IN THE CANADIAN PATENT OFFICE
DECISION OF THE COMMISSIONER OF PATENTS
Patent application 380,049 having been rejected under Rule 47(2) of the
Patent Regulations, the Applicant asked that the Final Action of the
Examiner be reviewed. The rejection has consequently been considered by
the Patent Appeal Board and by the Commissioner of Patents. The findings
of the Board and the ruling of the Commissioner are as follows:
Agent for Applicant
Meredith & Finlayson
77 Metcalfe Street
Ottawa, Ontario
K1P 5L6
Obviousness
The materials and proportions in the polypropylene as an antistatic agent
for forming a container to withstand sterlization temperatures are not
addressed in the cited art in any manner that supports an obviousness
rejection. Rejection withdrawn.
This decision deals with Applicant's request for review by the Commissioner
of Patents of the Final Action of application 380,049 (Class 190-150) filed
June 18, 1981. Assigned to Metal Box Limited, it is entitled Processable
Plastics Containers. The inventor is Martin J. Braithwaite. The Examiner
in charge issued a Final Action on March 15, 1985, refusing to allow the
application. Following his response to the Final Action, the Applicant
submitted further arguments in a letter dated March 16, 1987.
The invention relates to a container capable of withstanding temperatures
of at least 115·C, and made of polypropylene and a C12 to C18 fatty acid
ester of glycerol wherein at least 80% of the monoester is incorporated in
the polypropylene as an antistatic agent.
The Examiner relied on the following references in taking his Final Action:
British Patent
(1) 1,331,343 Sept. 26, 1973
Chemical Abstracts
(2) Vol. 84, 166553s (1976)
(equivalent Kokai 51-001077, Jan. 21, 1976)
He considered them relevant for the following reasons:
(1) teaches the addition of glycerol monoesters of fatty
acids (12 to 26 carbon, page 1 lines 70 to 79, 12 to 18
carbon preferred, page 2 lines 45 to 56) in an ester-
glycerol mixture of 60 to 96% total ester, 4 to 40% of
glycerol, where the total diester and triester is not
greater than 25% of the ester-glycerol mixture, as an
antistatic agent in the proportion of 0.2 to 2.8%, 0.4 to
2% preferred (page 2 lines 40 to 44) to a polyolefin,
including polypropylene. It is exemplified inter alia
that 1% of glycerol monomyristate (14 carbon),
monostearate (18 carbon), monolaurate (12 carbon) give
charge half lives to 60 to 120 seconds (examples 3, 4, 6
of Table I, and footnote, page 4) which is substantially
similar to applicant's results (52 to 155 seconds).
(2) indicates that it is known to add 1.2% of glycerin
monostearate (glycerol monostearate) to polypropylene to
produce an antistatic effect.
The Examiner condensed the Applicant's arguments prior to the Final Action,
as follows:
(a) the prior art "monoesters" were the old 40 to 65%
monoester, 35 to 60% diester/triester;
(b) that the 80% plus pure monoesters (novel) had superior
antistatic properties (selection);
(c) that unlike the prior art polypropylene containers
containing suitable quantities of applicant's additive
retained their antistatic properties after 1 hour in water
at 115·C (unexpected result).
In not accepting any of these arguments, the Examiner said in part, as
follows:
...
... the examiner does not believe that the prior art (1)
"monoesters" are in fact the commercially available 40 to
65% pure variety. The examiner's reasons are as follows
in (1) (especially Table I examples 3, 4, 6) the
monoesters (Table I, examples 3 to 12, 15 to 17, 19, Table
II, examples 3, 6, 7, 9, Table III, examples 2, 4, 5, 7)
are invariably described as alpha i.e. the isomer was
known, where mixtures occur (Table I, examples 18, 20,
Table II, examples 4, 8, Table III, example 6) the nature
of the mixture is precisely indicated. This alone is
enough to tell a skilled chemist that the patentee of (1)
deemed the monoesters pure. However turning to the
disclosure the method of manufacture is given (page 2
lines 84 to 114), while glycerolysis can give mixtures
(depending on conditions) neither of the other specified
methods are likely to do so, especially the reaction of
Na, or K salt of the acid with an alpha- or beta- halogeno
propylene glycol. A reasonable assumption is that all
three methods are equivalent and deliver pure (100%)
glycerol monoesters. The examiner is thus unable to
accept applicant's argument (a).
Similarly argument (b) of applicant is rejected, as the
antistatic properties of applicant are not seen to be
superior to those of citation (1). Further even if they
are somewhat superior based on improved purity of
additive, this is expected, because it is well known to
skilled chemists that a purer additive has an enhanced
effect because not only is there more effective additive
but there is less impurity to have (unwanted) side
effects.
Similarly argument (c) of applicant is traversed. The
devices of citation (1) are described as dishes (page 4
lines 1 to 9) it seems unlikely that such devices would
not stand subjection to normal pasteurisation/
sterilisation processes. It is noted that applicant
teaches 115·C for one hour in water - which must be in an
autoclave - sterilisation is often executed as 120/121·C
for 20 minutes using superheated steam, which is
equivalent to one hour at 115·C, for food processing, (see
"Canned Foods" Herson & Hulland, Churchill, London, page
154, page 168, 1969 for example). It is felt by the
examiner that any material considered for a food container
would have to tolerate pasteurising/sterilising
autoclaving to be operable.
...
In any response to overcome this rejection applicant must
provide solid experimental proof demonstrating beyond any
reasonable doubt that the antistatic property survivial is
unexpected. The examiner is aware that such evidence is
often neither readily apparent nor presented in the
disclosure, nevertheless applicant must nave such
experimental evidence available to make such assertions.
...
In his response, the Applicant addresses the Examiner's rejection as
follows, in part:
It has been common to use commercial grades of glycerol
monostearate in non-processable containers but applicant
has found that this and other antistatic agents have
little antistatic activity at recommended levels in
containers which have been processed, e.g. sterilization
or pasteurization. Glycerol monostearate with monoester
content of 65% is only really effective as an antistatic
agent in processed containers at a concentration of 2%.
...
...
The applicant submits that the use of a fatty acid ester
of glycerol having the specified higher content of
monoester than has conventionally been used gives the
containers improved antistatic property retention after
encountering a processing temperature.
The preferred amount of monoester to be incorporated is
from 1% to 1.5% by weight.
...
(a) The Chemical Abstract indicates that glycerin
monostearate was used as an antistatic agent for
polyprogylene paper substitute. Thus a mixture including
polypropylene and glycerin monostearate was extruded at
230· and treated with corona discharge to prepare a film
having good printing properties. The amount of antistatic
agent was 1.2 parts (not necessarily 7.2%) In any event,
as commercially available glycerin monostearate is usually
a mixture of mono, di and tri-esters with the monoester
content typically from 40-65%, the reference does not
appear to say more than that glycerin monostearate may be
used as an antistatic agent for polypropylene paper
substitutes having good printing properties.
(b) ... The (British) patent ... states that the invention
relates to anti-electrostatic moulding compositions and
mouldings of polyolefins which contain fanyl acid
glycerides and glycerol.
It (says) the use of polyhydric alcohols such as glycerol
is "completely unsatisfactory from the point of view of an
antistatic effect as will be shown later. On the other
hand, glycerol esters show greatly differing behavior."
(Column 1, lines 32 - 35).
The British patent is directed to providing antistatic
moulding compositions and moulding of polyolefins
containing a mixture of
(a) 60 to 96 percent by weight of a glycerol
monoester of a fatty acid with 12 to 26
carbon atoms in which the content of diester
and triester is at most 25% by weight of the
glycerol - glycerol ester mixture, and
(b) 40 to 4 percent by weight glycerol.
(Preferably these mouldings additionally contain an amine)
(c). The mixture of (a) and (b) (and optionally (c)) may
be incorporated into the moulding compositions in amounts
of 0.2 to 2.8% by weight of the compositions (preferably
0.46 to 2.0% by weight).
The monoesters can still contain minor proportions of
diesters and/or triesters remaining from the manufacture
provided they do not exceed 25% by weight of mixtures of
(a) and (b).
... Examples 3, 4 and 6 of Table I exemplify the use of
glycerol monoesters and whilst the use thereof is able to
reduce the surface resistance the patent states that "it
can only do so to a very unsatisfactory extent". This
statement would not encourage a person reviewing the
patent to consider the further use of glycerol monoesters
under conditions requiring sterilization of polypropylene
products....
Applicant has previously in the prosecution acknowledged
that adding C12 to C18 fatty acid esters of normal
commercial purity to polypropylene is known for providing
antistatic properties in containers which are not
processed. The essential feature of applicant's invention
is the selection of C12 to C18 fatty acid ester of
glycerol containing at least 80% monoester for the purpose
of providing a simple but yet effective antistatic
protection in polypropylene containers capable of
withstanding temperatures of at least 115·C, i.e.
sterilization temperatures.
Nothing in the British patent directs a person to
applicant's invention.
...
... The Examples 3, 4 and 6 are for comparison purposes
and in the context of the British patent were not
considered effective for the purposes of such patented
invention. If anything, the patent teaches away from a
person attempting to use such examples as a basis for
effecting the retentions of antistatic properties in
sterilized polypropylene containers.
With reference to (b), the Examiner's analysis is
predicated on a person knowing that in the context of
sterilization problems, the at least 80% purity would be
effective to cause retention of antistatic properties at
concentrations which do not adversely affect gilding and
imprinting of containers. The Examiner's position on (b)
is interrelated with (c) and not mutually exclusive.
As to point (c) ... There is simply nothing in the patent
which teaches the retention of antistatic properties at
elevated temperatures of retort sterilization. The
assumption that the "dish mouldings" of the British patent
are food containers or must be able to withstand or
tolerate pasteurizing/sterilization autoclaving is not
factually correct. There are many "dishes" including
those simply for the purpose of testing in the British
patent which are not used or intended to be used in
pasteurizing/sterilization conditions.
Applicant recalls the comments of Mr. Justice Pigeon in
Farbwerk Hoechst A.G. v Halocarbon (Ont) Ltd (SCC) 42 CPR
(2nd) 145. ...on the conclusion of then Chief Justice
Jackett of the Federal Court of Appeal who took the
position that the "worth a try" test was part of Canadian
patent law. Chief Justice Jackett indicated that
"inventive ingenuity" was not met if the "state of the
art" points to a process and all that the alleged
inventory has done is ascertain whether or not the process
will work successfully.
To this conclusion Mr. Justice Pigeon commented (in part):
"In my view this statement of the requirement of
inventive ingenuity puts it much too high. Very
few inventions are unexpected discoveries.
Practically all research work is done by looking
in directions where the "state of the art"
points. On that basis and with hindsight, it
could be said in most cases that there was no
inventive ingenuity in the new development
because everyone would then see how the previous
accomplishments pointed the way. The discovery
of penicillin was, of course, a major
development, a great invention. After that, a
number of workers went looking for other
antibodies methodically testing whole families
of various micro-organisms other than
penicillium notatum. This research work was
rewarded by the discovery of a number of
antibiotics such as chloromycetin obtained from
streptomyces venezuelae as mentioned in
Laboratoire Pentagons Ltee v. Parks, Davis and
Co. (1968), 55 C.P.R. 111, 69 D.L.R. (2d) 267,
(1968) S.C.R. 307, tetracycline as mentioned in
American Cyanamid Co. v. Berk Pharmaceuticals
Ltd., (1976) R.P.C. 231, where Whitford J., said
(at p. 257): "A patient searcher is as much
entitled to the benefits of a monopoly as
someone who hits upon an invention by such lucky
chance or inspiration". I cannot imagine
patents obtained for antibiotics and for various
processes for their production being
successfully challenged on the basis that the
discovery of penicillin pointed the way and
there was no inventive ingenuity in the search
for other antibiotics and in the testing and the
development of processes.
...
In the subsequent letter dated March 16, 1987, the Applicant points to the
findings in the Commissioner's Decision in Re Dialog Systems Inc., 59
C.P.R. (2nd) 423. The Applicant argues as follows, in part:
...
In that case the applicant sought to patent a process to
prepare certain ethers and cited two references, one of
which was held too late to constitute a proper reference.
The other reference was a U.S. patent and applicant's
Agent believe the head note to the Decision is
particularly appropriate with reference to the British
patent relied on by the Examiner in this case.
"The United States patent must be considered as
a whole and not merely the two examples relied
upon by the Examiner. The Examiner has stated
that it is conceivable that the invention is
obvious. A rejection should be based upon
something more probable than a conceivable
conclusion. The teachings of the relevant art
are too nebulous, uncertain and imprecise to be
a satisfactory basis to hold that the impugned
invention is obvious. To so find involves too
many elements of speculation and ex post facto
analysis to satisfy the Hoard that the
application should be refused."
The Examiner in the Final Action in this case states that:
"The devices of citation (1) are described as
dishes (page 4, lines 1 to 9) it seems unlikely
that such devices would not stand subjection to
normal pasteurization/sterilization processes."
"It is felt by the Examiner that any material
considered for a food container would have to
tolerate pasteurizing/sterilizing autoclaving to
be operable."
Applicant's Agents submit that the Examiner is in effect
taking the same position as did the Examiner in the
abovenoted reported case, i.e. that the invention is
"conceivably obvious". The rejection should be based on
something more than a conceivable conclusion.
Applicant submits that the teachings of the cited British
reference are too nebulous, uncertain and imprecise to be
a satisfactory basis to hold applicant's invention
obvious. There are too many elements of speculation and
ex post facto analysis in the Examiner's refection.
The issue before the Board is whether or not the claims present patentable
subject matter in view of the cited references. Claim 1 reads:
"A container made of polypropylene and capable
of withstanding temperatures of at least 115·c,
wherein a C12 to C18 fatty acid ester of
glycerol containing at least 80% of the
monoester is incorporated in the polypropylene
as an antistatic agent."
We observe that the cited British patent 1,331,343 describes mouldings and
moulding compositions that are formed to provide an antistatic surface. In
Tables I to III showing test results, the surface resistance of such
surfaces are shown to be measured at temperatures of 23·C 1 day after
manufacture. In the application before us, the containers are intended for
use with food at sterilization temperatures of at least 115·C for times up
to 1 hour as well as for their antistatic properties. With respect to the
antistatic chacteristic, the Applicant includes a C12 to C18 fatty acid
ester of glycerol containing at least 80% monoester that is said to
withstand the sterilizing temperature. No description is found in the
British patent that relates the particular higher percentage, nor that a
higher percentage of monoester would be useable at higher temperatures
approaching sterilization temperatures.
We learn from the Chemical Abstract that polypropylene paper substitutes
having good printing properties are prepared by extrusion techniques, and
treatment with a corona discharge. From this reference, we are not led to
an understanding that a paper substitute would be subjected to temperatures
used for sterilization purposes.
We think the Applicant has overcome the rejections in the Final Action, and
has particularly distinguished the features that set his contribution apart
from the cited art. We are persuaded that the materials and proportions he
has incorporated into polypropylene as an antistatic agent have not been
addressed in the citations for forming a container capable of withstanding
sterilization temperatures. We find the Final Action has not established
that the results achieved by the Applicant are expected. Moreover, we
think the Applicant does not have to establish experimental proof showing
the antistatic property of the container that has been in our view,
sufficiently described in the application under consideration.
We recommend that the refusal of the claims for lacking invention over the
citations, be withdrawn.
M.G. Brown S.D. Kot
Acting Chairman Member
Patent Appeal Board
I have reviewed the prosecution. I concur with the findings and the
recommendation of the Patent Appeal Board. Accordingly, I withdraw the
refusal of the claims and I remand the application for prosecution
consistent with the recommendation.
J.H.A. Gari‚py
Commissioner of Patents
Dated at Hull, Quebec
this 25 day of October 1988.
Meredith & Finlayson
77 Metcalfe Street
Ottawa, Ontario
K1P 5L6