Home | Databases | WorldLII | Search | Feedback Intellectual Property Office of New Zealand - Patents Decisions

Johnson Electric S.A.v Emerson Electric Co [2014] NZIPOPAT 7 (4 April 2014)

Last Updated: 5 May 2014

IN THE INTELLECTUAL PROPERTY OFFICE OF NEW ZEALAND

[2014] NZIPOPAT 7

IN THE MATTER of the Patents Act 1953

AND

IN THE MATTER of an application for Letters Patent No 567793 in the name of Johnson Electric S.A.

Applicant

AND

IN THE MATTER of opposition to said application under section 21 by Emerson Electric Co

Opponent

Hearing: 12 December 2013

C Elliott QC and K Crooks for the Applicant

A Brown QC and J Hogan for the Opponent
DECISION OF AN ASSISTANT COMMISSIONER OF PATENTS

1. Notice of acceptance of the complete specification was published, pursuant to section 20(2), in Patent Office Journal No 1562 on 28 August 2009.

2. A Notice of Opposition was filed on 28 December 2009 and was followed by Amended Notices of Opposition on 27 March 2010 and 24 November 2010. A Statement of Case was filed on 27 March 2010 and was followed by an Amended Statement of Case on 24 November 2010. Grounds (b), (e) (first limb), and (g), as set out in section 21(1), are pleaded by the Opponent.

3. The Applicant filed a Counterstatement on 29 July 2010 and an Amended Counterstatement on 28 January 2011. The first Counterstatement contained an annexure comprising an application to amend the claims under section 38. Corresponding amendments were proposed to the body of the specification. The Applicant acknowledges the locus standi of the Opponent, but denies all grounds of opposition.

Locus standi

4. As stated above, the Applicant acknowledges the locus standi of the Opponent. I find that the Opponent has locus standi in this proceeding.

The onus of proof

5. Both parties reminded me that the onus of proof in opposition proceedings is on the Opponent and that the purpose of opposition proceedings is to clear the Register of patents which are manifestly untenable; thus, the benefit of any doubt must be resolved in favour of the Applicant.

6. Rodney Hansen J, in Huhtamaki Australia Pty Limited v Seda SpA (HC Auckland, CIV 2010-485-509, 19 April 2011), stated:

[10] [Opposition proceedings] are designed to clear the Register of patents which are manifestly untenable. They are not intended to provide a method of disposing of truly contentious cases - General Electric Co (Coxs) Patents [1977] RPC 421 at 437. If there is a conflict of credible evidence, the Commissioner should not refuse the grant of a patent unless the conflict is clearly resolved in favour of the party opposing the grant [General Electric Co’s Applications [1964] RPC 413 (CA) at 453; Beecham Group Ltd v Bristol-Myers Co (No 2) [1979] NZCA 64; 1979 NZLR 629 (SC)]. At the examination stage, the application should be allowed to proceed unless on no reasonable view can it be regarded as meeting the requirements of the Act

[11] The onus on the opponent has been explained by reference to the interests of justice and the concern that, except in a clear case, the applicant should not be denied the opportunity of propounding the patent in revocation proceedings. The following passage from the judgment of Buckley LJ in Dunlop Holdings Ltd’s Application 1979] RPC 523 at 544-545 is often quoted:

lf on the assessment of all the evidence adduced, regarded in the light of the civil standard of proof, the tribunal were to reach the conclusion that, if the application for a patent were dismissed, there would be a real risk that an injustice might be done by depriving the applicant of any opportunity to protect his right to the patent in a full scale revocation action in the High Court, it seems to me at least arguable that special weight should be given to that consideration by the tribunal hearing the opposition proceedings in considering what degree of certainty it should have in relation to the alleged grounds of opposition. It is for the tribunal hearing the opposition proceedings to determine, on the balance of probabilities, what degree of risk of that kind there is. I would think that that would be one of the circumstances that it would be proper for the tribunal to take into account in considering whether, on the balance of probabilities, the opponents had succeeded in making out their case.

[14] I propose to approach the appeal on the basis which appealed to Barker J in Beecham Group Ltd v Bristol-Myers Co (No 2):

I shall ask myself the questions in respect of each ground of opposition; is the claim to the patent in suit “manifestly untenable”? Is there a prima facie case for the grant of the patent? Does the justice of the case require the applicant to be permitted to resist the claim for invalidity in properly constituted revocation proceedings? All these tests, although differently stated really amount to the same thing.

7. Mr Brown, for the Opponent, also referred me to Hasan v Ministry of Health & Others [2012] NZIPOPAT 2 at 094, 9 February 2012, in which Assistant Commissioner Hazlewood stated:

In opposition proceedings the burden is on the opponents to establish invalidity, the standard of proof is the balance of probabilities, however in certain circumstances the burden of proof can shift to the patent applicant. The opponents say this is important in the present case due to lack of evidence. Shift in proof was referred to in Carter Holt Harvey v Weyerhaeuser Company (HC Auckland CIV-2009-485-000244, Duffy J, 31 March 2010), (Carter Holt Harvey) at paragraphs 17 and 18:

Nonetheless, there will be times when the efforts of the opponent in opposition proceedings manages to, on the evidence, shift the onus of proof to the applicant. This was recognised by Barker J in Beecham Group Ltd v Bristol-Myers Company (No 2) [1980] 1 NZLR 192 (SC). Although an appeal against the judgment was later allowed in part (Beecham Group Ltd v Bristol-Myers Company [1981] 1 NZLR 600), it was not in relation to this aspect of the judgment. At 212 Barker J said:

...whilst the overall onus to prove obviousness or anticipation in opposition proceedings rests on the opponent, that onus may shift, if on a consideration of the documents alone and without the necessity for cross-examination to resolve any conflict, the opponent makes out a prima facie case, on the balance of probabilities. In that event, the applicant [i.e. the patentee] may then bear the onus to rebut this conclusion.

8. Mr Elliott accepted that in some cases the onus may shift, but said that, in his view, it is an extreme situation. It is basically saying that if the documents themselves provide a very clear picture there is no need to cross examine on them. According to Mr Elliott that is clearly not the case here; in fact he would contend that, in the present case, the Opponent’s evidence clearly does not establish Insufficiency and therefore there is no reason to shift the onus. I discuss this matter further below.

9. The Opponent’s evidence, in the form of Statutory Declarations, is as follows:

• David BURNETT, Manukau City, Auckland, New Zealand, a Plumber of C-Jays Services, declared on 27 July 2011.

• Professor David Henry SOLOMON, Melbourne, Australia, a Professorial Fellow in the Department of Chemical and Biological Engineering at the University of Melbourne, declared on 21 March 2011.

• John Patrick HOGAN, Sydney, NSW, Australia, a registered Australian and New Zealand Patent Attorney employed by FB Rice, declared on 27 July 2011.

10. The Applicant’s evidence, in the form of Statutory Declarations, is as follows:

• Scott Charles Milroy PHILP, Sydney, Australia, a Registered Australia and New Zealand Patent Attorney employed by Shelston IP, declared on 27 January 2012

• Neil EDMONDS, Auckland, New Zealand, Director, Polymers & Coatings, a Senior Lecturer, Department of Chemistry, and Manager, Plastics Centre of Excellence, at the University of Auckland, declared on 31 May 2012.

• Charles David CHAPMAN, Auckland, New Zealand, the owner Aaron Appliance Repair Company Limited, declared on 31 May 2012.

11. The Opponent filed evidence in reply in the form of a Statutory Declaration by Stephen FALVEY, Lower Hutt, New Zealand, who has been involved in the plastics industry since 1972 in Germany and New Zealand. However, in Johnson Electric S.A. v Emerson Electric Co [2013] NZIPOPAT 23 (17 September 2013) it was held that this evidence was not admissible because it was not strictly in reply as required by section 51.

The nature of the invention

12. The first section of the complete specification, which is entitled “Food Waste Disposal Unit”, on pages 2 and 3, reads as follows (with the additional text, corresponding to the amendments, discussed below, proposed by the Applicant to the claims, indicated by underlining):

FIELD OF THE INVENTION

This invention relates to a food waste disposal unit.

BACKGROUND

Food waste disposers, especially those designed for domestic use, are often installed under a sink where they are directly attached to the drain of the sink. As such, the disposer is located in a prime position in the kitchen.

Food waste disposal units grind up food waste so that the matter can be disposed of through the domestic sewage system. This grinding process produces considerable noise which is generally tolerated in order to complete the task but there is a desire to reduce the level of noise. Typical attempts to reduce the noise of such units has involved the wrapping of the unit in noise absorbing foam materials. This reduces the noise but there is still considerable noise coming from the grinding chamber, especially when grinding bones and other hard food Waste.

It is an object of the present invention to overcome or ameliorate at least one of the disadvantages of the prior art, or to provide a useful alternative.

SUMMARY OF THE INVENTION

Accordingly, the present invention provides a food waste disposer, comprising: a housing defining a grinding chamber having an inlet and an outlet; and a grinding mechanism disposed within the housing including: a shredder ring; a grinding disc; and an electric motor, for rotating the grinding disc and having an output shaft; and a liner disposed within the grinding chamber adjacent an inner surface of the housing, the liner being an annular ring of high density plastics material.

Unless the context clearly requires otherwise, throughout the description and the claims, the words “comprise”, “comprising”, and the like are to be construed in an inclusive sense as opposed to an exclusive or exhaustive sense; that is to say, in the sense of “including, but not limited to”.

Preferably, the liner extends upwardly from an upper edge portion of the shredder ring.

Preferably, the liner extends from the shredder ring to an upper edge portion of the grinding chamber.

Preferably, the liner extends from the shredder ring to the inlet.

Preferably, the liner is in direct contact with the inner surface of the housing.

Preferably, the liner is an annular ring of plastics material.

Preferably, the plastics material is a high density plastics material.

Preferably, an inner diameter of the liner matches an inner diameter of the shredder ring.

Preferably, the grinding chamber has a portion which is conical and joins a lower cylindrical portion to the inlet, and the liner extends over the conical portion.

Alternatively, the grinding chamber has a portion which is conical and joins a lower cylindrical portion to the inlet, and the liner does not extend over the conical portion.

Preferably, the grinding disc has a number of swivel pushers for impacting on the waste.

Preferably, the shredder ring has a plurality of fingers which extend inwardly into the interior of the grinding chamber at circumferentially spaced locations, at least some of the fingers being located at a different axial spacing than the other fingers.

Advantageously, the present invention at least in a preferred form provides a food waste disposer which reduces the noise of a food waste disposal unit by reducing the amount of noise produced by the grinding chamber. Advantageously, this is achieved by placing a liner within the grinding chamber to prevent or limit direct contact between the hard food waste and the housing of the grinding chamber.

13. The claims read as follows, with the amendments proposed by the Applicant in the “annexure comprising an application to amend the claims under section 38”, which accompanied the first Counterstatement, dated 28 January 2011, indicated by double strikethrough (deletions) and underlining (additions):

1. A food waste disposer, comprising:

a housing defining a grinding chamber having an inlet and an outlet; and

a grinding mechanism disposed within the housing including: a shredder ring; a grinding disc; and an electric motor, for rotating the grinding disc and having an output shaft;

wherein a liner is disposed within the grinding chamber adjacent an inner surface of the housing, the liner being an annular ring of high density plastics material.

2. A food waste disposer according to Claim 1, wherein the liner extends upwardly from an upper edge portion of the shredder ring.

3. A food waste disposer according to Claim 1, wherein the liner extends from the shredder ring to an upper edge portion of the grinding chamber.

4. A food waste disposer according to Claim 1, wherein the liner extends from the shredder ring to the inlet.

5. A food waste disposer according to any one of the preceding claims, wherein the liner is in direct contact with the inner surface of the housing.

6. A food waste disposer according to any one of the preceding claims, wherein the liner is an annular ring of plastics material.

7. A food waste disposer according to Claim 6, wherein the plastics material is a high density plastics material.

8 6 A food waste disposer according to any one of the preceding claims, wherein an inner diameter of the liner matches an inner diameter of the shredder ring.

9 7 A food waste disposer according to any one of the preceding claims, wherein the grinding chamber has a portion which is conical and joins a lower cylindrical portion to the inlet, and the liner extends over the conical portion.

10 8 A food waste disposer according to any one of the preceding claims 1 to 6, wherein the grinding chamber has a portion which is conical and joins a lower cylindrical portion to the inlet, and the liner does not extend over the conical portion.

11 9 A food waste disposer according to any one of the preceding claims 1 to 6, wherein the grinding disc has a number of swivel pushers for impacting on the waste.

12 10 A food waste disposer according to any one of the preceding claims, wherein the shredder ring has a plurality of fingers which extend inwardly into the interior of the grinding chamber at circumferentially spaced locations, at least some of the fingers being located at a different axial spacing than the other fingers.

13 11 A food waste disposer substantially as herein described with reference to any one of the embodiments of the invention illustrated in the accompanying drawings and/or examples.

The proposed amendments

14. As pointed out by Mr Elliott, IPONZ advised, in a notice dated 9 August 2010, that the proposed amendments were allowable pursuant to section 40(1). I am satisfied that this is the case and the following discussion relates to the specification and claims as amended.

Insufficiency – section 21(1)(g)

15. Paragraph 6.1 of the Opponent’s Statement of Case reads as follows:

THE Opponent will contend that the complete specification of the Subject Application does not sufficiently and clearly describe the invention, so far as claimed in claim 1 of the complete specification.

16. The Applicant, in paragraph 6.1 of the Amended Counterstatement, dated 28 January 2011, denies this allegation:

Disagree. Basis for the claims including claim 1 can be found in the specification and drawings.

17. At the hearing Mr Brown discussed at some lengths the legal principles governing the ground of Insufficiency, which is defined by section 21(1)(g):

That the complete specification does not sufficiently and fairly describe the invention or the method by which it is to be performed

18. Section 10(3)(b), dealing with the contents of the specification, states that:

[Every complete specification] ... Shall particularly describe the invention and the method by which it is to be performed

19. The relevant date at which the sufficiency of the description must be determined is the date of publication of the complete specification, which is defined by section 20(2) as being the date in which acceptance is published in the Patent Office Journal. This matter was discussed comprehensively by Buckley LJ in Standard Brands Inc’s Patent (No 2) [1981] RPC 499 at 529 to 530:

Over 60 years ago, in Osram Lamp Works Ltd. v. Popes Electric Lamp Co. Ltd. (1917) 34 R.P.C. 369 (a case decided under the Patents & Designs Act 1907) Lord Parker of Waddington in the House of Lords said that the question whether a complete specification was insufficient should be decided as at the date of the patent, that is, at the date of the filing of the application. This observation did not, however, form part of the ratio decidendi of the case, for the House of Lords held that the specification there was not insufficient, and the date was consequently not significant in relation to that decision. In Anxionnaz v. Rolls Royce Ltd. [1967] R.P.C. 419, Lloyd-Jacob J. (at 471, line 47) held that the relevant date was the date of the acceptance of the complete specification. Again the date was not critical to the decision. In American Cyanamid Co. (Dann's) Patent [1970] R.P.C. 306, Graham J. (at 329, line 27) held that the date of filing the complete specification was the relevant date. In that case the complete specification had been filed on 9 September 1960, it was published on 21 August 1963, and the patent was sealed on 23 August 1966. The invention, which was for a chemical composition, involved the use of a novel starting material. This was not commercially obtainable anywhere in the world before 5 January 1966, when it became obtainable with the patentee's consent in the United States of America. It did not become obtainable in the United Kingdom until after the patent was sealed. The complete specification did not disclose how or where the starting material could be obtained. Graham J. held that the specification was insufficient because it did not tell the reader how or where he could procure the starting material. He held that the relevant date for sufficiency was the date of filing and that, as at that date the reader could not tell how or where to obtain the starting material, the patent should be revoked. On appeal to the House of Lords it was held by a majority that there was no obligation upon the patentee to provide the starting material and that the invention was sufficiently described in the complete specification [[1971] RPC 425]. Accordingly the question what was the relevant date for the purpose of sufficiency did not arise. Lord Diplock, however, dissented and held that the relevant date for the purpose of deciding insufficiency was the date of publication of the complete specification. The question arose again in Illinois Tool Works Inc. v. Autobars Co. (Services) Ltd. [1974] R.P.C. 337, when Graham J. following Anxionnaz and the observation of Lord Diplock in Dann’s Patent held that the relevant date was the date of publication. In my judgment that view is to be preferred on principle.

[Emphasis added]

20. That this is the position which is adopted in New Zealand was confirmed, for example, by me in Synthon BV v Smithkline Beecham PLC [2007] NZIPOPAT 15 and by Assistant Commissioner Hazlewood in Ashmont Holdings Limited v Fort Dodge NZ Ltd P19/2003, 16 September 2003.

21. As pointed out by Mr Brown, the definition of insufficiency most often cited in New Zealand is the statement of then Assistant Commissioner Burton, confirmed by Davidson CJ in Noton NZ Ltd v Alister Bevin Ltd (1979) 1 NZIPR 236 at 238:

An allegation of insufficiency is an allegation that the addressee of the complete specification will be unable to produce the subject of the principal or broadest claim by following the directions of the specification without further invention on the part of the addressee.

22. Davidson CJ, in Noton, affirmed that the first step in considering insufficiency (or sufficiency) is to determine the nature of the “invention” which the Applicant wishes to protect, which will be defined in “the principal or broadest claim”, as stated in Mr Burton’s definition. Thus, Davidson CJ, on pages 238 and 239 of Noton, states:

The first portion of that statement where he says, “will be unable to produce the subject of the principal or broadest claim” is a reference to the first leg, namely, the invention. The reference next to “following the directions of the specification without further invention on the part of the addressee” is reference to the method, the second leg of the matter. ...

The question of the sufficiency of a complete specification is a question of fact. If authority is needed for that proposition, it may be found in Blanco White on Patents for Inventions, 4th Edn para 4-505:

Sufficiency of instructions is a pure question of fact, to be determined preferably by the evidence of addressees of the specification.

Reference can also be made on that topic to British Dynamite Company v Krebs (1896) 13 RPC 190 at 192:

In determining whether the Complete Specification is sufficient, the first thing is to ascertain what the invention is. This is a question of construction, and the construction of the Specification is for the Court, to be determined like the construction of any other written instrument, the Court placing itself in the position of some person acquainted with the surrounding circumstances as to the state of art and manufacture at the time, and making itself acquainted with the technical meaning in art or manufacture which any particular word or words may have. When the nature of the invention is thus ascertained by the Court, as a matter of construction, the Court has then to inquire whether the manner in which the same is to be performed is sufficiently described in the Specification to the comprehension of any workman of ordinary skill in the particular art or manufacture; and this the Court can best do by the evidence of workmen of that description have actually done under the patent.

23. This approach was also affirmed by Lord Hoffmann in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2004] UKPC 6; [2005] RPC 169 at page 176:

Whether or not the specification was sufficient or not was highly sensitive to the nature of the invention. The first step was to identify the invention and decide what it claimed to enable the skilled man to do. It was then possible to ask whether the specification enabled him to do it.

24. Gault J, delivering the judgement of the Supreme Court of New Zealand in Lucas v Peterson Portable Sawing Systems Ltd [2006] NZSC 20; [2006] 3 NZLR 721 at [54], discussed the interpretation of a patent as follows:

[25] The first and essential step, therefore, is to construe the claim. Construction is a matter of law for the Court.

[26] A patent specification is to be read as a whole and given a purposive construction. It must be construed as it would be understood by the appropriate addressee − a person skilled in the relevant art.

[27] Each part of the specification is to be read objectively in its overall context and in light of the function of that part. The claims are to be interpreted by reference to the object and description in the body of the specification.

[28] The claims define the scope of the monopoly conferred by the patent. They limit what others may do. They must clearly define the protected field so others may fairly know where they cannot go. The description in the body of the specification may assist interpretation, but it cannot modify the monopoly the inventor has clearly marked out. If his claim is formulated too narrowly so that imitators do not infringe, that cannot be rectified by reference to the description. If it is too wide, consequent invalidity cannot be saved by reading in limitations appearing in the description. The description of a preferred embodiment of the invention is just that and plainly will not confine the scope of an invention claimed more broadly. All of this is well established.

The different types of insufficiency

25. In paragraphs 362 to 375 of Zipher Limited v Markem Systems Limited Floyd J identified three different types of insufficiency:

362. Although insufficiency is a single objection to the validity of a patent, it may arise in a number of different ways. In every case, however, the purpose behind the objection is to prevent a patentee laying claim to products or processes which the teaching of the patent does not enable in the relevant sense.

363. The first, or so-called classical insufficiency, is where following the express teaching of the patent does not enable the skilled addressee to perform the invention. This type of insufficiency requires an assessment by the court of the steps which it would be necessary for the skilled reader or team to take in following the teaching of the specification and in order to arrive within the claim. Plainly the steps should not include inventive ones. But a patent can also be insufficient if the steps can be characterised as prolonged research, enquiry or experiment.

...

367. The second, or so-called Biogen insufficiency (after the decision in the House of Lords in Biogen v Medeva [1996] UKHL 18; [1997] RPC 1), is concerned with breadth of claim. An insufficiency attack on Biogen lines accepts that the teaching of the patent is adequate to bring the skilled reader within the claims, but asserts that the claims encompass products or processes which owe nothing to the teaching of the patent and which are not enabled.

...

374. The third type of insufficiency is that which arises through ambiguity. If the skilled person cannot tell whether he is working the invention or not, the specification is insufficient. It is not, however, enough to establish this type of insufficiency to show that there may be a puzzle at the edge of the claims. It will normally be necessary for the problem to permeate the whole claim. An example of an insufficiency of this type is the molecular weight test in Kirín Amgen at [121] which made it impossible to tell whether there was infringement or not.

26. Mr Brown pointed out that, in the present case, the opponent was relying on classical insufficiency and insufficiency by ambiguity.

Degree of sufficiency required

27. As to the degree of sufficiency required, Lindley LJ, in what Mr Brown called a “leading statement”, said at page 280 of Edison and Swan Electric Light Co v Holland (1889) 6 RPC 243 at 280:

In complying with the first condition, i.e., in describing the nature of his invention, the Patentee does all that is necessary, if he makes the nature of his invention plain to persons having a reasonably competent knowledge of the subject, although from want of skill they could not themselves practically carry out the invention. In complying with the second condition, i.e., in describing in what manner the invention is to be performed, the Patentee does all that is necessary, if he makes it plain to persons having reasonable skill in doing such things as have to be done in order to work the patent, what they are to do in order to perform his invention.

28. As pointed out by Mr Brown, the inventor is not, generally speaking, required to give directions of a more minute nature than a person of ordinary skill and knowledge of the relevant art might fairly be expected to need, and that some degree of further effort may be required (provided that it involves no inventive step and does not require prolonged research, enquiry, or experiment) in order to work the invention. As set out in TA Blanco White, Patents For Inventions, Fourth Edition (1974):

Need for further experiment

4-504 A specification is not insufficient merely because some experiment of a routine character (as distinct from “prolonged research, inquiry or experiment” [Valensi v BRC [1972] FSR 273 at 310]) is necessary in each particular case “ [No-Fume v Pitchford (1935) 52 RPC 231 at 238, 245-249]; nor because it fails to give detailed instructions as to matters which a “practical person . . . would naturally settle, and would expect to have to settle . . . himself,” provided he “would find no difficulty in so doing” [British Ore v Minerals Separation (1909) 26 RPC 124 at 139]; nor merely because it fails to give detailed instructions as to matters not forming part of the invention [Agfa v Levinstein (1921) 38 RPC 277 at 292].

Sufficiency a question of fact

4-505 Sufficiency of instructions is a pure question of fact, to be determined preferably by the evidence of addressees of the specification. [British Dynamite v Krebs (1896) 13 RPC 190 at 192]. Thus although the specification must disclose the method of carrying out the invention, and not merely the result to be obtained [Vidal Dyes v Levinstein (1912) 29 RPC 245 at 266], any general description is enough if in fact the desired result can be obtained with certainty [Vidal Dyes v Levinstein (1912) 29 RPC 279–280] and without invention [No-Fume v Pitchford (1935) 52 RPC 231 at 238]. Thus a general instruction to use “any suitable material” [Bickford v Skewes (1835) 1 WPC 214 at 218-219] or “known methods” [IG Farbenindustrie’s Appln (1939) 56 RPC 249], or to use chemical reagents of a general class (leaving it to the addressee to determine which members of the class will operate satisfactorily) [Leonhardt v Kallé (1898) 12 RPC 103 at 116], will be sufficient if it enables the addressee to put the invention into practice. Nor need it be explained how the method works [Leonhardt v Kallé (1898) 12 RPC 103 at 116-118]: that is something the inventor may well not know himself [Ore Concentration v Sulphide (1914) RPC 206 at 227]. If a theory of the working of the invention is given but is inaccurate, this will not render the specification insufficient if the addressee is not misled [“Z” Electric v Marples, Leach & Co (1910) 27 RPC 737 at 745-747]: the inventor “patents a process and not its scientific explanation” [British Ore v Minerals Separation (1909) 26 RPC 124 at 144]. So where the specification [Jameson’s Patent (1915) 32 RPC 377 at 391; Simpson v Halliday (1865) 12 LT (ns) 99 at 99-100] or its drawings [British Thomson-Houston’s Patent (1936) 53 RPC 255] contain inaccurate or nonsensical instructions, this does not matter if the addressee is not misled. Nor will vagueness or obscurity of instructions render the specification insufficient if an addressee would have “no serious difficulty” in understanding what he had to do.

29. As pointed out by Mr Brown, the wording of section 72 the 1977 Patents Act (United Kingdom) more accurately indicates the degree of sufficiency required by use of the words “does not disclose the invention clearly enough and completely enough”. This section reads:

Subject to the following provisions of this Act the court or the controller may on the application of any person by order revoke a patent for an invention but only on any of the following grounds, that is to say:

...

(c) The specification of the patent does not disclose the invention clearly enough and completely enough for it to be performed by persons skilled in the art.

30. Aldous J, in the United Kingdom Patents Court, discussing this section said in Mentor Corporation and Another v Hollister Inc [1991] FSR 557 at 562:

The section requires the skilled man to be able to perform the invention, but does not lay down the limits as to the time and energy that the skilled man must spend seeking to perform the invention before it is insufficient. Clearly there must be a limit. The subsection, by using the words “clearly enough and completely enough,” contemplates that patent specifications need not set out every detail necessary for performance, but can leave the skilled man to use his skill to perform the invention. In so doing he must seek success. He should not be required to carry out any prolonged research, enquiry or experiment. He may need to carry out the ordinary methods of trial and error, which involve no inventive step and generally are necessary in applying the particular discovery to produce a practical result. In each case, it is a question of fact, depending on the nature of the invention, whether the steps needed to perform the invention are ordinary steps of trial and error which a skilled man would realise would be necessary and normal to produce a practical result. [Emphasis added by Mr Brown]

31. Aldous J also referred, in the Mentor case, to “routine trials” and “normal routine matters that the skilled man would seek to do and be able to do”. These were discussed by Lloyd LJ on appeal (Mentor Corporation and Another v Hollister Incorporated [1993] RPC 7 at 14):

I can find no vestige of error in that statement of the law [Aldous J’s statement quoted above]. It was at first argued that the skilled man should not have to carry out any research, enquiry or experiment at all, whether prolonged or otherwise. But Mr. Thorley subsequently retreated from that extreme position. There is no support for setting so high a standard of disclosure, whether in Valensi itself or in any of the previous authorities, save possibly the judgment of Lindley LJ in Edison & Swan v. Holland. When, a little later, Aldous J came to apply the law to the facts of this case, he refers to “routine trials” and “normal routine matters that the skilled man would seek to do and would be able to do". Mr. Thorley criticises the use of the word “routine". To require the performance of routine trials is, he said, to ask too much of the addressee. I do not agree. "Routine" is just the word l would have chosen myself to describe the sort of trial and error which has always been regarded as acceptable; and "routine trials" has the further advantage that it is a positive concept, which is easily understood and applied. In practice, therefore, it may provide a surer test of what is meant by “clearly enough and completely enough" in section 72(1) of the [1972 United Kingdom] Act than the negative test proposed in Valensi, namely the absence of prolonged research, enquiry and experiment. If the trials are unusually arduous or prolonged, they would hardly be described as routine.

32. Mr Brown referred me to a recent United Kingdom case, Halliburton Energy Services Inc v Smith International (North Sea) Limited and Others [2006] EWCA Civ 1715, which discussed the relevance of the European Patent Office “undue effort” test for testing sufficiency. The Court of Appeal stated:

18. ... Patents are meant to teach people how to do things. If what is “taught” involves just too much to be reasonable allowing for all the circumstances including the nature of the art, then the patent cannot be regarded as an “enabling disclosure.” That is the basic concept behind the requirement of sufficiency and one that lies at the heart of patent law (“central” as Lord Hoffmann put it in Biogen v Medeva [1996] UKHL 18; [1997] RPC 1 at p.47). The setting of a gigantic project, even if merely routine, will not do. Moreover the analogy with genetic engineering and pharmaceutical inventions is not apt. The work that goes into bringing them to market relates to testing efficacy and safety − not in actually making the invented product.

19. The European Patent Office test of “undue effort” is apposite for testing sufficiency. It was developed principally to deal with claims of undue width or those limited by function − see e.g. GENENTECH/Human t-PA T 929/92. But it is also of general application. It is another way of applying the very words of the objection which emphasise the question is one of degree (“clearly enough and completely enough”).

20. Of course it may be asked, how is one to say when the work involved performing the invention is too much? Justice Holmes expressed the problem of this sort of rather fuzzy borderline thus:

“When he has discovered that a difference is difference of degree, that distinguished extremes have between them a penumbra in which one gradually shades into the other, a tyro thinks to puzzle you by asking you where you are going to draw the line and an advocate of more experience will show the arbitrariness of the line proposed by putting cases very near it on one side or the other”, Law and Science in Law Collected Legal Papers 1921, pp.232-233.

21. The answer is that the line is one to be drawn by an exercise of judgment, taking into account all of the relevant factors, one of which is of course the nature of the invention itself and its field of technology. But there are other factors too − for instance, the width of the patent claim or whether it has functional limitations which require too much work to explore. [Emphasis by Mr Brown]

33. The most succinct statement of the test is perhaps that recently put by Jacob LJ in Novartis AG v Johnson & Johnson Medical Ltd [2010] EWCA Civ 1039 at [74]:

The heart of the test is: “Can the skilled person readily perform the invention over the whole area claimed without undue burden and without needing inventive skill?”

Specific ways in which a claim may be insufficient

34. Mr Brown listed and explained four ways (some of which overlap) in which a claim may be insufficient;

(1) Deficiency of information

35. Classical insufficiency often involves a deficiency of information, e.g. about essential starting materials and process conditions. ln Badische Anilin und Soda Fabrik v La Societé Chimique des Usines du Rhone and Wilson (1898) 15 RPC 359 the invention concerned the production of a particular dye in an autoclave. At trial it emerged that the process failed unless the autoclave was made of iron, as was often the case, but that enamelled autoclaves were also in common use. The patent was insufficient because the description did not contain an instruction which turned out to be essential for the performance of the invention.

(2) Omission

36. Classical insufficiency can also stem from omissions − the following tests were enunciated in relation to errors, but the reasoning has been held equally apt to cover omissions. In No-Fume Ltd v Frank Pitchford & Co Ltd (1935) 52 RPC 231 at 243 Romer LJ stated that:

Let me deal with the question of sufficiency first. Be it observed from the very words I have used, that the Patentee fulfils his duty if in his complete specification he describes and ascertains the nature of the invention, and the manner in which the invention is to be performed, sufficiently and fairly. It is not necessary that he should describe in his specification the manner in which the invention is to be performed, with that wealth of detail with which the specification of the manufacturer of something is usually put before the workman who is engaged to manufacture it. Specifications very frequently contain mistakes; they also have omissions. But if a man skilled in the art can easily rectify the mistakes and can readily supply the omissions, the patent will not be held to be invalid. The test to he applied for the purpose of ascertaining whether a man skilled in the art can readily correct the mistakes or readily supply the omissions, has been stated to be this: Can he rectify the mistakes and supply the omissions without the exercise of any inventive faculty? If he can, then the description of the specification is sufficient. If he cannot, the patent will be void for insufficiency. [Emphasis added]

37. That test was further explained by Buckley LJ in Valensi and Another v British Radio Corporation [1973] RPC 337 at 377 in relation to mistake:

Further, we are of the opinion that it is not only inventive steps that cannot be required of the addressee. While the addressee must be taken as a person with a will to make the instructions work, he is not to be called upon to make a prolonged study of matters which present some initial difficulty: and, in particular, if there are actual errors [omissions] in the specification − if the apparatus really will not work without departing from what is described − then, unless both the existence of the error [omission] and the way to correct it can quickly be discovered by an addressee of the degree of skill and knowledge which we envisage, the description is insufficient.

38. In Eli Lilly and Co v Human Genome Sciences, Inc [2008] RPC 733, it was held that the Valensi reasoning is equally apt to cover an omission. In relation to claims to pharmaceutical and diagnostic compositions, insufficiency was found because it would have required a research programme and been far from routine for the skilled person to produce a workable prototype on the basis of the information contained in the patent and the common general knowledge. It was held that the patentees should not have broad protection over an unexplored technical field without providing an adequate compensating benefit to the public. [Emphasis added]

(3) No workable criterion

39. Insufficiency through ambiguity can arise where a feature is specified for which there is no workable criterion or test. In Kirin-Amgen [supra] an independent product claim specified a polypeptide characterised by being an expression product of a DNA sequence having a higher molecular weight by STS- PAGE from erythro-poietin isolated from urinary sources uEPO. The claim was based on the assumption that all uEPOs had effectively the same molecular weight irrespective of source and method of isolation, whereas that was shown not to be correct. The House of Lords held that the deficiency did not merely create a fuzzy boundary between what would work and what would not but made it impossible to work the invention at all until it was ascertained what ingredient was needed. All the skilled man could do was to guess which uEPO the patentee had in mind, and if the specification did not tell him, then it was insufficient. [Emphasis added]

(4) Generic claim

40. Classical (or perhaps Biogen) insufficiency can arise in relation to generic claims in empirical research fields, where some species within the genus provide the benefit on which patentability is based whereas others do not. See, for example, Novartis [supra]. In Novartis the invention related to hydrogel contact lenses intended for extended wear and which were based on a polymeric material formed from oxygen-permeable material and ionically permeable material, the lens allowing oxygen permeation and ion or water permeation in amounts sufficient to enable certain criteria. The polymers were defined in very wide terms and selection parameters in terms of oxygen and ion diffusion rate were “woolly". The Court concluded that the claim essentially amounted to a lens derived from two classes of polymerisable materials, one having a high oxygen diffusion rate and the other having a high ion or water diffusion rate. Lloyd Jacob LJ, giving the judgment of the Court, said at paragraph 50:

So we come to an astonishing conclusion. Although the claim has a number of elements, hardly any of them have any significance. The claim is to a lens made from a polymeric material consisting of two vast classes of polymerisable materials, one having a high oxygen diffusion rate and the other having a high ion or water diffusion rate provided the lens “works”. In substance the claim amounts to this: “if you try any pair of polymers, to see if they work (perhaps only after surface treatment) and find anything that does, we claim it”.

41. The Court found that the patent gave the reader no help in finding a combination of polymers that worked and the patent was revoked in its entirety.

The focus of the Insufficiency ground

42. As I understand it, the ground of Insufficiency in the present case is based on the Opponent’s contention that there is insufficient information given in the patent specification to allow the reader to choose a suitable “high density plastics material” from the large number of products covered by that term.

Determination of Insufficiency

43. It is clear from the list of witnesses given above that the Opponent has two “expert” witnesses, Mr Burnett, a plumber, and Professor Solomon, a Professorial Fellow in the Department of Chemical and Biological Engineering at the University of Melbourne.

44. Mr Burnett, in paragraph 11 of his Statutory Declaration, said that the meaning of the term “high density plastics material” was “outside the area of my expertise”. Professor Solomon, on the other hand, is clearly well-versed in the chemistry of plastic materials; Paragraph 7 of his Statutory Declaration reads:

Although the majority of my work experience has been in Australia, Australian and New Zealand science are closely integrated. For example, the Polymer Division of The Royal Australian Chemical Institute includes New Zealand and holds conferences in New Zealand. I have had contact with the NZ polymer industry and I am well acquainted with the plastics used in New Zealand industry as well as the academic research conducted in New Zealand in the field of polymers and plastics. Hence, I consider that I was familiar with the field of polymers and plastics in NZ and was so before April 2007.

45. It is also clear from the list of witnesses given above that the Applicant also has two “expert” witnesses, Mr Edmonds, a Senior Lecturer in the Department of Chemistry, and the Manager of the Plastics Centre of Excellence, at the University of Auckland, and Mr Chapman, the owner of the Aaron Appliance Repair Company Limited.

46. Mr Chapman, although clearly very experienced in the operation and repair of waste disposal units, makes no claim to expertise in the chemistry of high density plastic materials. Mr Edmonds, on the other hand, has considerable experience in the chemistry and industrial application of plastic materials. He states in paragraph 7 of his Statutory Declaration:

l consider that l have a good understanding of the industrial uses of plastics and the processes that would be followed in a manufacturing setting involving the design and subsequent use of plastics materials. My understanding comes from exposure to and familiarity with the theory as well as detailed understanding of practical issues faced by industry. This understanding of course includes the period prior to 30 April 2007 which I understand from Shelston IP to be the key date of relevance to the assessment of issues in this matter.

47. Thus, as I understand it there are two witnesses with expertise relevant to the choice of suitable “high density plastics material” from the large number of products covered by that term, Professor Solomon for the Opponent and Mr Edmonds for the Applicant.

48. Professor Solomon’s evidence in relation to the claims of the present patent application is given in paragraphs 19 to 28 of his declaration:

19. I have been asked to give my opinion on the claims of the Opposed Specification as they relate to the liner.

20. On page 3, line 8 of the Opposed Specification, the plastic material for the liner is described as a “high density plastics material”. It is unclear to me whether this term applies to the synthesised polymer or to a compounded polymeric composition.

21. If the term “high density plastics material” applies to the synthesised polymer, it could relate to the density of a particular synthetic procedure. For example, in the series of commercial polymers derived from ethylene monomer the density can range from, for example, 0.9 for LDPE (Low Density Polyethylene) to 0.96 for I-IDPE (High Density Polyethylene).

22. On the other hand, if the term “high density plastics material” is meant in a relative sense between the different commercially available polymers, then PVC would have a high density (1.4). I doubt that either HDPE or PVC would be suitable for the liner in question.

23. If the term “high density plastics material” is intended for a compounded plastic, then there are literally an infinite number of possibilities. Plastics, blends of plastics with various quantities and types of fillers and compounding agents would need to be evaluated in order to determine whether they are suitable for use in the liner in question.

24. The term "high density plastics material" is also problematic as "high" is a relative term. There is no disclosure in the Opposed Specification as to how high the density of the plastics material needs to be to be considered high and, as discussed above, what measure is to be used to judge the "highness" of the density.

25. I am sure that there are plastics materials that have high densities that will not work in the subject food waste disposer regardless of the measure that is used to judge the "highness" of the density. However, the Opposed Specification provides no specification by which to judge possible plastics materials. For example, do they need to last for 1 hour or 100 hours and under what conditions? I doubt that some polyolefins will work for more than a few cycles. In the absence of a specification, it is difficult to say whether a "high density plastics material" will perform satisfactorily. Furthermore, any other additives in the plastics material will have a major influence on the properties of the liner. For example, Nylon filled with talc is a doubtful composition for satisfactory liner performance.

26. I have been asked to comment on whether glass filled Nylon is a high density plastics material. Glass filled Nylon 12 has a density of 1.23, whilst Nylon 12 unfilled is 1.01. Other Nylons are slightly different. Nylon 11 glass filled is 1.26, and Nylon 6/12 glass filled 1.32-1.46. As to whether any of these Nylons are "high density plastics materials” depends on how high the density of the plastics material needs to be to be considered high and what measure is to be used to judge the "highness" of the density, as discussed above. Moreover, glass filled Nylon is a composite material and not simply a plastics material. Accordingly, it is unclear as to whether glass filled Nylon would fall within the definition of a high density plastics material in any case.

27. I note the liner needs to be able to withstand "the harsh chemical environment” and have good impact resistance (page 6 line 20 of the Opposed Specification).

28. No examples are given in the Opposed Specification to direct me to the type of formulation or plastic the inventor had in mind. Nor is there any reference to the test methods (for example the impact test) or specification of the liner so that I could check the suitability of any formulation to withstand "the harsh chemical environment".

49. The relevant portion of Mr Edmonds’ evidence is given in paragraphs 9 to 22 of his Statutory Declaration:

My instructions - Who is the skilled addressee and what materials would the addressee have regard to?

9. I was first provided by Shelston IP with a page from a patent specification disclosing the “Field of the invention" and the "Background" to an invention. A copy of that page is annexed to this declaration and marked “NE-3". I was asked to assume a date for the purpose of answering all questions in this matter. The date I was provided with was 30 April 2007. I was asked who the skilled addressee would be who would undertake the sort of work described in the background to the patent.

10. In my opinion the skilled addressee for making the invention described − "a food waste disposal unit" would work at a relatively sophisticated organisation and it would not be one person rather − there would be a team of people involved in the design and fabrication process. There would be a mechanical engineer involved for the base design of the food waste disposal unit and there would be a person with expertise in the manufacturing process so that the end product was suited to manufacture on a commercial scale.

11. I was also asked what type of reference or other materials this hypothetical team of people would have regard to if they were to make this food waste disposal unit. In my opinion this team would have regard to other food waste disposal units in the marketplace. I do not think that this team would necessarily have the resources to check patents. I would not expect this team to consider patent issues, at least initially, unless a part in a product on the market was clearly marked with patent identification information. This team would look at physical products and would not engage in any academic search. In relation to materials selection − this would fall within the expertise of the team and depending on the materials − some other common industry sources would be consulted.

Could the skilled addressee make the invention described in New Zealand Patent Application 567793 after reading the specification?

12. A copy of the Specification has been shown to me and is annexed to this declaration and marked “NE-4". I have now had the chance to read the whole of the specification for New Zealand Patent Application 567793 (the “Specification”) and I was asked if the skilled addressee could see how to make the food waste disposal unit described in the Specification and whether in my view the manner in which the invention is to be performed is described in the Specification with sufficient precision to achieve this.

13. In my opinion the detailed diagrams and the description of the invention would allow the skilled addressee (and/or the team in New Zealand as at the priority date l have identified above) to make this food waste disposal unit. I also consider that there are no material deficiencies in the information in the Specification which would prevent this from being done.

14. Having read and considered the Specification as a whole, I note that claim 1 of the Specification refers to a food waste disposer which has "a liner....disposed within the grinding chamber" and that this liner is an "annular ring of high density plastics material". I take from this that the liner is an essential part or feature of the claim. I also note and have had regard to page 4 lines 10 to 25 of the Specification which talks about a "further modified /liner/housing arrangement". The liner is described in that passage and shown in the drawings at the end of the Specification. The Specification goes on to say at page 4 line 21:

"The liner is preferably a plastics material which can withstand the harsh chemical environment of the grinding chamber as well as providing some cushioning of the impact from hard waste. Preferably, the plastics material is a high density plastic material as this has better impact and noise absorbing qualities.”

15. It is apparent from these references that the operation and make-up of the liner is a relevant feature of the invention. I will now consider, within the context of the description in the Specification as a whole, the approach the skilled addressee would take to selecting and specifying a high density plastic material for use in this unit.

High density plastic material

16. In relation to plastics materials selection a mechanical engineer with expertise in plastics materials would have regard to information supplied by the vendors of such materials and l would expect there would be 3 or 4 such vendors available in New Zealand to the engineer. A basic understanding of the properties of plastics materials would also be provided to the mechanical engineer by reference to a commonly used standard text available from plastics New Zealand as at April 2007 being the 2001 publication “Polymeric Materials, Structure Properties, Applications” published by Hanser and authored by Gottfried Ehrenstein (the “Ehrenstein PubIication”). The Ehrenstein Publication was widely used in New Zealand as at April 2007 and was a standard reference source for plastics materials selection.

17. There is reference in the Specification as set out above to a "plastics material" and now shown to me and annexed to this declaration and marked “NE-5" is page 1 of the Ehrenstein Publication that shows some very broad distinctions at a basic level between "plastics", "rubber“', “synthetic fibres” and “additives".

18. From the broad group of "plastics" materials the field for selection is materially narrowed as the plastics material is also said to be preferably a “high density plastic material". On its face this narrows the selection for the mechanical engineer as the first material which comes to my mind when considering this phrase is the “High-density polyethylene" or HDPE product.

19. Based on my assessment the unimaginative but skilled addressee would choose from a number of variants of HDPE from a plastics supplier taking into account the clearly identified characteristics needed for the food waste disposal unit. These characteristics include (i) a high density to better absorb sound; (ii) the ability to withstand the chemical environment of a food waste disposal unit; (iii) the necessary resilience to absorb the impacts of a food waste disposal unit.

20. To resist the impact from hard waste and yet provide some "cushioning" the plastics material would need to be what is called amongst those involved this broad field in New Zealand “tough". Simply being "hard" would not meet the need for slight resilience called for to cushion impacts. A brittle high density plastic would not be suitable. Some strength may be sacrificed to avoid brittleness.

21. HDPE is a material widely and successfully used in a number of applications within industry. I annex as annexure “NE-6" a number of pages from an internet search showing its commonly known uses in plumbing pipes where an ability to withstand impacts from a spade or digger is important as compared to a more brittle product, its use to make containers for harsh chemicals, detergents and acids, its use to line rail carriages to remove slurry from mines where impact from sharp rocks and other abrasive material is relevant. While this collection of references is a recent one this information on the varied uses for HDPE was very well-known in the art in New Zealand at the priority date. Recently I have heard of the use of HDPE to replace irrigation pipes in Canterbury where damage from repeated earthquakes and aftershocks make more brittle materials and open channels less desirable. Therefore, the properties and wide useage [sic] of HDPE in industrial applications such as those l describe would have been well known to the skilled addressee in April 2007.

22. Most plastics contain other materials blended in. Fillers improve performance and/or reduce production costs. In practice, the skilled addressee would have a discussion with the plastics supplier as to the precise commercially available HDPE product and any additives to be used from those available to the supplier. This would be routine practice and involve no real difficulty or the need for any real ingenuity or inventiveness.

50. In paragraphs 23 to 28 Mr Edmonds responds specifically to the points made in Professor Solomon’s Statutory Declaration:

Declaration of Professor Solomon

23. l have been shown the declaration of Professor David Solomon of the University of Melbourne in Australia sworn on 21 March 2011. I can see that he sets out opinions in paragraphs 13 to 28. In paragraph 20 Professor Solomon states that “It is unclear to me whether this term ["high density plastics material'] applies to the as synthesised polymer or to a compounded polymeric composition.” In my experience the skilled addressee − a mechanical engineer in industry with plastics expertise would almost never use the "pure" or "unsynthesised” plastics material. In the discussion with the supplier of plastics any desirable additives would be selected and blended (such as to colour the end product). This would be a routine aspect of plastics selection for the mechanical engineer.

24. l note that at paragraph 22, Professor Solomon states that he doubts that the commercially available polymer HDPE would be suitable for the liner in question. As stated above in my opinion the patent specification seems to me to be suggesting to the skilled addressee to use this very material. For the reasons l have given above, in my opinion HDPE would be suitable for use in a liner for a food waste disposal unit.

25. At paragraph 23 Professor Solomon talks of an infinite number of choices for materials potentially suitable for the liner in question. I think he uses these terms as a figure of speech. In my opinion above l do not think the skilled addressee would have any real trouble with the materials selection here. Similarly in paragraph 24, I consider the skilled addressee would read high density plastics material as a reference to HDPE which has a relatively high density or to some other similar material. However, given the criteria that are set out in the specification and referred to above in paragraph 14, I would certainly not see the choice as being infinite at all, but suitably confined.

26. In paragraph 24 Professor Solomon talks of further difficulties of materials selection that, with respect, I don't think would be practical difficulties faced by the skilled addressee. I agree that nylon filled with talc would not be an obvious or suitable material to use. Similarly in relation to paragraph 28 glass filled nylon would not be suitable − nylon [sic] are too water sensitive for use in this application. However, other materials would be more suitable (and their qualities very well- known and documented) and they would do the job perfectly well.

27. In paragraphs 27 and 28 Professor Solomon again raises issues in relation to the “harsh chemical environment" which l don't think would unduly trouble the skilled addressee. HDPE is used in much more harsh applications such as in drainage pipes, containers to hold acids and detergents. It would be readily seen by the skilled addressee to be suitable.

28. While it is clear that Professor Solomon is very experienced in his particular field, it seems to me that to a large extent we are addressing different questions. l do not necessarily disagree with everything Professor Solomon's [sic] says, rather l approach some issues with a different perspective keeping in mind the approach of the skilled addressee, a mechanical engineer in industry in New Zealand with plastics expertise.

51. As discussed above, Mr Brown intimated that the present case is one in which the burden of proof should be reversed, as in the Hasan case [supra], on the grounds that the Opponent has made out a prima facie case, on the balance of probabilities, that the information given in the present complete specification is insufficient to allow the invention to performed by the notional skilled reader. Mr Elliott argued that this is not the situation in the present case because, in his view, the conditions of the following test set out by Barker J in the Beecham Group (No 2) [1980] 1NZLR 192 are not satisfied in the present situation:

[...whilst the overall onus to prove obviousness or anticipation in opposition proceedings rests on the opponent, that onus may shift, if on a consideration of the documents alone and without the necessity for cross-examination to resolve any conflict, the opponent makes out a prima facie case, on the balance of probabilities. In that event, the applicant [i.e. the patentee] may then bear the onus to rebut this conclusion.]

Mr Elliott submits that, although there is a clear conflict between the two experts (Professor Solomon and Mr Edmonds), this is because Professor Solomon does not approach the matter from the standpoint of the skilled addressee, but rather from a purely academic standpoint.

52. I agree with Mr Elliott, who, it seems to me, correctly alleges that Mr Edmonds explains, with the benefit of his knowledge of plastics and their uses in practical applications, the question of whether the skilled reader would be able to perform the invention without undue difficulty and without excessive experimentation or research. I agree with Mr Edmonds’ opinion that the skilled addressee would be likely to consist of a team of people involved in the design and fabrication process, the team being comprised of at least “a mechanical engineer involved for the base design of the food waste disposal unit and ... [at least one] person with expertise in the manufacturing process so that the end product was suited to manufacture on a commercial scale” and that this team, before proceeding with the manufacture of the products claimed, would no doubt discuss suitable plastic materials with the suppliers.

53. Mr Brown also submitted that Mr Edmonds made a clear error in his evidence by nominating “High Density Polyethylene” (“HDPE”) as a high density plastics material (as specified in Claim 1), and, at the hearing, produced a table (from the book “Polymeric Materials” by Gottfried W Ehrenstein, Hanser Gardner Publications Inc (2001)) listing HDPE, on page 248, as having “low density, low strength and stiffness, good chemical resistance, susceptibility to photo-oxidation therefore often stabilized, ability to be welded, inexpensive”.

54. Mr Elliott objected to the introduction of this evidence at such a late date. However, I agree with Mr Brown that, because the Applicant produced (as Exhibit NE-5 to Mr Edmonds’ Statutory Declaration) an extract from Ehrenstein (Page 1 of the book, which contained definitions of plastics used strictly as a synthetic engineering material, rubber, polymeric materials as synthetic fibres, and polymers as additives) it is acceptable for the other party to produce further extracts from the same publication.

55. I also note that Mr Edmonds’ Exhibit NE-6, which is a page downloaded from Wikipedia, gives a brief description of “High-density polyethylene” and notes under the heading “Properties”:

The mass density of high-density polyethylene can range from 0.93 to 0.97 g/cm³. Although the density of HDPE is only marginally higher than that of low-density polyethylene, HDPE has little branching, giving it stronger intermolecular forces and tensile strength than LDPE. The difference in strength exceeds the difference in density, giving HDPE a higher specific strength. It is also harder and more opaque and can withstand somewhat higher temperatures (120 °C/ 248 °F for short periods, 110 °C /230 °F continuously). High-density polyethylene, unlike polypropylene, cannot withstand normally-required autoclaving conditions. The lack of branching is ensured by an appropriate choice of catalyst (e. g., Ziegler-Natta catalysts) and reaction conditions. HDPE contains the chemical elements carbon and hydrogen.

56. Mr Elliott, in his reply, submitted that “high density” in the context of plastics material is a relative term and I am not aware (and neither party has produced one) of an absolute definition of the term. The relative nature of this term is referred to by both Mr Edmonds (at paragraph 25 of his Declaration, as reproduced above) and Professor Solomon (at paragraph 21 of his Statutory Declaration, as reproduced above). According to Mr Elliott, it does not matter that other plastics materials may be denser; within the family of polyethylene polymers, HDPE is of relatively high density. What is important is whether the material chosen is of sufficiently high density for its particular job and there is no evidence to suggest that HDPE does not have the requisite density to meet the objectives of the invention.

57. In support of the submission that “high density” is a relative term, Mr Elliott referred me to a House of Lords case, British Thomson-Houston Company Ltd v Corona Lampworks Ltd (1922) 39 RPC 49. In this case, in which the claims specified “a filament ... of large diameter”, Viscount Cave said, at page 81:

It may be that, in selecting the filament in a particular case, the lamp-maker will have to use his knowledge and skill, and he may require the aid of such calculations and workshop tests as are common in an industry of this nature; but there are many authorities, such as Edison Swan Light Co. v. Holland ((1889) 6 R.P.C. 282) and Watson, Laidlaw & Co. v. Pott ((1912) 28 R.P.C. 565), which show that the mere fact that knowledge and skill, and even some experimental tests, may be necessary in putting a patented invention into practice is not sufficient to invalidate the patent if the nature of the invention is adequately described. In the present case, the pith and marrow of the invention lies, not in any particular figures, but in the process of using with the inert gas a filament of relatively greater diameter or of coiled or spiral form.

[Emphasis added]

58. Mr Elliott also pointing out that rather than the “skilled addressee” having to make all the embodiments within the scope of the claim, all the Applicant has to show is that the skilled person should be able to make an embodiment. In this respect he referred me to Mölnlycke AB v Proctor & Gamble Limited and Others [1994] RPC 49. In this case Claim 1 required that the backsheet of a diaper consist of a thin plastics film “the tear strength of which is less that the adhesive strength of the tape tab adhesive” and also required a single plastic strip “consisting of a material which is inelastic”. The Opponent said that these terms were insufficient. Morritt J stated at page 101:

But I do not think this supports the plea of insufficiency. The essence of the patent is not to prescribe a particular tape adhesion value but to point to the ability to obtain a suitable combination of adhesive tape and plastic film. As there are many different adhesive tapes available the surface properties of the strip cannot be specified. This was pointed out by Professor Andrews in paragraphs 29-33 of his witness statement. He concluded in paragraph 42 that a person skilled in the art would not fail to perform the invention due to insufficient disclosure. In paragraphs 77-81 of his witness statement Mr. Grube made the same points. But in addition he stated in paragraph 77 that tape adhesion values required to make a secure initial fastening were well known at the time. There was no cross-examination of either witness which directly challenged these statements. Accordingly in my judgment the plea of insufficiency fails in this respect also.

59. Mr Brown submitted that Mr Edmonds does not deal with how to choose, or what criteria to apply, to determine the high density plastics material required to meet the promised noise reduction. This, according to Mr Brown, is “a key and serious omission because the applicant in fact fails to answer how that omission or ambiguity in the specification is to be determined and how the essential integer of noise reduction (at the heart of the invention) is to be achieved”. As pointed out by Mr Brown, Professor Solomon, in his paragraph 25, “clearly” refers to the absence of any specification by which to judge the possible plastics materials as to whether they will work.

60. Mr Elliott countered this allegation by pointing out that Mr Edmonds specifically states, in his paragraph 19, that the unimaginative but skilled addressee would choose from a number of variants of HDPE (or, presumably, other suitable high density plastics materials) from a plastic supplier taking into account, among other things, “a high density to better absorb sound”. Mr Elliott submitted that Mr Edmonds does not refer to tests or experiments because they would not be required, and he points out that the patent specification states that a high density material “will improve sound absorption”; the paragraph on page 6 lines 21 to 25 (written before the amendments discussed above were made) stated:

The liner is preferably a plastics material which can withstand the harsh chemical environment of the grinding chamber as well as providing some cushioning of the impact from hard waste. Preferably, the plastics material is a high density plastic material as this has better impact and noise absorbing qualities. [Emphasis added]

61. After considering all the evidence and the submissions of the two parties as discussed above, I have reached the conclusion that the Opponent has not clearly demonstrated that the “complete specification does not sufficiently and fairly describe the invention or the method by which it is to be performed” as required by section 21(1)(g), and that any element of doubt in this matter must be decided in favour of the Applicant.

Prior publication – section 21(1)(b)

62. Section 21(1)(b) reads:

That the invention, so far as claimed in any claim of the complete specification, has been published in New Zealand before the priority date of the claim—

(i) in any specification filed in pursuance of an application for a patent made in New Zealand and dated within 50 years next before the date of filing of the applicant's complete specification:

(ii) in any other document (not being a document of any class described in subsection (1) of section 59 of this Act):

63. The usual test for prior publication is that set forth in the judgment of the English Court of Appeal, delivered by Sachs LJ, in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited and Others [1972] RPC 457 at 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 claims 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 unmistakeable 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.

64. As pointed out by Mr Brown, this test was affirmed by the New Zealand Supreme Court in Lucas v Peterson Portable Sawing Systems Ltd [2006] NZSC 20; [2006] 3 NZLR 721, at [3].

65. Mr Brown also pointed out that MacKenzie J, in Sealed Air New Zealand Limited v Machinery Developments Limited, HC Wellington CIV-2003-485-2274. Paragraph 16 reads:

The test for prior publication is the “reverse infringement” test. That is to say, the test is to consider the document relied upon as constituting prior publication, and to determine whether that clearly (a) describes something that would infringe the claim, or (b) instructs something to be done or made which would infringe the claim, or (c) gives directions, the carrying out of which would inevitably result in infringement of the patent applied for. The test is described by Sachs LJ (delivering the judgment of the Court) in General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited and Others [1972] RPC 457 at 485-486, in these terms ...

66. In its Notice of Opposition and Statement of Case the Opponent cites three documents (United States Patents Numbers 2 939 639, 3 589 624, and 2 719 011) under this ground. At the hearing, however, Mr Brown advised that only one document, United States Patent Number 3 589 624 (Document D2) was being advanced. Paragraph 4.3 of the Opponent’s Statement of Case analyses this document as Follows:

US 3,589,624 - Smith et al. - available from the IPONZ Patent Office Library from 24 July 1986;

4.3.1 This patent relates to a wall construction for a comminution chamber in a waste disposer apparatus and more particularly to a liner in the comminution chamber (see col 1, lines 8-10 and whole document).

4.3.2 Col. 1, lines 66-69, col. 2, lines 16-23, col. 3, lines 59-62, col. 4, line 19, and Figs. 1-3 disclose a housing in the form of an upper resilient housing 11 forming a Vibration damping core with casing member 32 having an outer shell portion 33, and a lower housing 29.

4.3.3 Col 1, lines 68-69 and Fig. 1 disclose a grinding chamber, in the form of comminution chamber 13, defined within the upper housing 11.

4.3.4 Col 1, lines 73-74 and Fig. 1 disclose an inlet 17 of the upper housing 11.

4.3.5 Col 2, lines 29-33 and Fig. 3 disclose an outlet from the comminution chamber 13, in the form of longitudinally extending channels 40.

4.3.6 Col 2, lines 24-33, 40-49, and Figs. 1 and 3 disclose a grinding mechanism.

4.3.7 Col 2, lines 24-33 and Figs. 1 and 3 disclose a shredder ring, in the form of shredder ring 37, of the grinding mechanism.

4.3.8 Col 2, lines 40-45, 53 and Figs. 1 and 3 disclose a grinding disc, in the form of disc-like rotor 45, of the grinding mechanism.

4.3.9 Col 2, lines 40-41 and 46-49, and Fig. 1 disclose a motor 47 and associated output shaft for rotating the rotor 45.

4.3.10 Col 3, lines 41-58 and Figs. 1 and 3 disclose liners, in the form of resilient upper housing core 11 and Iiner 67, disposed within the comminution chamber 13, respectively in direct contact with the inner surface of the casing member 32 and the inner surface of the resilient upper housing core 11, and extending upwardly from an upper edge portion of the shredder ring 37 to an upper edge portion of the comminution chamber 13 and to the inlet 17.

4.3.11 Col 2, lines 8-14 and Figs. 1 and 3 disclose the resilient upper housing core 11 being an annular ring of polyurethane or other elastomeric material that provides a strong, tough, resilient wall.

4.3.12 Fig. 3 clearly shows that an inner diameter of the liner 67 matches an inner diameter of the shredder ring 37.

4.3.13 Col 2, lines 41-45 and 66-72, and Figs. 1 and 3 disclose that the rotor 45 has a number of swivel pushers, in the form of pivotally supported impellers 46, for effecting comminution of the waste material upon rotation of the rotor 45.

4.3.14 Col 2, lines 26-29 and Figs. 1 and 3 disclose that the shredder ring 37 has a plurality of circumferentially spaced fingers, in the form of inwardly extending shredding elements 39.

4.3.15 This patent therefore prior publishes claims 1-6 and 9 of the Subject Application.

67. The Applicant, in paragraph 4.2 of the Counterstatement, states that it agrees with the Opponent’s analysis in paragraphs 4.3.2, 4.3.3, 4.3.4, 4.3.6, 4.3.7, 4.3.8, 4.3.9, 4.3.11, and 4.3.13. However, with respect to the remainder of the Opponent’s paragraphs, the Applicant commented:

4.3.1 Agreed − liner is a stainless steel liner 67

4.3.5 Agreed − outlet is outlet 31 not the gaps 41 between the teeth of the shredder ring.

4.3.10 Housing core 11 is not a liner, it is the core of the housing. Stainless steel liner 67 is the liner.

4.3.12 Disagree − Figure 3 is inconsistent with Figures 1 and 2.

4.3.14 Agreed − but this is not a feature of our claims.

4.3.15 Not admitted

68. The abstract of the cited United States patent specification reads:

The waste disposer apparatus disclosed includes a resilient housing for resiliently supporting the disposer in a sink and for defining a comminution chamber and further includes a stainless steel liner for the comminution chamber. The resilient housing in combination with the substantially nonresilient, noncorrosive, and wear-resistant stainless steel liner provides a quiet, long life, waste disposer apparatus.

69. Figure 1 of the Cited document is as follows:

70. The second paragraph under the heading “SUMMARY OF THE INVENTION”, on lines 34 to 37 of column 1, read as follows:

It is a further object to provide a waste disposer comminution chamber wall construction comprising substantially rigid inner liner and outer shell members and a resilient core member.

71. Claim 1 of the cited document reads (the part numbers have been added to relate them to the drawing):

In a waste disposer apparatus having a shredder ring, means for defining a comminution chamber wall above said shredder ring comprising an inner relatively rigid liner [67], an outer relatively rigid shell [33] spaced from said inner liner, and a core means [11] comprising relatively resilient material generally filling the space between said inner liner and said outer shell.

72. Figure 1 of the present New Zealand specification is as follows:

73. In this drawing the housing is indicated by the figure 19 and the liner, which is an annular ring of high density plastics material, is indicated by the figure 21. Thus it is clear that the apparatus described and claimed in the present specification is quite different from that of the cited United States patent, which contains a three-layer comminution chamber with an outer shell, a core, and an inner (preferably stainless steel) liner rather than the two layer chamber with an outer shell and a liner composed of high density plastics material of the case in suit.

74. Thus it is clear that “the prior inventor [has not been] clearly shown to have planted his flag at the precise destination before the patentee”. I therefore find that the ground of Prior Publication has not been made out.

Obviousness by Prior Publication – section 21(1)(e)

75. Section 21(1)(e) reads:

That the invention, so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step having regard to matter published as mentioned in paragraph (b) of this subsection, or having regard to what was used in New Zealand before the priority date of the Applicant’s claim.

76. Both Mr Brown and Mr Elliott reminded me of the importance of the word “clearly” in section 21(1)(e) – the word does not appear in section 41(1)(f) which relates to Revocation of a patent by the Court rather than the Commissioner of Patents. The significance of the word was discussed by Barker J in Beecham Group Limited v Bristol-Myers Company (No 2) [1980] 1NZLR 192 at 230:

The word “clearly” in s 21(1)(e) is not found in s 41(1)(f) which provides, as a ground for revocation by the court of a patent in proceedings to that end ... The insertion of the word “clearly” in the opposition section indicates a higher onus on an opponent in opposition proceedings who alleges that there is no inventive step; the omission of the word in the revocation section indicates that the onus there is not quite so high.

77. Mr Brown submitted that the reason for the obviousness ground is that the public are entitled to manufacture that which has been published (in the sense of being made available to the public) and this right includes manufacturing such articles where the public make obvious modifications or alterations to them. In Hallen Co and Anr v Brabantia (UK) Ltd [1991] RPC 195 at 209, Slade J, quoting Aldous J with approval, says:

The word 'obvious' in section 3 is I believe directed to whether or not an advance is technically or practically obvious and not to whether it is commercially obvious. Although the law is encapsulated in section 3 of the Patents Act 1977, the law on obviousness goes back many hundreds of years, The basis of the law is that the public are entitled to manufacture that which has been published, in the sense of made available to the public, with obvious modifications. By obvious modifications are meant that which technically or practically would be obvious to the unimaginative skilled addressee in the art. Such a skilled man should be assured that his actions will not be covered by any monopoly granted to another if he does that which is part of the state of the art with modifications which are workshop alterations or otherwise technically or practically obvious alterations. He does and should not have to look further and consider whether the step he is taking is obvious or not for commercial reasons. The prize for a good commercial decision or idea is a head start on the competition and not a monopoly for twenty years. [Emphasis added by Mr Brown]

78. This decision was cited with approval by Gault J delivering the judgment of the New Zealand Court of Appeal in Ancare New Zealand Limited v Cyanamid Limited [2000] NZCA 127; [2000] 3 NZLR 299 at [43].

79. In Lucas v Peterson [supra] the New Zealand Supreme Court stated, at paragraph 54:

The law in New Zealand on obviousness was reviewed by the Court of Appeal in Ancare New Zealand Ltd v Cyanamid of NZ Ltd. It was determined that the principles are the same as those adopted in England and applicable still under the Patents Act 1977 (UK) (which gave effect to the Convention on the Grant of European Patents). We heard no argument that we should depart from those principles. They are clearly set out in the judgments in Windsurfing International Inc v Tabur Marine (Great Britain) Ltd and Mölnlycke AB v Procter & Gamble Ltd (N0 5 ).

80. The test, as set out in the Windsurfing case, was modified by Jacob LJ in Pozzoli SPA v BDMO SA [2007] EWCA Civ 588 at [23], with a slight modification by Duffy J in Carter Holt Harvey v Weyerhaeuser Company CIV-2009-485-000244, High Court, Auckland Registry, 31 March 2010. Thus the test commonly used in IPONZ decisions is:

1. (a) Identify the notional "person skilled in the art";

(b) Identify the relevant common general knowledge of that person;

2. Identify the inventive concept of the claim in question;

3. consider the cited published matter,

4. identify the differences between the cited published matter and the invention as claimed,

5. ask myself whether these differences constitute steps which would have been obvious to a “normally skilled but unimaginative addressee” in the relevant art, armed with the “common general knowledge” in the appropriate art possessed by such a person, or whether they require any degree of invention.

81. The Opponent states in the Statement of Case:

5.1 THE Opponent will make submissions and adduce evidence to the effect that the invention so far as claimed in any claim of the Subject Application is obvious and clearly lacking any inventive step having regard to any one or more documents listed in relation to Ground One (Prior Publication) in the Notice of Opposition, and/or to any one or more of the documents listed in Ground Two (Obviousness by Publication) of the Notice of Opposition.

5.2 THE Opponent repeats its statements in relation to the documents relied on in connection with the ground of Prior Publication above and says that the disclosure of any one or more of these documents, in the light of the common general knowledge of the skilled addressee, makes the food waste disposer as claimed in any claim of the Subject Application obvious and clearly lacking in inventive step.

82. In its Notice of Opposition the Opponent cites a total of seven documents. However, at the hearing Mr Brown advised that only four documents, Documents D1, D2, D6, and D7, along with the common general knowledge, were being advanced.

The notional person skilled in the art

83. Laddie J in Pfizer Ltd’s Patent [2002] FSR 201 at [62] summarises the characteristics of the notional skilled addressee as follows:

The question of obviousness has to be assessed through the eyes of the skilled but non-inventive man in the art, This is not a real person. He is a legal creation. He is supposed to offer an objective test of whether a particular development can be protected by a patent. He is deemed to have looked at and read publicly available documents and to know of public uses in the prior art. He understands all languages and dialects. He never misses the obvious nor stumbles on the inventive. He has no private idiosyncratic preferences or dislikes. He never thinks laterally. He differs from all real people in one or more of these characteristics. A real worker in the field may never look at a piece of prior art—for example he may never look at the contents of a particular public library—or he may be put off because it is in a language he does not know. But the notional addressee is taken to have done so. This is a reflection of part of the policy underlying the law of obviousness. Anything which is obvious over what is available to the public cannot subsequently be the subject of valid patent protection even if, in practice, few would have bothered looking through the prior art or would have found the particular items relied on. Patents are not granted for the discovery and wider dissemination of public material and what is obvious over it, but only for making new inventions. A worker who finds, is given or stumbles upon any piece of public prior art must realise that that art and anything obvious over it cannot be monopolised by him and he is reassured that it cannot be monopolised by anyone else.

84. Mr Elliott referred me to Ancare New Zealand Ltd v Novartis New Zealand Ltd and Others (HC Auckland, CP480/97, 19 June 1988) in which Morris J noted that the notional skilled person may be a team of individuals; on page 37 he said:

The judge of obviousness is a notional addressee. This person is a skilled technician in the art in question, knowledgeable in the relevant literature (including patent specifications and such material as would be discovered on making a diligent search), but unimaginative and with no inventive capacity; Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd [1972] RPC 346, 355 per Lord Reid; Beecham Group Ltd v. Bristol Myers Co (No.2) [1980] 192. Where the subject matter covers more than one discipline, the notional addressee need not be an individual but may be a research team. In this case such a team would include a toxicologist, chemist and formulator. The Court must consider the whole field of research and the whole field of documents reasonably discoverable or generally known; Dow Chemical Co. (MiIdners') Patent [1975] RPC 165. [Emphasis added]

85. I have discussed above (in relation to Insufficiency) the qualifications of the four “expert” witnesses, Professor Solomon and Mr Burnett (for the Opponent) and Mr Edmonds and Mr Chapman (for the Applicant). It is clear that Professor Solomon and Mr Edmonds are very knowledgeable in the field of plastics, but have had no, or at least very little, experience in the manufacture of waste disposal units. On the other hand, Mr Burnett (for the Opponent) and Mr Chapman (for the Applicant), while they have no expertise in the properties of plastic material (including “high density plastics material”), both men have considerable experience in the repair, and thus the physical construction, of food waste disposal units. Thus, in my opinion, they are each eligible as a member of a team of individuals constituting the notional skilled addressee.

The common general knowledge

86. Mr Elliott referred me to what he describes as “the classic statement of what constitutes common general knowledge” and which he advises is contained at page 482 of the General Tire case [supra]:

It has never been easy to differentiate between common general knowledge and that which is known by some. It has become particularly difficult with the modern ability to circulate and retrieve information. Employees of some companies, with the use of libraries and patent departments, will become aware of information soon after it is published in a whole variety of documents; where others, without such advantage, may never do so until that information is accepted generally and put into practice. The notional skilled addressee is the ordinary man who may not have the advantages that some employees of large companies may have. The information in a patent specification is addressed to such a man and must contain sufficient details for him to understand and apply the invention. It will only lack an inventive step if it is obvious to such a man.

It follows that evidence that a fact is known or even well known to a witness does not establish that that fact forms part of the common general knowledge. Neither does it follow that it will form part of the common general knowledge if it is recorded in a document.

87. Mr Brown submitted that the common general knowledge of the notional skilled addressee, at the application date of the patent specification, includes the following:

(a) Waste disposers produce considerable noise and in particular grinding noise [Chapman paragraph 15 and page 2 lines 11-17 of the patent specification itself].

(b) Waste disposers were commonly of the type depicted by Mr Chapman in his Exhibit CDC3 and he deposed that there was not a significant difference between the various units in the marketplace as at April 2007 [Chapman paragraph 14]. These units had a motor, a spinning plate, and two blades which rotated and turned on top of the spinning plate. Above the plate was a grinding chamber and a rubber flap or flaps to stop food waste being ejected from the unit. The unit was connected up to plumbing at the base of it to allow food waste (when it was suitably reduced in size) to flush away [Chapman paragraph 14]. The grinding chamber of the disposer in Exhibit CDC 3 has a conical upper section that adjoins a cylindrical lower section.

(c) Ways of reducing grinding noise in food waste disposers would involve improving sound insulation by using acoustic insulation on the outside of the food waste disposer [Burnett paragraph 10]. This included using noise reducing materials [Chapman paragraph 15].

(d) The environment in the grinding chamber of a food waste disposer is harsh and materials used in the environment would need to be resistant to cleaning chemicals including solvents, bleaches and abrasive cleaning fluids, and resistant to heat (hot water between 96-98°C and hot oil in excess of 100 °C) [Burnett paragraph 12].

(e) HDPE was very well-known as at April 2007 and was commonly used in plumbing pipes with its ability to withstand impact from a spade or digger, for use in containers for chemicals, detergents and acids and to absorb impact from sharp rocks or abrasive material [Edmonds paragraph 21 and Exhibit NE6].

88. As I understand it, Mr Elliott agrees with this list but would include two other “facts”:

(f) A mechanical engineer with expertise in plastics materials (and who would presumably be included in the team constituting the skilled addressee) would have regard to information supplied by vendors available to him [Edmonds paragraph 16].

(f) HDPE is a high density plastics material [Edmonds paragraph 18]

89. Both of these facts are, in my opinion, debatable and have been dealt with above in relation to Insufficiency.

The inventive concept

90. I agree with Mr Elliott’s statement of the inventive concept, which reads “The inclusion of a liner within the grinding chamber of a food waste disposer, adjacent to an inner surface of the housing, the liner being an annular ring of high density plastics material”. I understand this definition is not objected to by Mr Brown.

The difference between the cited published matter and the invention as claimed and whether these differences would have been obvious to the skilled addressee armed with the common general knowledge of such a person

91. As stated above, the Opponent has stated that only cited documents D1, D2, D6, and D7 are being advanced. A brief summary of the disclosure of these documents follows.

D1 United States Patent Specification No 2 939 639

92. The top portion of Fig 1 of this document, which, according to the evidence of Mr Hogan, was received by IPONZ on or before 30 May 2001, is as follows:

93. The passage from line 70 of Column 3 to line 9 of Column 4 reads as follows:

The upper part of the disposer is comprised of an upper outer metal shell 42, which forms a protective shell for the inner liner 44 and which supports the lower part of the housing.

The inner Liner 44 is substantially cylindrical in shape to form a hollow grinding chamber 46. The upper end of the inner Liner 44 tapers inwardly to terminate at its upper end in a heavy rubber collar 48 which surrounds a circular opening or throat 50 leading into the grinding chamber. The outer shell 42 terminates in its upper end in a rolled under annular head 52 which rests on the shoulder 54 beside the annular heavy rubber collar 48 to thereby support the weight of the housing on the outer shell leaving the inner liner 44 relaxed in order that it may flutter or vibrate during operation of the grinder.

94. The paragraph in lines 61 to 68 of Column 6 reads as follows:

In reference to the collar 48 and to the flexible inner liner 44, a material such as rubber preferably is used because of its wearing ability and because of its resilient nature. It will be understood, however, that substitute materials may be used which have scuff resistance, resiliency and wearing ability and which are resistant to the chemistry and abrasiveness of the waste materials which must be handled by the disposer.

95. The paragraph in lines 16 to 28 of Column 7 reads:

To increase the scuff-resistant ability and wearing ability of the inner surface of the liner 44 of the grinding chamber, a scuff-resistant material 108 may he embedded into the Wall, as is shown in Figure 1. The material is over the entire inner wall of the grinding chamber but it is shown in dotted separated areas only for simplifying the appearance of the drawing. This material may be in the form of cording formed of cotton or nylon or in the form of wire. Such reinforcing is valuable in preventing tears from resulting to the flexible walls as may occur with material such as sharp bones which are churned within the grinding chamber during the grinding operation.

96. There is another important consideration concerning Document D1, which was filed in the United States on 16 April 1856, more than 50 years before the date (30 April 2008) of filing of the complete specification of the opposed patent application.

97. Section 21(1)(e) (the first limb – relating to obviousness based on publication) states:

... is obvious and clearly does not involve any inventive step having regard to matter published as mentioned in paragraph (b) of this subsection ...

98. Section 21(1)(b) provides a description of those documents which can be relied on, including:

any specification filed in pursuance of an application for a patent made in New Zealand and filed within 50 years next before the date of filing of the applicant’s complete specification

99. Section 59(1), under the heading “Anticipation etc” also deals with this matter:

An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only that the invention was published in New Zealand—

(a) in a specification filed in pursuance of an application for a patent made in New Zealand and dated more than 50 years before the date of filing of the first-mentioned specification; or

(b) in a specification describing the invention for the purposes of an application for protection in any country outside New Zealand made more than 50 years before that date; or

(c) in any abridgment of or extract from any such specification published under the authority of the Commissioner or of the Government of any country outside New Zealand.

[Emphasis added]

100. Mr Brown submitted that, for the Obviousness ground, it is “made clear” in Blanco White 4^th edition [supra] that under section 49 of the UK Patents Act 1949 (section 59 of the New Zealand Act) nothing shall be “deemed to have been anticipated by reason only that the specification was published in New Zealand in one of the designated specifications. Paragraph 4-129 of Blanco White (4^th edition) states:

The section [section 49 of the 1949 UK Act] says that nothing shall be anticipated “by reason only” of publication in such a specification, abridgment or extract. That does not mean that such documents are simply to be disregarded; rather, it must mean that they take their place in the art but must not be singled out as in themselves disclosing the invention. In relation to novelty, this distinction is hardly of significance—either a document can be cited as an anticipation or it cannot—but in relation to obviousness the art is in large degree to be considered as a whole, and then the precise meaning of “by reason only” can become decisive.

101. Thus, Mr Brown submitted, Document D1 is able to be considered as part of the prior art – that is, taking its place in the art – for obviousness purposes.

102. Mr Elliott, on the other hand, suggests that the Opponent is claiming that, despite Document D1 falling within the scope of section 59(1)(b), which prevents a finding of obviousness because the cited patent specification was published more than 50 years before the filing of the present specification, such a specification may “take its place in the art”. What the Opponent is trying to do, according to Mr Elliott, is to combine the teachings of D1 and D2 in order to support an argument that all it is doing is allowing D1 to “take its place in the art”, when it is actually trying to allege obviousness on the basis of D1 “by the back door”. What paragraph 4-129 of Blanco White makes clear, according to Mr Elliott, is that a specification falling with section 59(1)(b) must not be singled out as in themselves disclosing (or in this case rendering obvious) the invention. [Emphasis added]

103. In support of his argument, Mr Elliott cited paragraph 21 of Nichia Corporation v Argos Limited [2007] EWCA Civ 741 (19 July 2007), in which Jacob LJ, in the England and Wales Court of Appeal (Civil Division), said at [21]:

... For many years the evidence of the inventor and the efforts (or absence of them) of the objector has been held admissible. Sometimes it is the patentee who prays this in aid, sometimes the objector. Why is this so? I think the answer lies in the ultimate (Windsurfing/Pozzoli step 4) question: is there an inventive step? The question involves a value judgment which takes into account a variety of factors. Some are purely technical, others not. That is why, for instance, an apparently simple technical step may be held inventive where it can be shown to have led to commercial success − and all the more so if there was a long-felt want. Again the age of the prior art may matter. "If it was so obvious, why was it not done before?" is a powerful question for the patentee to ask when the cited art is old, and more so when it is old and well-known. [Emphasis added]

104. Mr Elliott also submitted that Morris J in Ancare v Novartis [supra] was careful to distinguish between different prior art. For example, as pointed out by Mr Elliott, on page 45 Morris J found that “the Andrews and Thomas article” had been found by both Mr Harvey and Professor Charleston (two of the witnesses in that case) in the course of their searches and accordingly he was thus satisfied that “it would have been found by a diligent researcher in 1991 and forms part of the prior art available for consideration”. On the other hand Morris J found that in the case of “the Thomas & Gonnert article”:

The evidence produced does not establish this article would have been either generally known by the notional addressee or even found by him in the course of a diligent search. It is not therefore part of the prior art available for consideration.

105. Morris J also found that another document, “The Sankyo Patent”, would not have been available for consideration; he said:

I have earlier discussed the effect of this patent. I have heard this was clearly misclassified in the New Zealand Patent Office which is apparently the only place where it was available to the public in New Zealand. I have had no evidence which satisfies me this document, in 1991, would have been available to a researcher and its contents or even its existence would not have been known as part of his general knowledge. Simply because it is a patent does not mean it automatically becomes available for consideration as prior art: Technograph Printed Circuits Ltd v. Mills & Rockley (Electronics) Ltd [1972] R.P.C. 346.

106. After considering the above arguments I conclude that Document D1 may be considered as part of the prior art for the purpose of the consideration of Obviousness. It is clear that such a document, which is an application for protection in a country (the United States) outside New Zealand made more than 50 years before the filing date of the present complete specification, could not, according to section 59(1)(b), be considered as a prior publication pursuant to section 21(1)(b). However, the fact that it was available in the IPONZ library before the convention date of the current complete specification, and available for searching by the public in that library, does not debar it from consideration, together with the established “common general knowledge” and other relevant prior art documents, for the purpose of establishing Obviousness.

D2 United States Patent Specification No 3 589 624

107. The disclosure of this document was described above under Prior Publication.

D6 United States Patent Application No 2003/0066914

108. The Abstract of this document, which, according to the evidence of Mr Hogan, was received by IPONZ on or before 16 May 2003, reads as follows:

A food waste disposer having devices to reduce noise is disclosed. The disposer has a food conveying section, a motor section, and a grinding section. To reduce the emitted noise that may result when food waste impacts the various components of the grinding section, in one embodiment, the present invention uses sound reduction layers attached to the external surfaces of the food conveying section, the motor section, and/or the central grinding section. The sound reduction layers may be made of materials that absorb, block, or dampen the emitted noise. The rotating shredder plate may have a first metallic layer, a second damping layer, and a third metallic layer. The stationary shredder ring may be made of a high-mass material or have a high-mass ring in connection with a stationary shredder ring. These devices may be combined with various disposer inlet baffles.

D7 United States Patent Application No 2007/0075169

109. The Abstract of this document, which, according to the evidence of Mr Hogan, was received by IPONZ on or before 5 April 2007, reads as follows:

A waste food disposer unit for under sink application has a housing divided into a grinding chamber and a motor chamber. The grinding chamber has an inlet for water and waste matter and an outlet for water and shredded waste matter. A shredder ring 20 is disposed within the grinding chamber and has a plurality of cutting teeth formed by slots extending upwardly from a lower edge of the ring. A grinding disc is disposed within the ring and co-acts with the cutting teeth to shred the waste matter. The grinding disc is connected to the shaft of a motor by amounting [sic] bracket. The grinding disc may be conical forming an angle with a normal axis of between 75° and 85°. The mounting plate preferably mounts the grinding disc so that the axis of the shaft is misaligned with the normal axis of the grinding disc by a few degrees, i.e., between 3° und 70°, especially 5°, giving the shredding action between the shredder ring and the grinding disc a sawing or axial movement component.

110. It seems to me that the relevant difference between the cited prior art and the invention disclosed in the present complete specification is the incorporation in the grinding chamber of a liner which is an annular ring of high density plastics material, although, as discussed above, there seems to be some doubt, between the witnesses, about the meaning of this term. It seems to me that none of the prior art cited under the ground of Obviousness describes such a lining.

111. Document D1 describes “a scuff-resistant material [which] may be embedded into the wall [of the grinding chamber]”; this may be, for example, “in the form of cording formed of cotton or nylon or in the form of wire”, none of which could be considered to be a high density plastics material.

112. Document D2 describes “[the grinding chamber containing] an inner relatively rigid liner [67], an outer relatively rigid shell [33] spaced from said inner liner, and a core means [11] comprising relatively resilient material generally filling the space between said inner liner and said outer shell”. Again, none of this construction could be considered to constitute a grinding chamber with a liner of a high density plastics material.

113. Document D6 has sound reduction layers attached to the external surfaces of the food conveying section, the motor section, and/or the central grinding section, rather than internal surfaces as disclosed in the present complete specification.

114. Document D7, as conceded by Mr Brown, is silent as to the provision of a liner for the grinding chamber.

115. As is perhaps usual in the consideration of Obviousness, the witnesses for the two parties present quite different views on what was obvious to them. As I have mentioned above, it appears to me that the qualifications of Mr Burnett (for the Opponent) and Mr Chapman (for the Applicant) equip them, at least to some extent, to be considered as “expert” witnesses.

116. Mr Burnett was asked a number of questions relating to the question of Obviousness and his answers are given in his Statutory Declaration as follows:

7. I was then [after reading “The Field of the Invention” and the first three paragraphs of the “Background” of present complete specification as reproduced above] given the following instructions in relation to the above passage (my opinion in response follows each set of instructions/question):

1. Advise what you think the objectives of this patent application is/are;

8. Upon reading the patent application excerpt shown in paragraph 6 above, l considered that the subject invention must be directed to a food waste disposer and particularly to reducing grinding noise in such a food waste disposer. I thought that the patent application may, for example, disclose an improved sound insulation system or a modified grinding process that generated less noise.

2. Advise whether before 30 April 2007 you would have agreed with the comment in the excerpt above that in food waste disposers wrapped in noise absorbing foam materials "there is still considerable noise coming from the grinding chamber, especially when grinding bones and other hard food waste"

9. Prior to 30 April 2007, there were foam insulated food waste disposers on the market, but these disposers still generated considerable grinding noise, as mentioned in the excerpt from the patent application. Prior to 30 April 2007, I understood that it would be desirable to further quieten such disposers.

3. Cast your mind back to 30 April 2007 and advise on what you would do to a pre-30 April 2007 food waste disposer to achieve the objectives you noted in point 1 above (please point out whether the comment made in point 2 above would lead you to try something other than wrapping the unit in noise absorbing foam materials).

10. Casting my mind back to pre April 2007, I would have considered the following for reducing grinding noise in food waste disposers:

• improving sound insulation by using acoustic insulation on the outside of a food waste disposer or, in light of the comment made in question 2 above, on the inside of the food waste disposer;

• modifying the grinding action; and

• using a denser shredder ring/grinding disc to generate lower pitch grinding noise.

117. Mr Burnett was then given a copy of Document D4 (which is not being advanced by the Opponent as a citation) and was asked:

Please review the attached document [Document D4] and, casting your mind back to before April 2007, let me know if there are any changes you would have made to the waste disposer described in the attached document in order to reduce the noise it emits when grinding food waste.

15 As noted in para 10 above, I would have considered the following:

• improving sound insulation by using acoustic insulation on the outside of a food waste disposer or, in light of the comment made in question 2 above, by forming the liner 8 from a more noise insulating material, such as plastics, with the plastics used in the liner being suitable for withstanding the harsh environment of the grinding chamber, as discussed in para 12 above;

• modifying the grinding action; and

• using a denser shredder ring/grinding disc to generate lower pitch grinding noise

118. Mr Burnett was then given a copy of the cited documents D1 to D7 and a table (“claim chart”) for each of the claims of the present complete specification, which, according to Mr Burnett, “broke the claims of the Opposed specification into individual elements”. For example, the chart for Document D6 read as follows:

119. After considering all the cited documents, with the aid of the chart, Mr Burnett came to the following conclusions with respect to each of the cited documents which the Opponent has advanced:

21. As shown in annexure DB-2 [the “claim chart”], I consider that D1 discloses claim elements (i) to (xvii), (xix), (xx), (xxi) and (xxii) of the Opposed Specification.

22. As shown in annexure DB-2, I consider that D2 discloses claim elements (i) to (xiv), (xvi), and (xix) of the Opposed Specification. However, I consider modifying the top portion of the grinding chamber of D2 to be conical rather than having a rounded tapered shape to be an obvious adaptation. Therefore, I consider that claim element (xv) of the Opposed Specification is obvious in light of D2. [Emphasis added]

...

26. As shown in annexure DB-2, l consider that D6 discloses claim elements (i) to (vii), (ix) to (xii), (xv) to (xvii) and (xix) to (xxii) of the Opposed Specification. However, if faced with the problem of making this disposer less noisy, I would consider adding a plastics liner to the grinding chamber, as discussed in para 15 above, as l consider this would more effectively quieten the disposer than the outer liner of D6 which contains the grinding noise rather than reducing noise generation. Accordingly, I consider that the addition of claim elements (viii) and (ix) is obvious. Furthermore, if I included a plastics liner, I would extend it over the entire inner surface of the grinding chamber. Accordingly, I consider that the addition of claim elements (x) to (xiii) is obvious. [Emphasis added]

27. As shown in annexure DB-2, I consider that D7 discloses claim elements (i) to (vii), (xv), (xvii), and (xix) to (xxii) of the Opposed Specification. The only differences between D7 and the invention of the Opposed Specification appear to be the presence of a liner for the grinding chamber and a flat grinding disc in the invention of the Opposed Specification. The D7 disposer does not show a liner for the grinding chamber and has a domed grinding disc. However, if faced with the problem of making this disposer less noisy, I would consider adding a plastics liner to the grinding chamber, as discussed in para 15 above. Accordingly, I consider that the addition of claim elements (viii) and (ix) is obvious. Furthermore, if I included a plastics liner, I would extend it over the entire inner surface of the grinding chamber. Accordingly, I consider that the addition of claim elements (x) to (xiii) is obvious. [Emphasis added]

120. Mr Elliott submitted that Mr Burnett was “quite clearly” led in giving his evidence by the way he was briefed, particularly by the questioning of the Opponent (for example questions 2 and 3 above in paragraph 116). I agree that the questioning appears to be pointing him in the direction in which the Opponent wishes his answers to go. In addition, I think that the “comprehensive claim chart”, produced by the Opponent for his assistance provides an indication of the type of responses which are expected of him.

121. Mr Chapman, for the Applicant, after discussing what he considers are the common problems with waste disposal units and other general matters, states:

What was known in April 2007?

14. In April 2007 in New Zealand, food waste disposal units were commonly the type depicted in the diagram now produced and shown to me marked "CDC-3”. These units had a motor, a spinning plate, two blades which rotated in turn on top of the spinning plate. Above the plate - a grinding chamber and a rubber flap or flaps to stop food waste being ejected from the unit. The unit is connected up to the plumbing at the base of the unit to allow the food waste when it was suitably reduced in size to flush away. Apart from differences in the quality of materials used for example in the construction of the blade there was not a significant difference between the various units in the marketplace for residential use as at April 2007.

15. I am aware that in sink waste disposal units often make a lot of noise. In my experience the noise becomes worse as the devices become older and the blades become less efficient in cutting. New units are generally significantly quieter than older units and there are differences between brands. I have found for example the Whirlaway units to be quite noisy particularly when they're old even over and above the units manufactured by other brands. It would seem to me that it is desirable to reduce the noise created by these waste disposal units as the noise could be distracting or loud in a home kitchen environment. I was aware of steps taken to reduce noise. This was to my knowledge done externally of the units and included, for example, using noise reducing materials. I was not aware that any particular steps had been taken by manufacturers to reduce internally the noise as at the priority date of April 2007 i.e. in the grinding chamber. That is, aside from differences in the efficiency of cutting blades which l mentioned have an impact on the noise. [Emphasis added]

Patent Specification No.567793

16. Once having undertaken the steps and provided the views set out in paragraphs 1 to 15 above and recorded those views, l was provided with a copy of the specification marked “CDC-4". l have read that specification. Having done so, it seems to me that the overall idea of lining the grinding chamber with a high density plastics material is a very good idea to reduce the sound created in these units. The significant amount of the sound comes from the collision of food wastes with the metal wall of the grinding chamber as the stainless steel blades swivel around within that grinding chamber. This impact causes vibration and noise. If the sound of the impact could be reduced and the vibrations reduced that would make a quieter unit. [Emphasis added]

17. As at April 2007 I consider that lining a metal chamber would have been a good idea to reduce noise. At that date l had not seen such any such [sic] linings in use in waste disposal units l worked on, read about or was aware of. Nor had I seen anyone use a high density plastics material to line a food waste disposal unit in New Zealand. It seems to me to be a new and very good idea. [Emphasis added]

122. After describing the disclosure of each of the cited documents, Mr Chapman summarises his opinion of the effectiveness of the units disclosed in comparison with those of the current complete specification;

20. In terms of the resilient nature of the rubber walls [of Document D1] this would work on the basis that there would be less ricocheting of the food scraps. I expect that this would be achieved by the resilient rubber being able to better absorb the food scraps and generally prevent them from escaping up and out of the grinding chamber. This is quite a different solution to the problem that the patent application is directed at. [Emphasis added]

24. With this particular specification [Document D2], the focus is very much on the area outside the metal grinding chamber. To my mind they have simply used the known solution of a metal grinding chamber and tried to solve the noise problem by having either external layers outside the metal grinding chamber. This is different to the solution provided in the opposed application. [Emphasis added]

29. ... on my reading of the document [Document D6] all of the layers are designed to be applied to portions of the exterior surface of the disposer. None of the layers are disclosed as being within the grinding chamber. As I see it the sound insulating layers are applied outside the grinding chamber. While a number of materials are discussed, l see no reference to “high density plastics material”. [Emphasis added]

30. This document [Document D7] describes a waste food disposer of compact design. It does not contain all the features of claim I.

123. In the final section of Mr Chapman’s Statutory Declaration he comments on Mr Burnett’s declaration as follows:

31. Finally, after having looked at the prior art and recorded my views, as set out above, I was provided with a copy of the statutory declaration of David Burnett. Having read the statutory declaration it appears to me that Mr Burnett has reached a view that he would have thought of using a sound insulation material on both the outside and the inside of grinding chamber. I refer, in particular at paragraph 10 of his declaration. Firstly, I am not sure that all of the relevant noise comes from grinding. In my experience, it occurs due to the efficient operation of these devices when the cutting surfaces become blunt, worn and less aligned. There is also significant vibration and thus noise created from areas other than the grinding of food waste. The noise level may also depend on the speed at which the unit operates.

32. I note that Mr Burnett talks in paragraph 10 about modifying the grinding action and using a different shredder ring or grinding disc. However, his main focus seems to be on improved sound insulation. I note for example that in paragraph 15 he refers to use of a plastic liner. As I have noted above, until being involved in giving evidence in this case I had never seen a plastics liner used in a waste disposal unit or proposed to be used for this purpose. For this reason, I disagree with his view that he would have considered using a plastic liner to reduce noise. As I noted above in paragraph 17 as at April 2007 I would regard this as a new and clever idea and it would certainly not have occurred to me as an option.

33. As I point out above, I would certainly not have regarded it as an option to replace a metal liner with a plastics liner and in so far as Mr Burnett says he would have done so (at para 15) I disagree with him.

34. I note that David Burnett is of the view that the Smith patent [Document D2] discloses all the features of claim 1. However, it is worth noting that Mr Burnett qualifies this by saying that the patent document discloses a “double lining". While the patent notes that the liner being fabricated from a stainless steel material is a preferred embodiment, it does not on my reading disclose an inner liner of a high density plastics material.

...

36. Finally, I note that at paragraph 27 Mr Burnett states that he believes having a plastic liner in a grinding chamber to be an obvious step. For the reasons set out above I do not agree.

124. It is clear that both these witnesses are skilled tradesmen, Mr Burnett a plumber and Mr Chapman a registered electrician and electrical fitter. Mr Burnett explains that he has “installed and repaired domestic and commercial food waste disposers in Auckland, New Zealand, since 1990” and Mr Chapman explains that he is the owner of a business called Aaron Appliance Repair Company Limited and that he has been “the principal of this business for 25 years”. Having carefully considered the evidence of both Mr Burnett and Mr Chapman I have come to the conclusion that Mr Chapman appears to be the more experienced of the two in the operation and performance of waste disposal units in New Zealand. I am also conscious of the matter raised by Mr Elliott (see paragraph 120 above) regarding the way in which he contends that Mr Burnett was led in giving his evidence; it appears to me that Mr Chapman was given more latitude in reaching his conclusions without assistance from the Applicant.

125. After taking all the above matters into account, I find that the ground of Obviousness has not clearly been made out by the Opponent.

Decision

126. I find that none of the grounds of opposition raised by the Opponent (Insufficiency, Prior Publication, and Obviousness) have been made out.

Costs

127. I award costs to the Applicant for these proceedings in accordance with scale in the sum of $3,930.00 calculated as follows:

Dated this 4^th day of April 2014

_____________________________
K B Popplewell
Assistant Commissioner of Patents

Shelston IP for the Applicant
FB Rice & Co for the Opponent