Israel patent application opposed on grounds of novelty and inventiveness – without citing prior art.

Back in 2001, Michael Cohen, an inventor from Kfar Ezion filed a patent application for an armor plate for stopping projectiles.

The claimed invention is defined as follows:

A composite, laminated armor panel for absorbing and dissipating kinetic energy from projectiles, said panel comprising:
a) a first outwardly-positioned layer made of a hard material selected from a ceramic material and a metal having a Rockwell-C hardness of at least 27;
b) an intermediate layer softer than said first layer, made of a material selected from aluminium and metals having a Rockwell-C hardness of less than 27; and
c) a third backing layer of tough woven textile material;
characterised in that said three layers are laminated together and wrapped on at least four sides in a further tough woven textile material which is bonded to the outer surface of said composite, laminated armor panel.

In the meantime, he has obtained patents for his invention in the United States (US 06,497,966), European (EP1352207) and Australian AU 2223998BB patents. In Israel, the application was allowed and subsequently published for opposition purposes. Thus examiners in 4 jurisdictions were persuaded that the invention was patentable.

Israel Military Industries (IMI) opposed the patent application and Noach Shalev Shmulovich, the Deputy Commissioner of Patents has now ruled that the patent is, indeed, invalid as lacking inventive step, and awarded costs of NIS 30,000 to IMI.

That the Israel Patent Office independently concludes that a patent is invalid, despite it issuing elsewhere is perfectly reasonable. What is problematic however, is that the six page ruling concludes a lack of novelty and inventive step whilst failing to cite a single prior art document. Furthermore, the decision notes explicitly that no such highly relevant documents were furnished.

There was apparently a large volume of evidence submitted by both parties that describes collaboration between them. The issue of who was the true inventor was, however, considered moot by the decision which ruled the patent lacking inventive step.

Normative practice dictates that novelty and inventive step (non-obviousness) should be considered in light of the prior art, which generally takes the form of published references. There is no problem for an expert witness to produce lab-books or specimens indicating what his group or others were doing at the time the application was filed. In this instance that did not happen, which precludes debate on the correctness of the decision.

Furthermore, the decision implies that where a new combination of elements exists that is based on well-established principles, it is not merely enough to show clear advantage over the prior art, to establish a case of patentability, putting the onus on the examiner or the opponent to produce prior art that is novelty destroying or sufficiently close to render the invention obvious. This raised the bar for patentability over and beyond that previously accepted. It encourages examiners to reject claims based on gut feelings, without producing prior art.  

The published decision indicates a lack of understanding regarding the relationship between hardness and brittleness of a material, the root causes of ductility and the differences between the methods of static energy absorption used in indentation hardness testing, and the dynamic energy absorption involved in stopping a projectile. 

That as may be, Justice Shamgar, in Appeal 345/87 Hughes Aircraft v. State of Israel 44(5) 45, gave guidelines that the lower courts and the patent office should follow when ascertaining novelty and inventive step. See also Annulment decision IL 123976 Yafim Gisser vs. Compucraft. This decision ignores those guidelines.  

During the opposition proceedings, Cohen claimed that his system is better for stopping multiple impacts. It is correct that were the device known, this characteristic would not render the armor patentable. However, no evidence was reported that the device was indeed known. The underlying principles may be well established, but if by combining them in a unique manner a worthwhile improvement results, that should be sufficient to provide an inventive step – just a little one – a scintilla of inventiveness.

Whereas the underlying principles are well established, it is certainly not trivial to implement them in a working system that stops bullets, certainly not multiple impact. The claimed invention includes a strike plate, a softer backing plate, at least partially wrapped by an impregnated textile under tension. That’s four materials arranged in a certain manner with structural limitations. Additional limitations to narrow the scope of the invention may be in order, but only in light of identified prior art, not principles.

Absorption of energy of impact includes crack propagation in the ceramic, ductile (plastic deformation) in the backing plate, delamination, fiber pullout and crack deflection in the fiber-resin wrap, and a host of other mechanisms. It is very difficult to predict up front how such a system would behave in response to an impact.

Inventive step must be considered in light of prior art. One useful feature of opposition proceedings is that persons familiar with a field can produce prior art that Examiners may have missed or misinterpreted. It seems elementary that without evidence to the contrary, a patent claim should be considered just that – patentable.

Based on the decision as published, if Cohen were my client, I’d urge him to appeal to the Courts.

Note – in this case, I have a fairly detailed understanding of the technology. In addition to my qualification as a patent attorney, I am also a materials scientist. I started a PhD in polymer matrix polymer fiber composites in the Casali Institute of the Hebrew University (Applied Chemistry – under Professor Gad Marom). Due to lack of project funding, I switched to Applied Physics and ended up obtaining a PhD in analysis of hard coatings that was a spin-off of a project at Soreq -NRC that attempted to develop hard coatings for various applications. Despite being somewhat a “person of the art” and certainly well able to put myself in the shoes of persons of the art having shared lab space with graduate students developing armor stopping composites and having clients in the field – I am unable to decide whether the application is novel or inventive without evidence.

Categories: Intellectual Property, IPO, Israel, Israel IP, Israel Patent, Israel Patent Office, Israel Patent Office Rulings, obviousness, Opinion, Patents

1 reply

  1. Based on paragraphs 29 and 30 of the decision, my understanding is that the Deputy Commissioner based his decision in part at least on Applicant’s Admitted Prior Art – so in theory at least the decision did have at least one Prior Art reference, albeit a rather oblique one.

    Having said that, even without your science background I find the logic of the decision somewhat odd. Ever since taking the tour at Latrun several years ago I have been aware that a primary goal of armor development continues to be extending armor efficiency to include repetitive hits. But according to the Deputy Commisioner’s decision, it appears that everyone in the field has been wasting their time because either the existing art already had it covered without anyone realizing it, or the solution has been obvious for years.

    Without access to the transcripts I can only guess, but I suspect that the decision here is a reflection of the relative efficacy of the witnesses that were heard in the case. One witness clearly impressed the Deputy Commissioner; one clearly did not.

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