American Cyanamid Company v Incitec Limited
[1996] APO 16
•13 March 1996
official notice
decision of a delegate of the commissioner of patents
Application : No. 592970 in the name of AMERICAN CYANAMID COMPANY
Title: PESTICIDE FORMULATION
Action: Opposition by INCITEC LIMITED under section 59 of the Patents Act 1952
Decision: Issued .
Abstract: Opposition not successful.
The opponent failed to demonstrate that the combination of solvents claimed was obvious and did not involve any inventive step.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 592970 by AMERICAN CYANAMID COMPANY and opposition thereto by INCITEC LIMITED under section 59 of the Patents Act 1952.
background
Patent application 592970 in the name of Shell Chemical (Australia) Proprietary Limited was filed on 21 January 1986. The application claimed priority from a provisional specification, PG 8957 filed on 21 January 1985. The application was advertised accepted on 1 February 1990. On 30 April 1990 Incitec Limited filed a Notice of Opposition. The serving of evidence in reply was completed on 6 August 1993. Further evidence was lodged by the opponent on 8 December 1994.
On 3 May 1991 the applicant filed a request to amend the specification. These amendments were allowed on 22 July 1992. On 27 June 1994, pursuant to a request under section 113 of the Patents Act 1990, the Commissioner directed that the application should proceed in the name of American Cyanamid Company.
As the application was advertised accepted before the commencement of the Patents Act 1990, the provisions of section 234(3) of the 1990 Act and regulation 23.3 are applicable.
A hearing to determine the opposition took place in Canberra on 8 November 1995. The applicant was represented by Dr Annabelle Bennett of Counsel instructed by Mr John O’Connor, patent attorney of Spruson & Ferguson. The opponent was represented by Ms Julia Baird of Counsel, instructed by Dr Kevin Pullen, patent attorney of Grant Adams & Company.
the specification
The patent specification is entitled “Pesticide Formulation”. The specification indicates that the invention concerns a liquid pesticide formulation having particular use for ultra low volume application of the pesticide to crops. The formulation aims to inhibit or prevent crystallisation of the pesticide from the liquid carrier and to be compatible with the materials with which the formulation will come into contact in use.
The specification states that an ideal liquid carrier for spraying would have good shelf stability, be compatible with other products, have good stability during application and would inhibit crystallisation or gelling of the pesticide from solution.
The invention concerns liquid formulations of N-[(methylcarbamoyl)-oxy]thioacetamidic acid methyl ester (methomyl). Known formulations contain from 15 to 35% w/v active ingredient, 60 to 85% w/v methanol or other alcohol and up to 15% water. In recent times aerial application has moved increasingly towards the use of specialised equipment which allows ultra low volume application; using low volumes of a high concentration pesticidal formulation in place of a high volume low concentration as in the past. However, the use of standard formulations of methomyl which are based on methanol or methanol and water led to problems when used in ultra low volume spraying equipment. It had been found that the insecticide crystallised in the equipment.
The objects of the invention are then set out:
“It is therefore an object of the present invention to provide a liquid formulation which overcomes or substantially ameliorates the problems of crystallisation of methomyl from the liquid carrier during ultra low volume spraying. It is also an object to provide a liquid formulation which is suitable for other methods of application, and which has good storage stability and compatibility with other pesticide formulations.”
There follows a disclosure of the invention in the same terms as claim 1. Preferred embodiments are then described and optional ingredients of the formulation. Two example formulations are given together with tests of storage stability, compatibility with other pesticides and inertness to fibreglass resin. The results of a crop spraying trial are also described.
The specification ends with eight claims. Claims 1 to 3 read:
“1. An ultra low volume pesticide formulation for aerial spraying on crops which comprises 100 to 250gL-1 of methomyl, 200 to 500gL-1 of at least one lower alkyl ether of a mono- or di- ethylene glycol or of a mono- or di- propylene glycol, 100 to 200gL-1 of a C1 to C3 alkanol and 100 to 200 gL-1 of a dipolar aprotic solvent of high solvency power.
2. The pesticide formulation defined in claim 1, further comprising up to 100gL-1 of at one ketone solvent so chosen that the formulation is inert with respect to fibreglass resin.
3. The pesticide formulation defined in claim 1 or claim 2, further comprising up to 150gL-1 of water.”
Claims 4 to 7 are dependant claims. Claim 8 is an omnibus claim which refers to the examples.
the grounds of opposition
The notice of opposition sets out all grounds available under section 59 of the Patents Act 1952 but at the hearing the opponent pursued only the ground that the invention, so far as claimed in any claim, was obvious and did not involve an inventive step, having regard to what was known or used in Australia on or before the priority date of that claim
evidence
The opponent’s evidence comprises a number of declarations and exhibits. At the hearing Counsel for the applicant submitted that the evidence was confusing and almost impossible to follow. The evidence includes as exhibits inter alia:
reports not in the form of statutory declarations
annexures prepared for the Federal Court for a different proceeding
copies of declarations filed in the Patent Office in connection with a copending application.
Dr Bennett submitted that I should find that much of this evidence was inadmissible.
Although I agree that much of the evidence is not in the form of declarations that conform with the requirements set out in Regulation 75 of the Patents Regulations in force under the Patents Act 1952, I am not obliged to decide in accordance with these requirements. Deane J., sitting in the Federal Court of Australia, issued a judgement including the following paragraph:
"These technical rules of evidence, however, form no part of the rules of natural justice. The requirement that a person exercising quasi-judicial functions must base his decision on evidence means no more than it must be based upon material which tends logically to show the existence or non- existence of facts relevant to the issue to be determined, or to show the likelihood or unlikelihood of the occurrence of some future event the occurrence of which would be relevant. It means that he must not spin a coin or consult an astrologer, but he may take into account any material, which as a matter of reason, has some probative value in the sense mentioned above. If it is capable of having any probative value, the weight to be attached to it is a matter for the person to whom Parliament has entrusted the responsibility of deciding the issue."
(Minister for Immigration and Ethnic Affairs v Pochi 31 ALR 666).
In the present case I believe that the appropriate course is for me to admit the evidence but weight it accordingly.
As a large amount of the evidence was not relevant under the only ground that was pursued at the hearing I will not attempt to summarise the evidence here but will refer to it where necessary.
obviousness
The following tests typify the basic approaches which the courts have used to establish obviousness:
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
(Aickin J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd, (1981) 148 CLR 262 at page 286), and
"Would the notional research group at the relevant date in all the circumstances ... directly be led as a matter of course to try [the invention claimed] in the expectation that it might well produce [a useful desired result]."
(Olin Mathieson v Biorex, (1970) RPC 157 at page 187).
The Problem
The primary problem is clearly set out in the specification. It is to find a liquid formulation which overcomes or substantially ameliorates the problems of crystallisation of methomyl from the liquid carrier during ultra low volume spraying.
At the hearing Dr Bennett submitted that a further problem to be solved was that the formulation should not attack the tank. In the specification it is stated that :
“A ketone solvent is an optional ingredient of the formulations of the present invention. ... Suitable ketone solvents include ... cyclohexanone ... diacetone alcohol ... For formulations of the present invention, diacetone alcohol is particularly preferred due to its relative inertness, as other ketone solvents such as cyclohexanone may affect the plastic or fibreglass tanks of the spraying equipment, by softening it or dissolving some of the components of the fibreglass. Aircraft used for aerial spraying of crops in Australia employ fibreglass tanks which may be adversely affected by cyclohexanone. For this reason, diacetone alcohol is chosen.”
The opponent submitted that because cyclohexanone is listed as a suitable ketone not all of the claimed formulations solve the problem of fibreglass or plastic incompatibility.
I note in this regard that it is stated on page 1 of the specification that the formulation must be compatible with the materials with which the formulation will come into contact in use. In claim 1 the formulation is “for aerial spraying”. I construe this as meaning that the claim has the functional limitation that the formulation is at least suitable for aerial spraying in terms of compatibility with the spray tanks. Claim 2 is appended to claim 1 and specifies that the formulation further comprises up to 100gL-1 of at least one ketone solvent so chosen that the formulation is inert with respect to fibreglass resin. It seems from the description that cyclohexanone would be suitable for these formulations provided that it was limited to such a quantity such that the formulation is inert with respect to the tanks.
I conclude on this point that all of the claims are directed to formulations that do not attack the tanks. The problem solved by the invention as claimed is the dual problem of both the crystallisation of the methomyl and the tank incompatibility.
The field of the invention
The specification indicates that the invention relates to a liquid pesticide formulation having particular use for ultra low volume application of the pesticide to crops. The applicant submitted that the relevant field was pesticide formulations in agriculture. The opponent submitted that the relevant field was much broader and included formulation chemistry in veterinary, agricultural and industrial chemistry.
The problem identified is concerned with the solubility of an organic compound in a formulation for low volume crop spraying. Although the problem is of direct interest to a worker in the field of agricultural formulations, the problem identified is actually in the field of solubility and formulations per se. If the notional person skilled in the art was actually a team of people, it might include a physical chemist with a general understanding of solubility effects in formulation chemistry as well as a person whose area of expertise was agricultural formulations . There is no reason to believe that such a team would include a person whose area of expertise was another specialised area of formulations, for example pharmaceutical, veterinary or coating formulations.
The common general knowledge
In considering obviousness I have to take into account what has been established as being common general knowledge in the field of the invention at the priority date of the claim (Minnesota Mining and Manufacturing v Beiersdorf (1980) 144 CLR 253).
The application claims priority from an Australian provisional application filed on 21 January 1985. This priority was not questioned at the hearing and I will assume that this is the date at which the common general knowledge must be assessed.
I will consider the evidence to determine what is established as common general knowledge.
Evidence in support
Ronald James Hackney
Mr Hackney declares that he has been actively associated with the formulation development of agricultural, industrial and veterinary chemicals for 42 years. He is the inventor or co-inventor of 12 patents of novel formulations including pesticides. Given that Mr Hackney is an inventor himself I have some doubt as to whether he can truly be considered to be a non-inventive worker in the field.
Mr Hackney makes various observations about the present application and compares it to a previous application, 37956/85 in the name of Shell Chemical Co. He then states that the opinions given by him in a Statutory Declaration re Australian Patent Application No 37956/85 also apply to the opposed application. A copy of this declaration is attached as an exhibit to his declaration. Mr Hackney’s evidence on what he considered to be known or used in Australia generally supports that of Mr Lam, infra.
Kevin Michael Pullen (30 November 1990)
To a declaration dated 30 November 1990 Dr Pullen, a patent attorney, attached copies of seven statutory declarations which were originally executed by the declarants for opposition proceedings on patent application 568717 (37956/85). Dr Bennett argued that these declarations should not be admissible in the present proceedings. I note that two of the declarations contain a statement to the effect that the declaration is with reference to both application nos 37956/85 and 52829/86, one is a copy of a declaration attached to Mr Hackney’s declaration (discussed above), and the other four refer to one of these three earlier declarations.
In situations where declarations are relevant to two different matters before the Commissioner it is usual to file the original in one matter and refer to the original in the second matter rather than execute two originals. In the present case a copy is supplied but there is a clear indication that the relevant declarants understood that their evidence would be used in both cases. I can see no reason why I should not have regard to this type of evidence.
KMP(4)-1 - Hoa Thien Lam
From 1983 Mr Lam was employed by Cropcair Ltd as a development officer responsible for the research, development and commercialisation of conventional formulation and new technology for insecticides and consumer products. In the light of his qualifications and experience I believe that
Mr Lam is in a good position to comment on what was known and used in the relevant field.
In his declaration Mr Lam refers to a number of publications including handbooks, product bulletins and patent specifications. As only obviousness is at issue I need not have any regard to this material unless there is some indication that the material contained therein is likely to be well known in the field.
The information that Mr Lam considers to represent common general knowledge is the following:
Apart from the solvency power of the solvent for the pesticide, the volatility of the solvent is very important in the ULV formulation. Higher ketones and dipolar aprotic solvents exhibit this low volatility property. Lower alkanols and methanol have high volatility therefore if used in high concentration could cause the crystallisation problem.
Water is often incorporated in a pesticide formulation to reduce the flammability of the final product.
A solvent that exhibits little or no toxicity toward people or plants is normally chosen in a pesticide formulation.
The choice of solvents for use in the pesticide formulation would be a routine procedure by a skilled chemist. The solvent properties and its recommended uses by the suppliers are readily available in the published literature and various patents. Formulation chemists usually have to rely on combinations of solvents.
The use of ketone solvents is very well known - cyclohexanone is an obvious solvent for methomyl formulations.
Given the solvency power of the dipolar aprotic solvent, NMP, the checking of methomyl solubility in NMP would be a routine and obvious step for the skilled formulator.
The choice of solvents is a routine but methodical process in the field of formulation based on the solvents solubility for the pesticide, its low volatility and low toxicity to people and plants, and this information is often available from the manufacturer of solvents therefore they are obvious. The mixture of solvents is dependent on he solubility, storage stability and field trials. These procedures are well established routines and known to formulation chemists.
Glycol ethers have been extensively used in the industry well before 1985.
KMP(4)-3 - George Crank
Since 1980 Dr Crank has been an associate professor of organic chemistry at the University of New South Wales. He has responsibility for teaching courses in food and drug chemistry, agricultural and biological chemistry at both undergraduate and graduate levels. He has acted as a consultant for Unisearch Ltd for many years and has extensive experience in industrial chemical and agricultural chemical matters including insecticide formulations. He has a number of published papers and patents. Given his level of expertise it is probable that Dr Crank is in fact over-qualified to represent the person skilled in the art himself and it is not clear from his evidence that he is putting forward what he has taught to his students as common general knowledge. Dr Crank’s evidence generally supports that of Mr Lam, supra.
Kevin Michael Pullen (29 January 1991)
Dr Pullen made a further declaration dated 29 January 1991 (KMP(3)). He has attached to this declaration as an exhibit (KMP(3)-1) a declaration which he made on 3 February 1989 in the matter of patent application 568717 (37956/85). Exhibit KMP(3)-1 further comprises exhibits KMP(2)-1 to KMP(2)-20. KMP(3) also has annexed KMP(3)-2 and KMP(3)-3. KMP(2)-1 to KMP(2)-16 are published patent specifications and KMP(2)-17 is an extract from a text. These publications disclose various solvent systems.
Exhibits KMP(2)-18 to KMP(2)-20, KMP(3)-2 and KMP(3)-3 are copies of declarations and affidavits filed in proceedings either before the Commissioner or in the Federal Court in matters concerned with patent applications or patents relating to pour-on veterinary formulations. The declarants in each case are workers in the field of agricultural chemicals or pesticides. The opponents seek to rely on statements in this evidence relating to what would be considered to be common general knowledge in the art.
Regarding whether patents form part of common general knowledge in KMP (2)-19 it is stated:
“By 1980 it was normal practice for any major company involved with veterinary products to employ a staff member in its library or information service to research the patent literature, to extract therefrom patents relevant to the company’s work and to circulate such extracts to relevant employees of the company.”
and in KMP (2)-20 :
“...most if not all other manufacturers of insecticidal compositions or formulations at all relevant times routinely reviewed Australian Patents becoming open to Public Inspection”.
In KMP(3)-1 Dr Pullen makes the statement that :
“From exhibits KMP(2)-19 and KMP(2)-20 it is considered that the contents of exhibits KMP(2)-1 to KMP(2)-18 inclusive were all well known to, and would have been part of, the common general knowledge among those skilled in the art of pesticide compositions at a date prior to the priority date of Australian Patent Application No. 568717 [37956/85]...”
I have serious doubts about the relevance of this evidence. These declarations were not made in connection with the present matter - the technology of the patent applications in suit was veterinary formulations. Although this might be considered to be a related field there is no indication from the declarants as to whether they considered themselves to be qualified in the relevant field.
In any event I believe that a general statement that Australian Patents are “routinely reviewed” or that information was extracted and circulated in a particular field cannot lead to the conclusion that the contents of a particular selection of patent specifications form part of common general knowledge.
"In my judgement it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or a series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less merely because it is widely circulated. Such a piece of knowledge only becomes common general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art."
British Acoustic Films Ld v Nettlefold Productions, (1936) 53 RPC 221 at page 250, and affirmed in General Tire & Rubber Company v Firestone Tyre and Rubber Company Ltd (1972) RPC 457, with the qualification that "without question" should read "generally regarded as a good basis for further action".
There is no evidence that the contents of publications KMP(2)-1 to KMP(2)-18 were generally known and accepted by workers in the relevant field and therefore the opponent has failed to demonstrate that they form part of the common general knowledge.
Evidence in answer
Mark Tabone
In 1991 Mr Tabone joined Shell Chemicals (Australia) Proprietary Limited as a development chemist for the Agricultural Chemicals Business Sector. At the priority date of the opposed application it appears that Mr Tabone had just completed a BSc degree at Monash University. Although Mr Tabone provides comments on the evidence of the opponent and explains the difficulties of developing complex solvent mixtures very little weight can be placed on his evidence insofar as it relates to common general knowledge in the relevant field at the priority date of the claims.
Annexed to Mr Tabone’s declaration is a series of Technical Bulletins, Reports and Memoranda from Shell Chemicals describing solvent system design, solubility parameters and the development of the alleged invention.
Exhibits MT-1 and MT-2 are Shell Chemicals Technical Bulletins describing solubility parameters and solvent mapping for resins and polymers. MT-3 is a Shell laboratory note which describes how solvent mapping was used to find a solvent system that did not attack/dissolve aircraft spray tanks. As a result of this mapping, NMP and methyl proxitol (the monomethyl ether of propylene glycol) blends were chosen as a starting formulation. Water was added to improve solvency and methanol was added to improve dilution stability in the cold. Diacetone alcohol was added to decrease volatility. The note states that the results of field trial showed that for the optimum formulation the insecticidal activity of methomyl was unexpectedly increased indicating synergistic action.
Exhibit MT-4 is a Technical Report of solubility investigations. It states that two work programs were followed - a trial and error approach base on the known solvency of methanol and NMP and a more systematic approach based on solubility maps. Both led to the development of a suitable solvent system. Cyclohexanone was not a solvent of choice because it attacked the resin in the fibreglass hoppers.
Evidence in reply
Kevin Michael Pullen (5 August 1993)
Dr Pullen reviews the evidence of Mr Tabone and reaches the conclusion that the evidence clearly establishes that the applicant used the known concept of mapping the solubility of a polymer or resin to produce Nelson, Hemwell and Edwards solubility maps and from these maps selected the required solvents. He states further that it is established patent law that a known systematic approach using known techniques to arrive at the predicted result lacks the necessary spark of ingenuity to justify the grant of a patent.
I note that Dr Pullen is not in a position to state what was common general knowledge at the relevant date.
George Crank
In the evidence in reply there is a report by Dr Crank which is not in the form of a statutory declaration. The report contains the following statement:
”The use of systematic methods to develop pesticide formulations is a scientific approach to the problem, which would be expected for those skilled in the art of formulation. The methods used to design the solvent system for the patent are said to be based on exhibits MT-1 and MT-2, which are Shell Technical Bulletins published in 1978 and 1975 and were therefore common knowledge at the time of publication of the patent.”
Dr Crank states that the technique had been publicised by Shell with a view to encourage industry to use such methods instead of trial and error. These statements do not establish the methodology as common general knowledge. The mere fact that a document is published and promoted does not mean that it is common knowledge. Exhibits MT-1 and MT-2 are concerned with the use of solvent mapping in the field of coatings and there is no evidence that this technique was known and used for agricultural formulations.
Ronald James Hackney
Mr Hackney stated that the earlier formulations of methomyl based on water and methanol were not satisfactory for ULV spray applications because of crystallisation, but not necessarily because of its effect on fibreglass spray tanks. The next obvious step was to incorporate solvents that inhibit crystallisation. E I du Pont de Nemours brought out a Lannate LV containing a cyclohexanone, methanol and water solvent system for LV applications. Shell Chemicals (Australia) Pty Ltd added NMP to the Lannate LV - this was the subject of Application No 37956/85. Both formulations minimised crystallisation but adversely affected the spray tanks.
Mr Hackney did not state whether this was known to him before the priority date of the opposed application.
Subsequent developments were obvious modifications of their solvent system designed to reduce or eliminate attack on fibreglass spray tanks. Mr Hackney also stated that the empirical and systematic approaches used are well known to those working in the formulation field and that in particular that of Nelson, Hemwall and Edwards are widely use for formulating solvent systems. Mr Hackney did not indicate at which date this was known.
Hoa Thien Lam
The evidence in reply from Mr Lam is not in the form of a statutory declaration.
He states that it would be possible to test various fibreglass types until a desirable formulation was obtained. This would require persistence and dedication but not invention. The problem of fibreglass incompatibility was in the public domain as the Dupont product had caused these problems in 1984.
Although Mr Lam states that the problem of fibreglass incompatibility was in the public domain it is not clear whether he obtained this information from the evidence in answer or whether he had personal knowledge of the problem at the relevant date.
Decision
Although I expressed some doubts as to whether two of the opponent’s declarants were in a position to comment on common general knowledge their evidence does corroborate that of the third declarant. Overall I accept the following to be a summary of the common general knowledge in the relevant field at the priority date of the claims:
methomyl was a well known insecticide
all of the individual solvents of the formulations of the claims were known solvents for pesticide formulations
cyclohexanone was also an obvious choice for a solvent for methomyl formulations
it was known to use blends of solvents where a single solvent did not have all of the required properties
it was known to use methodical and/or trial and error methods to identify a suitable solvent blend.
It has not been established that the solvent mapping technique used by the applicant was common general knowledge at the relevant date. The declarants did not suggest this method in their evidence in support. They stated that they knew of this method only after it was identified in the evidence in answer as the method used. If it had been known and used at the relevant date I would have expected it to be so identified originally.
It has also not been established that the problem of tank incompatibility was common general knowledge at the priority date. It was not given as a criterion for solvent selection in the evidence in support.
One inconsistency that arises out of the evidence is that the declarants conclude that both the formulation of the opposed application and the formulation of application no 37956/85 are obvious although the formulations are clearly different.
The formulation of 37956/85 includes a ketone solvent as an essential component of the formulation and cyclohexanone is the preferred ketone. It is stated in the evidence that cyclohexanone would be an obvious choice in a solvent system for methomyl. The present invention provides a formulation in which a glycol ether is used and cyclohexanone is not necessarily a major component. The reason that a glycol ether was used was to avoid tank incompatibility - a problem that was not previously recognised.
The combination claimed must be considered as a whole. It is insufficient to dissect a claimed invention into component integers, and establish that these integers are each pieces of common general knowledge. It must also be established that the selection of those integers is obvious to the person skilled in the art in the context of solving the problem:
“The proper question is not whether it would have been obvious to the hypothetical addressee who was presented with an ex post facto selection of prior specifications that elements from them could be combined to produce a new product or process. It is rather whether it would have been obvious to a non-inventive skilled worker in the field to select from a possibly very large range of publications the particular combination subsequently chosen by the opponent in the glare of hindsight and also whether it would have been obvious to that worker to select the particular combination of integers from those selected publications. In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious. ... The opening of a safe is easy when the combination has been already provided."
Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Limited, (1980) 144 CLR 253 at page 293.
The submissions of the opponent show evidence of an ex post facto analysis of the invention. Although they submit that the formulations of the claims are obvious they have failed to demonstrate that the notional research group would have been led as a matter of course to try any one of the particular combinations of solvents defined by the claims.
The evidence does not show that simple trial and error experiments without knowledge of the problem of tank incompatibility would produce the formulations of the opposed application. Without this recognised problem it is extremely unlikely that the non inventive skilled worker in the field would have concentrated their research effort to arrive at the formulation of the invention.
Furthermore there is no evidence to support the suggestion that solvent mapping was common general knowledge at the relevant date.
I note that some submissions went to the increased efficiency of the example formulations. There was some dispute about whether the results were statistically significant and whether the comparison was made against the correct formulations. While it seems that the two formulations of the examples might have shown increased efficiency it was not demonstrated that all of the formulations as claimed were superior. This efficiency data is therefore of little relevance in establishing whether the invention as claimed is obvious.
conclusion
I find that the opponent has failed to demonstrate that the invention, so far as claimed in any claim, was obvious and did not involve an inventive step, having regard to what was known or used in Australia on or before the priority date of that claim.
costs
In matters before the Commissioner costs usually follow the event. In the present case Dr Bennett submitted that if the applicant was successful they should be awarded costs on some higher basis because the opponent’s evidence was so complex and difficult to follow. She submitted that it was not reasonable to expect the applicant to have to consider it all to decide on its admissibility and possible relevance.
I agree that the format of the opponent’s evidence was unnecessarily complex and have found that major parts of the evidence were of doubtful relevance. However, most of the evidence was actually referred to by the opponent (one exception being an exhibit which was in Japanese and appeared to be about electronics). Despite the deficiencies in the evidence I do not consider it appropriate to award costs on a higher scale.
The applicant made substantial amendments to the specification after the filing of the evidence in support. In this case I think it appropriate that I award costs against the applicant up to and including the date of advertisement of allowance of the amendment, that is 20 August 1992 , and against the opponent thereafter.
VIVIENNE THOM
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Spruson & Ferguson
Patent attorneys for the opponent : Grant Adams & Co.
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