1414 Degrees Limited v Climate Change Technologies Pty Ltd
[2022] APO 38
•8 June 2022
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
1414 Degrees Limited v Climate Change Technologies Pty Ltd [2022] APO 38
Patent Application: 2018262109
Title:Thermal energy storage apparatus
Patent Applicant: Climate Change Technologies Pty Ltd
Opponent:1414 Degrees Limited
Delegate:Dr S. J. Smith
Decision Date: 8 June 2022
Hearing Date: Written submissions filed on 26 August 2021
Catchwords: PATENTS – opposition under section 104 – allowability under section 102(1) considered – whether the amendment results in new matter being claimed or disclosed – amendment allowable – costs awarded
Representation: Counsel for the applicant: Peter Creighton-Selvay
Patent attorney for the applicant: Cooper IP Pty Ltd
Patent attorney for the opponent: Madderns
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2018262109
Title:Thermal energy storage apparatus
Patent Applicant: Climate Change Technologies Pty Ltd
Date of Decision: 8 June 2022
DECISION
The opposition is unsuccessful.
The application is currently in a state of lapse due to failure to pay a continuation fee. Subject to the payment of the outstanding continuation fee, I allow the amendment.
I award costs according to Schedule 8 against 1414 Degrees Limited.
REASONS FOR DECISION
Background
Patent application 2018262109 (the application) in the name of Climate Change Technologies Pty Ltd (the applicant) was filed on 3 May 2018 under the provisions of the Patent Cooperation Treaty. The application claims priority from Australian provisional application 2017901612 filed on 3 May 2017. The application was advertised as accepted on 19 September 2019.
A notice of opposition to the grant of a patent was filed by 1414 Degrees Limited (the opponent) on 19 December 2019. A statement of grounds and particulars was filed on 19 March 2020 identifying lack of compliance with sections 40(2) and 40(3) as grounds of opposition. Evidence in support was filed on 19 June 2020, evidence in answer was filed on 21 December 2020 and evidence in reply was filed on 23 February 2021.
The applicant filed a request to amend the specification on 16 October 2020. Leave to amend was granted on 1 March 2021 and the amendment advertised for opposition purposes on 11 March 2021.
The opposition
The opponent filed a notice of opposition to the allowance of the amendment on 11 May 2021, and a statement of grounds and particulars on 11 June 2021. Two grounds of opposition to the allowance of the amendment are identified in the statement of grounds and particulars: lack of compliance with section 102(1) and lack of compliance with section 102(2). Only the first of these was pressed.
The opponent’s evidence in this opposition consists of a declaration by Zhao Feng Tian dated 19 June 2020 (Tian). Tian was originally filed as evidence in support in the substantive opposition and forms evidence in support for this opposition pursuant to a direction made on 6 July 2021. The applicant did not file evidence in this opposition.
The opposition was heard by way of written submissions which were completed on 26 August 2021.
The law
Amendments to the Patents Act 1990 (the Act) brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 apply to the application as it was filed after its commencement.
The standard of proof that applies to section 104 opposition proceedings has not been explicitly stated in the Act. However, I agree with the reasoning of the delegate in Cytec Industries Inc. v Nalco Company that “it is a logical inference that the standard required is the balance of probabilities … and it is the opponent who carries the onus of proof.”[1]
[1] [2018] APO 4 at [18].
Pursuant to section 104(5), the Commissioner must not allow an amendment that is not allowable under section 102. Section 102(1) of the Act as it applies to the present application is as follows:
(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together:
(a)the complete specification as filed;
(b)other prescribed documents (if any).
Regulation 10.2A prescribes the documents for section 102(1)(b); it is not necessary to consider these documents for the purposes of this decision.
The Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 makes clear that section 102 in its present form is intended to prevent the addition of new matter to the description:
“The item introduces a provision preventing amendment of a complete patent specification after filing to add new matter that would go beyond the disclosure contained in the specification at its filing date. An applicant would not be able to amend the specification to add any material that the hypothetical skilled person could not directly derive by reading the information in the specification as filed.”[2]
[2] At page 61.
This provision was considered in Commonwealth Scientific and Industrial Research Organisation v BASF Plant Science GmbH,[3] with Beach J concluding that the approach to be taken is aligned with that in the UK and Europe.[4]
[3] [2020] FCA 328; 151 IPR 181 (‘CSIRO v BASF’).
[4] CSIRO v BASF at [185].
Beach J considered a number of UK authorities relating to added matter which he saw “no good reason not to follow … to the extent of applying analogous concepts to the construction of the present form of s 102(1).”[5] Among these was Richardson-Vicks Inc’s Patent[6] in which Jacob J posed the test of added matter as “whether a skilled man would, upon looking at the amended specification, learn anything about the invention which he could not learn from the unamended specification.”[7]
[5] CSIRO v BASF at [214].
[6] [1995] RPC 568.
[7] [1995] RPC 568 at 576.
Having surveyed UK authorities concerning amendments, Beach J made the following observations with respect to section 102(1):
(i) “the test is a strict one”;[8]
(ii) “subject matter will be impermissibly added unless the matter is clearly and unambiguously disclosed in the application as filed”;[9]
(iii) “the required disclosure may be express or implied … a patent applicant is not permitted to add by amendment matter simply because it would have been obvious to the skilled person”;[10] and
(iv) “context is important. A patent applicant cannot extract features disclosed in one context and introduce them into a specification stripped of that context. So, the concept of intermediate generalisation as discussed in the UK authorities applies to s 102(1) in its construction and application.”[11]
[8] CSIRO v BASF at [215].
[9] CSIRO v BASF at [216].
[10] CSIRO v BASF at [217].
[11] CSIRO v BASF at [218].
The specification
The specification relates to a thermal energy storage apparatus. After a discussion of the deficiencies in prior art apparatus, the specification states:
“According to the present invention there is provided a thermal energy storage apparatus, including:
a block of a heat-absorbing material, the block defining at least one receptacle and being a contiguous block of compressed sintered graphite; and
a phase change material stored in the or each receptacle, the phase change material being one that expands as it cools,wherein separation of side walls of the or each receptacle progressively increases as they extend upwardly from the base, whereby as the phase change material solidifies and expands it is urged upwardly to reduce pressure applied to the heat-absorbing material.”[12][12] Specification page 3, lines 12-20.
Accepted claim 1 defines a thermal energy storage apparatus in the same terms.
A preferred phase change material is silicon metalloid.[13] Notably, it is identified in the background section of the specification that a disadvantage associated with the use of this material is absorption of silicon in its liquid form by graphite.[14]
[13] Specification page 4, line 5.
[14] Specification page 2, lines 5-9.
It is explained that what is meant by sintered graphite being “compressed” is that the sintered graphite is “compressed into shape” and, as a result, compressed sintered graphite is denser than sintered graphite.[15] The use of a contiguous block of compressed sintered graphite is said to provide many advantages. These are identified as i) liquid silicon is not absorbed by the compressed sintered graphite, which allows containment tubes to be omitted, and ii) when a contiguous block of graphite is made and compressed, a “charged” block is obtained (that is, graphite atoms align in the direction of an applied current), allowing increased heat transfer and efficiency.[16]
[15] Specification page 8, lines 18-21.
[16] Specification page 8, lines 22-27.
A preferred embodiment of the invention is shown in Figure 1 and described in the description:
“The thermal energy storage apparatus 10 includes a block 12 of a heat-absorbing material. …the block 12 defines at least one receptacle 14 in which phase change material can be received. … The block 12 is a contiguous block of compressed sintered graphite which is machinable.”[17]
[17] Specification page 5, lines 10-15.
The configuration of the receptacle or receptacles is explained:
“The described configuration of the walls of the receptacles 14 provides that as the phase change material cools and expands it is urged upwardly to disperse pressure and reduce the amount of pressure applied to the block 12, thereby reducing cracking or fissuring of the block 12 over thermal cycling.
By the phase change material being ‘urged upwardly’ is meant that as the phase change material solidifies it expands towards the mouth of the receptacle as a result of the counter pressure offered by the surface of the receptacle. In other words, the present invention provides a block of a heat-absorbing material, the block (i) defining at least one receptacle having a mouth and a base, and (ii) being a contiguous block of compressed sintered graphite; and a phase change material stored in the or each receptacle, the phase change material being one that expands as it cools, wherein separation of side walls of the or each receptacle progressively increases as they extend upwardly from the base to the mouth of the receptacle, whereby as the phase change material solidifies it expands towards the mouth of the receptacle to reduce pressure applied to the heat-absorbing material.”[18]
[18] Specification page 6, lines 1-14.
The specification goes on to explain the operation of the apparatus:
“In operation of the thermal energy storage apparatus 10, electric current is supplied to the electric heating elements 20 by an external energy source. For example, the current may be a DC current from a photovoltaic array or an AC current from a wind turbine. As current passes through the heating elements 20, resistive heating of the surrounding graphite results.”[19]
“Heat is then transported to the phase change material of the heat storage apparatus via block 12. The silicon metalloid (or eutectic silicon composition, for example) absorbs sensible heat until its temperature reaches melting temperatures, at which point further heat input to the silicon metalloid is stored as latent heat of fusion. When the external energy source (solar or wind) is no longer available, or drops below the level required to maintain the core temperature of the phase change material above the melting temperature, the silicon metalloid solidifies. The stored heat is then released to the surrounding graphite.”[20]
“In order to extract heat to perform mechanical and/or electrical work, the apparatus 10 can be coupled to a Carnot cycle heat engine, such as a Stirling engine or a Brayton engine, or to turbine machinery. In the illustrated example, two Stirling engines 22 are coupled to the block 12 of the energy storage apparatus 10, such that an end of each Stirling engine can receive heat through apertures 17 which are formed in the block 12. When the phase-change material (located within the receptacles) stores heat, a temperature gradient forms between the core of the phase change material (hot side) and the Stirling engine (cold side), resulting in heat being transferred from the phase change material to each Stirling engine through the block 12 of compressed sintered graphite.”[21]
[19] Specification page 9, line 12-15.
[20] Specification page 9, line 28 – page 10, line 3.
[21] Specification page 10, lines 16-24.
The amendment
This matter is somewhat unusual. The amendment comprises deletion of a sentence – “The entire contents of this disclosure are incorporated by reference herein” – from the part of the description labelled “Background of the Invention”. To properly understand the effect of this amendment, it is helpful to consider the context in which it is made, as shown below:
“Silicon metalloid material is characterised in part by the property that on undergoing a phase change from liquid to solid, there is an expansion of the material rather than contraction as would be expected for most other materials.
The thermal energy stored within the silicon metalloid material could be converted into electrical and/or mechanical action through electrical devices such as a Stirling engine or Turbine and so forth, thus providing a source of power at times when solar energy was not available.
A disadvantage of silicon metalloid material is that it requires significant care and understanding of its physical transformation during its expansion and contraction as it absorbs and releases thermal energy during phase changes. The expansion and contraction of the silicon metalloid material creates significant build-up of pressure on an enclosure in which it is placed. For example, if silicon metalloid material in the form of ingots is placed directly in contact with a refractory heat-absorbing material such as graphite, the metalloid would be absorbed by the graphite on undergoing a phase change to its liquid form. If the silicon metalloid is stored in a separate enclosure before being inserted into the refractory material, the continual pressure build-up and collapse of the silicon metalloid ingots as they undergo phase changes can result in fissuring of the enclosure.
If the ingots are stored within separate enclosures there would also be a need for the enclosure of the silicon metalloid ingots to efficiently transport heat, released during phase change of the silicon metalloid material, to the surrounding graphite.
International Patent Application no. PCT/AU2010/001035 (published as WO 2011/017767) sought to address these problems by providing an enclosure in the form of an elongate canister formed of ceramics, the elongate canister including a pressure dispersion punt in its base to disperse and control expansion, and a series of grooves in one of its ends, the series of grooves acting as a heat sink. In the thermal energy storage apparatus described in PCT/AU2010/001035, a series of such canisters are used to store silicon metalloid, and are packed in interleaved arrangement with a series of sintered graphite rods. It has been found, though, that in such arrangement the canisters are prone to cracking, particularly in the region of the grooves.
Also, the thermal energy storage apparatus described in PCT/AU2010/001035 suffers from performance issues due to poor heat transfer from the heat absorbing material into the phase change material. This particularly arises due to the graphite heat absorption material being in the form of bundled rods.
This problem is addressed in International Patent Application no. PCT/AU2012/000938 (published as WO2013/020176), also to the present applicant.
The entire contents of this disclosure are incorporated by reference herein.In this regard, it was recognised that by providing a block of heat-absorbing material in the form of a contiguous block of compressed material in the form of sintered graphite which is machinable, greater heat transfer from the block to the heat storage elements can be achieved. Although the performance of the thermal energy storage apparatus is greatly increased, containment tubes are still used, thereby reducing the efficiency of the apparatus, and cracking of the heat absorbing material can still be a problem. It is desirable to remove the containment tubes, though this leaves the block prone to cracking.It would be desirable to overcome or alleviate the above mentioned difficulties, or at least provide a useful alternative.”[22]
[22] Specification page 1, line 26 – page 3, line 9.
WO 2013/020176 (WO ‘176) itself incorporates by reference the contents of WO 2011/017767 (WO ‘767).[23] I note that there is no apparent dispute between the parties that the effect of the deleted reference is to incorporate the content of these documents, and I agree that the explicit cross reference has that effect.[24]
[23] Exhibit ZFT-5, WO ‘176 at page 2, lines 20-21.
[24] See Multigate Medical Devices Pty Ltd v B Braun Melsungen AG [2016] FCAFC 21; 117 IPR 1 at [231].
WO ‘767 is annexed to Tian as exhibit ZFT-6. The background section WO ‘767 includes the following passage, with my emphasis:
“The expansion and contraction of the silicon metalloid material creates significant build-up of pressure on the enclosure or confinement in which it is placed inside the energy storage apparatus, which functions as supplying a continual thermal source to electrical devices…
The person skilled in the art will immediately appreciate the significant deficiencies in the means in which the silicon metalloid material is housed inside the thermal energy storage apparatus described in Provisional Patent Application No. 2008903800.
In one embodiment described in the document, it is taught that the silicon metalloid material would be ingots, which would be introduced into a series of longitudinal cavities that have been shaped into the pressurised moulded block of sintered graphite.
As the person skilled in the art would know such an arrangement would result in the metalloid being absorbed by the graphite when the phase change occurred.
In this embodiment the graphite would also act as an energy absorbing material, which would receive initial thermal energy input from the solar source and then distribute this into the cavities containing the silicon metalloid ingots.
The silicon metalloid ingots would then accept this transfer of thermal energy, under the change of state, undergo the change of state, and therefore maintain what could best be described as a storage or latent supply of thermal energy.
While the provisional patent application filed under Patent No. 2008903800 discusses the fact that the cavities contain the silicon metalloid ingots will allow for thermal expansion, from a practical point of view, the continual build-up and then collapsing of the silicon metalloid ingots as they move between the respective states of solidifying and liquefying to provide or store the necessary thermal energy transfer, has seen these kinds of cavities and also the supporting moulded sintered graphite about the silicon metalloid ingots crack and fissure in structure.”[25]
[25] Exhibit ZFT-6, WO ‘767 at pages 3, line 23 – page 4, line 24.
Accordingly, the effect of the amendment includes, relevantly, exclusion from incorporation in the present specification the disclosure in WO ‘767 that the skilled person would know that metalloid introduced as ingots into longitudinal cavities in a pressurised moulded block of sintered graphite would be absorbed by the graphite when a phase change occurred.
The opponent’s submissions
The opponent submitted that the present situation is unusual in that the applicant seeks to remove, rather than add, material in an attempt to resolve a section 40 deficiency, but that the reason for doing so is clear in view of the section 40(2)(a) challenge raised in the opponent’s substantive opposition.[26]
[26] Opponent’s submissions dated 27 July 2021 at [32]-[33].
The opponent noted[27] Beach J’s observation in CSIRO v BASF that “what the explanatory memorandum does emphasise is that the ‘full description’ requirement in s 40(2)(a) should not be able to be satisfied by amending the complete specification as filed”[28] and conclusion that “this suggests that there may be impermissible added matter if the amendment disclosed new information that was material to the implementation of the invention, that is, material to satisfying the requirements of s 40(2)(a).”[29]
[27] Opponent’s submissions dated 27 July 2021 at [35]-[36].
[28] CSIRO v BASF at [188].
[29] CSIRO v BASF at [189].
The opponent referenced its argument in the substantive opposition that the application does not comply with section 40 because of the inconsistency of statements in the body of the specification concerning whether liquid silicon is absorbed by compressed sintered graphite,[30] and referred to Dr Tian’s evidence as to the relevance of the reference to earlier patent applications in the background of the present application:
[30] Opponent’s submissions dated 27 July 2021 at [37].
“Going to the earliest 767 Patent, in the ‘Background Art’ section, reference is made to an earlier thermal energy storage apparatus … based on ingots of silicon metalloid material introduced into a series of longitudinal cavities that have been shaped into a pressurised moulded block of sintered graphite. Except for describing any modification or tapering of the longitudinal cavities … this earlier described apparatus in the 767 Patent has, in my opinion, all of the features of claim 1 of the Opposed Application.
The 767 Patent notes when commenting on the deficiencies of this earlier apparatus that:
‘As the person skilled in the art would know such an arrangement would result in the metalloid being absorbed by the graphite when the phase change occurred.’ (Page 4, lines 9 to 10 of the 767 Patent)
The 767 Patent also comments that in this apparatus:
‘the continual pressure build-up and then collapsing of the silicon metalloid ingots as they move between the respective states of solidifying and liquefying to provide or store the necessary thermal energy transfer, has seen these kinds of cavities and also the supporting moulded sintered graphite about the silicon metalloid ingots crack and fissure in structure.’ (Page 4, lines 19 to 24 of the 767 Patent)
I agree with these statements as given the very high operating temperatures I would expect that the silicon metalloid in liquid form (ie, having a temperature of at least 1414°C) would not be effectively contained by the pressurised moulded block of sintered graphite and that the high pressures generated when the silicon metalloid solidifies would cause cracking.”[31]
“As such, the configuration of the thermal energy storage apparatus of the Opposed Application has reverted back to an earlier configuration, ie, where the compressed sintered graphite is used itself as a container, which was stated to be unsatisfactory and which prompted the development of the apparatus of the 767 Patent and in turn the 176 Patent which involved the use of a refractory material such as silicon carbide to contain the silicon metalloid.
In the Opposed Application, there is no reference to the compressed sintered graphite being anything other than a generic graphite material being formed by a generic sintering and moulding process with the only requirement being that it is suitably compressed to be machinable.
…
While it is true that compressed sintered graphite is denser than sintered graphite, the statement that ‘liquid silicon is not absorbed by the compressed sintered graphite’ is just an unsupported conclusion with no underpinning factual basis that contradicts earlier statements regarding how generic compressed sintered graphite would perform as a container.”[32]
[31] Tian at [34]-[36], emphasis in the opponent’s submissions dated 27 July 2021 at [41].
[32] Tian at [42]-[45].
Essentially, the opponent submitted that removing inconsistency regarding the performance characteristics of compressed sintered graphite by way of the proposed amendment results in the complete specification disclosing matter extending beyond the complete specification as filed:
“The skilled person reading the complete specification as filed would readily apprehend a contradiction or inconsistency as it relates to the performance characteristics of compressed sintered graphite (as Dr Tian did). Following the amendment, the complete specification as amended however, would now not be encumbered with, or be limited by, this contradiction as a result extending the disclosure beyond that of the specification as filed.”[33]
“this new version of the specification resulting from the proposed amendment, where there is no contradiction or inconsistency, and where in effect a selection has been made for one set of characteristics of compressed sintered graphite, vis-à-vis its capability to contain liquid silicon, over another, is plainly not matter that is clearly and unambiguously disclosed in the complete specification as filed or to put it another way is clearly not matter which the hypothetical skilled person could directly derive by reading the information in the specification as filed …”[34]
“this is not a situation where the specification contains some clear error, which the skilled person would in effect ignore, and the amendment then removes this clear discrepancy consistent with how the skilled person would have viewed the original specification. Here the material sought to be removed by the amendment is in agreement with the view of the skilled person and there is no motivation to ignore its plain teachings or to remove it from the specification as filed except in an attempt to meet the requirements of Section 40 with the Opposed Application.”[35]
“drawing on the analogy of assessing claim scope, the removal of limitations or features typically results in a broadening of claim scope. Similarly, removal of material from the body of the specification does not in of itself necessarily result in ‘narrowing’ of the disclosure, eg, the removed material may qualify how features of an invention can only be used in certain circumstances and then removal of this limiting material would result in a ‘broadening’ of the disclosure.
If this approach was to be adopted, the Opponent submits that the ‘nature of the disclosure’ would now as a result of the Proposed Amendment in effect be broadened due to the removal of the original contradiction as to the properties of compressed sintered graphite.”[36]
[33] Opponent’s submissions dated 27 July 2021 at [44]
[34] Opponent’s submissions dated 27 July 2021 at [46]
[35] Opponent’s submissions dated 27 July 2021 at [48].
[36] Opponent’s submissions dated 26 August 2021 at [16]-[17].
The Opponent emphasised that the section 102(1) test is a strict one: “subject matter will be impermissibly added unless the matter is clearly and unambiguously disclosed in the application as filed.”[37]
[37] Opponent’s submissions dated 26 August 2021 at [6], quoting CSIRO v BASF at [216].
The applicant’s submissions
The applicant pointed, with reference to the Explanatory Memorandum, to the rationale underpinning the amendment to section 102(1) being the prevention of addition of new matter. In this regard, the applicant submitted that the relevant question is whether the skilled person would learn anything about the invention they could not learn from the unamended specification.[38]
[38] Applicant’s submissions dated 18 August 2021 at [13]-[14]. I note that this approach was also adopted by the Deputy Commissioner in Dow AgroSciences LLC v Bayer Intellectual Property GmbH [2021] APO 13.
The applicant submitted that in this case, no new matter is added:
“the nature of the disclosure made by the complete specification of the Opposed Application is, irrefutably, narrowed. The nature of the disclosure is narrowed because:
(a) before the amendment, the nature of the disclosure made by the Opposed Application comprised everything stated in the complete specification as filed plus everything stated in the 176 Patent;
(b) after amendment, the nature of the disclosure made by the Opposed Application is limited to everything stated in the complete specification as filed, and does not include anything stated in the 176 Patent.”[39]
[39] Applicant’s submissions dated 18 August 2021 at [8].
The applicant further submitted that the application as filed discloses and teaches that the use of a contiguous block of compressed sintered graphite in a thermal storage apparatus provides advantages including that liquid silicon is not absorbed by the compressed sintered graphite. The deletion of reference to WO ‘176 and therefore WO ‘767, and the statement within it inconsistent with the teaching of the application, does not, in the applicant’s submission, result in a claim to, or disclosure of, “matter that extends beyond that disclosed” in the application as filed in the applicant’s submission.[40]
[40] Applicant’s submissions dated 18 August 2021 at [25].
The applicant rejected the opponent’s contention that the amendment was a non-allowable selection, stating that the application as filed “could not have been clearer in teaching that the use of a contiguous block of compressed sintered graphite was not only preferred, but an essential feature of the claimed invention.”[41]
[41] Applicant’s submissions dated 18 August 2021 at [28].
The applicant submitted that the opponent’s argument that a skilled person would not, following the amendment, be encumbered or limited by the inconsistency arising from WO ‘767, was misconceived:
“Firstly, in circumstances where the Opposed Application taught the use of a contiguous block of compressed sintered graphite, the Opposed Application could never be said to be limited by any inconsistent prior art disclosure in the 176 Patent or 767 Patent. To the contrary, the Opposed Application taught that modifications to the invention disclosed by the 176 Patent were needed because ‘It is desirable to remove the containment tubes, though this leaves the block prone to cracking’. Secondly, section 102(1) is not concerned with notions of encumberment or inconsistency. It is irrelevant, to the application of section 102(1), whether a proposed amendment removes some alleged inconsistency. The statutory question is whether by reason of the proposed amendment ‘the specification would claim or disclose matter that extends beyond that disclosed in … the complete specification as filed’. Thirdly, the Opponent has not cited, and the Applicant is not aware of, any authority that supports the proposition that an amendment, to remove an alleged inconsistency within a specification, might somehow contravene section 102(1) of the Act.”[42]
[42] Applicant’s submissions dated 18 August 2021 at [33] (with references omitted).
Consideration
I find the applicant’s submissions persuasive. The specification as filed includes the explicit and unambiguous disclosure that “compressed sintered graphite is denser than sintered graphite” and “liquid silicon is not absorbed by the compressed sintered graphite”. The description as proposed to be amended does not impermissibly add matter to the original disclosure in this regard. While I accept the opponent’s submission that deletion of subject matter can have the effect of adding matter, I am not satisfied that it does so in this circumstance. That is, the effect of the amendment is not to remove any qualifications concerning the context or features of the invention so as to broaden the disclosure. While I consider this sufficient to dispose of the question at hand, I will address the opponent’s submissions concerning the removal of inconsistency and the purpose of the amendment.
It is not open to me to make any finding in relation to section 40 in the present opposition and I note the opponent’s view that it does not matter whether “this attempt to meet the requirements of Section 40 is effective or not”.[43] I will say, however, that I do not consider this to be the type of amendment apprehended in Beach J’s observation that “there may be impermissible added matter if the amendment disclosed new information that was material to the implementation of the invention, that is, material to satisfying the requirements of s 40(2)(a).”[44] Section 40(2)(a) provides that the claimed invention must be described in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art. This requires that the specification provide sufficient information to enable the skilled person to perform the invention across the scope of the claims without undue burden or the need for further invention.[45] In my view, no evidence has been provided establishing that information material to the implementation or performance of the invention and thus to the satisfaction of section 40(2)(a) is added as a result of the present amendment.
[43] Opponent’s submissions dated 27 July 2021 at [49].
[44] CSIRO v BASF at [189]
[45] Explanatory Memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (Cth), pages 46-48. See also Cytec Industries Inc. v Nalco Company [2021] FCA 970 at [145]-[148].
Finally, to the extent that the opponent submits that the amendment leaves the reader unencumbered by inconsistency, I do not have the benefit in this proceeding of evidence from Dr Tian or any other declarant as to the effect of the amendment on their understanding of what is disclosed by the specification. Accordingly, while, as noted by the opponent, the evidence of Dr Tian is uncontested in this opposition,[46] on balance, I am not satisfied that the opponent has established that the skilled person would learn something from the specification as proposed to be amended that they would not learn from the specification as filed. For completeness, I will add that I am not convinced that the asserted inconsistency is fully ventilated in Dr Tian’s evidence. That is, Dr Tian accepts that the described apparatus differs from that referenced in WO’767 with respect to the tapering of the receptacles. The specification indicates that this reduces the pressure applied to the graphite block upon the expansion of the silicon metalloid. As I understand it, the high pressures to which the graphite is exposed contributes to problems with the apparatus referred to in WO’767.[47] However, the opponent has not pointed to, and I have not identified, any discussion by Dr Tian of any possible impact of the receptacle shape on the extent of the asserted inconsistency in the specification as filed. In these circumstances, I am not satisfied that the opponent has made out the argument that the removal of inconsistent information from the specification teaches the skilled person something new.
[46] Opponent’s submissions dated 26 August 2021 at [28].
[47] For example, Tian at [36].
The opponent has not established that the amendment results in matter that extends beyond that disclosed in the specification as filed being disclosed or claimed.
Conclusion
The opponent has not established that the amendment is not allowable. The opposition is unsuccessful.
Costs
It is usual in matters before the Commissioner that costs follow the event. I see no reason to depart from that result. I will award costs according to Schedule 8 against the opponent.
Dr S. J. Smith
Delegate of the Commissioner of Patents
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