Alroc Minerals Pty Ltd v Mineral Processing Pty Ltd

[1999] APO 52

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Petty Patent  :          No. 683611 in the name of ALROC MINERALS PTY LTD

Title:          AN AGRICULTURAL COMPOSITION

Action:          Application for an extension of term and notice under Section 28 by MINERAL PROCESSING PTY LTD

Decision:          Issued            .

Abstract

The extension of term is granted.  There was insufficient evidence to demonstrate that the invention had been made publicly available by prior publication or prior use.  The specification was found to comply with Section 40.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Petty Patent No. 683611 in the name of ALROC MINERALS PTY LTD and notice under Section 28 by MINERAL PROCESSING PTY LTD

BACKGROUND

Petty patent application 10050/97 was accepted on 2 September 1997 and sealed on 13 September 1997 as petty patent 683611.  Alroc Minerals Pty Ltd ("Alroc") applied for an extension of term on 16 September 1998.  Mineral Processing Pty Ltd filed a Section 28 notice on 22 September 1998.

The proceedings for lodging evidence were completed on 9 March 1999.  A hearing was held in Canberra on 14 May 1999.  Alroc was not represented at the hearing, written submissions were sent on their behalf by their patent attorney Dr Kevin Pullen.  The informant was represented by patent attorney Mr Helmut Eichberger of Cullen and Co.

THE SECTION 28 NOTICE

The following grounds were listed in the notice under Section 28(1):

(a) That the patentee was not entitled to be granted the petty patent;

(b) That the invention is not a patentable invention because it does not comply with
      paragraph 18 (1) (a) or (b);

(c) That the specification does not comply with subsection 40 (2) or (3).

At the hearing Mr Eichberger stated the informant would not be relying on the ground that the patentee was not entitled to be granted the petty patent or the ground that the patent was not for a manner of manufacture.

EVIDENCE

The evidence filed with the section 28(1) notice consisted of a statutory declaration by Richard Patrick Beaumont and exhibits RPB-1 to RPB-11.

The evidence filed in response consisted of a statutory declaration by Leslie Septimus John Dyne and exhibit LSJD-1.

THE SPECIFICATION

The invention is described as an agricultural composition, which is suitable for use as a soil conditioner and fertiliser.

The background to the invention identifies existing practices of adding fertiliser to soil as leading to loss of soil fertility through depletion of minerals.  In particular, acidic synthetic fertilisers are described as reacting with alkaline natural minerals in the soil, with repeated applications of these fertilisers causing a stripping and leaching action in the soil, which leads to a depletion of natural minerals and a loss of soil fertility.

Natural minerals have been used as soil conditioners preferably in the form of a powder.  However powdered rock is difficult to spread and apply using conventional fertiliser spreading equipment.  The specification states:

"It is an object of the present invention to overcome or at least ameliorate, one or more of the above disadvantages and to provide an agricultural composition, its manufacture and use which can release nutrients effectively to the soil but reduce the degradation of the soil that usually accompanies such release.

It has been found that this particular objective can be achieved by the application of a particular agricultural composition that is acid neutral."

The specification describes this agricultural composition as comprising a fertiliser and a mineral source, wherein the proportions of said fertiliser and said mineral source are such that the acidity of said composition is essentially neutral. 

Preferably the fertiliser is synthetic and preferably the mineral source is stone or rock which is capable of acting as a source of minerals or trace minerals to the soil for use by plant life.

CLAIMS

1. An agricultural composition, said composition comprising a fertiliser and a mineral source which together, provide a full spectrum of nutrients required for conditioning soil to which said composition is applied and for any plants growing therein, wherein the proportions of said fertiliser and said mineral source are such that the acidity of said composition is essentially neutral.

1. A composition as defined in Claim 1 wherein:

said fertiliser is synthetic; and

said mineral source is stone or rock which is capable of acting as a source of minerals or trace minerals to the soil for use by plant life.

1. A composition as defined in Claim 2, wherein said fertiliser is a nitrogen-containing fertiliser; and said mineral source is selected from one or more of dolomite, bentonite, rock phosphate, rock potash, glacial river gravel, basalt, limestone or a similarly naturally occurring mineral.

SECTION 40

Mr Eichberger referred me to a number of issues involving the interpretation of words and phrases in the specification:

1. The phrase "provide a full spectrum of nutrients required for conditioning the soil" as it appears in the claims was not described in the specification and consequently the specification lacked a best method of performance, the claims did not define the invention and were not fairly based on the description.

I have no evidence before me how the person skilled in the art would interpret the phrase "full spectrum of nutrients" but the specification does provide some guidance.

The specification at page 4 states:

"With its ability to blend minerals with conventional fertilisers, especially nitrogenous fertilisers, a full spectrum of nutrients necessary for healthy growth can be made available to plant life".

I consider that a "full spectrum of nutrients" as used in the specification simply means that the composition provides both mineral nutrients and fertiliser nutrients.  This is consistent with the described problems of the prior art being concerned with low fertility mineral depleted soils.  Although the claims and description differ in that the passage in the description says that the full spectrum of nutrients is made "available for healthy growth of plant life" while the claims use the phrase to "condition the soil", I think that in both instances the skilled addressee would consider that the specification is referring to improving soil fertility.  Consequently I find this feature in the claim to be clear and fairly based on the specification.  The specification adequately describes this feature.

2. The specification including the claims is also said to be deficient in that it is not described how the composition is adjusted to achieve neutral pH.

In the specification (page 2 line 24 to page 3 line 9) a process is described where the fertiliser is blended with a powdered mineral source, then water is added to initiate an acid neutralisation between the mineral composition and the fertiliser.  This appears to me to adequately describe a process to achieve an acid neutral product.  As the specification describes fertilisers as being acidic and minerals as being alkaline I would assume that by adjusting the proportions of each the person skilled in the art can prepare a non acidic or neutral composition.

Although not an important issue in this determination, in my view what is claimed and described is a composition that is required to be not acidic, rather than a composition that is required to be of neutral pH although the latter may be preferred.  A major problem, identified in the description of the prior art practices, is the use of acidic fertilisers which deplete the soil of alkaline minerals.
The specification identifies the acidity of the fertilisers as being responsible for binding and leaching minerals from the soil.  The exemplified solution is to neutralise the acid by mixing it with crushed rock in the presence of water.  In this context, I think that the phrase "the acidity is essentially neutral" would be read by a person in skilled in art of agricultural chemicals as indicating that the pH is either neutral or alkaline rather than given the literal meaning of neutral pH.

3.  Claim 2 is unclear in its reference to "Stone or rock, which is capable of acting as a source of minerals or trace mineral to the soil for use by plant life."

The specification discloses that stone or rock is a preferred source of minerals and gives examples of rocks that would be suitable.  It is not evident to me what rocks or stones (if any) fall outside the claim, but no evidence has been provided that the skilled addressee would have any problem with determining which rocks or stones can be used in the invention.  In the absence of such evidence I consider the specification provides sufficient guidance to person skilled in the appropriate agricultural or mineral arts to understand what are appropriate stones or rocks.  I therefore find this phrase to be clear.

4.  Claim 3 is unclear in its reference to "or a similarly naturally occurring mineral source" 

Mr Eichberger has asserted that this claim is unclear but has not shown that the person skilled in the art would not know what were similarly naturally occurring mineral sources.  I note the chemical composition of the mineral sources listed in the claim 3 is quite diverse, but on this issue I have no reason to assume that the appropriate person skilled in the art cannot identify stone or rock that are similar to those explicitly listed in the claim.

In conclusion, I consider the specification complies with Section 40.

NOVELTY

Subsection 7(1) of the Patents Act 1990 states:

7. (1) For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:

(a)  prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;

(b)  prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information;

(c)  prior art information contained in a single specification of the kind mentioned in subparagraph (b) (ii) of the definition of "prior art base" in Schedule 1.

The definition of the prior art base in Schedule 1 further limits the consideration of information in relation to a petty patent to that available in Australia.

The documents provided by the informant could be relevant for the assessment of novelty:

(i) if a document prior publishes the invention

(ii) if the documents provide evidence of prior use of the invention.
In either case there must be reason to conclude that the invention can be said to have been communicated to the public.

"... if the information, whether in documentary form or in the form of the invention itself, has been communicated to a single member of the public without inhibiting fetter that is enough to amount to a making available to the public...." Bristol Myer's Co's Application (1969) RPC 146 per Lord Parker

Prior Publication

The ground of prior publication was not raised by the informant.  The exhibited documents are not documents that feature clear evidence of having been published.  However as three of the informant's exhibited documents; RPB-3, RPB-7 and RPB-9 contain details on composition of various mineral based products I will consider whether these documents are prior publications.

Exhibits RPB-3 is a printout of computer records held by Mineral Processing Pty Ltd, detailing transactions that took place before the priority date of the patent.  There is no evidence of when it was printed.  Therefore there is no evidence to suggest the printout was published before the priority date of the Alroc patent (18 July 1996).  

Exhibit RPB-7 is a facsimile of a document Mr Beaumont describes as a product brochure.  This brochure is titled "Vitality - Organic Mineral Fertiliser - Improves Your Soil Naturally".  It features a fax imprint of 31 October 1995 which is before the priority date and a hand-written date of 8 December 1997 which is later than the priority date of the application.  I cannot discover from the document itself, who originally sent or received the faxed brochure.  Mr Dyne describes this document as an internal communication between two of the venture partners and implicitly confidential.  Mr Beaumont, who appears to have put this document forward as evidence of prior use, has not asserted that the document was distributed outside of the joint venture companies to the public.  I therefore find that there is no evidence this brochure has been made publicly available.

Exhibit RPB-9 is a facsimiles sent between New Hope Minerals Pty Ltd and Sustainable Agriculture and Food Enterprises Pty Ltd.  It is dated 16 August 1995.  It is not disputed by the informant that New Hope Minerals Pty Ltd, Beaumont Transport Pty Ltd, and Alroc Minerals Pty Ltd were joint venturers and that Sustainable Agriculture and Food Enterprises Pty Ltd was connected with the marketing of the joint venturers' mineral products.  Mr Dyne refers to the communications between New Hope and the other businesses involved in sourcing and selling mineral products as implicitly confidential.  Mr Dyne's declaration provides evidence of a business relationship, but in my view there is no evidence to indicate whether information relating to products of the invention was kept confidential or was placed into the public domain.  I therefore find that there is no evidence this brochure has been made available to the public.

As there is no evidence that any of these documents were made publicly available, I conclude that the invention is not prior published by these documents.

Prior Use

Mr Beaumont declares that he is aware that Mineral Processing Pty Ltd produced and sold in Australia various products which fall within the scope of the claims as early as August or September 1993.

In considering the evidentiary weight of this declaration I take into account Mr Beaumont is a manager in the company opposing the extension of term of petty patent 683611.  Mr Beaumont cannot be considered an independent witness. 

Mr Beaumont refers in his declaration to a number of products being made and sold prior to the priority date of the Alroc patent.  These products include; Alroc blend 1, Alroc blend 2, Alroc blend 3, Extraphos, Alroc Supablend 2, Alroc Supablend 3, Vitality Mix 1, and Vitality Mix 2.  These products are referred to also in exhibits RPB-3 to RPB-11.  In order to assess whether the use of any of these products anticipates any of the claims, I will use the test laid down in
Meyers Taylor Pty Ltd v. Vicarr Industries Ltd ( 1977) 137 CLR 228 at 235, per Aickin J:

"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged invention would if the patent were valid constitute an infringement…Here no prior object and no object according to a prior document involved or incorporated all the integers of any one of the claims and could therefore possibly constitute an infringement. "

It is sometimes the case that a claim contains features that do not impact on the monopoly of the claim: Rodi & Weinenberger A.G v. Henry Showell Ltd [1969] 12 RPC 367 at 384, per Lord Hodson.

"for it is only where there are differences in inessentials, while the alleged infringement possesses all the essential features or integers of the claim, that there will be infringement."

In testing the claims for lack of novelty by prior use I need to determine whether any of the prior documents establishes that a composition containing all the essential features of the claims was made publicly available. 

Claim 1 is directed at a an agricultural composition which effectively features:

1. A mineral source

2. A fertiliser

3. The limitation that the proportions of said fertiliser and mineral source are such that the acidity of the composition is neutral.

Mr Eichberger has conceded that none of the informant's exhibits refer to the pH of the products. 

The evidence provided by the informant does not demonstrate that any prior fertiliser composition contained fertiliser and minerals in such proportions to make the composition acid neutral.  It is not disputed that the feature of the composition being acid neutral is an essential feature of the invention.  Mr Eichberger asserts however that the evidence provided by the patentee establishes that some prior compositions had this feature.

Mr Eichberger argues that information in the statutory declaration made by Mr Dyne, as evidence in response, establishes that some of the products referred to by Mr Beaumont are embodiments of the claimed invention and this implies these products contain the essential features of the claims.  As the information in Mr Dyne’s declaration is relied on by both parties I will consider it in some detail.

"In late 1993, ALROC required a plant to manufacture the invention and other products…A joint venture was set up between NEW HOPE, Beaumont Transport Pty Ltd and ALROC.  ALROC supplied the specifications to Beaumont Transport Pty Ltd to construct a plant on the site at Tivoli suitable to manufacture mineral-type products including the Invention. The plant was established solely to manufacture products on behalf of ALROC. …NEW HOPE contributed some funding to the construction of the plant and also sourced and supplied the raw materials for the plant to manufacture the mineral-type products.  The products produced from this plant were (and still are) marketed by another of my business entities, namely Sustainable Agricultural & Food Enterprise (S.A.F.E.)…In 1994, I became aware that Beaumont Transport Pty Ltd were independently selling product that had been manufactured at the aforesaid plant."

Mr Dyne’s initial statements indicate to me that Alroc has been producing a range of mineral products and not just those which are the subject of petty patent 683611.  Contrary to an assertion by Mr Eichberger, these statements do not lead me to any conclusion on when Alroc first made or sold products according to the claimed invention.

Later in the declaration, Mr Dyne subsequently states that the products Alroc 1, Alroc 2, Alroc 3 and Extraphos were not of the invention, lacking the essential feature that the acidity of the composition was essentially neutral.  As I have no evidence to the contrary I accept that there is no evidence that any of these products had all the essential features and so I will consider these products no further under the ground of Novelty. 

Exhibit RPB-6 is a facsimile, dated 15 August 1995, sent by Mr Dyne to Mark Ruth of New Hope Minerals discussing Alroc Superblend 2 and Alroc Superblend 3.  Mr Dyne refers to this facsimile in his declaration as a confidential communication providing details of the invention.  Exhibits RPB-10 and RPB-11 are facsimiles bearing dates of 25 September 1995 and 21 September 1995 respectively, were both sent from Mr Dyne to Mark Ruth of New Hope Minerals.  These facsimiles refer to trials of Alroc Supablend.  Mr Dyne describes these exhibits, insofar as they refer to Alroc Superblend, as relating to the invention.  Mr Dyne's clear discussion of whether various powdered rock products fall outside the scope of the claims of petty patent 683611 indicates to me that he has a good understanding of the features needed to anticipate the claims of his patent.  On the balance of probability I consider that Alroc Superblend is a product of the invention which contains all the essential integers of claim 1 at least. 

However the allegation of prior use requires it to be shown that Alroc Superblend was made publicly available.  For the prior use to make the invention publicly available it must be informative Kenneth William Hope v. Heggies Bulkhaul Ltd (1996) 34 IPR 584.

In addition a public use of the invention before the priority date does not necessarily invalidate the patent under the grounds of Novelty.  This is because S.24 (1) and regulation 2.2(2)(d), which provides (with the relevant parts of the text of the Act and Regulations as combined, by the delegate of the Commissioner in Dominic Victor Costa v. GR& IE Daking (1994) 29 IPR 241):

The working in public of the invention within the period of 12 months before the priority date of a claim for the invention:

1. for the purposes of reasonable trial; and

(ii)  if, because of the nature of the invention, it is reasonably necessary for the working to be
           in public"

must be disregarded when assessing the novelty, or the absence of an inventive step, in a claimed invention.

The evidence for prior use of Alroc Supablend appears largely based on three exhibits which all bear dates within twelve months of the priority date of the application.  Relevant information from the exhibits are provided below:

Exhibit RPB-6             Facsimile dated 15 August 1995 from Les Dyne of Sustainable Agriculture and Food Enterprises and addressed to Mark Ruth of New Hope Minerals.  In this facsimile Mr Dyne describes Alroc Supablend 2 as having a good balance between NPK&S, and Alroc Supablend 3 as being greatly improved with 1/3 MAP and 2/3 Alroc.  He also asks for the costing of the two blends of Alroc Supablend.

Exhibit RPB-10           Facsimile dated 25 September 1995 from Les Dyne to Mark Ruth at New Hope Minerals Pty Ltd.  This fax states: "We have a number of growers wanting the Alroc Supablend for trials in Cane, Corn, Peanuts and orchards.  Please advise me of your pricing and availability and supply."

Exhibit RPB-11           Facsimile dated 21 September 1995 from Les Dyne to Mark Ruth.  This fax states:  "There are a few Cane farmers in New South Wales wanting Alroc Supablend for trial plantings.  Please advise urgently the availability of Supablend in bulk bags for cane trials and the pricing for the product."

Mr Dyne has stated that the requests for pricing of Alroc Supablend refers not to sales of Alroc Supablend, but instead are requests that New Hope in their role as a supplier to provide information on the cost of providing the product for trials.  I consider Mr Dyne’s evidence to be credible in this regard.  It appears to me that the evidence of the exhibits points to an intention to conduct a reasonable trial such as would be covered by Section 24.  However no evidence has been provided that the intended trial ever took place.  Consequently these exhibits provide no evidence that the claimed invention was made publicly available by a prior use.  Exhibit RPB-4, which Mr Beaumont describes as a print out of sales of products made by Australian Mineral Marketing prior to July 1996, does not list any sales of Alroc Superblend.

I conclude there is no evidence of lack of novelty due to the invention being made publicly available by a prior use of the invention.

INVENTIVE STEP

From subsections 7(2) and 7(3) of the Patents Act, a claimed invention will lack an inventive step if it is obvious in the light of :

(a)    common general knowledge

(b)   common general knowledge considered together with information in a single document or through doing a single act, provided that the document or act could be reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.

A commonly used guide to what would be obvious to the skilled person in the field is:

“Would the hypothetical non-inventive person skilled in the art faced with the problem have taken as a matter of routine whatever steps might have led from the prior art to the invention claimed” Allsop & Another v. Bintag Ltd., (1989) AIPC 90-615 at page 39331.

At the hearing Mr Eichberger raised the issue of inventive step, stating the claims lacked inventive step over what the Alroc petty patent disclosed about the prior art.

Mr Eichberger has taken as evidence of the common general knowledge in the field the discussion of the state of the art given in the Alroc petty patent.  A difficulty that arises with relying on the specification to establish common general knowledge in the art is the danger of ex post facto analysis.  It is desirable to have more objective evidence on what was known in the art.

Mr Eichberger observed that the specification describes acids present in fertilisers as causing problems by stripping and leaching mineral salts from the soil into the dams and rivers.  From this description Mr Eichberger assumes that this problem was well known in the agricultural arts. 
Mr Eichberger then argues that the solution of neutralising the acid is obvious.  However the specification does not describe the cause of mineral depletion as being well known in the art in Australia before the priority date of the claim.  This finding may have been a discovery by the applicant and be where the real invention lies.  The specification also does not clearly indicate whether this problem caused by acidity was known to exist when fertilisers were used with mineral supplements or existed only when fertilisers were used on their own.

For these reasons I consider there is no evidence of what was common general knowledge in the agricultural arts in Australia before the priority date of the claims on the acidity of fertiliser and/or mineral compositions and the role of acidity in mineral depletion in soils.

Consequently I find there is no evidence to support a lack of inventive step.

CONCLUSION

On the evidence provided, I have not been convinced that petty patent 683611 is invalid on any ground mentioned in subsection 28(1) and consequently I grant an extension of term to petty patent 683611.

COSTS

Costs normally follow the event.  The informant has not shown that an extension of term should be refused.  There have been no other significant issues that are relevant to costs in this case.  I therefore award costs against the informant.

Ross Osborne
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Dr Kevin Pullen, Landsborough Qld

Patent attorneys for the opponent   :  Cullen & Co, Brisbane