THE PATENTS ACT, 1970 (AMENDED BY THE PATENTS ACT 2005) AND THE PATENT RULES, 2003 (AMENDED BY THE PATENTS RULES 2006) In the matter of patent Application no.811/DEL/2003 filed on 17/06/ 2003 as provisional Specification ; Complete specification left on 16th June 2004 AND
In the matter of representation by way of opposition U/s 25(1) dated 29/03/2007 on said application No. 811/DEL/2003 M/s PEPSICO INDIA HOLDINGS PVT. LTD., GURGAON, INDIA.……… The Applicant Ms SURABHI SINHA, NEW DELHI, INDIA….………………………… The Opponent
Hearing held on June 10th , 2008 Present: Mrs Rajeshwari H., Ms Chitra Arvind, Ms Shruti Kakar Of M/s K&S Partners, New Delhi, India…….Attorneys for the Applicant Sh H. Subramaniam, Sh G. Natraj, Dr. Ritu Gandhi Of M/s Subramaniam, Natraj& Associates, New Delhi, India…….Attorneys for the Opponent Ms Surabhi Sinha, New Delhi, India………………. ……………..The Opponent DECISION (A) The matter under consideration in this decision is the representation by way of opposition under section 25(1) filed by Ms Surabhi Sinha, New Delhi, India (hereinafter opponents) through M/s. Subramaniam, Natraj& Associates, New Delhi, India (herein after opponents’ counsel) on 29/03/2007 against the grant of patent on application no. . 811/DEL/2003 titled as “AN IMPROVED LAMINATE FILM” filed on 17/06/ 2003 as provisional Specification and then the Complete specification was left on
1
16th June 2004 by M/s.FRITO-LAY INDIA (now merged with Pepsico India Holdings Pvt. Ltd. Gurgaon, India taken on record by the Patent office on 12/04/2005 and now on record Applicants name is Pepsico India Holdings Pvt. Ltd. GURGAON, INDIA) through M/s. K&S Partners, New Delhi, India (herein after applicants Counsel). The chronology of events (other than mentioned above) in respect of said application and representation is as under: ‐ 1. Request for examination on form‐19 filed on 16.06.2004 2. First examination report (hereinafter FER )sent on 03.12.2004 3. Final date of compliance of all objections raised by patent office – 03.12.2005 4. Date of reply by the applicant to FER – 29/03/2005 5. Letter of Intimation about the application found in order for Grant: 09/12/2005 6. Date of publication‐ 3rd June 2004 7. Date of dispatch of notice U/R 55(3) to applicant by Patent office – 31.05.2007 8. Date of filing reply by the applicant U/R 55 (4)‐ 28.08.2007. 9. Date of filing interlocutory petition by the applicant – 28.08.2007. 10. Date of filing reply to the interlocutory petition by the opponent – 06.12.2007 11. Date of hearing on interlocutory petition: 11/12/2007 12.Date of Decision on interlocutory petition: 13/05/2008
( B ) The initially filed claims (total 12) in Complete Specification are as under :‐
1. A laminate film comprising (i) an outer layer of a polymer selected from polyester, polyethylene terephthalatc (PET), polypropylene terephthalate (PPT), polyethylene naphthalate (PEN), oriented pulyamide (OPA), oriented nylon (ONY), polybntylene serepbthaiate (PBT), polyhydroxy benzoate (PBT), b t a x i a l l y oriented polypropylene (BOPP) and polyvinyl chloride IPV'C) the layer being , oplianally . printed; (ii) a core layer of polyethylene‐; (iii) an inner layer composed of a polymer selected from polyethylene, pah/amide and cast polypropylene, and metallised on its inner side, the metallisation being effected using plasma atmosphere.
2
2 A laminate as churned in claim 1 wherein the thickness of the outer layer ranges from 10 micron to 30 micron. 3. A laminate as claimed in claim 1 wherein the thickness of the inner layer ranges from 20 micron to 40 micron. 4. A laminate a claimed in claim 1 wherein the thickness of the core layer ranges from 10 micron to 25 micron. 5.A laminate as claimed in claim I wherein the water vapour transmission rate is less than 0.3 grits/sqm per 24 hours @28°C 90%RH. 6. A process for preparing a laminate as claimed in claims ! to 6, said process comprising the steps of:
(i) providing a core layer of polyethylene by way of extrusion, (ii) joining together by extnioion lamination an outer layer of a polymer selected from polyester, polyethylene terephthalate (PET), polypropylene terephthalaie (PPl), polyethylene naphthalate (PEN), oriented polyamide (OPA) or oriented nylon (ONY), polybutylene tercphthalate (PBT), polyhyclroxy benroate (PBT) and biaxialiy oriented polypropylene :; (BOPP), polyvinyl chloride (PV'C) and an inner layer of a polymer selected from polyethylene, poiyamide and east polypropylene. 7. A process as claimed in claim 6 wherein the thickness of the outer layer ranges from 10 micron to 30 micron. 8. A process as claimed in claim 6 wherein t h e thickness of the inner layer ranges from 20 micron to 40 micron, 9. A process as claimed in claim 6 wherein the thickness of the core layer ranges from 10 micron to 25 micron. 10. A process as claimed in claim 6 wherein the water vapour transmission rate is less than 0.3 gms/sqm per 24 hours @28°C 90%RH. 11. A laminate film substantially as herein described and illustrated. . 12. A process for preparing a laminate substantially as herein described and Illustrated.
(C) The following were the main objections raised by the Examiner out of (total 13) in the F.E.R. dated 03.12.2004,: (i) Subject matter of claims does not constitute an invention under
3
section 2(1)(J) of the Patent (Amendment) Act, 2002 as claims 6 & 12 are lacking in inventive step in view of cited documents US 2002127393 & EP 1177891. (ii) Claims 1 & 11 are not allowable under section 5(l)(b) of the Patent (Amendment) Act, 2002. (ii) Claims do not sufficiently define the invention. (iv) Claims are not sufficiently definitive in the absence of explicit statement of invention. (v) The distinguishing features as compared with prior art given are not clear. (vi) Claims are not clear in respect of the expression wherein indicated. (vii) Claims are not clearly worded wherein indicated. (vii) The question of novelty of the invention will be considered after the specification has been amended to avoid the objections pointed out above.
(D) In response to the FER the applicants refiled the documents with reply on 29/03/2005 and amended the claims restricting to following 10 claims: 1.
A laminate film comprising: (i) an outer layer of a polymer selected from polyester, polyethylene terephthalate (PET), polypropylene terephthalate (PPT), polyethylene naphthalate (PEN), oriented polyamide (OPA), oriented nylon (ONY), polybutylene terephthalate (PBT), polyhydroxy benzoate (PBT), biaxially oriented polypropylene (BOPP) and polyvinyl chloride (PVC) the layer being optionally printed; (ii) a core layer of polyethylene; (iii) an inner layer composed of a polymer selected from polyethylene, polyamide and cast polypropylene, and metallised on its inner side, the metallization being effected using plasma atmosphere; wherein the thickness of the layer is in the ratio 1:2:1
2.
A laminate as claimed in claim 1, wherein the thickness of the outer layer ranges from 10 micron to 30 micron.
3.
A laminate as claimed in claim 1, wherein the thickness of the inner layer ranges from 20 micron to 40 micron.
4.
A laminate as claimed in claim 1, wherein the thickness of the core layer ranges from 10 micron to 25 micron.
5.
A process for preparing a laminate as claimed in claims 1 to 4, said process comprising the steps of:
4
(i) providing a core layer of polyethylene by way of extrusion, (ii) joining together by extrusion lamination as hereindescribed an outer layer of a polymer selected from polyester, polyethylene terephthalate (PET), polyethylene naphthalate (PEN), oriented polyamide (OPA) or oriented nylon (ONY), polybutylene terephthalate (PBT), polyhydroxy benzoate (PBT) and biaxially oriented polypropylene (BOPP) and polyvinyl chloride (PVC) and an inner layer of a polymer selected from polyethylene, polyamide and cast polypropylene, and wherein the inner layer is metallised on its inner side by plasma atmosphere. 6.
A process as claimed in claim 6, wherein the thickness of the outer layer ranges from 10
micron to 30 micron. 7.
A process as claimed in claim 6, wherein the thickness of the inner layer ranges from 20
micron to 40 micron. 8.
A process as claimed in claim 6, wherein the thickness of the core layer ranges from 10
micro9n to 25 micron. 9.
A laminate film substantially as herein described and illustrated.
10. A process for preparation of a laminate substantially as herein described and illustrated. (E) The opponents filed a representation by way of opposition U/s 25 (1) on 29/03/2007 and have opposed the grant of patent on the following grounds: a. that the invention so far as claimed in any claim of the complete specification has been published before the priority date of the claim (i) In any specification filed in pursuance of an application for a patent made in India on or after the 1st day of January. 1912: or (ii)In India or elsewhere, in any other document.. (b) That the invention so far as claimed in any claim of the complete specification is claimed in a claim of a complete specification publishedon or after the priority date of the applicant's claim and filed in pursuance of an application for a patent in India, being a claim of which the priority date is earlier than that of the applicant's claim; (c ) that the invention so far as claimed in any claim of the complete specification
was
publicly
known
or
publicly
priority date of that claim:
5
used
in
India
before
the
(d.) that the invention so far as claimed in any claim of the complete specification
is
obvious
and
clearly
does
not
involve
any
inventive
step, having regard to the matter published as mentioned in clause (a) or having regard to what was used in India before the priority date of the applicant's claim (e) that the subject of any claim of the complete specification is not an invention within the meaning of this Act, or is not patentable under this Act; (f.) that the complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed; (g) the applicant has failed to disclose to the Controller the information required
by
Section
8
or
has
furnished
the
information
which
in
any
material particular was false to his knowledge.
(F) The applicants filed two Interlocutory Petitions (i) and (ii) on 28/08/2007 with the following prayers: I.P. No. (i):- the pregrant opposition being filed after the closure of the prosecution of the application be dismissed outright as it is not maintainable in law I.P. No. (ii):- In the proceeding of the pregrant opposition the applicant would like to cross examine the opponent Ms Surabhi Sinha. A hearing was appointed for said Interlocutory Petition on 11/12/2007. Both the parties were heard at length and the Interlocutory Petitions were dismissed in the Decision issued on 13/05/2008 with the reasoning mentioned below: “I observe that a pre-grant opposition can be filed after the publication of an application till the grant of patent on the application. The instant application was published on March 6 2004 and the opposition was filed on March 2007. The present opposition u/s 25 (1) was filed before the grant of the patent on the instant application and therefore, the filing of the opposition is valid and not time barred.”
“Regarding the issue of cross-examining the opponent Ms Surabhi Sinha on the grounds merely that she is a patent agent and not any interested party, I opine that the cross-
examination of the opponent is not required in the instant matter because according to section 25 (1) of the Patents Act, 1970, 'any person' can file a pre grant opposition to enable the Patent office to grant a good patent. Considering the Mumbai High court's judgment that a same person cannot be an
6
advocate and a client in the same matter, I observe that Ms Surabhi Sinha is only an opponent and she is not acting as a patent agent in this instant matter. Further Ms Surabhi Sinha was not a patent agent at the time of filing the representation”.
(G) A hearing was appointed on June 10th, 2008 in the main matter. Both the parties were heard at length:
(G.1) Analysis of the claims of the impugned application The finally revised claims 1 to 4 and 9 during the prosecution of the impugned application relate to “an improved laminate film". The film according to the invention has three layers comprising: (a) an outer layer of a polymer, which is a non‐barrier printable layer, selected from (i) polyester, (ii) PET, (iii) PPT, (iv) PEN, (v) OPA, (vi) ONY, (vii) PBT, (viii) polyhydroxy benzoate, (ix) BOPP, and (x) PVC, the said outer layer being optionally printed; (b) A core layer of polyethylene (being an adhesive layer); and (c) An inner layer, which is the barrier layer, comprising a polymer selected from polyethylene, polyamide and cast polypropylene and metallized on the inner side wherein the metallization is performed using plasma atmosphere. This film is used for packaging, which provides superior barrier properties
to moisture and oxygen permeation through the film and the intermediate polyethylene layer acts as an adhesive layer; and there is a substantial reduction in the overall thickness of the package. The water vapor transmission rate of the laminates according to the invention is less than 0.3 g/sq cm per 24 hours at 28°C, 90% RH and an oxygen transmission rate of 30 cc per sq cm per 24 hours at 23°C 0% RH. The preferred thickness of the layers, in claimed invention is (i) Outer layer: 10 to 30 micron; (ii) Core layer: 10 to 25 micron; (iii) Inner layer: 20 to 40 micron. (iv) and Overall thickness: 40 to 95 microns The finally revised claims 5 to 8 and 10 during the prosecution of the impugned application relates to the process for preparation of the laminate of claim 1 to 4.
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The laminates of the invention are prepared by extrusion lamination wherein core layer of polyethylene acts as an anchor layer or adhesive layer, which eliminates the need for solvents and other adhesives. Such a construction also cuts down manufacturing cost substantially. The process for preparing the film comprising the steps of: a. providing a core layer of polyethylene by way of extrusion, b. joining together by extrusion lamination an outer layer of polymer
selected
(PET),
polypropylene
naphthalate,
from
polybutylene
benzoate
(PBT)
and
polyethylene
tetrapthalate
oriented
(ONY),
polyester,
polyamide
(PPT),
(OPA)
terephthalate biaxially
or (PBT),
oriented
tetraphthalate polyethylene
oriented
nylon
polyhydroxy
polypropylene
(BOPP).
polyvinyl chloride (PVC) and an inner layer of a polymer selected from polyethylene, polyamide and cast polypropylene and the inner layer is metallized on it’s inner side by plasma atmosphere.
(G.2) Discussion about the Novelty: (G.2.1)The arguments of the opponent are as under: The opponent relied on the following prior art document to prove the lack of novelty of the invention claimed in 811/DEL/2003. •
CA2334724 (herein after Exhibit 1)
•
US5209972 (herein after Exhibit 2)
•
EP1172201 (herein after Exhibit 3)
•
US6345726 (herein after Exhibit 4) The Exhibit 1 entitled "Material for packaging cell, bag for packaging cell, and its production method" published on October 19, 2000 relates to a battery packaging laminated structure resistant to acids and organic solvents and methods for the manufacture thereof.
On page 4 of Exhibit 1, under the sub heading "Disclosure of the invention" different embodiments of the invention are disclosed. According to first aspect of
the
invention
a
battery
packaging
laminated
structure
comprises
an
outermost layer, a barrier layer and an innermost layer laminated in that order or an outermost layer, a barrier layer, an intermediate layer and an
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innermost layer laminated in that order; wherein the outermost layer is formed of a formable base material, the barrier layer is formed of a impermeable base material having a barrier property, the intermediate layer is formed of a formable intermediate base material and the innermost layer is formed of a heat‐adhesive base material.
The
alleged
invention
discloses
and
claims
an
improved
packaging
film
having superior barrier properties. Claim 1 of the alleged invention reads as under:
A laminate film comprising: (a) an outer layer of a polymer, which is a non‐barrier printable layer, selected from (i) polyester, (ii) PET, (iii) PPT, (iv) PEN, (v) OPA, (vi) ONY, (vii) PBT, (viii) polyhydroxy benzoate, (ix) BOPP, and (x) PVC, the said outer layer being optionally printed; (b) a core layer of polyethylene (being an adhesive layer); and (c) an inner layer, which is the barrier layer, comprising a polymer selected from polyethylene, polyamide and cast polypropylene and metallized on the inner side wherein the metallization is performed using plasma atmosphere.The metal layer of the inner layer of the alleged invention is a barrier layer.
Fig 1 (a) ( Pl. vide representation of the representor) is a sectional view of the first embodiment of Exhibit 1 and it shows a laminated structure 10 having an outermost layer 11, a barrier layer 12 an intermediate layer 13 and an innermost layer 14 laminated in that order.The disclosure of Exhibit 1 in the first embodiment (described on page 8 onwards of Exhibit 1) is compared vis‐à‐ vis the alleged invention in the following table: Table 1: "SN
Parameter
Alleged Invention
Exhibit 1
Comments
Outer most
Polyester, PET,
Paragraph bridging pages 10 and 11,
Same in
layer.
PPT, PEN, OPA, oriented polyester or oriented nylon,
o' 1
ONY, PBT,
more preferably selected from PET, PEN,
polyhydroxy
polyester co‐polymers, polycarbonate
benzoate, BOPP,
resins. Preferable nylons are selected
PVC.
from nylon 6, nylon 66, nylon 610 and MXD6.
9
both.
2
Thickness
10 to 30 microns.
Page 1 1 , paragraph 1 , 6 micron or
Same in
of the
above, more preferably 12 to 25
both
outermost
microns.
layer 3
Barrier layer
Aluminum layer
Page 11, lines 30 ‐ 31,the barrier
Same in
layer is formed from a foil of
both.
metal such as aluminum or nickel. 4
Intermediate Polyethylene
Page 14, lines 21 ‐ 25 LDPE, MDPE,
Same in
layer/
LLDPE and other polyethylene resins.
both.
5
Thickness of the intermediate layer
10 to 25 microns
Page 14, line 13, 12 to 25 microns of a polyolefin resin.
Same in both.
6
Innermost Polyethylene, layer/ Inner polyamide or cast layer polypropylene
Page 16 and page 17, polyolefin resin such as homopropylene resins, polyethene resins such as LDPE, MDPE, HOPE LLDPE etc,
Same in both.
7
Thickness of the innermost layer
Page 15, lines 3 ‐ 4, 20
Same in both
20 to 40 microns
micron and above.
It is evident from the above table that the three‐layered laminate film described and claimed in the alleged invention is anticipated by the disclosure of Exhibit 1. It is further stated that the core layer of the alleged invention is polyethylene. The polymers used in core layer belong to category of polyolefin and is essentially used for the adhesion. Further, the use of a polyolefin layer as the adhesive layer is clearly taught in Exhibit 1. Moreover, all the layers claimed in the alleged invention and dimensions thereof are taught in Exhibit1. Therefore, the alleged invention is not novel and should be rejected on the ground of lack of novelty. Claim 7 (now claim 5)(hereinafter claim 5) of the alleged invention is directed towards a process for the preparation of laminates of claim 1. It is noted that laminates of alleged invention are prepared by extrusion lamination wherein core layer of polyethylene acts as an anchor layer or adhesive layer thereby eliminating the need for solvents and other adhesives. Such a construction also cuts down manufacturing cost substantially. Claim 5 of the alleged invention reads as under: A process for preparing a film as claimed in claim 1 to 6, said process comprising the steps of: a. providing a core layer of polyethylene by way of extrusion,
10
b. joining together by extrusion lamination an outer layer of polymer selected from polyester, polyethylene tetraphthalate (PET), polypropylene tetrapthalate (PPT), polyethylene naphthalate, oriented polyamide (OPA) or oriented nylon (ONY), polybutylene terephthalate (PBT), polyhydroxy benzoate (PBT) and biaxially oriented polypropylene (BOPP). polyvinyl chloride (PVC) and an inner layer of a polymer selected from polyethylene, polyamide and cast polypropylene. Opponent further states that Exhibit 1 on page 20 and 21 discloses different methods used for the preparation of laminates, which includes co extrusion lamination, dry lamination and thermal lamination. All these methods do not use solvent or water. It is therefore noteworthy that the process disclosed and claimed in the alleged invention is also anticipated in view of Exhibit 1. It is further stated that Exhibit 2 entitled "Multiple layer packaging film" was published on May 1 1 , 1 993 and is therefore admissible prior art against the invention claimed and disclosed in the alleged invention. It relates to multiple layer packaging film wherein polyethylene terephthalate is one of the layers. All layers are oriented. Desirably, the polyethylene terephthalate may be metallized, then laminated to a reverse printed layer of oriented polypropylene or polyester. The specific disclosure of alleged invention relating to the most preferred laminate film is compared with the disclosure of Exhibit 2 in the table given below: S.No Parameter Alleged invention Exhibit 2 Comments 1
2
Third layer or Polyester, PET, PPT,
PET
the outer layer
PBT, PEN, OPA,
Printing
The outer layer is Column 5, lines 6 ‐8,
Same in both.
ONY, BOPP, PVC etc.
optionally printed.
Same in both.
layer 122 is ink, which is printed as desired for indicia and appearance sake on the outer layer 124.
3
Core layer
Core layer is a Column 4, line 19, the Same in both. polyethylene layer
second layer is an
11
adhesive layer; Column 5, line 5‐6, layer 120 is a polyethylene adhesive laminate layer 4
Inner layer/
Low density
Low density
Polyethylene
polyethylene
Same in both.
heat scalable layer 5
Barrier layer
Inner layer is Column 4, first metallized on its inner side
paragraph, the third layer is mettalised
Barrier layer is present in both.
It is evident from the above table that Exhibit 2 discloses all the essential features of the laminate film claimed in the alleged invention and therefore the invention claimed by the applicant is liable to be rejected on the ground of lack of novelty. It is further stated that film laminates of Exhibit 2 are prepared by process of cast extrusion and it do not use any solvent in the process of lamination. Therefore, the process for preparation of film laminates of alleged invention is also anticipated in view of Exhibit 2. It is apparent from the disclosures of Exhibit 1 and Exhibit 2 that three layered laminates of the alleged invention are not novel. It is a well‐settled principle of patent law that the claims should define the subject matter for which protection is sought in a clear, concise and unambiguous manner. The opponent further states that alleged invention was known before the date of priority and therefore should be rejected on the ground of lack of novelty.
( G.2.2) The arguments of the Applicant are as under:‐The applicants submit that the representation filed is false, baseless and frivolous and is liable to be dismissed in limine. All the averments made in the representation are denied unless specifically admitted herein.
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It is submitted that the present application was thoroughly examined and after this office was satisfied that the invention as claimed is novel, inventive and patentable, the same was granted. This office could not issue Letters Patent Document due to procedural delays. Therefore, the fact on record is that the period for filing opposition has expired and as such, no opposition by way of pre‐grant representation is maintainable in law. The representation filed is liable to be dismissed on this ground alone. Applicants submit that Exhibit 1 is a package/structure for packing batteries. The main objective of this patent is to provide a structure resistant to acids, solvents and other hazardous material found or exuded by batteries. The structure of the package is also designed to meet this objective. According to Exhibit 1, aluminium foil itself is used as an intermediate layer or as a barrier. In other words, the structure of Exhibit 1 employs aluminium foil as a separate layer. Further, the arrangement of the polymeric layers as set out by Exhibit 1 is completely different as compared to the structure claimed in the present application. In addition, the claimed laminate employs a sealant layer which also carries with it a certain metallization. Thus, Exhibit 1 does not anticipate the claims. The
averments
made
in
paras
5.8
to
5.12
are
wrong,
misleading
and
denied. While it is true that Exhibit 2 discloses a multiple layer packaging film for packing food products, it is submitted that the arrangement of the layers and the properties delivered by such a structure are completely different
from
that
claimed
by
the
subject
application.
As
stated
in
column 3, lines 35‐50, the main object of the invention disclosed by US'972 is to provide a packaging film wherein the sealant layer has a low‐to‐ moderate heat sealing temperature. It is also an object to provide a film with
a
PET
surface
suitable
for
metal
deposition.
The
film
of
'972
comprises three layers, of which the sealant layer is an ionomer. As stated in column 4, the third layer, being polyethylene terephthalate is metallized and laminated to a polyethylene adhesive layer. The said layer may also be reverse printed. The sealant layer, which is the first layer is composed of low density polyethylene, ethylenemethyl acrylate, ethylenevinyl acetate or ionomer. Comparatively, the design of the structure claimed by the subject application is completely different. It comprises metallized cast polypropelyne as the innermost layer. The said layer not only acts as a barrier against oxygen and moisture but also acts as a sealant when joining the two sides of a pouch.
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Further, the manufacturing costs in preparation the film of the subject application are far lower as compared to US '972. In addition, the process of preparing the film of the subject application is different; it involves extrusion lamination, which is not followed by US '972. In view of the above and other differences, the film of Exhibit 2 is not even comparable with the film of the subject application, leave alone anticipation.
(G.2.3) DECISION ON NOVELTY Allegation is that the alleged invention is not novel in view of disclosure of Exhibit 1 and 2 independently. It is observed that the Exhibit 1 is disclosing the laminate structure for packaging the battery, which provides packages for resisting the effects of the Air and moisture, low and high temperature etc. These packages are also resistant to acids, solvents and other hazardous material formed or exuded by battery. The laminate structure of Exhibit 1 is comprised of the outermost layer, a barrier layer; an Intermediate layer and an Innermost layer laminated in that order and none of these layer have property as self adhesive layer as is in the claimed laminate of the impugned application. The innermost layer as claimed in the claim of impugned application is a barrier layer metallized on inner side and the metallization is performed using plasma atmosphere. The laminate of the impugned application is particularly made for providing superior barrier properties for moisture and oxygen and packaging of food material and pharmaceuticals.
The Exhibit 2 discloses three layers film comprising 1st layer being heat sealable( LDPE, Ethylene Methyl Acrylate, Ethylene Vinyl Acetate and Ionomer); 2nd layer being the core layer which is an adhesive layer and made up of polyethylene adhesive laminate layer and the third layer (Outermost layer) is of PET and being the barrier layer and is preferably metallized but the procedure of metallization is not similar to as disclosed in the alleged invention. However it has also been brought to the notice by the opponent that achieving metallization by plasma atmosphere in such laminates is a common knowledge existing before the priority date of the alleged invention. All the layers are bonded to each other without the use of intervening adhesives and by the process of cast extrusion, which do not involve any solvent. The packages are used for packing food products, which prevents the penetration of air and moisture.
14
It is observed that the arrangement of the layers in said packaging film of Exhibit 2 is different from that of the laminate layers as claimed in impugned application. The first layer (inner layer) is heat sealable layer which is made up of LDPE or an ionomer; 2nd layer being the core layer which is an adhesive layer; third layer is of PET which is metallized and laminated to polyethylene layer which is adhesive, whereas, the innermost layer of the laminate of impugned application composed of polymer selected from polyethylene, polyamide and cast propylene and metallising effected by plasma atmosphere on it’s inner surface. Therefore the Exhibit 1 and 2 does not anticipate the impugned application in toto so as to affect the novelty of the impugned application. The process for preparation of film in exhibit 2 and laminate of impugned application is also different. The impugned application involves extrusion lamination and Exhibit 2 involves Cast extrusion of all the layers oriented and then heat setting. Therefore the process for preparation of laminate of the impugned application is not anticipated in toto.
(G.3) Discussion about the Inventive Step: (G.3.1) The arguments of the opponent are as under: Claims of the impugned application are anticipated as well as lack inventive step and are obvious in view of the viz. Exhibit 1 and Exhibit 4 considered in isolation as also in conjunction.
It is evident from the above Table 1 that all the essential features of claim 1 of the
alleged invention are covered by the laminates of Exhibit 1 .It should be noted that page 4, lines 19 28 of Exhibit 1 discloses a laminated structure comprising an outermost layer, a barrier layer, an intermediate layer and an innermost layer laminated in that order whereas in the subject application the laminate film has following order: Outer layer/core layer/Metallized cast polypropylene. It is stated that subject application has different order of polymers, which are used in laminates. But all the essential polymers of the subject application are anticipated in view of Exhibit 2.The applicant has only interchanged the position of the barrier layer Exhibit 1 which is a mere rearrangement which does not give any technical character to the invention. All the advantages asserted by the applicant are given the films of exhibit 1. Moreover, such a inter changeability is within the knowledge of the skilled artisan and therefore lacks inventive faculty. Therefore, the claimed invention is not inventive as well in view of Exhibit 1.
15
It is evident from the Table 2 that all the essential features of alleged invention are taught in Exhibit 2. It is further stated that in Exhibit 2 teaches metallization on the outer layer whereas in alleged invention inner layer on its inner side is metallized. Therefore, it is noted that the in the subject application and Exhibit 2 position of the barrier layer is different. However, such a change in the position in the film laminates of exhibit 2 is obvious to a skilled person and lacks inventive merit. It is further stated that Figure 1 ( Pl. vide page 12 of the representation of the representor ) of Exhibit 2 gives the sectional view of one of the preferred embodiments which is reproduced as follows: In figure 1, 12 is a heat sealable layer made up of polyolefin such as low density polyethylene; 14 is an polymeric adhesive layer and 16 is outer later made up of PET The film laminate of Figure 1 of Exhibit 2 differs from the alleged invention in the absence of barrier layer. However, Exhibit 2 teaches the use of barrier layer in another preferred embodiment. The text of exhibit 2 states, the Metallized layer is very thin, it serve as an effective barrier to transmission of all gases when applied to an appropriate substrate. Metallization also provides an aesthetically pleasing appearance. In presently used metallized structures, the metallization is deposited onto a substrate of either biaxially oriented polyethylene terephthalate (PET) or biaxially oriented polypropylene (OPP). There is a clear teaching in the Exhibit 2 that barrier is essentially used in the film laminates to prevent transmission and therefore it is obvious to a skilled person to add a barrier layer in a known film laminates of Figure 1 to arrive at the film laminates of subject application.
It is stated that Exhibit 3 was published on January 16, 2002 and is therefore admissible prior art against the alleged invention. Exhibit 3 discloses a multilayer casing film comprising at least three layers including two polyamide layers and an adhesive polyolefin layer disposed between the polyamide layers.
The outer layer according to alleged invention may comprise oriented polyamide or oriented nylon, whereas the inner layer may also comprise a polyamide. Therefore, in this aspect of the invention, the claimed laminate film comprises Polyamide/Polyethylene/Polyamide. The disclosure of Exhibit 3 is compared vis‐a‐vis the alleged invention in the following table: S. Parameter No
Alleged invention
Exhibit 3
Comments
1
Oriented polyamide
Paragraph 16, at least one polyamide layer including nylon.
Same outer layer disclosed in the priorart.
Outer layer
or oriented nylon
16
2
Thickness of
10 to 30 microns
2 to 10 micron
Substantially similar
Polyamide
A polyamide homopolymer
Same in both.
the outer polyamide layer 3
Inner polyamide Layer
4
Thickness of
optionally similar to the one constituting the first polyamide layer including nylon. 20 to 40 microns
Paragraph 23, 15 to 40 microns.
Same in both.
the inner polyamide layer 5
The core layer
Polyethylene
Paragraph 26, line 44 ‐ 45, may be VLDPE or LLDPE.Line 29 30 of the same paragraph states an adhesive polyolefin laver is disposed in contact with at least one of the polyamide layers.
Same in both.
6
Thickness of the adhesive olefin layer
10 to 25 microns.
Paragraph 28, 0.5 to 25 microns
Same in both.
7
Overall thickness of the laminate
40 to 95 microns
Paragraph 36,10 to 120 microns
Same in both.
Therefore, it is clear from the aforesaid table that there is a substantial overlap between the invention claimed in subject application and that disclosed in Exhibit 3. It is further noted from the teachings of Exhibit 1 and Exhibit 2 that barrier layer is used to prevent transmission of the gases. It is therefore obvious for a person skilled in the art to plasma or vacuum deposit a metallic layer to the outer layer in order to increase the barrier properties of the laminate film, particularly in view of the fact that metallization has been known to increase the barrier properties of polymeric films and such metallized polymeric films are known and well appreciated within the art. Therefore, a prima facie case of obvious is made against the subject matter claimed in the alleged invention in view of either of the above documents combined with the teachings of Exhibit 3. Further, Exhibit 4 was published on February 12, 2002 and discloses a thermoformable structure comprising (a) an outer supporting layer of polyester and the like; (b) an intermediate permanent adhesive layer; and (c) an inner weldable layer of polyethylene. The pertinent disclosure of Exhibit 4 is compared vis‐a‐vis the invention disclosed and claimed in the subject application in the following table:
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S.NO.
Parameter
Exhibit 4
Alleged invention
1
Outer supporting
Column 3, lines 40‐ 41, PVC, polypropylene, polyethylene, expanded polyester, polyamide, polycarbonate or polystyrene.
Polyester, PET, Substantially PPT, PEN, OPA, overlapping ONY, PBT, Polyhydroxy benzoate, BOPP, PVC.
2
Thickness of the outer 10 to 500 microns supporting layer
10 to 30 microns
Completely overlapping
3
Intermediate adhesive thickness
10 to 25 microns
Substantially overlapping
4
Intermediate constitution
15 to 20 microns layer
layer Not disclosed, Polyethylene discloses that it should be made up of an adhesive resin or a thermoplastic synthetic material
Polyethylene
Obvious modification the prior art.
Overlapping Polyethylene, polyamide or cast polypropylene
5
Inner layer
6
Thickness of the inner More than twenty 20 to 40 microns layer five microns, supports the printing ink.
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Comments
Overlapping
of
It is clear from the above table that Exhibit 4 does not disclose the constitution of the intermediate adhesive layer. However, it is apparent from the disclosures of Exhibit 1 and 2 that the use of polyethylene as the intermediate adhesive layer is known. Therefore, it would have been obvious for a person skilled in the art having read Exhibit 4 to use a polyethylene layer as the preferred adhesive layer. It is stated that the subject matter covered in the opposed application is not inventive on the face of Exhibit 1 to Exhibit 4. The opponent states that the alleged invention is liable to be rejected on the ground of lack of inventive step.
(G.3.2)The arguments of the applicant are as under: The averments of para 6.1 to 6.2 are wrong, incorrect, misleading and hereby denied. It is the case of the Opponent that the claims of the subject application lack inventive step in view of Exhibit 1 read with Exhibit 4, considered alone or as a combination. As stated in the foregoing paragraphs, Exhibit 1 is a pouch used for packing batteries. It discloses a multiple‐ layered structure. The film has been designed to provide certain properties, i.e. inhibition of penetration of external moisture, adapted to withstand high and low temperature, adhered to electrodes upon application of heat and pressure, reduced bond strength between layers, high formability etc. Further, it uses a separate layer of an aluminium foil. The aluminium foil layer is actually inserted between various layers during preparation. Thus, the film prepared provides different properties and has a completely different structure. At no point can it be said to make the claims of the subject application obvious. A person skilled in the art looking for better films for packaging food would not be motivated by the pouch proposed in Exhibit 1. Exhibit 4 discloses a tray for packaging solid, liquid or pastry products. It comprises a rigid tray, an outer supporting layer of amorphous polyester, an intermediate layer of adhesive and inner layer of polyethelyne. The package has an impermeable tight pouch which receives the food defined by a weldabale layer of the tray, weldabale layer forming the cover and weldable bead. The structure of the package proposed by US'726 is to provide a simple package for preserving food. In effect, the package is designed to cover foodstuff to prevent them from perishing. The product disclosed does not carry any metallization in any of the layers. Even if Exhibit 1 and 4 are read together as suggested by the Opponent, the skilled person would not find any linkage between the two and no motivation to arrive at the film as claimed by the subject application.
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The averments in paras 6.2 and 6.3 are wrong, misleading and denied. First of all no person in the packaging industry, especially in the food packaging industry would combine Exhibit 1 and 2. Assuming that such an combination is attempted as suggested by the Opponent, the resultant film may not be workable in the first place due to incompatability of the polymers and the aluminium foil. It is denied that all the essential features of the subject application are taught by Exhibit 2. As stated in the foregoing paragraphs, Exhibit 2 teaches metallization on the outer layer which is common and employed in the art, whereas the film of the subject application employs cast polypropylene in the sealant layer, which not only acts as a barrier preventing penetration of moisture and air but also as a sealant enabling joining of the two sides of the pouch. In view of the above, the film of Exhibit 1 and 2 cannot be combined to demonstrate lack of inventive step in the claims of the subject application.
The contents of paras 6.4 to 6.7 are wrong, incorrect, misleading and hereby denied. Exhibit 3 discloses an elastomer molded product containing liquid crystal polymer having improved gas barrier properties. In other words, the patent relates to products such as balloons, tubes, tyres etc., which have a completely different film makeup and construction. The patent proposes that liquid crystal polymer flakes may be dispersed in the elastomer. It also proposes that a film made of liquid crystal polymer can be laminated on a surface of an elastomer by heat pressing or through an adhesive. It is not even remotely related to films used in packaging food, especially in the snack food industry. The Opponent has chosen to deliberately misconstrue the patents to confuse the Learned Controller and develop a basis for a non‐existent representation. By no stretch of an imagination can the teachings of Exhibit 1 and 3 be combined by those in the packaging industry. Further, combination of Exhibit 2 does not add any material value. It is submitted that the film prepared out of such a combination would be unworkable due to incompatability of the polymers. Further, none of the patents teach the use of cast polypropylene as a sealant or barrier layer. Hence, Exhibit 1 to 3 in combination does not render the claimed film of the subject application obvious. The contents of paras 6.9 to 6.11 are wrong, misleading and denied. As stated in the foregoing paragraphs, Exhibit 4 teaches a tray for packing perishable products, i.e. food, whereas the film as claimed by the subject application is for packaging of snack food. The arrangement of the layers and the properties sought to be achieved are completely different as compared to that of Exhibit 1 to 4. None of the documents teach preparation of the film with the layers arranged
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in the manner claimed and none of them provide the properties and advantages attained by the film of the subject application. As such Exhibit 1 to 4 do not render the claims of the subject application obvious.
(G.3.3) DECISION FOR INVENTIVE STEP: The prior art citations presented as Exhibit 1 to 4 do not independently in toto anticipate the impugned invention. Now the question is whether there is any possibility of combination of any of these documents which are reasonably relevant to motivate a person skilled in the art with an expectation of success to arrive at the present invention without any need of doing any experimentation while working to find out the solution to the problem, if the answer is yes, the invention under question will be obvious in view of prior art and will not have an Inventive step. The Exhibit 1 though relating to the packaging of batteries but is solving the problem of penetration of external moisture, oxygen, effects of temperature etc. which is quite similar to the instant invention. Exhibit 1 discloses a laminated structure with layers outer, barrier, intermediate, and innermost layer. Whereas the laminate structure of the present invention consists of outermost, core, metallized cast propylene (barrier) layer. The instant application appears to have changed the order of barrier layer and the barrier layer has been metallized from inside using plasma atmosphere. The polymers used by the present invention are same as is used in the Exhibit 2 . Exhibit 2 also teaches about barrier layer which is metallized but it is outer layer instead of the inner layer. Exhibit 2 also teaches use of core layer as a self adhesive layer which is made up of polyethylene. Exhibit 2 teaches the various methods of metallization of the barrier layers. Metallization with plasma atmosphere have been said to be a routine exercise of the person skilled in the art and the same has not been contradicted by the applicants during the arguments.
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Exhibit 3 discloses multilayer casing film comprising atleast three layers including two polyamides layers and an adhesive polyolefin layer disposed between the polyamide layers. It is observed that the Exhibit 1,2,and 3 combidely provides the sufficient teachings to a person skilled in the art to motivate with a reasonable expectation of success to arrive at the conclusion of and result of the present invention. The substances used in the various layers, the thickness of each layer, use of core layer as self adhesive layer, the metallization process, the extrusion process for joining the layers, the kind and number of layers all these things have been disclosed in the Exhibit 1 to 3. The only variation visible is the sequence of the layers and the method of metallization , these slight variations does not add any technical feature and is a regular routine exercise of the Scientists and artisans involved in the technology. No data has been provided in the specification to substantiate that said changes have developed some unexpected results. Therefore, in view of the disclosure in Exhibit 1 to 3 the invention as claimed in Claims 1 to 10 is not inventive as does not involve any Inventive Step.
(G.4) Discussion about the Prior public use / Prior knowledge (G.4.1)The arguments of the opponent are as under: 7.1 The cited documents viz. Exhibit 1 and Exhibit 4 has been in public domain much prior to the date of the application under opposition and therefore forms the subject matter of prior public knowledge. It is stated that the process of the alleged invention has been used in India and elsewhere and therefore the ground of prior public use / prior public knowledge is established beyond doubt.
(G.4.2)The arguments of the applicant are as under: The contentions of opponents are wrong, misleading and denied. As stated in the foregoing paragraphs, the disclosure of Exhibit 1 to 4 relate to different field and such public knowledge does not affect the claims of the subject application.
(G.4.3) DECISION: I hereby conclude that since the invention was not available in toto in the public domain ( as is clear from the discussion mentioned above) therefore this ground of
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the opponents does not succeed. The opponents also failed to provide any proof or any evidence for showing existence of the invention in the public domain as prior public knowledge or was being used prior to the priority date of the instant application. Therefore this ground of the opponents fails.
(G.5 )Discussion about the “Claims not invention as per Section 2(l)(ja)” (G.5.1)The arguments of the opponent are as under: The claimed invention falls under the mischief of Section 2 (1) (ja) being devoid of novelty and inventive step as according to definition of inventive step the invention should be a technical advancement over the prior art or it should show economical significance or both and it should not be obvious to a person skilled in art. For the sake of brevity all the pleadings are not repeated but incorporated herein by reference.
(G.5.2)The arguments of the applicant are as under:
The contents of para 8.1 are wrong and denied. It is submitted that the claims of the subject application do represent a technical advance over the prior art. The film as claimed is not obvious and is novel and inventive. For the sake of brevity, all the averments made in the foregoing paragraphs are reiterated and not repeated.
(G.5.3)Discussion about the “not invention as per Section 2(1 )(l)” (G.5.4)The arguments of the opponent are as under: The claimed invention falls under the mischief of Section 2(1 )(l) being devoid of new invention as according to the definition "new invention" means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e., the subject matter has not fallen in public domain or that it does not form part of the states of art. Therefore the invention claimed by the applicant is not a new invention as it is anticipated by publication in Exhibit 1 and Exhibit 2.
(G.5.5)The arguments of the applicant are as under:
The contention opponent are wrong and denied. It is submitted that the subject matter
as claimed has not fall in the public domain and as such the claims are not anticipated by any of the publications or Exhibit 1 or 2.
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(G.5.6)Discussion about the “invention not patentable as per
Section 3(f)” (G.5.7)The arguments of the opponent are as under: The claimed invention falls under the mischief of Section 3 (f) which clearly states that the mere arrangement and rearrangement or duplication of features of known devices, each functioning independently of one another in a known way is not a patentable invention. It should be noted that page 4, lines 19 28 of Exhibit 1 discloses a laminated structure comprising an outermost layer, a barrier layer, an intermediate layer and an innermost layer laminated in that order whereas in the subject application the laminate film has following order: Outer layer/core layer/Metallized cast polypropylene. Subject application has different order of polymers used in laminates. But all the essential polymers of the subject application are anticipated in view of Exhibit 1 and Exhibit 2. The applicant has only interchanged the position of the barrier layer Exhibit 1 which is a mere rearrangement which does not give any technical character to the invention. All the advantages asserted by the applicant are given the films of Exhibit 1. Moreover, such a inter changeability is within the knowledge of the skilled artisan and therefore lacks inventive faculty. Therefore, the invention claimed by the applicant is a result of the mere rearrangement of the known polymers of the known film laminate and should be rejected on the ground of Section 3(f).
(G5.8)The arguments of the applicant are as under: The contention of the opponent are wrong and denied. It is submitted that the applicant has not merely interchanged the layers. The film as claimed is not a mere arrangement or rearrangement of known devices. The film has been specifically designed to provide improved barrier properties, to act as a sealant and to cut down the manufacturing cost. Only a combination of the layers of the film provides such a property. It is not achieved by random combination of polymers. The film as claimed by the subject application is novel and inventive and does not fall within the mischief of Section 3(f).
(G.5.9) DECISION: I hereby conclude that the claimed invention does not have any inventive step therefore is not Patentable U/s 2[1(j)] of the Patents Act. The ground of non Patentability is not required to be
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examined if the subject matter is not Patentable U/S 2[1(j)]. The Section 3 defines “ Invention Not Patentablte”therefore once there is no invention further analysis is not required. However still I opine that the invention as discussed above involves the arrangement and rearrangement of the already known kind of layers as disclosed in the prior art represented as Exhibit 1 to 3 without producing any new interactive effects of the layers and also no effects have been shown to be developed. Therefore the subject matter was also not patentable U/S 3 (f).
(G.6.)Discussion about the “information not given under section 8 ” (G.6.1)The arguments of the opponent are as under: The applicant is required to provide all the information regarding the prosecution of his equivalent applications till the grant of his Indian application to the Controller in writing from time to time and also within the prescribed time, which the applicant has failed to do. Thus the applicant has failed to furnish statement and undertaking under section 8, therefore the applicant has failed to comply with the requirements of the section 8 of the act and the opponent demands rejection on this ground also.
(G.6.2)The arguments of the applicant are as under: The contents of paras 11.1 and 11.2 are denied. This applicant never filed any foreign
applications and hence there was no question of Section 8 compliance. ( G.6.3) Decision : I agree with the applicants therefore this formal ground raised by the opponent is baseless in absence of the proper evidence in this regard.
(H)Conclusion: Therefore I conclude that teachings of Exhibit 1 to 3 are sufficient for a skilled person in the art to arrive at the invention as claimed in the impugned specification and therefore the invention is obvious to the skilled person in the art and does not involve an Inventive Step, therefore the claims 1 to 10 of the impugned application are not Patentable U/S 2[1(j)] of the Patents Act the claims 1 to 4 and 9 for the laminates are also not Patentable U/S 3 (f) of the Patents Act 1970
(I) In the light of the aforesaid discussion I refuse to grant the patent on the application no 811/del/2003. No orders for the cost. Dated 30/07/2009
Sd/‐
(HARDEV KARAR) ASSTT. CONTROLLER OF PATENTS & DESIGNS
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