Monday, September 12, 2011

When’s an ear tag not just an ear tag?

We have a herd of two cows, so it’s not difficult to keep track of them.  Especially when they are different colours.  However, there are more cattle in New Zealand than people.  So other New Zealanders must have larger herds.  How do you tell them apart in the paddock?

In Surge Miyawaki Co Ltd. v Livestock Improvement Corporation Limited [2004] NZIPOPAT 18 (13 September 2004) we see an ultimately unsuccessful opposition to a patent application for an ear tagging system for stock.

The patent application

Surge Miyawaki filed New Zealand patent application 506319 as a national phase entry application out of PCT/JP99/06927 claiming priority from two Japanese applications filed on 9 December 1998 and 18 February 1999 respectively.

IPONZ published the accepted application for opposition purposes on 21 December 2001.  The opponent Livestock Improvement filed a Notice of Opposition followed by a couple of amended Notices, then a Statement of Case followed by an amended Statement.

The applicant filed a Counterstatement and a supplementary Counterstatement.  With both documents the applicant proposed unconditional amendments to the patent specification and claims.

There were 16 claims going in to the hearing.  The Hearing Officer accepted the applicant’s proposed amendments over the objections of the opponent.  Amended claim 1, for example, read:
1. An ear tag, containing an Animal Registration Number consisting of numerals, to be used by attaching it to an ear of an animal in order to identify an individual animal, characterized in that:
said Animal Registration Number having at least seven digits is printed, at least on one of the sides of said ear tag, and further,
some part of said Animal Registration number is enlarged and printed on the same or a different side of said ear tag where said Animal Registration Number is printed, in accordance with a request from an individual farm, or in accordance with the necessary numbers for an individual farm for identifying each animal on the farm, by using a minimum number of digits of said Animal Registration Number, and said Animal Registration Number is a selected number for the individual farm that neither includes a specified farm number, participant code or a country or a rural district code at the beginning of the Animal Registration Number nor includes the year number or an abbreviation thereof.
Prior publication

None of the four documents cited by the opponent were held to prior publish the claims.

Prior use

The opponent was unable to establish prior use based on evidence from two dairy farmer witnesses as well as its own evidence.


The Hearing Officer considered obviousness with regard to prior publication and prior use.

He followed the usual test for obviousness set out by Oliver LJ in Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59.  This involves the steps of:

  1. considering the inventive concept of the invention as claimed,
  2. considering the cited published matter or prior use,
  3. identifying the differences between the cited published matter or prior use and the invention as claimed, and
  4. asking whether these differences would have been obvious to a “normally skilled but unimaginative addressee” in the art of the design and use of animal registration ear tags.

The inventive concept

The Hearing Officer identified the inventive concept as:
“an ear tag and a method of printing and using the ear tag … wherein [Animal Registration Numbers] ARNs can be issued within a predetermined number of digits substantially without restriction, and by the use of such ear tags desired individual identification numbers suitable for readily and individually identifying animals in respective farms can be enlargedly printed as requested by individual farms.”
Common general knowledge

The Hearing Officer accepted three of the opponent’s witnesses as representative of the “normally skilled but unimaginative addressee”.

The common general knowledge included:
“the use of animal identification systems which include only numerals but which incorporate codes to specify particular information such as the year of the animal’s birth and the particular herd, farm, or geographical location.  It is also known to enlarge a portion of the identification number on an ear tag for easy identification of particular animals in a herd.”
Differences between cited published matter and the invention as claimed

The Hearing Officer observed that:
“none of the cited documents describe the use of a sequential numbering system, free of specific codes, together with the selection, enlarging, and printing of digits already present in an allocated ARN for use for easy identification of animals on individual farms.”
Differences between the prior use and the invention as claimed

One of the opponent’s own witnesses, a dairy farmer, stated that:
“[i]f … it had been proposed to change the ear tag numbering system used in New Zealand to a straight numbering system (ie each animal in the country is allocated a number that does not have any relation to the farm or animal to which it is allocated), I would have objected strongly to changing … to a straight numbering system”.
The Hearing Officer, not surprisingly, observed that “the stated resistance of these farmers to the use of a straight numbering system would tend to teach away from the development and introduction of such a system”.

Not an invention

The opponent argued that the invention claimed was not a “manner of manufacture”.  The claims related “to the display, and subsequent utilisation by farmers, of information on ear tags and that it is well settled that novelty in an alleged invention cannot reside solely in intellectual content”.

The Hearing Officer referred to Nelson’s Application [1980] RPC 173 in which an instructional message stated in three different ways on a medium was not a new manner of manufacture.  It was held in that case that:
“The invention consisted solely of matter having intellectual, literary or artistic connotation and accordingly was not a manner of new manufacture suitable for grant of a patent…”.
Also referred to was Fishburn’s Application (1940) 57 RPC 245 involving a ticket “wherein the information necessary for the identification thereof is printed at least in duplicate and so arranged as to permit the ticket to be divided either transversely or longitudinally into two disconnected sections each bearing at least the said necessary information”.  It was held there that:
“The rule [relating to printed sheets] is a valuable general rule, but it is subject to exceptions, and in my view one exception is a case in which the real object of a particular arrangement of the words printed upon the sheet is to serve a mechanical purpose.”
The Hearing Officer observed that the allocation of numbers to individual animals cannot be other than a purely intellectual process.  Furthermore, the enlargement of a part of the number in a manner that highlights a portion of the number to ensure that it is easily visible to the farmer does not serve a “mechanical” purpose.

Further steps

The Hearing Officer refused the application on the sole ground that it was not an invention.  He allowed a further period for the applicant to propose amendments to overcome his finding, even though he found “it difficult to see how the case can be saved”.

The case was eventually allowed but that’s the subject of the next blog post.

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