Arch Wood Protection Pty Ltd v Koppers Performance Chemicals Australia Pty Ltd
[2015] APO 89
•21 December 2015
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Arch Wood Protection Pty Ltd v Koppers Performance Chemicals Australia Pty Ltd [2015]
APO 89
Patent Application: 2008207612
Title:Surface Treatment for Wood and Wood Products
Patent Applicant: Koppers Performance Chemicals Australia Pty Ltd
Opponent: Arch Wood Protection Pty Ltd
Delegate: Keith Wagg
Decision Date: 21 December 2015 (Corrected 22 December 2015)
Hearing Date: 23 September 2015
Catchwords: PATENTS – opposition to grant of a patent – claims involve an inventive step when the evidence is weighed – on balance of evidence D54 could not be reasonably expected to have been ascertained have been ascertained – claims are clear – the invention is a manner of manufacture – lack of best method of performance and insufficiency not established – inutility not established – claims are fairly based – costs awarded against the opponent.
Representation: Patent applicant: Julia Baird of Counsel, instructed by Anthony Place of Molins & Co. Pty Ltd
Opponent:Gareth Dixon, Patent Attorney of Shelston IP
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2008207612
Title:Surface Treatment for Wood and Wood Products
Patent Applicant: Koppers Performance Chemicals Australia Pty Ltd
Date of Decision: 21 December 2015
DECISION
The opposition fails on all grounds. Subject to appeal, I direct the application to proceed to grant.
Costs are awarded against the opponent.
REASONS FOR DECISION
Patent application number 2008207612 (the Application) in the name of Koppers Performance Chemicals Australia Pty Ltd – formerly Osmose (Austalia Pty Ltd – (the Applicant) was filed on 29 August 2008 claiming divisional status from application number 2003302613. Following examination by the Commissioner, the application was advertised as accepted on 19 January 2012. Arch Wood Protection Pty Ltd (the Opponent) served a Notice of Opposition to the grant of the patent on 19 April 2012. The opposition was heard in an oral hearing in Sydney.
The request for examination was filed prior to 15 April 2013. As a consequence, substantive amendments of the Patents Act 1990 brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present patent application. This includes the amendment to subsection 60 (3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists. I also note that any subsequent reference to the Patents Act relates to the Patents Act1990, prior to amendment by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.
Standard of proof
The onus of proof in this opposition proceeding rests with the opponent, who must demonstrate that it is clear that a valid patent cannot be granted (F.Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283 at [67]; 50 IPR 305; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18]; 79 IPR 426).
The Specification
The application relates to methods of treating wood for preservation and more particularly the superficial surface treatment of wood. The treatment involves the use of pyrethroids, specifically, bifenthrin as the active agent. The method of treatment is carried out at a sawmill. The specification ends with 20 claims. Claims 1-12 are directed to methods of timber preservation. Claims 13-16 are to an apparatus when used to preserve a timber product and claims 17-20 relate to a timber product produced by the method of claims 1-12.
What is the invention as described
Before commencing to construe the specification, I note what Middleton J said in Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214, 100 IPR 451 at [139]:
"It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date."
The background to the invention
The specification begins with the statement:
“The invention pertains to wood treatment, and more particularly to superficial surface treatment of wood.”
It then follows with:
“The invention has been developed primarily for use as method and apparatus for applying a superficial surface treatments of wood using synthetic pyrethroids at a sawmill, and will be described hereinafter”.
The specification discusses the synthetic non-cyano pyrethroid insecticide/acaracide known as bifenthrin (page 1 lines 15-21). It is known to be effective against a wide range of pests. The specification notes on page 1 lines 23-24 that it has not been used in the timber industry.
The specification goes on to discuss that the tests have demonstrated that bifenthrin is particularly effective against important termite species in Australia (page 1 lines 25-30).
The specification then discusses how treatment is carried out (page 2 lines 5-16).
The aim of the invention
The aim of the invention is clear from page 2 line 20 where the “object of the invention” is provided. It reads:
“It is an object of the present invention in a preferred form to provide a method and apparatus for the surface treatment of wood using synthetic pyrethroids such as bifenthrin.
It is also an object of the present invention in a preferred form to provide wood products made using these surface treatments.
In a preferred embodiment, the surface treatment comprises an application of between 4 and 38 g/m3 of timber product.”The nature of the invention
The nature of the invention can be gleaned from the preferred embodiments which are discussed on pages 3-4. It involves:
“applying a superficial treatment of a water based formulation of bifenthrin to the timber product; the water based formulation further comprising a colorant; the superficial treatment comprising an application of between 4 g/m3 and 38 g/m3 of timber product; and wherein the timber product does not require redrying.”
The application of the formulation is carried out at a sawmill.
The person skilled in the art (PSA)
It is well established that many of the issues in an opposition are answered by reference to the person skilled in the art:
"He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious."
(Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 at [70])However, they are an artificial construct that is used as a tool of analysis, and there is a danger in trying to identify them as an actual person or persons:
"The notional person is not an avatar for expert witnesses whose testimony is accepted by the court. It is a pale shadow of a real person – a tool of analysis which guides the court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step."
AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30 at [23]Our understanding of the person skilled in the art is based on evidence from persons with knowledge of the art as to the things that they know and do, and what they understand to be commonly known and done. The weighting and evaluating of this evidence to decide the characteristics of the person skilled in the art is part of the normal work of a delegate of the Commissioner.
The opponent contended in their submissions at 104 that:
“The evidence adduced by Dr Schmalzl shows that the art of timber preservation is necessarily a “science”, such that the properties of various chemicals, concentrations, solubilities, hazards, etc., dictate.”
And follows with:
“Accordingly, the PSA is somebody of specific academic knowledge, with a supplementary knowledge of all factors inherent in timber preservation – this includes the timber itself, harvesting and production, treatment and marketing.”
The applicant has made a similar notional PSA in their submissions at 11:
“The skilled person in this field in Australia at the Priority Date would know of synthetic pyrethroids used in timber preservation, and known methods of applying the synthetic pyrethroids for timber preservation that were suitable for use during timber production, and thus at sawmills.”
Despite some earlier contention, these positions on the PSA are largely analogous and the PSA would know the current chemicals used in timber preservation and how to apply them as well as a knowledge of sawmilling.
Construction of claim 1
The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70, 81 IPR 228 at [118] – [120]:
"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear … while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole … it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification … terms in the claim which are unclear may be defined or clarified by reference to the body of the specification"
Claim 1 is the first independent claim. It reads:
“A method of timber product preservation when performed at a sawmill, the method comprising the steps of:
applying a superficial treatment of a water based formulation of bifenthrin to the timber product; the water based formulation further comprising a colorant;
the superficial treatment comprising an application of between 4 g/m3 and 38 g/m3 of timber product; and
wherein the timber product does not require redrying.”The superficial treatment is discussed at page 8 of the specification in some detail and is said to include dipping, rolling, brushing, misting or spraying. Claim 6 also includes envelop treatment. While these differ, they are clearly distinct from vacuum and pressure treatments which penetrate the wood and would not be considered superficial treatment.
This treatment can occur anywhere at the sawmill but the specification discusses longitudinal and transversal sprays used after the stress grading step:
“Boards are marked during grading are detected by a scanner and then cut to appropriate length by the docker or docking saw. Transverse spraying may occur after the docker or docking saw operation. Ending rolls may be used to treat the ends of boards as required.”
The formulation of bifenthrin is discussed at page 8 lines 22-26.
Because the product does not require redrying the treatment may therefore be carried out on dry wood. There was some discussion of this at the hearing (see below for clarity).
Thus the claim is to a method of wood preservation with 4 features:
1. superficial treatment
2. a water based formulation of bifenthrin and colourant
3. performing the treatment at a sawmill
4. not requiring redrying.Claim 13 is another independent claim to the apparatus. It reads:
“An apparatus when used at a sawmill to preserve a timber product, the apparatus comprising:
an application means to apply a superficial treatment of a water based formulation of bifenthrin to the timber product; the water based formulation further comprising a colorant;
the superficial treatment comprising an application of between 4 g/m3 and 38 g/m3 of timber product. “This claim is to the apparatus which is at the sawmill essentially carrying out the method of claims 1-12. The apparatus could be a standard sprayer or dipping device that operates within a sawmill environment.
The opposition
At the hearing the opponent filed a new summary of submissions which they worked from. These did contain some differences to the summary of submissions on file. The applicant chose to address them at the hearing rather than filing further submissions. The statement of grounds and particulars had been amended previously. The statement was last amended on 16 June 2014 and the amendment allowed on 21 July 2014. The following grounds were pressed at the hearing:
1.Not a Manner of Manufacture
2.Not an invention
3.Lack of utility
4.There is no best method of performance
5.Insufficiency
6.Claims not fairly based
7.Lack of clarity
8.Lack of inventive step
Several declarations were filed during the course of the opposition.
Evidence in Support of the opposition consists of:
Statutory Declaration by Dr Karl Schmalzl dated 14 November 2012, with exhibits
KJS‐1 to KJS‐11 (Schmalzl #1).Evidence in Answer consists of:
1.Statutory Declaration of Anthony Haslett dated 15 May 2013, with exhibits AH‐01
to AH‐02 (Haslett # 1);
2.Statutory Declaration of Anthony Haslett dated 12 August 2013
(Haslett # 2).
3. Statutory Declaration of Anthony Jennings dated 15 May 2013, with exhibits AJ‐01
to AJ‐03 (Jennings # 1);4. Statutory Declaration of Elias Akle dated 10 April 2013 (Akle # 1);
5. Statutory Declaration of Elias Akle dated 15 May 2013, with exhibits EA‐01 to EA‐
02 (Akle # 2);6. Statutory Declaration of Elias Akle dated 7 August 2013, with exhibits EA‐01 to EA‐
09 (Akle # 3)Evidence in Reply consists of:
1. Statutory Declaration by Dr Karl Schmalzl dated 13 November 2013, with exhibits
KJS‐12 to KJS‐15 (Schmalzl # 2);2. Statutory Declaration by Gareth Dixon dated 14 November 2013, with exhibits
GMD‐1 to GMD‐3 (Dixon # 1).
Further Evidence consists of:
Statutory Declaration by Dr Karl Schmalzl dated 15 June 2014, with exhibits KJS‐17
to KJS‐18 (Schmalzl # 3).
Responding Evidence consists of:
1. Statutory Declaration of James Creffield dated 18 August 2014, with exhibit JC‐01
(Creffield # 1);2. Statutory Declaration of James Creffield dated 15 November 2014, with exhibits
JC‐02 and JC‐03 (Creffield # 2);3. Statutory Declaration of Anthony Jennings dated 18 August 2014 (Jennings # 2);
4. Statutory Declaration of Anthony Jennings dated 17 November 2014 , with exhibits AJ‐04 and JC‐09 (Jennings # 3);
Statutory Declaration of Stephen Crimp dated 18 August 2014, with exhibit SC‐01 (Crimp # 1); and5. Statutory Declaration of Elias Akle dated 18 August 2014, with exhibits EA‐01 to
EA‐10 (Akle # 4).I will deal with each ground in the logical order.
Clarity
It is logical to start with clarity because if the scope of the claims cannot be determined then it is difficult to determine further grounds such as obviousness.
It is a requirement of subsection 40(3) of the Act that the claims must be clear. This requirement is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim" (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59).
The opponent alleged that the claims lack clarity because of the feature in the claims that states:
“wherein the timber product does not require redrying”
This allegation is at 100 in their submissions:
“Timber preserved by treatment with bifenthrin is a known result (e.g. D50, at least). From this it follows that absent any limitations as to the dosage regimen by which the water based bifenthrin is applied to the timber so as to render it not requiring re-drying, the claims are not properly limited in respect of the result to be achieved.”
There is little discussion in the specification on whether the claim is directed to wood that has been dried or whether the process can be applied to green wood. There is no discussion of the water tolerances allowed.
The applicant submitted that re-drying means that the wood started with is considered dry to start with and that after treatment re-drying is not required. When looked at in the context of superficial treatment of a water based formulation, the fact that it does not require redrying tells the reader that the superficial treatment does not saturate the wood so much that a separate drying step is required.
If too much water is used and the wood requires re-drying then it would not be a method within the scope of the claims.
There was no declaratory evidence on the clarity of “re-drying” and the opponent sought to raise it “at the bar”. While this can be considered, it does not weigh heavily. The declarants, however, were able to comment on the claims and whether they considered prior art anticipated the claims without difficulty construing this point.
On balancing these considerations I agree with the applicant’s construction and I find that the claims are clear.
Inventive step
It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, involves an inventive step. Subsection 7(2) states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art. A document is prior art for this purpose if "a skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded [the document] as relevant" (subsection 7(3)).
The test for whether an invention is obvious is to ask whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd [1981] HCA 12 at [45], 148 CLR 262 at 286 Aickin J stated:
"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."
The High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59, 212 CLR 411 approved this approach.
In AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [202] and [203], the full Federal Court held that if a problem addressed by a patent specification is itself common general knowledge, or if knowledge of the problem is part of the prior art information, then such knowledge or information will be attributed to the hypothetical person skilled in the art for the purpose of assessing obviousness. On the other hand, if the problem cannot be attributed to the hypothetical person skilled in the art in either of these ways then it is not permissible to attribute a knowledge of the problem on the basis of the inventor’s “starting point” such as might be gleaned from a reading of the complete specification as a whole. On appeal the high court did not alter this position AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30.
It is useful to look at the common general knowledge now.
The common general knowledge (CGK)
The common general knowledge was defined by Aickin J in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at 292 as:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
Mr Haslett discusses his knowledge of what was known in the field in Haslett #1 at 11-13. He mentions that termite treatment involved:
“Pressure treatment of water-borne CCA preservative salts which necessitate redrying after treatment.”
And:
“Pressure treatment with light organic solvent using Permethrin as the active ingredient. Whilst this process does not require redrying it has the disadvantage of using a costly solvent which can present odour and irritant problems in the final use situation.”
He then states that:
“To the best of my knowledge, upon subsequent evaluation of the Osmose H2F envelop treatment process, I did not become aware of any pre-existing commercial implementation of timber mill inline spray application of a water-borne preservative such as Bifenthrin or Permethrin.”
Mr Creffield discussed many methods of wood preservation known at the priority date. Most of these had toxicity issues (Creffield #1 pages 8-15). He notes that synthetic pyrethroids were first developed in the 1970s (page 10 at 33). He states at 34 that:
“the synthetic pyrethroids approved in the Australian Standard at the priority date for use as timber preservatives in H2 timber treatments was permethrin, deltamethrin and cypermethrin.”
He then states that:
“Bifenthrin was not specified in the Australian Standard for use in H2 timber treatment at the priority date.”
He then states that:
“The Australian Standard first specified Bifenthrin for use in H2 and H2F in 2005.”
Dr Schmalzl was asked by the opponent to set out (Schmalzl #1 at 87):
“whether as of 5 December 2002, I knew, or could easily have located certain information relating to the subject matter now claimed in the Opposed Application”
The applicant took issue with this approach and states that it taints the information with hindsight. I agree that hindsight is to be avoided and this does not appear a correct approach to use to establish common general knowledge. I will take this into consideration when weighing his information.
The applicant took further issue with Dr Schmalzl’s knowledge of the person skilled in the art. He was a researcher in the field of wood preservatives and may be distant from the skilled addressee.
Dr Schmalzl worked in wood preserving emulsions and did research at CSIRO and now works as a consultant and has done work with Universities sponsored by timber companies (Schmalzl #1 at 4-5). I consider he would have knowledge of the person skilled in the art at the priority date.
In his declaration, Dr Schmalzl states at 88:
“That bifenthrin was registered throughout the world for the control of a range of pests.”
“That bifenthrin was widely used in many industries, including cotton, grain, turf, pestcontrol, flower, home garden and mosquito control.”He goes on to say that:
“according to some literature and as effected by methodology (although not all literature concurs) to protect timber against Coptotermes acinaciformis and Mastotermes darwiniensis, effective concentrations of bifenthrin are 5 and 20 g/m3 respectively”.
He also states that:
“that the formulation of bifenthrin in water was well known and practiced”
“that a superficial treatment of an active was effectively provided using a spray method”
“That surface treatment of timber products routinely occurred in a sawmill.”
“that the use of linear or in-line sprayers was commonplace in the timber treatment industry”
“that the inclusion of dyes/colorants was largely for compliance with various state and federal legislation.”
Conclusion on CGK
Pyrethroids would have formed part of the common general knowledge, including those approved in the Australian Standard. While bifenthrin was known, its use for timber preservation specifically has not been established as common general knowledge.
I accept that the use of colorants would also form part of the common general knowledge as they were for compliance with legislation.
Sawmills would have formed part of the common general knowledge.
The Problem
It is clear from both the specification and the common general knowledge by all declarants that the problem was to adequately protect wood in Australia from termite attack. The previous methods had serious OH and S issues (see page 5 lines 5-21 of the application). Using bifenthrin overcame this issue and it also could be used at the sawmill.
Inventive step in view of “What’s New in Forest Research (No. 234): NZ FRI Lectraspray –Controlled Application of Antisaptain Chemicals” New Zealand Forest Research Institute (“NZFRI”), Rotorua, New Zealand, 1994 (D54)
The opponent contended that the claims are obvious in view of D54 on face value and in combination with the common general knowledge.
It is a requirement of the Act for a document to be used against a claim when assessing inventive step that the person skilled in the art could be reasonably expected to have been ascertained, understood, and regarded as relevant (s 7(3)).
D54 was said to be “found” by Dr Schmalzl in Schmalzl # 3 at 16:
“A first point to make is that I did, quite literally, ascertain the D54 document.”… “I physically uncovered the D54 document.”
He references his second declarations to state that:
“[96] One of skill in the field of timber preservation… must keep abreast of recent developments in the field. These can include research papers/scientific publications, trade journals and the patent literature.”
The applicant presented evidence in Jennings # 3 about whether or not D54 could indeed be ascertained which stated (at 14):
“I have found that the D54 reference is currently indexed in google books search engine”.
Jennings then makes the point that:
“The Google books facility was not available in 2002.”
Jennings notes that to “uncover” the publication in a library, as one would have had to have done in 2002, would take significant effort (Jennings #3 at 16).
Jennings believed that this document would likely be over looked by the PSA in 2002 and stated in Jennings #3 at 18 that:
“I estimate that less than 5% of the articles in the “What’s new in Forest Research” newsletter series relate to timber preservation.”
Jennings also noted that the publication is due for destruction in the CSIRO library and stated that (Jennings #3 at 38):
“According to CSIRO library staff, this destruction is due to a lack of use not justifying the cost of shelving resources.”
Creffield does not believe that an Australian PSA would be aware of the NZ publication in 2002 (Creffield #1 at 73). His experience was that there was not that much collaboration with NZ (Creffield #1 at 59). However, there were some projects between CSIRO and FRINZ. This was in contradiction to the view of Schmalzl who believed there was essentially no Tasman Sea in the field.
Creffield notes that there are differences between Australia and New Zealand in terms of preservation because the pests are different. While Australia has issues with 15-20 species of termites, New Zealand only has about 3 native species and these are not considered to cause damage (Creffield #1 at 60).
Furthermore D54 teaches an antisapstain Lektraspray system which can be used in line in sawmills. Creffield notes that antisapstain is used to restrict fungal infection (such as moulds which produce a sapstain) (Creffield #1 71-77 and D54 at page 2 third paragraph). This is quite different to stopping termites in Australia using Bifenthrin.
On balancing the evidence of Dr Schmalzl, Jennings and Creffield I do not consider that the person skilled in the art could reasonably have been expected to have ascertained D54.
I note that when D54 was filed, it was not fully incorporated as an exhibit in evidence and only a few pages were filed. Given my decision above I do not have to decide whether D54 is in evidence.
Inventive step in view of “Bifenthrin, A new insecticide for the control of termites and wood boring insects”, Rustenberg, et al., 16 June 1995 prepared for the International Research Group on Wood Preservation, Section 3 (D50)
The declarant for the applicant, Mr Creffield, was familiar with D50 but contended that an ordinary PSA would not have ascertained the document (Creffield #2 at 84).
The document specifically discusses Bifenthrin and its ability to control termites and wood boring insects. In looking at pyrethroids and wood preservation in Australia the person skilled in the art would be likely to ascertain such a document through literature searching. The title indicates directly to the reader that it is in the field.
I therefore consider that D50 would have been ascertained, understood and regarded as relevant by the PSA.
D50 discloses that water formulations of bifenthrin are effective against Australian termites (page 15, Section 4.10). The formulations give concentrations within the scope of the claims.
The test is carried out by dipping pine veneers, of green wood, followed by drying for 12 minutes as they passed through a mechanical jet box having an air temperature at 270 ºC at first stage followed by 170 ºC at the final stage (section 3.10 page 7).
D50 therefore does not disclose a process that does not require re-drying, rather green (wet) wood is taken and dipped, then dried. This is a separate drying step, it does not teach a method of taking dry wood and superficially treating it such that it does not require redrying.
There is no disclosure of treatment at a sawmill or the use of a colourant in D50.
The applicant has argued that D50 does not teach wood preservation, but merely that bifenthrin is of interest as an insecticide. Using an insecticide on wood like this is showing its use in wood preservation−it is preserving it from termite damage.
The opponent contended that D50 teaches a process that would be done at the most convenient place, i.e. at a sawmill. Other techniques are conducted at sawmills such as the “Boron Diffusion Process” (Schmalzl #1 at 98).
However I see nothing in D50 alone which suggests bifenthrin could be used without re-drying and at a sawmill. It teaches that Bifenthrin is effective against termites when applied to green veneers and then dried. The obvious steps the PSA would take to reach the claimed invention have not been set out and Schmalzl’s evidence does have the benefit of hindsight.
I therefore find that on weighing the evidence the claims possess an inventive step in view of D50 alone.
The next allegation was that the claims lacked inventive step when D50 was combined with common general knowledge.
As outlined above, D50 does show that bifenthrin may be useful to preserve wood against termites. It does not suggest doing so without redrying or at a sawmill or with the use of a colorant.
I accept that the use of colorants is regulated and therefore would be common general knowledge.
The opponent cited Schmalzl’s first declaration at 103-105 which states:
“There are three places that wood can be treated: on-site, at a treatment plant, or at a sawmill.
Including the “sawmill” feature within claim 1 of the opposed application implies that the Applicant believes that there may be something inventive in so-doing. On the contrary, it is difficult to think of any steps that would be more obvious.
Indeed, treating a piece of wood at a sawmill is somewhat akin to filling up ones car at a gas station, or driving a car on the road; the two go hand-in-hand.”
While this might seem obvious in hindsight. Creffield notes in Creffield #2 at 86-89 that there is nothing to suggest in D50 that superficial treatment using bifenthrin could be carried out at a commercial sawmill.
100. However, importantly there is nothing in evidence and CGK that the person skilled in the art would be directly led as a matter of routine to adapt the test method disclosed in D50 to one that does not require redrying.
101. On weighing these considerations, it has not been established that all the features of the claims would be obvious in view of D50 when combined with the common general knowledge.
Conclusion on inventive step.
102. The evidence does not establish that all of the features would have been obvious to the PSA at the priority date. Consequentially, this ground of opposition fails.
Full description and Best Method of Performance
103. It is a requirement of subsection 40(2) of the Act that the specification must describe the invention fully. The High Court in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 at [25], 207 CLR 1 at 17 explained this requirement as:
"The question is, will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?"
104. The specification, in addition to fully describing the invention, must include the best method of performing the invention. In American Cyanamid Company v Ethicon Limited [1979] RPC 215 at page 269, it was stated:
“The Act is intending to protect the public against a patentee who deliberately keeps to himself something novel and not previously published which he knows of or has found out gives the best results, with a view to getting the benefit of a monopoly without giving to the public the corresponding consideration of knowledge of the best method of performing the invention.”
105. Consequently, even if a manner of performing an invention is self-evident, applicants are nevertheless required to set out the best method of performing the invention known to them. The best method requirement is assessed on the basis of the applicant’s knowledge at the time of filing the complete specification (Rescare Ltd. v Anaesthetic Supplies Pty. Ltd., 25 IPR 119). If the applicant identifies a better method at a time subsequent to filing, there is no obligation to amend the specification to include that method. In addition, if the specification does not include the best method, it can be amended to include the best method (as known to the applicant at the time of filing), at least until the time of grant (Pfizer Overseas Pharmaceuticals v Eli Lilly [2005] FCAFC 224).
106. The opponents alleged that there was no best method of performance because the sawmill feature was better defined in the provisional application, that there is an absence of a re-drying step and the colorant is not exemplified.
107. There is no evidence which has established that on reading the specification a person skilled in the art could not produce something within each claim.
108. The opponent said that the colorant and sawmilling features are part of the common general knowledge. Consequently I do not see how they can establish that carrying out these would then require new inventions or additions or prolonged study of matters presenting initial difficulty. That is, if they are part of the common general knowledge then the person skilled could put them into practice without invention.
109. The opponent submitted (at 60) that:
“the absence of the parameters associated with the requirements of a product to be re-dried have not been described.”
110. This must fail because I cannot see a reason to provide a best method of performance or full description for a feature which has been disclaimed.
111. There is no evidence that the sawmill features which were in the provisional document are better than what a person skilled in the art would construct from the current disclosure.
112. This ground of opposition fails.
Fair basis
113. It is a requirement of subsection 40(3) of the Act that the claims must be fairly based on the matter described in the specification. The High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 at [69], 217 CLR 274 at 300 approved the words of Gummow J in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 95:
"the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification"
114. The opponent alleged that the claims lacked fair basis because (at 85 in their submissions):
“there is inadequate basis for the range 4-23 g bifenthrin per cubic metre of treated timber product.”
115. They allege that the 4-23 g/m3 is neither described in an enabling manner, nor is it exemplified.
116. The opponent submitted that the use of the registered trademark “Determite®” in one of the examples results in a lack of fair basis.
117. While the use of a trademark can introduce uncertainty in relation to a real and reasonably clear disclosure, that is not so in the present case. There are sufficient examples where bifenthrin is used.
118. Table 4 on page 9 uses bifenthrin in water with repellants at 4 g/m3, 8 g/m3, 15 g/m3 and 23 g/m3. So the range from 4-23 g/m3 is exemplified.
119. The opponent then alleges that the water repellant is an essential feature and there are no examples within the range 23-38 g/m3. However, the summary of invention does discuss this range. The invention described in this sense is consistent with that claimed. Fair basis does not serve to limit the claims to the specific exemplified examples.
120. The application does mention that additives, such as water repellants can be used as well as fire retardants, (page 8 lines 27-30). The application does demonstrate to me that a water repellant is not an essential feature of the invention.
121. The invention described is consistent with the invention claimed.
122. This ground of opposition fails.
Manner of manufacture and not an invention
123. It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, must be a manner of manufacture within the meaning of section 6 of the Statute of Monopolies.
124. The opponent alleged there was “not an invention” in the specification because there is no description of any advantage in conducting the superficial treatment at a sawmill. I will decide this matter under whether the invention is a manner of manufacture.
125. Under manner of manufacture, the opponent alleges that the claims amount to a mere collocation. A mere collocation is discussed in Smith & Nephew Pty Ltd v Wake Forest University Health Sciences [2009] FCAFC 142 at [16]:
“A mere collocation of parts, each performing its own separate function, is not patentable. However, a claim may validly combine a number of elements which interact with each other to produce a new result or product.”
126. It is similarly to the test in Astrazeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [383]:
“…the majority in NV Philips clearly held that the requirement of inventiveness will not be satisfied where the claims are for nothing more than the use of known materials in the manufacture of known articles for a purpose for which that material’s known properties make it suitable.”
127. While I do not believe there is any contention that sawmills are known and bifenthrin was known to protect against termites (D50), the method that uses of bifenthrin in a superficial application at a sawmill that uses dry wood and after treatment and does not require redrying was not known. The fact that the bifenthrin formulation could be used at a sawmill is not disclosed in D50 and a commercial sawmill environment is different to the tests carried out in D50.
128. The opponent also cited the examination reports No. 1 on the divisional applications AU2012202186 and AU2013204209, which raise an objection of inventive step and suggest the location of the method did not affect the working of the invention. However, findings during the patent examination process cannot be determinative in opposition proceedings such as the present. I will decide this matter on the basis of the evidence before me.
129. There are many advantages listed on page 10, lines 5-19 of the current application and advantages can be gleaned from the commercial success (Haslett #1 at 22, Haslett #2 at 35-41 and Akle #4 at 46-52). This indicates that there are advantages beyond the individual parts of the invention.
130. This ground of opposition fails.
Utility
131. It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, must be useful. The issue of utility was considered by the Full Court of the Federal Court in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70, 81 IPR 228. Emmett J at 247 [81] stated:
"A claim is bad if it covers means that will not produce the desired result, even if a skilled person would know which means to avoid. That is to say, everything that is within the scope of a claim must be useful, otherwise the claim will fail for inutility"
132. The opponent alleges that the claims lack utility because they do not meet the objects, aspects, advantages, embodiments and/or promises of the invention. In making this allegation they cite point 5 which is on page 10 which states that:
“Wood treated according to the invention does not require re-drying after the treatment. Normal process requires re-drying when the end use is framing.”
133. I note that if a process requires redrying then it is not within the scope of the claim. Therefore this does not demonstrate to me that something within scope of the claims does not produce the desired result.
134. The opponent further argues that the claims lack utility because the concentration of bifenthrin in water is not given and all that is required is that 4-38 g/m3 bifenthrin be applied. The opponent believes that there would be concentrations of water where the formulation would be so wet that the timber would require redrying. However, these concentrations would not be within the scope of the claims because they would require redrying.
135. The opponent has not demonstrated that something within the scope of the claims is not useful or does not meet the promise of the invention and as a consequence this ground of opposition fails.
Conclusion
136. The opposition fails on all grounds.
137. Subject to appeal, I direct that the application proceed to grant.
Costs
138. The parties submitted that costs should follow the event. I see no reason to depart from that result. The opposition has been unsuccessful; costs under Schedule 8 are awarded against the opponent.
K. Wagg
Delegate of the Commissioner of Patent
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