302 N in brackets. This is fewer decimal places of Newtons of force than that given in claims 1 and 12 and I understand the claim to require a that degree of precision. Sucech admits that the Young's modulus is not disclosed in D1 but states that he would expect this to be higher in the first and third layers than that of the second layer. Given my conclusion about the density ratio in claim 12, it follows that it has not been established that this feature is disclosed in D1 and consequently claim 17 is not anticipated.

The Opponent submitted that this case involves a particular scenario of ranges, such as the thickness of the concentrated layer in claim 1, that do not require absolute certainty or that they are "parameteritis" citing: Hanwha Solutions Corporation v REC Solar Pte Ltd [2023] FCA 1017 at [505]- [506]] and Williams Advanced Materials Inc v Target Technology Co LLC [2004] FCA 1405; (2004) 63 IPR 645 at [48], [99]. The relevant principles were set out recently by Burley J in Hanwha.

(a) this is a question of fact based on the circumstances of the case

(b) a distinction should be "drawn between a case where a range is specified together with a set of variables that is so broad as to be a far cry from a clear and unmistakable direction"[88]

Applying those principles, his Honour held at [506] that a prior art disclosure of a range of 5 nm to 200 nm involved a disclosure of the claimed thickness of less than 50 nm, even though the majority of the prior art range was outside the claimed range. His

"...Isaka simply teaches and recommends that a solar cell may be made using as its passivating film an aluminium oxide that is anywhere within the specified range, a substantial portion of which is within the range identified in claim 9. In this regard, it is perhaps not irrelevant to note that the disclosure of the patent in suit in the present case provides no indication that the range selected of less than 50 nm has any material bearing on the performance of the solar cell. Nor does the expert evidence indicate that there is any basis upon which the person skilled in the art reading Isaka would consider anywhere within the specified range (including less than 50 nm) was unsuitable to use when producing a passivating film of aluminium oxide and silicon nitride."

Similarly parameteritis can be described as an attempt to re-patent the prior art by limiting the claims by reference to a series of parameters not mentioned in the prior art.[89]

In the current case there is indeed a range for the thickness of the concentrated layer in claim 1 as well as the range for the water stucco ratio in D1 for claim 12 and the Young's Modulus in claim 17.

The citation, however, does not provide a disclosure of a possible range for this feature for the concentrated layer. Instead there are several layered boards made and if one considers one layer to be the concentrated layer and then other layer to be the board core then there is one example in which the first layer (if considered the concentrated layer) that would be within the scope, however, in this example other features of the claim are missing (such as the presence of PG starch). There are not clear and unmistakable directions to change the thickness of the layers along with the amounts of PG starch used in that particular layer compared to the other layer.

D1 does disclose a range for the water to stucco ratio of 35-70 pcf and 25-40 pcf which would result the ratio of 1.1 which is a feature of claim 12. I do not consider that this has no material bearing on the performance of the board. One of the main functions is to have a concentrated layer which provides nail pull strength and a core which is thicker. This feature does result in the concentrated layer being more concentrated, particularly in the absence of the thickness feature of claim 1. Consequently, the Opponent has not discharged its onus in regard to claim 12.

The Young's modulus feature is not disclosed in D1, however, similar to my findings above, I do not consider this has no material bearing on the performance of the board. Consequently, the Opponent has not discharged its onus in regard to claim 17.

In view of the above the ground of lack of novelty fails.

It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, involves an inventive step. Subsection 7(2) states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art (subsection 7(3)).

The test for whether an invention is obvious is to ask whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd[90] Aickin J stated:

"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."

In Alphapharm,[91] the High Court endorsed the use of the reformulated "Cripps question":

"Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art and of the facts of the nature and success of [the prior art], directly be led as a matter of course to try [the invention], in the expectation that it might well produce a useful alternative to or better drug than [the prior art] or a body useful for any other purpose?"[92]

This has been elaborated on in the Full Federal Court's decision Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft:

"We do not think that the plurality in Alphapharm were saying that the reformulated Cripps question was the test to be applied in every case. Rather, it is a formulation of the test which will be of assistance in cases, particularly those of a similar nature to Alphapharm. The plurality did not reject as an alternative expression of the test the question whether experiments were of a routine character to be tried as a matter of course (The Wellcome Foundation Limited v VR Laboratories (Aust) Proprietary Limited (1981) 148 CLR 262, at 280‑281, 286, per Aickin J). We do not think there is a divide here in terms of whether an expectation of success is relevant between a test which refers to routine steps to be tried as a matter of course and the reformulated Cripps question. It is difficult to think of a case where an expectation that an experiment might well succeed is not implicit in the characterization of steps as routine and to be tried as a matter of course."[93]

It is clear that this test requires only routine steps to be undertaken and that there is an expectation is that a useful result might come from them. In Nichia Corporation v Arrow Electronics Australia Pty Ltd[94] (Nichia) the Full Federal Court said the expectation does not mean that it is necessary to know or be able to predict that useful result and a useful alternative is one which is useful when compared to the prior art in the field of the invention.[95] This was further elaborated on by the Full Federal Court in Mylan[96]:

"The reformulated Cripps question does not require certainty of outcome. It requires that the skilled addressee be directly led as a matter of course to try the claimed invention in the expectation that a particular research path "might well produce" a useful result (Hässle v Alphapharm at [53]). It does not require the skilled addressee to know that the steps will produce a useful result."[97]

I note that more than one thing may be obvious, and other steps or solutions might be tried first.[98]

As Aickin J stated in 3M v Beiersdorf[99], common general knowledge is the background knowledge and experience available to all those working in the relevant art:

"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."[100]

However, it is not enough that information is recorded in a document, even if that document is widely circulated - it is only part of the common general knowledge when it is generally known and accepted:

"...information does not constitute common general knowledge merely because it might be found, for example, in a journal, even if widely read by persons in the art ... Reference in this regard is made to the words of Luxmoore J in British Acoustic Films (1936) 53 RPC 221 at 250, cited by Lehane J in Aktiebolaget Hässle v Alphapharm Pty Ltd (1999) 44 IPR 593; [1999] FCA 628 at 605 [39]:

In my judgment it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less because it is widely circulated. Such a piece of knowledge only becomes general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art."[101]

In the Parent Opposition the parties agreed the following was common general knowledge:

(a) General knowledge of how to formulate and produce gypsum boards, including the fundamentals and what generic ingredients would be used;

(b) Relevant standards to which commercial gypsum boards must comply (including the nail pull test);

(c) Manufacturing systems and analysis techniques for gypsum boards;

(d) The use of skim coats (including methods and equipment for thickness control) in gypsum boards; and

(e) General use of additives, such as foaming agents, dispersants, fluidisers, fillers and the like.[102]

The delegate went on to discuss the use of a basic slurry of stucco and the various additives commonly used in gypsum.[103]

These are not inconsistent with the Opponent's submissions in this opposition. However, in the Parent Opposition the use of skim coats was discussed, and the delegate was not satisfied that it was CGK to introduce additives into the skim coat that were not in the core.[104]

In the current opposition the Opponent submitted that layers were used between the core and the covering sheet and that these were often densified or known as "hard facing" layer.

Sucech stated that the thickness and density of the hard facing layer was not typically measured, however, did make the statement that hard facing layers have a density of 25-35% higher than that of the core for example.[105]

Sucech discussed the hard facing layer and from his evidence suggested that improvements to improve nail pull resistance such as increasing thickness had been tried but had not worked well.[106] However, the original purpose of this layer was to improve paper-to-core bonding[107]

At a glance

Court

Decision date

Before

Source

Judgment (268 paragraphs)

Parties

Cases Cited (8)