IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

CSR Building Products Limited v United States Gypsum Company [2015] APO 72

Patent Application:	2012222102

Title:	Lightweight, reduced density fire rated gypsum panels 

Patent Applicant:	United States Gypsum Company 

Opponent:	CSR Building Products Limited

Delegate:	Dr S.D. Barker 

Decision Date:	6 November 2015

Hearing Date:	26 and 27 August 2015, in Canberra

Catchwords:	PATENTS – opposition to the grant of a patent – opposition governed by the Patents Act as amended by the "Raising the Bar" provisions – technical contribution to the art does not extend to a general principle – disclosure – the specification does not provide clear guidance telling the person skilled in the art how to adjust the process and materials so as to achieve with certitude the full range of panels – the work involved in testing represents an undue burden – support – the technical contribution to the art is that high expansion particles can produce a suitable panel when prepared according to nine examples – claims limited to those panels that are fire resistant – novelty – citations do not disclose all features of the claims – inventive step – it would not be a matter of routine to arrive at the claimed invention – opposition succeeds on section 40(2)(a) and section 40(3)  

Representation:	Patent applicant:  E. Heerey of counsel
	Opponent:  N. Murray of counsel

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:	2012222102

Title:	Lightweight, reduced density fire rated gypsum panels 

Patent Applicant:	United States Gypsum Company 

Date of Decision:	6 November 2015
DECISION
The opposition succeeds on the grounds of section 40(2)(a) and section 40(3). 

I allow both parties two (2) weeks from the date of this decision to file submissions in relation to costs.  

I allow the applicant two (2) months from the date of this decision to file amendments to overcome the deficiencies identified in this decision.
REASONS FOR DECISION
1.	The present opposition is governed by the Patents Act 1990 (the Act) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act).  Amendments to sections 7, 40 and 60 of the Act apply to the present case as a consequence of Schedule 1, items 55(1)(e) and 55(4)(b) of the Raising the Bar Act – the applicant had not asked for examination before 15 April 2013 (the request for examination was filed on 18 September 2013).  These facts are not in dispute.

2.	This is the first hearing of an opposition that is proceeding fully under the Act as amended by the Raising the Bar Act.  This opposition also raises serious questions as to whether the specification satisfies the new section 40 requirements of clear enough and complete enough disclosure, and whether the claims are supported by the description.  
Background
3.	Patent application number 2012222102 was filed as an application under the Patent Cooperation Treaty on 24 February 2012.  The applicant is United States Gypsum Company (the applicant).  The application was examined and accepted by the Commissioner, and subsequently opposed by CSR Building Products Limited (the opponent).  A hearing was held on 26 and 27 August 2015 in Canberra to decide the opposition.  The applicant was represented by Ed Heerey of counsel, assisted by Philip Petti (from the applicant), and Gus Hazel and Andrew Scott (from James and Wells, New Zealand).  The opponent was represented by Neil Murray of counsel, assisted by Derek Baigent, Robert Wulff and Samantha Keirs (from Griffith Hack).
The opposition 
4.	The statement of grounds and particulars was amended on 18 September 2014.  The statement identifies seven grounds of opposition:  lack of entitlement, lack of manner of manufacture, lack of novelty, lack of inventive step, lack of utility, section 40(2), section 40(3).  At the hearing all grounds were pressed.

5.	The parties relied upon evidence by several declarants.  Evidence in support consists of a declaration by Bob Bruce.  Evidence in answer consists of declarations by Timothy Keith Ball, Robert M. Berhinig, Peter James Aird and Dick Charles Engbrecht.  Evidence in reply consists of a further declaration by Bob Bruce.  I will refer to the relevant parts of the evidence where appropriate.  

6.	The standard of proof that applies to this opposition is the balance of probabilities (as a consequence of the amendment to section 60(3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists), and it is the opponent who carries the onus of proof.
The specification
7.	The specification relates to building panels made from gypsum.  Panels made from gypsum are in widespread use in domestic and commercial construction.

8.	The application claims priority from US provisional patent application 61/446,941 filed on 25 February 2011, the contents of which are incorporated in the present specification by reference.  The written description runs to page 75, followed by 30 claims and 54 pages of Figures.  There are three independent claims:  claim 1, claim 12 and claim 24.
What is the invention as described
9.	Before commencing to construe the specification, I note what Middleton J said in Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214, 100 IPR 451 at [139]:

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

The background to the invention

10.	Before discussing the detail of the invention, it is helpful to understand something of the art.

11.	Boards or panels:  The specification relates to gypsum products that it refers to as "panels", but some of the citations refer to "boards" or even "board panels".  I consider that these terms are synonymous, and used interchangeably.  I will refer to the products as "panels", as this is the language of the present specification.  However, where quoting from a citation or a declaration, I will use the language of that document.

12.	Gypsum panels:  The specification states that gypsum panels are known and used in building and construction (such as wall and ceiling panels).  They have been manufactured by mixing calcined gypsum with water to prepare a slurry that is used to form the core of the panels.  Outer cover sheets are applied, as explained at paragraph [004] of the specification:

"cover sheets typically are provided as continuous webs.  The gypsum slurry is deposited as a flow or ribbon on a first of the cover sheets.  The slurry is spread across the width of the first cover sheet at a predetermined approximate thickness to form the panel core.  A second cover sheet is placed on top of the slurry, sandwiching the gypsum core between the cover sheets and forming a continuous panel."

13.	The calcined gypsum undergoes hydration in the slurry, and the resulting panels contain a generally continuous crystalline matrix of set gypsum dihydrate.  Mr Engbrecht says at paragraph [34] of his declaration that this was generally known.

14.	Light weight gypsum panels:  Light weight gypsum panels have reduced density due to the introduction of air bubbles, or voids, into the core of the panel.  Dr Bruce explains this at paragraph [27] of his first declaration:

"Since well before the Priority Date and from at least as early as the 1990's, the term 'lightweight board' has been widely and commonly understood in the industry to describe a board that has a distribution of large air voids, enabling the board to have a reduced weight and reduced core density while maintaining ASTM compliant strength characteristics.  This term has been used over the years to describe lighter and lighter boards.  In my opinion, these changes in the industry were widely known to everyone working in the industry before the Priority Date."

15.	At paragraph [29] Dr Bruce states that the introduction of voids could reduce the strength of the panel:

"Lightweight features were achieved by increasing the void volume in the board core and this was commonly known at the Priority Date.  Increasing void volume can result in a decrease in core strength, but it was commonly known by persons skilled in the art at the Priority Date that core additives were available that enabled the maintenance of core strength at lower densities."

16.	Fire resistant gypsum panels:  Fire resistant gypsum panels "are formulated to be capable of limiting the transmission of heat through or within the gypsum board when the board is exposed to high temperatures" (Bruce declaration at paragraph [31]).  However, all gypsum panels have a degree of fire resistance "because of the chemical properties of the gypsum" (Berhinig declaration at paragraph [36]), i.e. the gypsum core can absorb heat and release water from the gypsum dihydrate crystals (specification at page 2).  However, dehydration of the gypsum dehydrate causes shrinkage which may lead to failure of the structural integrity of the panels, allowing high temperature flames or gases to pass directly through the wall or ceiling structure.

17.	Consequently, the term is usually used to identify a panel that has superior fire resistance (which is equivalent to a fire rated panel).  Mr Aird says at paragraph [39]:

"those in the industry recognize that a person referring to a 'fire resistant gypsum panel' is referring specifically to a board that has been designed to have superior fire resistance to a standard board, and designed to be used in partitions that have a nominal fire rating".

18.	Fire resistant gypsum panels can be evaluated by tests such as those published by the Underwriters Laboratories (UL) – referred to as UL U305, U419 and U423 – and the American Society for Testing and Materials (ASTM) – referred to as E119 – (page 3 of the specification).

19.	Dr Bruce states at paragraph [32] of his first declaration that additives to achieve fire resistance were known:

"Fire resistant gypsum boards have been known and used in the gypsum industry since approximately the 1940s.  They are generally produced through the use of various additives to a gypsum board core slurry that consists mainly of calcined gypsum and water.  The first company to produce a fire resistant gypsum board was Certain Teed Products Corporation (Certain Teed), an American company.  The fire resistant properties of this board were produced using various additives such as clay, vermiculite and glass fibre."

20.	Mr Engbrecht makes similar comments at paragraph [35] of his declaration:

"Both members of the team of ordinary skill in the art would likely know that clays and glass fibers are used in fire resistant gypsum panels."

21.	At paragraph [38] he refers to a further additive:

"The head of manufacturing of the team of ordinary skill in the art would likely know that vermiculite is used in making fire resistant gypsum panels and may possibly know that adding vermiculite to the panel improves the stability of the panel under high temperature situations due to the vermiculite exfoliating and expanding in the core.'

22.	Mr Engbrecht says at paragraph [43] of his declaration that the density of fire resistant panels has not been reduced over time:

"While the weight of the standard non-fire resistant 1/2" thick panel went from about 1800 lb/MSF to about 1450 lb/MSF, the industry, during my 35 years at USG, could not lower the panel weight of fire resistant gypsum panels."

23.	Fire rated gypsum panels:  Fire rated panels "have been tested and found to comply with certain endurance standards when undergoing standard fire tests" (the first Bruce declaration at [60]).  The term seems to be equivalent to fire resistant -  see the Berhinig declaration at [36], and the specification at page 3, line 2.

The aim of the invention

24.	The specification says at page 1:

"This disclosure generally pertains to reduced weight and density gypsum panels with improved thermal insulation properties, heat shrinkage resistance, and fire resistance."

25.	This is consistent with the statement at paragraph [014] of the specification:

"It has been recognized, however, that reducing the weight and/or density of the core of gypsum panels by reducing the amount of gypsum in the core will adversely affect the structural integrity of the panels and their resistance to fire and high heat conditions."

26.	I conclude that the aim of the invention is to provide a gypsum panel that is both light weight and has fire resistance.

The nature of the invention

27.	The specification does not contain a consistory statement, or a simple passage of text that sets out the invention in clear terms.  The applicant submitted that the nature of the invention is that high expansion particles having a volume expansion of about 300% can be used in a low density panel to produce a fire resistant panel.  This conclusion is based on a lengthy, and difficult, analysis of the specification.  I will set out that analysis as best I can.

28.	At page 7 the specification has a heading "SUMMARY", followed by the following paragraph [028]:

"In some embodiments, the present disclosure describes a reduced-weight, reduced-density gypsum panel – and methods for making such panels – having fire resistance properties comparable to heavier, denser gypsum panels typically used for construction applications where a fire rating is required.  In some embodiments, panels formed according to principles of the present disclosure comprise a set gypsum core with a core density of less than about 40 pounds per cubic foot ("pcf") disposed between two cover sheets.  In embodiments of such panels that are 5/8- inch thick, the weight is approximately less than about 2100 lb/msf."

29.	This confirms the aim of the invention, but does not suggest the nature of the invention.  Immediately following the above passage is the sentence at the start of paragraph [029] on which the applicant places much reliance:

"In some embodiments, high expansion particulates, such as high expansion vermiculite, for example, can be incorporated in the gypsum core in amounts effective to provide fire resistance in terms of shrinkage resistance comparable to commercial Type X gypsum panels and much heavier and denser gypsum panels."

30.	Taken at face value, this suggests that some embodiments of the invention utilise high expansion particulates.  There then follow several pages of further embodiments of the invention.  Some embodiments make reference to vermiculite, and some do not.

31.	At page 16 the specification commences a detailed description of the invention.  At paragraph [087] it says:

"The present disclosure provides embodiments using combinations of stucco, high expansion particulates, such as high expansion vermiculite, in an unexpanded condition, and other noted ingredients, examples of which are mentioned in Table I in FIG 19.  These formulations provide fire resistant, reduced weight and density gypsum panels that provide desired fire resistance properties not previously believed feasible for gypsum panels of such reduced weights and densities."

32.	While this is merely repeating the assertion that high expansion particulates are an embodiment of the invention, the emphasis seems to be shifting to this being the main embodiment.

33.	At paragraph [0101] the specification says:

"The combination of reduced weight, fire resistance, and the above-referenced strength and structural characteristics is due, it is believed, to the unexpected results from various combinations of the above components."

34.	This confirms the aim of the invention, but does not shed any light on the nature of the invention.  At paragraph [0104] the specification discusses high expansion particulates:

"Reduced weight and density gypsum panels formed according to principles of the present disclosure can achieve unique and unexpected results in terms of resistance to fire and the associated extreme heat conditions, without relying on increased quantities of gypsum hemihydrates typical of conventional fire rated gypsum panels or relying predominantly on conventional, relatively low expansion vermiculite, such as that referred to as 'Grade No. 5' unexpanded vermiculite (with a typical particle size of less than about 0.0157 inches (0.40 mm).  As mentioned above, panels formed according to principles of the present disclosure can utilize high expansion particulates in the form of vermiculite with a high volume of expansion relative to Grade No. 5 vermiculite (U.S. grading system) and other low expansion vermiculites which have been used in commercial fire rated gypsum panels."

35.	This passage seems to be drawing a strong connection between the properties of the panel and the use of high expansion particulates.

36.	The examples start on page 40.  They commence with a standard passage at paragraph [0172]:

"The following examples further illustrate aspects of the invention but, of course, should not be construed as in any way limiting its scope."

37.	A detailed summary of the examples is attached in the Annex to this decision.  The description concludes at paragraph [0290] with the statement:

"It should be understood that the illustrated embodiments are exemplary only, and should not be taken as limiting the scope of the invention."

38.	It is apparent that there are twenty samples that have been prepared, and each contains stucco, high expansion vermiculite, starch, phosphate, dispersant, mineral wool/glass fiber and accelerator.  These samples are described in example 4.  Each of the samples are tested for deflection and mechanical strain (example 4A), high temperature shrinkage (example 4B), Thermal Insulation Index and ratio of Thermal Insulation to density (example 4D), full scale fire testing (example 4E) and nail pull resistance (example 5).  A subset of the samples (samples 17 – 19) are further tested for flexural strength (example 6), core, end and edge hardness (example 7) and sound transmission (example 8).  A different subset (sample 13) is tested for shrink resistance (example 3).  Another subset (samples 2 – 5) were subject to x-ray CT scans.

39.	Taken as a whole, the examples provide a story of twenty gypsum panels (samples 1 – 20).  Each of the panels contains high expansion vermiculite and has a density of between 35 and 38 pounds per cubic foot.  The panels generally have desirable thermal properties.  Some of the panels have desirable strength and sound transmission properties, and it is a clear inference that the remainder will have these properties.  It might be extrapolated that the desirable thermal properties are to be attributable to the use of high expansion vermiculite (and by extension any high expansion particles).

40.	The opponent argued that this general conclusion is not correct, and drew attention to the detail of the fire testing examples.  I will deal with that submission now.

Fire testing of samples

41.	Fire testing was carried out on samples according to the methodology of the Underwriters Laboratories (UL).  The different standards applied are referred to as U305, U419 and U423.

42.	In order to pass these tests and achieve approval as a one hour fire rated gypsum panel, the temperature measured on the unexposed side of a panel must be below a certain temperature after one hour.  At paragraph [0244] this is explained in the context of U419:

"a single sensor maximum temperature on the unexposed side of less than the ambient temperature at the start of the test plus 325°F and an average sensor temperature of less than the ambient temperature plus 250°F."

43.	The same calculations are used for U305 and U423 (see paragraph [0245] of the specification).  The specification does not record the ambient temperature used for the fire testing.  However, Dr Bruce considers that in order to pass these tests the measured temperatures must be below 400°F for a single sensor, and below 325°F for an average (paragraph [207] of his first declaration).  The other evidence on file does not dispute that these are the values required to pass the tests.  I will proceed on the understanding that Dr Bruce's calculations are correct.

44.	Mr Behrinig says at paragraph [118] that there is:

"a very good correlation between these bench tests [Thermal Insulation Index, High Temperature Thickness Expansion, High Temperature Shrinkage] and full scale fire testing."

and Mr Aird says at paragraph [191] that:

"apparently there is a good correlation between this lab scale test [Thermal Insulation Index] and the expensive full scale testing."

45.	In other words, in the opinion of both declarants a panel that possess the Thermal Insulation Index of about 20 minutes or greater will meet the fire resistance standards.  As explained below, this is not correct.  A careful consideration of the data in the specification shows that panels that meet the Thermal Insulation Index requirement do not consistently pass the fire resistance tests.  There is no doubt, based on the data in the specification, that the Thermal Insulation Index is not a reliable predictor of fire resistance as measured by the UL tests.

46.	The samples 1 – 20 were tested according to either U305, U419 or U423.  The test used is listed in FIG 29A of the specification.  The outcomes of the tests are listed in FIG 29C of the specification.  Mr Ball says that some of the data in FIG 29C is clearly wrong (Ball declaration at paragraph [331] and [332]), and Mr Berhinig says that only columns 2 and 3 of FIG 29C are relevant (Berhinig declaration at paragraph [170]).  For the purposes of this decision I will assume that a person skilled in the art would have understood that the data in columns 2 and 3 is reliable, and rejected the other data.

47.	The results in columns 2 and 3 of FIG 29C are that samples 1, 4, 5, 12, 13, 14, 18, 19 and 20 pass the test.  This is acknowledged by Dr Bruce (first Bruce declaration at paragraph [209]) and Mr Berhinig (Berhinig declaration at paragraph [168]).  The relevant data is shown in Table 1 at the end of this decision.

48.	It is clear that samples 2, 3, 6, 7, 8, 9, 10, 11, 15, 16 and 17 do not pass the test.  This is because for these samples the maximum temperature for a single sensor after one hour exceeded 400°F, and/or the average temperature exceeded 325°F.  The composition and density of all of these samples is given in FIG 25A and 25B, and the Thermal Insulation Index is given in FIG 28A, which is summarised in Table 2 at the end of this decision.

49.	It is apparent from Table 2 that samples 2, 3, 6, 7, 8, 9, 10, 11, 15, 16 and 17 appear to have a composition that is very similar to the other samples.  This leads to the inevitable conclusion that not all panels according to the general principle of the use of high expansion particles possess satisfactory fire resistance properties.

50.	The declarants make only a passing reference to this second group of samples.  Mr Engbrecht says at paragraph [246]:

"it is my opinion that AU '102 includes examples showing panels made in accordance with AU '102 can pass a one hour full-scale fire test using designs U305, U419 and U423."

51.	Mr Berhinig says at paragraph [171]:

"It is my opinion, while other samples may have also met the fire test requirements of ASTM E11 for a 1 hour time period, at least sample runs 17, 18, 19 and 20 met the fire test requirements of ASTM E119 for a 1 hour time period."

52.	Mr Aird says at paragraph [320]:

"I believe that AU '102 as a whole, and without need to resort to isolated examples, provides sufficient guidance to produce the claimed fire resistant gypsum panels."

53.	Mr Ball says at paragraph [330]:

"I believe that there are sufficient examples to further show that the fire resistant gypsum board of invention [sic] can pass a full-scale fire test."

54.	I conclude that these declarants largely ignore samples 2, 3, 6, 7, 8, 9, 10, 11, 15, 16 and 17.  They are satisfied by the fact that some samples made according to the invention are able to pass the fire resistance tests.  However, it seems clear that some panels that would be within the general scope of the invention do not pass the fire resistance tests.  

55.	The opponent particularly drew attention to samples 3 and 4.  Sample 4 passes the fire resistance test, and sample 3 does not.  However, both samples have the same composition, so far as the compositions are reported, although they have slightly different densities.  Sample 3 presumably has a greater amount of air voids (leading to a lower density), which may account for its lower fire resistance.  It is a fair conclusion that the properties of the panels is the result of a subtle balance of all of the components that go to make up the panel.
The person skilled in the art
56.	It is well established that many of the issues in an opposition are answered by reference to the person skilled in the art:

"He is the person to whom the patent is addressed and who must construe it.  He is the person whose knowledge will determine whether a patent is novel.  He is the person who will judge whether a patent is obvious."  
(Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 at [70])

57.	However, they are an artificial construct that is used as a tool of analysis, and there is a danger in trying to identify them as an actual person or persons:

"The notional person is not an avatar for expert witnesses whose testimony is accepted by the court.  It is a pale shadow of a real person – a tool of analysis which guides the court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step."
AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30 at [23] 

58.	Our understanding of the person skilled in the art is based on evidence from persons with knowledge of the art as to the things that they know and do, and what they understand to be commonly known and done.  The weighting and evaluating of this evidence to decide the characteristics of the person skilled in the art is part of the normal work of a delegate of the Commissioner.

59.	In the present case the art is the production of gypsum panels.  The person skilled in the art must have a knowledge of the production of such panels, and an understanding of the development of new panels.  Since the problem relates to fire resistance, the person skilled in the art must possess some level of knowledge of this subject.

60.	In CSR Building Products Limited v United States Gypsum Company [2015] APO 21 the delegate in a similar case concluded that a range of persons could provide useful evidence as to the characteristics of the person skilled in the art.  Similarly, in this case I will have regard to the evidence of all declarants.  Where there is conflict in their evidence, I will resolve that conflict in the normal way.
Construction of claim 1
61.	The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70, 81 IPR 228 at [118] – [120]:

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

62.	Claim 1 is the first independent claim.  It reads:

A fire resistant gypsum panel comprising a gypsum core disposed between two cover sheets, the gypsum core comprising a crystalline matrix of set gypsum and high expansion particles having a volume expansion of about 300% or more of their original volume after being heated for about one hour at about 1560°F, the gypsum core having a density (D) of about 40 pounds per cubic foot or less and a core hardness of at least about 11 pounds, and the gypsum core effective to provide a Thermal Insulation Index (TI) of about 20 minutes or greater.

63.	The plain meaning of the claim is that it is directed to fire resistant gypsum panels having several physical integers:

a gypsum core containing high expansion particles (of a specified type), and
two cover sheets

and having several properties:

a defined core density,
a defined core hardness, and
a defined core Thermal Insulation Index.

64.	The Thermal Insulation Index is explained in Example 4D of the specification.  It is calculated by the formula 

TI = t200°C – t40°C

being the time in minutes required for a test specimen to heat from 40°C to 200°C.

65.	The term "about" is used in the following contexts in claim 1:

•	"a volume expansion of about 300% or more"
•	"heated for about one hour"
•	"at about 1560°F"
•	"a density (D) of about 40 pounds per cubic foot or less"
•	"core hardness of at least about 11 pounds"
•	"a Thermal Insulation Index (TI) of about 20 minutes or greater"

66.	Dr Bruce said at paragraph [189] of his first declaration that the term "about" was not clear:

"The meaning of the word 'about' is open to subjective interpretation by different persons skilled in the art and is therefore not clear.  For instance, whilst I would interpret the phrase 'about 40 pounds per cubic foot' used in claim 1 to mean between 39 to 41 pounds per cubic foot, there is certainty no guarantee that other persons skilled in the art will arrive at the same meaning.  These claims therefore fail to define the boundaries of the claim with any precision and are unclear."

67.	In essence, Dr Bruce considers that the term has a meaning of plus or minus one when used in relation to the density of the panel, but there is a risk that others will not have the same understanding.

68.	The declarants for the applicant did not assign a mathematical value to "about", but said that it represents the tolerances in the art:

"In my opinion, the use of this word 'about' in the claims of the AU '102 is a good way to take into consideration production tolerances for gypsum panels."
(Engbrecht declaration at [242])

"In my view the term is clear and is used to address manufacturing tolerances within the industry … the process of making a gypsum panel is not a precision process, and some variation is not only typical but also acceptable."
(Ball declaration at [326])

69.	I am satisfied that the term "about" represents the tolerances in the art.  Dr Bruce was able to give a meaning to the term "about 40".  I consider that a meaning can be given to the tolerances, and consequently the term "about" can be given a meaning.

70.	Finally, it must be recognised that the claim is directed to a "fire resistant" panel.  This might be seen as either a reference to the intended field of application for the panels, or as a limiting feature of the claim.  The latter is the more reasonable construction.  A panel is not "fire resistant" if it does not, in fact, possess fire resistance.  As discussed previously, a person skilled in the art understands this to mean a panel that meets recognised standards of fire resistance.  The claim does not explain which standards are intended, but the UL and ASTM tests are well known in the art, and I believe that a person skilled in the art would appreciate that these tests are intended.  Consequently, claim 1 is limited to those panels that, in addition to the other properties defined in the claim, are fire resistant according to the standards known in the art.

71.	Claim 12 is the second independent claim.  It reads:

A fire resistant gypsum panel comprising a gypsum core disposed between two cover sheets, the gypsum core comprising a crystalline matrix of set gypsum and high expansion particles having a volume expansion of about 300% or more of their original volume after being heated for about one hour at about 1560°F distributed within the gypsum core;  the panel having a panel density of about 40 pounds per cubic foot or less and a core hardness of at least about 11 pounds, and the gypsum core and the high expansion particles effective to provide the panel with a High Temperature Shrinkage (S) of about 10% or less and a ratio of High Temperature Thickness Expansion to High Temperature Shrinkage (TE)/S of about 0.2 or more.

72.	Claim 12 is similar to claim 1, but instead of defining the Thermal Insulation Index of the core it defines High Temperature Shrinkage and the ratio of the High Temperature Thickness Expansion to High Temperature Shrinkage of the panel.

73.	Claim 24 is the final independent claim.  It reads:

A fire-resistant gypsum panel comprising a gypsum core disposed between two cover sheets, the set gypsum core comprising a crystalline matrix of set gypsum and expandable particles distributed in the crystalline gypsum matrix, the set gypsum core having a density of about 40 pounds per cubic foot or less and a core hardness of at least about 11 pounds, the panel having a nominal panel thickness of about 5/8-inch, the expandable particles having a first unexpanded phase and a second expanded phase when heated, the panel effective to inhibit the transmission of heat through an assembly of said panels prepared and heated pursuant to the procedures of UL U419, where surfaces of the panels on one side of the assembly are exposed to a heat source and surfaces of the panels on the opposite, unheated side of the assembly are provided with a plurality of temperature sensors pursuant to UL U419, such that the maximum single value of the temperature sensors on the unheated side of the assembly is less than about 500°F after about 60 minutes when the assembly is heated in accordance with the time-temperature curve of ASTM standard E119-09a.

74.	Claim 24 is similar to claims 1 and 12.  However, it sets out the thickness of the panel and defines the manner in which heat transmission is determined.
Clarity
75.	It is a requirement of subsection 40(3) of the Act that the claims must be clear.  This requirement is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim" (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59).

76.	The opponent raised two matters of potential lack of clarity:  the term "about" in several claims, and the quantity of heat sink additive in claim 6.

77.	Above I discussed the term "about", and came to the conclusion that it represents the tolerances in the art, and there is no evidence that those tolerances would not be understood.  I consider that the claim is not unclear in this regard.

78.	Turning to the "heat sink additive" issue which arises in relation to claim 6, that claim reads:

The fire resistant gypsum panel of any one of claims 1 – 5, wherein the gypsum core is formed from a slurry comprising water; stucco; the high expansion particles; and a heat sink additive in an amount effective to provide a Thermal Insulation Index (TI) that is greater than a gypsum core formed from the slurry without the heat sink additive.

79.	It is clear that the quantity of the heat sink additive is not defined in quantitative terms, but rather is defined by reference to the result that is achieved.  Dr Bruce states at paragraph [188] of his first declaration that claim 6:

"does not quantify the amount of heat sink additive which is effective to provide a Thermal Insulation Index that is greater than the Thermal Insulation Index of a gypsum core absent the heat sink additive.

80.	Such a form of claim is not inherently unclear.  The question is whether a person could determine whether they fell within the ambit of the claim.  Mr Ball says at paragraph [325]:

"The claim offers a clear test that qualifies the heat sink material."

81.	In my opinion a person skilled in the art would likely be able to measure the Thermal Insulation Index of various panels and determine whether the value was greater than that for a reference panel in which there was no heat sink additive.  I do not consider that there is a lack of clarity in this regard.

82.	The opponent has not shown that there is a lack of clarity.
Disclosure and support
83.	The Raising the Bar Act introduced two new requirements to section 40:  a requirement for disclosure and a requirement for support.  The two concepts are closely connected.

84.	The disclosure requirement is found in subsection 40(2), which says that the specification must:

(a)	disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; and
(aa)	disclose the best method known to the applicant of performing the invention; and
(b)	where it relates to an application for a standard patent – end with a claim or claims defining the invention; and
(c)	where it relates to an application for an innovation patent – end with at least one claim and no more than 5 claims defining the invention.

85.	Paragraphs (a) and (aa) were introduced by the Raising the Bar Act.  The purpose of these provisions is explained in the Explanatory Memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (the Explanatory Memorandum) page 47 – 48:

"The item is intended to modify the wording of paragraph 40(2)(a) of the Act so as to require enablement across the full width of the claims, while adopting language that is consistent with that used in other jurisdictions.  The wording in the amendment is similar to s 14(3) of the UK patents legislation, which has been interpreted as imposing this requirement.  The wording is also similar to art 83 of the European Patent Convention, which has been interpreted with similar effect.  The intention is that paragraph 40(2)(a) be given, as close as is practicable, the same effect as the corresponding provisions of UK legislation and the European Patent Convention.

A specification that provides a single example of the invention may satisfy the requirements, but only where the skilled person can extend the teaching of the specification to produce the invention across the full width of the claims, without undue burden, or the need for further invention.

However, it is expected to be more likely that, where the claims are broad, the specification will need to give a number of examples or describe alternative embodiments or variations extending over the full scope of the claims.  This ensures that the monopoly extends only to that which could reasonably be said to be disclosed and no further.

If, on its face, the specification would appear to the skilled person to lack sufficient disclosure, the onus of establishing that the invention is described in enough detail lies with the applicant".

86.	The support requirement is found in subsection 40(3), which says that:

The claim or claims must be clear and succinct and supported by matter disclosed in the specification.

87.	The requirement of "supported by matter disclosed" was introduced as a replacement for the former requirement of fair basis.  The purpose of this change is explained in the Explanatory Memorandum at page 49:

"This item is intended to align the Australian requirement with overseas jurisdictions' requirements (such as the UK).  Overseas case law and administrative decisions in respect of the 'support' requirement will be available to Australian courts and administrative decision-makers to assist in interpreting the new provision."

88.	The corresponding provisions in the UK legislation (i.e. section 14(3) of the Patents Act 1977 (UK) in relation to disclosure and section 14(5)(c) in relation to support) have been considered many times by UK courts.  In Generics (UK) Ltd v H Lundbeck A/S [2009] RPC 13 (Generics), a decision of the House of Lords, Lord Walker of Gestingthorpe said at [19]:

"There is therefore high authority that the requirements of s.14(3) and s.14(5)(c) are closely connected.  The main difference between them is that s.14(3) relates to the specification as a whole, whereas s.14(5)(c) relates to the claims which define the monopoly sought by the inventor."

89.	Lord Walker goes on at [20] to explain that the combination of the two concepts "spell out the need for an 'enabling disclosure' " and that:

"The disclosure must be such as to enable the invention to be performed (that is, to be carried out if it is a process, or to be made if it is a product) to the full extent of the claims.  The question whether there is sufficient enabling disclosure often interacts with a question of construction as to the extent of the claims."

90.	Although the concepts are similar, they are distinct and must be considered separately according to their own criteria.
Disclosure
91.	The requirement of disclosure can be summarised simply:  "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?' " (Novartis AG v Johnson & Johnson Medical Limited [2010] EWCA Civ 1039 at [74].

92.	A fuller discussion is given by Lord Hoffmann in Biogen Inc v Medeva plc [1997] RPC 1 at 48:

"the specification must enable the invention to be performed to the full extent of the monopoly claimed.  If the invention discloses a principle capable of general application, the claims may be in correspondingly general terms.  The patentee need not show that he has proved its application in every individual instance.  On the other hand, if the claims include a number of discrete methods or products, the patentee must enable the invention to be performed in respect of each of them."

93.	In Eli Lilly & Co v Human Genome Sciences, Inc [2008] RPC 29 (Eli Lilly) at[241] Kitchin J approved the following approach:

"The sub-section, 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, as to 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."

94.	In order to decide whether there is sufficient disclosure in any particular case, the general approach was explained by Lord Hoffmann in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9 (Kirin-Amgen) at [103]:

"The first step is to identify the invention and decide what it claims to enable the skilled man to do.  Then one can ask whether the specification enables him to do it."

and by Kitchin J in Eli Lilly at [239]:

"The specification must disclose the invention clearly and completely enough for it to be performed by a person skilled in the art. The key elements of this requirement which bear on the present case are these:
(i)  the first step is to identify the invention and that is to be done by reading and construing the claims;
(ii)  in the case of a product claim that means making or otherwise obtaining the product;
(iii)  in the case of a process claim, it means working the process;
(iv)  sufficiency of the disclosure must be assessed on the basis of the specification as a whole including the description and the claims;
(v)  the disclosure is aimed at the skilled person who may use his common general knowledge to supplement the information contained in the specification;
(vi)  the specification must be sufficient to allow the invention to be performed over the whole scope of the claim;
(vii)  the specification must be sufficient to allow the invention to be so performed without undue burden."

95.	In order to decide whether a specification provides a disclosure as required by section 40(2), it is necessary to:

i)	construe the claims to determine the scope of invention as claimed,
ii)	construe the description to determine what it discloses to the person skilled in the art, and
iii)	decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.

96.	Before applying these principles to the facts of the present case, I note that the claims define the panels by reference to a number of parameters of the panels.  Where a claim is defined in terms of parameters, rather than the technical features that will achieve those parameters, the question of whether there is a sufficient description is very difficult.  In amorphous silica/INEOS T 1743/06 (amorphous silica) the Board of Appeal said at [1.2]:

"The board however observes that the definition of 'amorphous silica' comprises a host of possible chemical compounds which may or may not satisfy the multiplicity of parameters defined in the claims of the requests at issue and in this context, the question arises whether the patent contains sufficient information about how these parameters are to be reliably achieved so that the person skilled in the art has at his disposal a process which leads him in a direct way to the amorphous silicas claimed."

and at [1.9]:

"The skilled person is thus confronted with the uncontested fact that he has a lot of process variables affecting the claimed parameters, but once he has encountered failure in one parameter value, there is no clear guidance enabling him to adjust the multitude of process steps in order to arrive with certitude at silicas meeting the parameter requirements defined in claim 1 of both requests in issue.  Even though a reasonable amount of trial and error is permissible when it comes to assessing sufficiency of disclosure, there must still be adequate instructions in the specification, or on the basis of common general knowledge, leading the skilled person necessarily and directly towards success, through evaluation of initial failures."

97.	This was reiterated by Kitchin J in Eli Lilly at [243]:

"Even though a reasonable amount of trial and error is permissible, when it comes to sufficiency of disclosure, for example in an unexplored field or where there are many technical difficulties, the skilled person has to have at his disposal, either in the specification or on the basis of his common general knowledge, adequate information leading necessarily and directly towards success through the evaluation of initial failures".

Application to the facts of the case:  what is the invention as claimed

98.	Above I stated that claim 1 is directed to gypsum panels having several physical integers:

•	a gypsum core containing high expansion particles (of a specified type), and 
•	two cover sheets

and having several properties:

•	a defined core density,
•	a defined core hardness, 
•	a defined core Thermal Insulation Index, and
•	the panel is fire resistant.

Application to the facts of the case:  what does the specification disclose

99.	The specification provides information on preparing a number of gypsum panels, and details of how to carry out testing of the panels.  

Application to the facts of the case:  does the specification enable all of the things that fall within the scope of the claims

100.	The claims refer to "high expansion particles" of a certain type.  The applicant submitted that the use of high expansion particulates was a principle of general application.  In Kirin-Amgen at [112], Lord Hoffmann described a principle of general application as follows:

"It simply means an element of the claim which is stated in general terms.  Such a claim is sufficiently enabled if one can reasonably expect the invention to work with anything which falls within the general term"

and at [113]:

"the notion of a 'principle of general application' applies to any element of the claim, however humble, which is stated in general terms."

101.	Clearly the use of high expansion particulates is advanced as a principle of general application, and the question is whether a person would reasonably expect the invention to work with anything which falls within the term.  The specification exemplifies only high expansion vermiculite.  However, I have no doubt that person skilled in the art would be able to prepare a panel using other high expansion particulates.  It seems reasonable that non-vermiculite particulates could be used in the same way, without undue burden.

102.	The more important question relates to the parameters that define the panels, i.e. the core density, the core hardness, the Thermal Insulation Index, and fire resistance.  By analogy with the amorphous silica case, there are a lot of process and starting material variables that will affect whether a panel has the claimed parameters.  The specification does not provide clear guidance telling the person skilled in the art how to adjust the process and materials so as to achieve with certitude the full combination of properties, in particular the fire resistance of the panel.  Where the work involved in adjusting the composition of the panels amounts to reasonable trial and error, then the specification provides an adequate disclosure.  However, if the work involved amounts to an undue burden, then the specification has not provided an adequate disclosure. 

103.	I turn now to the evidence.  Mr Engbrecht says at paragraph [21] that:

"it would be very rare for there to be a project at a gypsum panel manufacturer related to making a new formulation for making a new fire resistant gypsum panel."

104.	Despite the rarity of the exercise, the question is whether a person seeking to follow the instructions in the present specification could adjust the process and materials so as to achieve with certitude the full combination of properties – as a matter of reasonable trial and error.  Mr Engbrecht says at paragraph [132] that the various tests in the specification are "very simple and cost-effective to perform".  I feel that Mr Engbrecht is referring to the Thermal Insulation Index, High Temperature Thickness Expansion and High Temperature Shrinkage tests, and not the "full scale fire testing", which Mr Aird says at paragraph [191] is "expensive".  Mr Behrinig explains how expensive at paragraph [41]:

"These full scale tests are expensive.  A typical fire rating test for certification of a gypsum panel can cost as much as US$50,000 or more."

105.	He goes on at paragraph [42]:

"From my experience at UL, in light of the expense, fire testing of gypsum panels was rare;  it typically only happened when there was a development in technology or a reason that a manufacturer wanted to re-certify its product."

106.	Mr Behrinig says simply at paragraph [42] that "fire testing of gypsum panels was rare".  Although Dr Bruce considers at paragraph [137] of his second declaration that it was not rare, but "often tested", these comments as a whole suggest to me that it would be far from reasonable for a person in this art to carry out fire resistance testing according to the UL or ASTM procedures as part of normal trial and error.  The cost of doing so would appear to be prohibitive.  

107.	I have considered the possibility that there are tests that are less expensive that can be carried out to give an indication of whether a sample is likely to be fire resistant.  I can find nothing in the evidence relating to such tests, so I must assume that they do not exist.  Based on the evidence available to me, I conclude that the testing of samples to determine whether they are fire resistant would be an undue burden.

108.	It follows that I am satisfied that the specification does not provides a disclosure of the invention that is clear enough and complete enough for the invention to be performed by a person skilled in the art.
Support
109.	The requirement of support can be summarised as the scope of the claims "should correspond to the technical contribution to the art" (Fuel Oils/EXXON (T409/91) [1994] OJ EPO 653 (Exxon) at 659).

110.	In Generics Lord Walker quoted with approval from the decision of the Technical Board of Appeal in Exxon.  The Technical Board stated, at page 659 – 660:

"the claims must be supported by the description, in other words it is the description of the invention in the claims that needs support.  In the Board's judgment, this requirement reflects the general legal principle that the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported, or justified (see T 133/85, OJ EPO 1988, 441).  This means that the definitions in the claims should essentially correspond to the scope of the invention as disclosed in the description.  In other words, as was stated in decision T 26/81 (OJ EPO 1982, 211, point 4 of the reasons), the claims should not extend to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art.  Consequently, a technical feature which is described and highlighted in the description as being an essential feature of the invention, must also be a part of the independent claim or claims defining this invention" (emphasis in the original)

111.	The technical contribution to the art is a subtle concept that is not to be confused with the inventive concept that is often discussed in relation to inventive step.  The distinction was explained by Lord Walker in Generics at [30]:

"The expressions are certainly connected, but I do not think it is helpful (either in considering Lord Hoffmann's opinion, or generally) to treat them as having precisely the same meaning.  'Inventive concept' is concerned with the identification of the core (or kernel, or essence) of the invention – the idea or principle, of more or less general application (see Kirin-Amgen [2005] RPC 9 paras 112-113) which entitles the inventor's achievement to be called inventive.  The invention's technical contribution to the art is concerned with the evaluation of its inventive concept – how far forward has it carried the state of the art?  The inventive concept and the technical contribution may command equal respect but that will not always be the case."

112.	In the same case Lord Neuberger of Abbotsbury described the technical contribution at [95] as:

"in the context of a simple product claim such as the present (especially where the claim is to a single chemical product), the technical contribution is (at least in the absence of special factors) the product itself.  As I have suggested, the technical contribution can often be equated with non‑obvious novelty – what is new to the art and not obvious is really another way of identifying the technical contribution."

113.	An important question will often be whether the technical contribution to the art is a general principle or the specific examples in the specification.  Lord Hoffmann gave some examples in Biogen at page 49:

"Thus if the patentee has hit upon a new product which has a beneficial effect but cannot demonstrate that there is a common principle by which that effect will be shared by other products of the same class, he will be entitled to a patent for that product but not for the class, even though some may subsequently turn out to have the same beneficial effect.  On the other hand, if he has disclosed a beneficial property which is common to the class, he will be entitled to a patent for all products of that class (assuming them to be new) even though he has not himself made more than one or two of them."  [citations omitted]

114.	In order to answer the question of support, the general approach is as stated in Schering Biotech Corp.'s Application [1993] RPC 249 by Aldous J at 252:

"to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification.  Thereafter the court's task is to decide whether the invention in the claims is supported by the description.  I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support.  The word 'support' means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed."

115.	Thus the task is to:

i)	construe the claims to determine the scope of the invention as claimed,
ii)	construe the description to determine the technical contribution to the art, and
iii)	decide whether the claims are supported by the technical contribution to the art.

Application to the facts of the case:  what is the invention as claimed

116.	Previously I stated that claim 1 is directed to gypsum panels having several physical integers:

•	a gypsum core containing high expansion particles (or a specified type), and 
•	two cover sheets

and having several properties:

•	a defined core density,
•	a defined core hardness, 
•	a defined core Thermal Insulation Index, and
•	the panel is fire resistant.

Application to the facts of the case:  what is the technical contribution to the art

117.	The applicant submitted that the use of high expansion particulates to produce a low density, fire resistant gypsum panel was the contribution to the art.  While it is readily apparent that the specification discloses the use of such particulates, it is apparent from what is said above that the use of these particulates does not guarantee that the low density gypsum panel will be fire resistant.  Rather, high expansion particulates will sometimes lead to a fire resistant panel, and sometimes will not.  Based on what is disclosed in the specification, it is unpredictable whether a panel containing high expansion particulates will be fire resistant.  In this regard samples 3 and 4, which are apparently identical apart from their density, are of significance.  Sample 4 is fire resistant according to the tests conducted, but sample 3 is not.  The art has been advanced only to the extent that it is now known that high expansion particulates CAN produce a low density, fire resistant gypsum panel in some instances.  However, analogous to what was said by Lord Hoffmann in Biogen, the applicant cannot demonstrate a general principle by which the result of a low density, fire resistant gypsum panel will be achieved.  The technical contribution to the art is that high expansion particulates can produce a low density, fire resistant panel when prepared according to the samples numbered 1, 4, 5, 12, 13, 14, 18, 19 and 20.

Application to the facts of the case:  are the claims supported 

118.	The claims are limited to gypsum panels that contain high expansion particles AND are fire resistant.  However, the technical contribution to the art is more limited than this.  Consequently, the scope of the claims is not supported by the technical contribution to the art.  This conclusion applies to all of the claims.
Novelty
119.	It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, is novel.  Subsection 7(1) states that an invention is taken to be novel unless it is not novel in the light of the prior art.  A citation is part of the prior art base for the purposes of novelty if it was published before the priority date of the claim.  

120.	It is well established that the general test for lack of novelty is the reverse infringement test.  The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20], 137 CLR 228 at 235:

"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement"

121.	The disclosure necessary to support the ground of lack of novelty has variously been described as "clear and unmistakeable directions" (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486), "the accuracy of a sniper, not the firing of a 12 gauge shotgun" (Apotex Pty Ltd v Sanofi-Aventis [2008] FCA 1194, 78 IPR 485 at [91]) or "what a prior art document teaches" as distinct from "what might be 'included' or 'encompassed in' a prior art document" (Sanofi-Aventis Australia Pty Ltd v Apotex Pty Ltd (No 3) [2011] FCA 846, 92 IPR 320 at [180]). There is a degree of specificity that is required.

122.	The opponent relied on three citations to allege lack of novelty:  US 2005/0263925, US 3616173 and US 2008/0087366.

123.	Before addressing the citations in turn it is worth noting what Dr Bruce says.  He says that it is not normal to measure the properties that are used to characterise the claims, and as a result it is hard to draw any comparison between the claims and the panels in the prior art citations.  At paragraphs [88] and [89] of his first declaration he says:

"I believe very strongly that most companies selling fire resistant gypsum boards typically do not seek to define their gypsum boards by reference to any of the above parameters.  Therefore such companies generally do not perform any tests on their fire resistant gypsum boards in respect of these parameters during the process of designing, formulating and producing fire resistant gypsum boards.  That is, the above parameters / tests referred to in the Patent are not widely accepted by the gypsum industry, and seem to have been more or less newly introduced by USG.

Accordingly, it is my understanding that little or no information in respect of the above parameters exists for the vast majority of fire resistant gypsum boards that were commercially available at the Priority Date.  Whilst those parameters would have been inherent in fire resistant gypsum boards and could have been tested, the parameters are non-standard, arbitrary in nature, and are therefore unlikely to have been measured or published.  It therefore has been difficult to compare the claims of the Patent to the Prior Art and common general knowledge to the extent the claims of the Patent define a gypsum board by reference to these non-standard and arbitrary tests."

124.	It may be that the properties specified in the claims of the present application would not have been routinely measured.  However, in order to make out the ground of lack of novelty the opponent must show, on the balance of probabilities, that the panels in the prior art have these properties.  This can be done by showing that the prior art reports the properties, by independently preparing the panels of the prior art and measuring their properties, or otherwise showing that they are inherent to the panels.  But whatever way it is done, the onus of doing it rests with the opponent.

125.	US 2005/0263925:  US 2005/0263925 (designated D1) was published on 1 December 2005.  Consequently it is part of the prior art base.

126.	D1 discloses fire-resistant gypsum panels.  At paragraph [0025] it refers to:

"a set gypsum composition comprising set calcium sulfate dihydrate as the major ingredient and a reinforcing ingredient of resilient, flexible, glass fibers having a softening point greater than about 1580°F (860°C) and distributed in the set calcium sulfate."

127.	The specification says at [0062] that the density of the panel can be adjusted by the use of foaming agents:

"Foaming agents such as ammonium or sodium lauryl sulfonate are used to control the density of the set gypsum composition.  A dilute aqueous solution of the foaming agent is added to the slurry and foamed by agitation or by passing pressurized air through the slurry.  For typical wallboard application, the set gypsum composition has a density that ranges from about 34 to about 75 pounds/cubic foot (about 15.9 to about 34.0 kg/0.0283m3)."

128.	At paragraph [0063] there is a discussion of adding vermiculite:

"Unexpanded vermiculite can be added to the gypsum composition in order to compensate for gypsum shrinkage as it is heated and its combined water lost.  The quality, quantity and particle size of the unexpanded vermiculite should be such that it expands to equal the gypsum shrinkage."

129.	Other additives are discussed, including starch at paragraph [0066]:

"Core adhesives such as gelatinized starch may be used in amounts of up to about 1 weight percent of the combined dry ingredients to improve particle adhesion."

130.	D1 discloses the principles of preparing gypsum panels containing additives that could fall within the scope of claim 1 if the right combination is selected.  In particular, the features that would have to be used are a vermiculite with an appropriate volume expansion, and the product would need to have a core hardness of at least 11 pounds and a Thermal Insulation Index of 20 minutes or greater.  However, there is no evidence that such a combination has been selected by the authors of D1, or that a reader of D1 would select such a combination.  There are no examples that I can see of any specific panels being prepared (Mr Aird states at paragraph [99] that "there is no disclosure in D1 of any board actually having been made").  Consequently, D1 falls short of providing clear and unmistakable directions.  It has not been established that claim 1 lacks novelty.

131.	For similar reasons, it has not been shown that claims 12 and 24 lack novelty.

132.	US 3,616,173:  US 3,616,173 (designated D4) was published on 26 October 1971.  Consequently it is part of the prior art base.  

133.	D4 relates to fire resistant gypsum panel.  The document discusses the background and objects of the invention, and then sets out a description of the invention.  The properties of the panels are listed in column 4:

"having a density of at least about 35 lbs per cubic foot and preferably from about 40 to about 50 lbs per cubic foot, and having fire resistant properties such that when the core is about one-half inch thick, it has a shrink resistance ranging from about 60 to about 85, and a temperature failure value ranging from about 1,200°F to about 12,000°F."

134.	At column 5 D4 explains the types of additives that can be used to achieve these properties:

"glass fibers, and a small particle size inorganic material of either clay, colloidal silica (silicon dioxide), or colloidal alumina (aluminum oxide) or combinations of any of said inorganic materials.  An additional ingredient that is preferably added to the above combination of ingredients to further improve the overall fire resistant properties of the wallboard core is unexpanded vermiculite."

135.	At column 6 the document notes that fire resistance is improved without increasing the density of the panel:

"It should be realized that whereas the core compositions of this invention can be made into densities heretofore known for wallboard cores, the fire resistant properties of the cores of this invention will be for the same density significantly better."

136.	A panel according to the invention is prepared, and designated "Sample E".  Sample E is shown to have dimensional stability and integrity in thermal testing.  Sample E has a density of 41 pounds per cubic foot.  The exact composition of Sample E is not apparent.

137.	At column 12 there is a reference to the density of the panels:

"On the other hand it has been found that as the core density is decreased below about 40 lbs per cubic foot, problems are encountered in forming good bonds between the core and the facing paper."

138.	In order to make this comment, the authors must have prepared panels with a density below 40 pounds per cubic foot.  However, there is nothing in D4 to suggest that these panels contained high expansion particles. 

139.	D4 discloses the principles of preparing gypsum panels containing additives that could fall within the scope of claim 1 if the right combination is selected.  However, there is no evidence that such a combination has been selected by the authors of D4, or that a reader of D4 would select such a combination.  Consequently, D4 falls short of providing clear and unmistakable directions.  It has not been established that claim 1 lacks novelty.

140.	For similar reasons, it has not been shown that claims 12 and 24 lack novelty.

141.	US 2008/0087366:  US 2008/0087366 (designated D8) was published on 17 April 2008.  Consequently it is part of the prior art base.

142.	D8 relates to fire resistant gypsum panels.  On page 1 the document says:

"These and other needs are met by a gypsum panel having a core that includes gypsum and a high temperature, shrinkage-resistant material.  The core is formed into a panel having at least two opposing faces and two opposing edges.  At least one of the edges and/or the faces is coated with an expanding layer that includes a gypsum matrix having a density higher than the core and an intumescent or expandable material.  A facing material covers at least a portion of the expandable layer."

143.	The intumescent material is discussed at paragraph [0036]:

"An intumescent material is one that undergoes a chemical or physical change when exposed to heat or flames that causes it to expand.  Some minerals, such as perlite or vermiculite, expand like popcorn when water released from their crystals and fissures suddenly expands due to heat … Perlite, mica, and vermiculite are preferred examples of intumescent materials due to their reasonable cost and ready availability."

144.	While the panel in D8 differs from that in the present application in that it has a layered structure, the claims of the present application do not exclude such a possibility.  However, the nature of the high expansion particles used in D8 is not specified, and as such there is no way to know whether they would have the characteristics listed in claim 1.  D8 reports that seven test panels are prepared.  The panels that contain vermiculite have densities that range from 43.1 pounds per cubic foot to 49.5 pound per cubic foot.  

145.	Consequently, D8 falls short of providing clear and unmistakable directions.  It has not been established that claim 1 lacks novelty.  For similar reasons, it has not been shown that claims 12 and 24 lack novelty.
Inventive step
146.	It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, involves an inventive step.  Subsection 7(2) states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art.  

147.	A document is prior art for this purpose if it is "any single piece of prior art information", or a combination of such prior art in prescribed circumstances (subsection 7(3)).  The requirement that the information would have been ascertained, understood and regarded as relevant no longer applies (it removed by Item 3 of Schedule 1 of the Raising the Bar Act).  The Explanatory Memorandum states at page 43 that the consequence is that "the prior art base for inventive step will be information made publicly available before the relevant priority date." 

148.	The test for whether an invention is obvious is to ask whether it would have been a matter of routine to proceed to the claimed invention.  In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd [1981] HCA 12 at [45], 148 CLR 262 at 286 Aickin J stated:

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

149.	The High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59, 212 CLR 411 approved this approach.  At paragraph [58] the Court gives some more insight, stating that "mere verification" is not inventive, but:

"[t]he tracing of a course of action which was complex and detailed, as well as laborious, with a good deal of trial and error, with dead ends and the retracing of steps"

is inventive, since that is not the taking of routine steps.

150.	The opponent submitted that the invention lacks inventive step in the light of the common general knowledge alone, and each of the following considered on its own:

•	US 2005/0263925,
•	US 3,616,173,
•	US 4,647,486, and
•	US 2008/0087366.

The problem

151.	In the present case the problem addressed by the specification is the preparation of gypsum panels that are both light weight and fire resistant.

The common general knowledge

152.	The common general knowledge was defined by Aickin J in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at 292 as:

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

153.	The opponent asserted that 20 matters were all part of the common general knowledge.  It is not necessary to consider each matter in detail.

Matters of routine:  modifying panels

154.	There is much evidence of what teams in the art would (or more particularly would not) do.  Much of this evidence looks at what particular people in the industry do.  This is helpful so far as it sheds light on what the hypothetical person skilled in the art would have done.  

155.	Dr Bruce says at paragraph [38] of his first declaration that he would modify an existing lightweight board:

"My approach would be to start with the formulation for an existing lightweight gypsum board which I would seek to modify.  As stated above, there has been a general trend in the industry towards the production of lightweight gypsum boards to be well known and widely available.  I would seek to modify the formulation for such a lightweight board by using one or more additives in order to produce the requisite fire resistant properties in the board whilst retaining its lightweight properties.  This is how fire resistant boards were made in the past.  I note that in the past, boards were not as light as they were at the Priority Date because the weights of boards have progressively decreased."

156.	Mr Engbrecht disagrees with this approach at paragraph [194] of his declaration:

"Dr Bruce, however, offers no support showing that the team of ordinary skill in the art would even start with lightweight panels (I do not believe that they would in that the primary heat sink component, gypsum, would have to be removed), let alone that they would have known what additives to add to convert such a lightweight standard panel to an acceptable fire-rated panel.  The lightweight standard panels do not contain any additional ingredients that would alter them to have improved fire resistance."

157.	Mr Engbrecht says at paragraph [199] that the industry considered that a fire retardant gypsum panel could not be lightweight:

"the high gypsum density (and panel weight) was believed necessary to provide the needed thermal insulation properties."

158.	Mr Aird says at paragraphs [262] to [263] that it was not routine to make changes to existing gypsum panels:

"Based on my experience, I disagree with the notion that the team of ordinary skill in the art would routinely make improvements to the formulation of fire resistant gypsum panels as Dr Bruce seems to be suggesting at paragraph 23.  Instead, the nature of any change that might possibly be characterised as a 'routine improvement' in the language that Griffith Hack used to instruct Dr Bruce to consider at paragraph 19, and to which Dr Bruce has replied at paragraphs 22 to 24, in fire resistant gypsum panels would typically only be a change as the result of changes in raw material supply or changes in the engineering of the manufacturing process brought about by other requirements on the plant.

Contrary to Dr Bruce I would not characterise these as 'improvements' in the sense of setting out to achieve a better performing fire resistant gypsum panel, but rather changes would be responsive to commercial pressures including change of supply of a particular gypsum, paper, etc and the desired outcome would be to minimise any loss in performance as a result of having to change the conventional formulation or manufacturing process."

159.	I accept the evidence of Messrs Engbrecht and Aird that in practice the gypsum panel industry is not highly innovative.  However, for the purposes of determining whether or not there is an inventive step, the hypothetical person skilled in the art must be assumed to want to find a solution to the problem.  The question is whether the solution posited in the present application would have been a matter of routine for that hypothetical person.  The evidence of Mr Aird does not help me answer this question.  

160.	It seems to me that a person wishing to produce a gypsum panel which combines two sets of properties would start from a known panel and try to alter the properties of the panel.  Dr Bruce suggests that existing low density panels would be the starting point.  Mr Engbrecht says that low density gypsum would have reduced thermal insulation, from which I infer that he would not start with them.  This necessarily suggests that he would start from an existing fire resistant panel and seek to reduce its weight.  

161.	There is logic in the views of both declarants.  I think it is a safe inference that a person could either start with a fire resistant panel and reduce its weight, or start with a low weight panel and increase its fire resistance.

Matters of routine:  vermiculite

162.	Another issue in this opposition is whether the use of vermiculite was a matter of routine. 

163.	Dr Bruce says at paragraph [32] of his first declaration that additives have been used to produce fire resistance:

"Fire resistant gypsum boards have been known and used in the gypsum industry since approximately the 1940s.  They are generally produced through the use of various additives to a gypsum board core slurry".

164.	At paragraph [40] he lists a number additives he would have selected, the first of which is unexpanded vermiculite.  At paragraph [42] he notes that it is important to use the right grade of unexpanded vermiculite, and at paragraph [43] says that "it should be possible to use vermiculite as an additive to a lightweight gypsum core slurry formulation."

165.	Mr Engbrecht turns his mind to the issue of fire resistance additives at paragraph [45] of his declaration:

"In making a new fire resistant gypsum panel, it is possible, but unlikely, that the department head of manufacturing of the team of ordinary skill in the art might consider manipulating boric acid or borax, glass fiber and panel thickness and adding clay judiciously because clays tend to be hygroscopic and may consider adding foam and manipulating foaming agents, such as a mix of stable and unstable foams."

166.	At paragraph [46] he says there would be reluctance to use vermiculite because it could be contaminated with asbestos:

"may try to avoid using vermiculite for this reason, as some sources of vermiculite may also contain asbestos."

167.	He goes on at paragraph [47]:

"Because of the limited use of vermiculite in making fire resistant gypsum panels, I do not think that the team of ordinary skill in the art would be aware of the different types of vermiculite.  I also think that the team of ordinary skill in the art would not consider vermiculite without looking at other options first and would avoid using different sources of vermiculite or at least be sure to only use vermiculite from an asbestos-free source."

168.	At paragraph [197] he comments that not all vermiculite has high expansion:

"not all vermiculite expands to this amount".

169.	Mr Behrinig says at paragraph [62]:

"Vermiculite and glass fiber are used to improve the fire resistance of gypsum panels.  Vermiculite is used in its unexpanded form because as the heat increases it expands and counters the shrinking gypsum.  The glass fibers also aid to keep the panel from failing at high temperatures.  The head of manufacturing of the team of ordinary skill in the art would know that vermiculite and glass fibers are used in fire resistant gypsum panels and might possibly know that vermiculite expands, countering the shrinking gypsum as the heat increases, and that glass fibers help to keep the panel from failing at high temperatures."

170.	Mr Aird says at [259]:

"In my view, the use of larger particle size, high expansion vermiculite and the use of a heat sink additive are not known methods of enhancing fire resistance."

171.	I conclude that unexpanded vermiculite was known to be an additive that had been used to improve fire resistance.  There is sufficient basis to believe that this was common general knowledge in the art.  However, the evidence falls short of establishing that it would have been a matter of routine to try unexpanded vermiculite, in the absence of other motivations.

Matters of routine:  modifying an existing panel

172.	The applicant placed great weight on the submission that persons skilled in this art did not make modifications to existing products.  Mr Aird says at paragraph [104]:

"the team of ordinary skill in the art simply didn't modify the formulation of fire resistant gypsum panels unless there was a very significant reason for doing so – it was too expensive to make those changes."

173.	This is consistent with Mr Ball's view at paragraph [41] that "you do not change the formulation."

174.	Dr Bruce addresses this issue in his second declaration.  At paragraph [22] he says:

"This is obviously wrong given the extensive historical and current research and development operations of many of the large and small gypsum panel manufacturers around the world.  It ignores the widely accepted benefits of incurring expenditure on research and development activities to produce longer term gains through improving products or processes.  It is well known that gypsum panel manufacturers ordinarily devote a team and a budget towards research and development activities as part of their regular operations."

175.	At paragraph [25] he suggests:

"I presume that Mr Ball makes his assertions due to his lack of awareness of the gypsum panel industry outside of the company in which he worked."

176.	The applicant is essentially saying that a person skilled in the art would not, as a matter of routine, make any alterations to an existing product – regardless of the problem.  This is apparent at paragraph [528] of the written submissions:

"The team of ordinary skill in the art simply would not modify the formulation of fire resistant gypsum panels unless there was a very significant reason for doing so – it was simply too expensive to make those changes."

177.	I do not believe that I should conclude that every alteration to an existing panel should be regarded as inventive.  I previously said that this is an art which is not highly innovative, and there are considerable costs in testing new panels.  The person skilled in the art must be taken to understand the practical issues of the art in which they operate (see Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [No 2] (2007) 235 CLR 173 at [111]).  In the present context, I consider that the person skilled in the art would not routinely consider new panels as a solution to a problem unless they had a significant expectation of success (expectation of success is a legitimate consideration when considering inventive step, see AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30)).  I think that is the proper way to understand what would be a matter of routine in this art.

Obviousness in the light of the common general knowledge alone

178.	It must be borne in mind that the invention is a panel which is a combination of physical integers.  The opponent must show that it would have been obvious (i.e. a matter of routine) to combine that combination of integers into a single panel in order to solve the particular problem.  Above I stated that it would not have been a matter of routine to try unexpanded vermiculite in a gypsum panel in the absence, even though it was known that it had been used to improve fire resistance.  Consequently, it has not been shown that the invention lacks inventive step in the light of the common general knowledge alone.

Obviousness in the light of the citations

179.	US 2005/0263925 (D1):  The disclosure of D1 was discussed above.  I noted that it discloses the principles of preparing fire resistant gypsum panels containing additives that could fall within the scope of claim 1 if the right combination is selected.  In this situation, the question to be answered is whether this is mere verification of the teaching of D1, or whether it is something more.  On the face of it, preparing a panel that is within the broad teaching of D1 and confirming that it is a fire resistant panel is no more than verification.

180.	As mentioned above, this would be a matter of routine if the expectation of success is high.  None of the declarants address this point.  D1 sets out the invention at paragraph [0025] as the use of calcium sulfate dehydrate and reinforcing by resilient, flexible, glass fibers.  There is no data that shows that such panels meet the UL or ASTM fire resistance standards.  Foaming agents are an optional additive at paragraph [0031], and unexpanded vermiculite is an optional additive at paragraph [0063].  I consider that D1 conjectures that such a panel with this combination of features would be fire resistant.  It is my feeling that D1 does not clearly predict that there is a high expectation of success for this combination.  It has not been shown that the claims lack inventive step in the light of D1.

181.	US 3,616,173 (D4):  The disclosure of D4 was discussed above.  D4 teaches the possibility of preparing fire resistant gypsum panels with a density as low as 35 pounds per cubic foot.  However, the document provides a clear indication that densities below 40 pounds per cubic foot should be avoided (column 12):

"On the other hand it has been found that as the core density is decreased below about 40 lbs per cubic foot, problems are encountered in forming good bonds between the core and the facing paper."

182.	In the light of this clear indication in the document, it is hard to see how it could be a matter of routine to do what the document itself says to avoid (i.e. prepare a panel with a density of less than 40 pounds per cubic foot).  Dr Bruce does not address this aspect of D4.

183.	Based on the clear words of D4, I consider that it would not be a matter of routine to prepare a panel with a density below 40 pounds per cubic foot.  It follows that it has not been shown that the claims lack inventive step in the light of D4.

184.	US 4,647,486:  US 4,647,486 (designated D5) was published on 3 March 1987.  Consequently it is part of the prior art base.

185.	D5 is based on the observation that a panel containing the anhydrite of calcium sulfate as a component of the core of a panel did not shrink during fire testing:

"The anhydrite may be regarded as a pre-heat-treated and pre-shrunk gypsum additive which provides improved fire resistant properties."

186.	D5 notes at column 2:

"Conventional additives may be added in customary amounts to gypsum formulations to impart desirable properties and to facilitate manufacturing, such as, for example, foaming agents, accelerating agents, dispersing agents, core adhesives, and mixtures thereof."

187.	One of the additives that can be included is unexpanded vermiculite (see of instance column 3, lines 35 and 50).

188.	D5 discloses the principles of preparing fire resistant gypsum panels containing additives that could fall within the scope of claim 1 if the right combination is selected.  In this situation, the question to be answered is whether this is mere verification of the teaching of D5, or whether it is something more.  On the face of it, preparing a panel that is within the broad teaching of D5 and confirming that it is a fire resistant panel is no more than verification.

189.	As mentioned above, this would be a matter of routine if the expectation of success is high.  None of the declarants address this point.  There is no data in D5 that shows that the exemplified panels meet the UL or ASTM fire resistance standards.  Foaming agents are an optional additive at paragraph [0031], and vermiculite is included in samples #12, #13 and #14.  I consider that D5 conjectures that a panel with the present combination of features would be fire resistant.  It is my feeling that D5 does not clearly predict that there is a high expectation of success for this combination.  It has not been shown that the claims lack inventive step in the light of D5.

190.	US 2008/0087366 (D8):  The disclosure of D8 was discussed above.  D8 discloses the principle of preparing fire resistant gypsum panels containing additives that could fall within the scope of claim 1 if the right combination is selected.  In this situation, the question to be answered is whether this is mere verification of the teaching of D8, or whether it is something more.  On the face of it, preparing a panel that is within the broad teaching of D8 and confirming that it is a fire resistant panel is no more than verification.

191.	For similar reasons to those explained for D1, this would be a matter of routine if the expectation of success is high.  None of the declarants address this point.  D8 sets out the essential ingredients of the panel as gypsum (paragraph [0019]) and high temperature shrinkage resistant material (paragraph [0025]).  Intumescent materials such as vermiculite are added to the slurry (paragraph [0036]).  The panels exemplified have a density of 43.1 to 49.5 pounds per cubic foot.  There is no data that shows that these panels meet the UL or ASTM fire resistance standards.  

192.	D8 does not suggest reducing the density of the panels to below 40 pounds per cubic foot.  The opponent pointed to claim 9, which claims a panel with a density "of about 1800 to about 2600 lb/1000 ft2 with 5/8" thickness".  By my calculation, this equates to a density of 34.6 to 49.9 pounds per cubic foot.  I consider that D8 conjectures that a panel with a density below 40 pounds per cubic foot could be produced, and that this panel would be fire resistant.  It is my feeling that D8 does not clearly predict that there is a high expectation of success for this combination.  It has not been shown that the claims lack inventive step in the light of D8.
Utility
193.	It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, is useful.  Utility is defined in section 7A as:

(1)	For the purposes of this Act, an invention is taken not to be useful unless a specific, substantial and credible use for the invention (so far as claimed) is disclosed in the complete specification.
(2)	The disclosure in the complete specification must be sufficient for that specific, substantial and credible use to be appreciated by a person skilled in the relevant art.
(3)	Subsection (1) does not otherwise affect the meaning of the word useful in this Act.

194.	It is made clear in the Explanatory Memorandum at page 44 that this definition of useful applies in addition to the previous understanding:

"The specific, substantial and credible use test is not intended to displace the existing Australian case law on usefulness."

195.	In the present case, the issue is confined to the question of whether there is utility as that term was understood under the previous law.  The issue of utility under the previous law was considered by the Full Court of the Federal Court in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70, 81 IPR 228.  Emmett J at 247 [81] stated:

"A claim is bad if it covers means that will not produce the desired result, even if a skilled person would know which means to avoid.  That is to say, everything that is within the scope of a claim must be useful, otherwise the claim will fail for inutility"

196.	The opponent alleges that there is a lack of utility because the claims do not have upper and lower limits on some parameters, such that they could extend to panels that would not be fit for purpose.

197.	Density:  There is no lower limit on the density of the panel.  Dr Bruce stated at paragraph [182] of his first declaration that panels with a very low density would not have sufficient strength to be used as part of a wall:

"a gypsum panel with a very low core density or panel density would not have sufficient strength to be used as part of a wall or other structural unit, nor would it achieve one hour fire ratings under UL procedures U305, U419 or U423."

198.	Mr Ball and Mr Aird make comments that such a low density panel would fall within the scope of the claim so long as the other parameters are met (Ball declaration at paragraph [131] and Aird declaration at paragraph [187]).  

199.	These comments miss the point entirely.  It seems to be agreed by these declarants on behalf of the applicant that a very low density panel falls within the scope of claim 1, but they make no comment on whether the panels would have utility.

200.	The evidence of Mr Engbrecht and Mr Berhinig is of more assistance to the applicant.  Mr Engbrecht stated at paragraph [128] that a person could make a panel with low density provided the other parameters were satisfied:

"if someone wanted to lower the density of a panel of claim 1, one could continue to do that as long as the other features of the claim including a core hardness of at least about 11 pounds and the gypsum core effective to provide a Thermal Insulation Index of about 20 minutes or greater remain satisfied."

201.	Mr Berhinig says something similar at paragraph [115]:

"if the goal was to lower the density, one could do so until and as long as the other requirements, such as core hardness of at least about 11 pounds and the gypsum core effective to provide a Thermal Insulation Index of about 20 minutes or greater, were met."

202.	There is a suggestion here that as the density of the panel is decreased it will not be possible to maintain both the core hardness and Thermal Insulation Index, so very low density panels do not fall within the scope of claim 1.

203.	The opponent has not shown that very low density panels are within the scope of claim 1.  Consequently, I cannot conclude that the claim extends to panels that lack utility in terms of low density.

204.	Volume expansion:  The high expansion particles have a volume expansion of about 300% "or more".  Dr Bruce states at paragraph [183] that this language includes the possibility of exceptionally high expansion, which is likely to lead to excessive spalling:

"High expansion particles which have an exceptionally high volume expansion, significantly greater than 300%, would not be able to be accommodated within the voids of the gypsum core when heated to high temperatures, resulting in excessive spalling and breakdown of the board."

205.	Mr Engbrecht disagrees, stating at paragraph [238] that:

"the claims are a combination of features, and it is the combination of those features that provide any unstated limits."

206.	I interpret this as repeating the point made above in relation to density, that there is a limit to how high the volume expansion can go without causing problems for the other parameters.

207.	The opponent has not shown that panels containing exceptionally high volume expansion particles are within the scope of claim 1.  Consequently, I cannot conclude that the claim extends to panels that lack utility in terms of the volume expansion.

208.	At the hearing the point was made that there is a lack of utility because the claims include panels that do not pass the fire resistance test.  This matter was discussed previously in the context of the nature of the invention.  However, because the claims are considered to be restricted to those panels that satisfy the fire resistance testing, there is necessarily utility in this regard.

209.	I conclude that the opponent has not shown that there is a lack of utility.
Manner of manufacture
210.	It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, must be a manner of manufacture within the meaning of section 6 of the Statute of Monopolies.  This requirement has been discussed many times by the courts, and a range of different formulations have been advanced:

"a proper subject matter of letter patent according to traditional principles"
NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 183 CLR 655

"on the basis of what was known, as revealed in the specification, the invention claimed was obvious or did not involve an inventive step"
Bristol-Myers Squibb Co v FH Faulding & Co Ltd 46 IPR 553 at [30]

211.	The opponent raised two arguments:  the claims are a mere collocation of integers, and the claims are a mere desiderata.

212.	The panel that is the subject of the claims is a product composed of a number of components:  gypsum, water, high expansion particles, air voids.  Each of these integers is already known.  However, the fact that an article is made up of known integers does not mean that it is thereby a mere collocation in the patent sense:

"That is to say, what is described is a machine, the elements of which are all well known and simple mechanical integers, but combined so that they are not a mere collocation of separate parts, but interact to make up a new thing."
Welch Perrin & Co Pty Ltd v Worrel [1961] HCA 91; (1961) 106 CLR 588 at [8]

213.	I do not think it is reasonable to view the gypsum panel as a mere collocation.  The panel is more appropriately viewed as an integrated whole, rather than a collection of integers.  The better question is whether there is an inventive step in the collection of the integers.

214.	In relation to the desiderata issue, there is very little precedent in Australia.  In CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 1168; (1994) 122 ALR 417 at [125] the submission was made that:

"there could be no manner of manufacture in identifying 'basic characteristics' or 'desiderata' and 'to claim all ways of achieving (them)'."

215.	The response from the Full Court at [126] was:

"That submission should not be accepted.  It may be that such a claim lacks novelty, is obvious, or lacks utility, or there is a failure to comply with one or other of the limbs of s. 40 because, for example, the invention is not fully described or the claim is not clear and succinct. But if such hurdles all are surmounted, then in our opinion in a case such as the present there does not remain an independent ground of objection as to patentability, within the sense of para 18(1)(a) of the 1990 Act."

216.	I will adopt the same approach in this case.  These matters have already been considered above.  The ground of lack of manner of manufacture fails.
Conclusion
217.	The opposition succeeds on the grounds of section 40(2)(a) and section 40(3), and fails on all other grounds.

218.	I consider that these matters can be overcome by amendment.  I will allow the applicant an opportunity to propose amendments.
Costs
219.	The parties requested that they be allowed to provide submissions on costs after this decision has issued.  I will allow both parties two (2) weeks from the date of this decision to file submissions in relation to costs.  I will then issue my decision on costs.

Dr S.D. Barker
Delegate of the Commissioner of Patents

Table 1:  Fire resistance tests of samples (extracted from FIG 29C)
[Values that fail the fire resistance tests are shown as shaded.]

Sample	Max Temp at 60 Min Unexposed, Single Sensor °F	Ave Temp at 60 Min Unexposed, Ave of Sensors °F	
Pass value	< 400	< 325	
1	398	322	
2	443	308	
3	406	305	
4	375	398	
5	354	285	
6	468	336	
7	499	338	
8	423	326	
9	508	373	
10	420	330	
11	405	318	
12	394	307	
13	395	306	
14	351	292	
15	465	358	
16	435	336	
17	391	327	
18	307	274	
19	261	243	
20	245	235	

Table 2:  Composition and properties of samples (extracted from FIG 25A, 25B and 28A)
[Samples that fail the fire resistance tests are shown as shaded.]

Sample	Approx Stucco lb/msf	Approx Hig Exp Vermiculitelb/msf	Approx Starch lb/msf	Approx Phosphate lb/msf	Approx Dispersant lb/msf	Approx Mineral Wool/ Glass Fiber lb/msf	Approx Accelerator lb/msf	Approx Ave Board Density pcf	Ave Thermal Insulation Index (TI)	
1	1281	100	10	1	8	7.5	20	35.16	22.95	
2	1280	75	20	1.5	2	7.5	32	36.59	24	
3	1280	100	20	1.5	2	7.5	32	36.90	25.06	
4	1280	100	20	1.5	2	7.5	32	36.97	25.19	
5	1280	100	20	1.5	2	7.5	32	36.90	25.19	
6	1245	100	20	1.5	2	7.5	32	35.48	23	
7	1295	100	30	1.5	2	7.5	30	36.16	21.7	
8	1295	100	30	1.5	2	7.5	30	37.35	23.13	
9	1295	100	30	1.5	2	7.5	30	37.35	24	
10	1280	100	30	1.5	2	7.5	32	35.17	24	
11	1294	100	30	1.5	4	7.5	28	36.16	23.7	
12	1336	100	30	1.5	4	7.5	28	36.98	23.5	
13	1311	100	30	1.5	2	7.5	25	36.81	24.1	
14	1345	100	30	1.5	2	7.5	25	38.01	23.4	
15	1306	100	30	1.5	2	7.5	28	38.01	23.5	
16	1328	100	30	1.5	2	7.5	28	37.69	23.1	
17	1308	100	30	1.5	2	7.5	27	37.86	22.9	
18	1308	100	30	1.5	2	7.5	27	37.86	22.9	
19	1308	100	30	1.5	2	7.5	27	37.86	22.9	
20	1280	100	20	1.5	2	7.5	32	37.12	25.13	

ANNEX
Summary of the Examples of the invention

Example 1:  A study of the expansion characteristics of "relatively low expansion vermiculite often used in conventional fire rated gypsum panels … relative to high expansion vermiculite used in panels and methods following principles of the present disclosure".  This example shows that high expansion vermiculite expands far more than the vermiculite used in conventional fire rated panels.

Example 2:  Samples of panels (being samples designated 2, 3, 4 and 5) were analysed using "a cone beam x-ray micro CT scan technique with micron resolution".  The results are shown in FIGS 1 to 6 of the specification.   The compositions of these panels is listed in FIG 25A, and all samples contain high expansion vermiculite.  The CT scans show that vermiculite is "interspersed throughout the structural elements of the panel cores" (paragraph [0182]).  The example says at paragraph [0184] that this 

"would be expected to lead to spalling, fracturing and disruption of the void walls and intermediate core areas when the panel is exposed to high temperatures due to the resulting very significant expansion of he vermiculite particle volumes"

Example 3:  Shrink resistance tests are carried out on a panel according to the present invention (being sample 13, which contains high expansion vermiculite) and several known panels (that do not contain high expansion vermiculite).  The results are shown in FIG 24.  The conclusion at paragraph [0191] is:

"fire rated board formed according to principles of the present disclosure had a significantly superior shrink resistance, at a much lower density and weight, using this test."

Example 4:  Example 4 is an important example, since it reports (in FIG 25A and FIG 25B) the composition of the samples 1 to 20.  Each sample contains varying amounts of stucco, high expansion vermiculite, starch, phosphate, dispersant, mineral wool/glass fiber and accelerator.

Example 4A:  This example tests each of samples 1 – 20 to determine whether they could withstand deflection and mechanical strains when exposed to high temperatures.  All sameplse passed the test (see paragraph [0201]).

Example 4B:  This example tests each of samples 1 – 20 to determine their high temperature shrinkage.  At paragraph [0206] it is stated that the samples are more resistant to shrinkage "than would be expected", and at paragraph [0208] that they are "comparable to, if not better than, commercial fire rated panels".  FIG 26A and 26B contain supporting data.  The density of the samples ranges from 35.16 pounds per cubic foot to 38.01 pounds per cubic foot.

Example 4C:  This example relates to the calculation of predicted minimum High Temperature Thermal Insulation Index that each of samples 1 – 20 would need in order to achieve desire fire resistance.  The results are shown in FIG 27.  This data is compared to actual values recorded in example 4D.

Example 4D:  This example relates to measurement of the Thermal Insulation Index of each of samples 1 – 20.  The Thermal Insulation to density ratio of the samples is found at paragraph [0222] to be "similar to or better than the heavier, denser commercial panels".  The data is shown in FIG 28A and 28B.

Example 4E:  This example relates to full scale fire testing of each of samples 1 – 20 in accordance with procedures U419, U423 and U305.  The results are compared to commercial panels.  The results are shown in FIG 29A, 29B and 29C.  At paragraph [0244] the specification says:

"reduced weight and reduced density gypsum panels formed according to principles of the present disclosure were capable of meeting or exceeding the standards required for approval as a commercial 'one hour' fire rated gypsum panel under the U419 procedures."

Example 5:  In this example, samples 1 – 20 are tested according to nail pull resistance.  The results are shown in FIG 30.

Example 6:  This example shows the results of testing samples 17 – 19 in flexural strength testing.  Results are presented in FIG 31.

Example 7:  This example shows the core, end and edge hardness of samples 17 – 19.  The results are presented in FIG 32A, 32B and 32C.

Example 8:  This example shows the sound transmission values of samples 17 – 19.  The results are presented in FIG 33.

Example 9:  This example shows the effect of adding siloxane (which is added to improve water resistance) to panel formulations.

Example 10:  This example is intended to show the effect of changes in the amount and type of vermiculite the thermal properties of a panel.  According to paragraph [0265], the panels were prepared from:

"1000 grams of stucco, 11 grams of heat-resistant accelerator, 15 grams of pregelatinized starch, 6 grams of glass fiber, and 2000 ml of water at 70°F.  These lab samples were prepared using varying amounts and types of vermiculite according to the formulations set forth in Table XVII in FIG 35."

The specification says that the ratio of High Temperature Thickness Expansion to High Temperature Shrinkage "generally increases with increasing amounts of high expansion vermiculite" (paragraph [0267]), and the Thermal Insulation Index "increases somewhat with increasing amounts of high expansion vermiculite" (paragraph [0268]).

Example 11:  This example reports tests of the thermal properties of samples containing varying amounts of aluminium trihydrate.

Example 11A:  This example reports the High Temperature Shrinkage of stucco formed from varying amounts of aluminium trihydrate and synthetic gypsum.

Example 11B:  This example reports the High Temperature Thermal Insulation Index of stucco formed from varying amounts of aluminium trihydrate and high purity natural gypsum.

Example 11C:  This example reports the High Temperature Thermal Insulation Index of stucco formed from varying amounts of aluminium trihydrate and relative low purity natural gypsum.