Atlas Powder Company v. Ici Australia Operations Pty. Ltd. and Ireco Chemicals

[1989] APO 10

In the Matter of the Patents Act 1952

‑ and ‑

In the Matter of Application No. 515896 for a Patent by ATLAS POWDER COMPANY

‑ and ‑

In the Matter of a Request under Section 77

‑ and ‑

In the Matter of Oppositions thereto under Section 82 by ICI AUSTRALIA OPERATIONS PTY. LTD. and IRECO CHEMICALS.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
         Patent application No. 515896, which is entitled "Water‑In‑
Oil Emulsion Explosive Composition", has been opposed under section 59 by ICI Australia Operations Pty. Ltd. (ICI) and Ireco Chemicals (IRECO).
         On 10 October 1985, which is after the section 59 opposition proceedings commenced, the applicant (ATLAS) lodged a request under section 77.  The allowance of this request was not opposed and the amendments were incorporated into the specification.  ATLAS lodged a second request under section 77 on 30 September 1986 and particulars of the request were advertised in the Official Journal dated 13 November 1986.  ICI and IRECO lodged notices of opposition to this second request under section 82.  The service of

evidence in respect of the section 59 oppositions and both section 82 oppositions has been completed, however all parties agreed that it would be appropriate to hear the section 82 oppositions before the section 59 oppositions.  Consequently the section 82 oppositions were set down for hearing in Canberra on 21 November 1988.  At the hearing Mr. C. Marsh, patent attorney, assisted by Mr. P. Whenman, both of F.B. Rice & Co., represented ATLAS and Dr. I. Ernst, patent attorney of Shelston Waters, represented both ICI and IRECO.  The hearing was also attended by Mr. R.L. Evans of ICI.
The Specification as Lodged
         The specification as lodged relates to water‑in‑oil emulsion explosive compositions.  In a specific aspect, the invention relates to improved compositions which are detonable by a No. 6 blasting cap, and which do not contain an explosive ingredient or a detonation catalyst.
         The invention is described in similar terms to claim 1 which reads as follows:

"1.A cap sensitive water‑in‑oil explosive consisting essentially of:

(a)from about 3 to about 10% by weight of a carbonaceous fuel including an emulsifier;

(b)from about 10 to about 25% by weight water:

(c)from about 0.25 to about 10% by weight of closed cell void containing material; and

(d)from about 35 to about 86% by weight of inorganic oxidizer salt."

According to the description the closed cell void containing material which is used encompasses any particulate material which comprises closed cell, hollow cavities.  The preferred closed cell void containing materials all have particle sizes within the range of about 10 to about 175 microns.  Sufficient closed cell void containing material is utilized to yield a density of from about 1.1 to about 1.3g per cc in the resulting emulsion.
         The preferred carbonaceous fuels, emulsifiers, closed cell void containing material and inorganic oxidizer salt are described.  The description also states that the water‑in‑oil compositions can also contain up to about 20% by weight of an auxiliary fuel such as aluminium, aluminium alloys and magnesium.  According to the description a minor portion of the water can be replaced with a water soluble fuel such as ethylene glycol.
         I note that claim 12 claims the explosive composition of claim 1 further comprising 20% by weight thereof of an auxiliary fuel.  Claim 16, which is an independent claim, defines an explosive composition detonable by a No. 6 cap in cartridge diameters of 1.25 inches which includes up to about 20% by weight of an auxiliary fuel.
The Amended Specification
         The specification as lodged was amended during examination and was also amended by the section 77 request lodged on 10 October 1985.  The most significant changes to the specification as lodged are to claim 1 and the consistory statement.  The consistory statement is expressed in similar terms to claim 1, which reads as follows:

"1.A cap sensitive water‑in‑oil explosive composition comprising:

(a)from 3 to 10% by weight of a carbonaceous fuel including an emulsifier;

(b)from 10 to 25% by weight water;

(c)from 0.25 to 10% by weight of closed cell void containing material, said void containing material having a particle size of from 10 to 175 microns; and

(d)from 35 to 86% by weight of inorganic oxidizer salt."

The Specification as Proposed to be Amended
         The amendments proposed to the specification in the section 77 request lodged on 30 September 1986 are to change the consistory statement (page 3a) to correspond with the proposed claim 1, insertion of a new page 5a and replacement of the claims with a new set of claims.  The only claims which I need consider for the purposes of this decision are proposed claim 1 and proposed claim 30 which read as follows:

"1.A cap sensitive water‑in‑oil explosive composition comprising:

(a)from 3 to 10% by weight of carbonaceous fuel including an emulsifier;

(b)from 10 to 25% by weight water;

(c)from 35 to 86% by weight of inorganic oxidizer salt;

(d)up to 20% by weight thereof of an auxiliary fuel;

(e)an amount of closed cell void containing material, selected from within the range of from 0.25 to 10% by weight, to impart a density in said composition, of from 1.1 to 1.3g per cc, said void containing material having a particle size of from 10 to 175 microns, and being the sole material selected to impart said density,

said explosive composition being detonable by a No. 6 blasting cap in a charge diameter of 1.25 inches.

30.The explosive composition of claim 1 or claim 15 wherein the ratio of water to oxidiser salt is from 1:6.1 to 1:7.6."

I note that proposed claim 15, which corresponds to claim 16 in the specification as lodged, has been changed in a similar manner to proposed claim 1.
Evidence
         ICI and IRECO lodged identical evidence‑in‑support of the oppositions.  This evidence consists of a declaration made by Vladimir Sujansky, who is an employee of ICI in Australia.  US patent No. 3447978, which is described as prior art in the present specification, is one of the exhibits to this declaration.  The evidence‑in‑answer consists of a declaration made by Charles Gary Wade an employee of ATLAS in the United States of America, who is named as the inventor in the present application.  ICI served evidence‑in‑reply and this consists of a further declaration made by Mr. Sujansky which includes 21 exhibits.  ICI was also granted special leave to adduce further evidence under regulation 59 and the relevant part of this evidence consists of another declaration made by Mr. Sujansky, which includes 2 exhibits.  I do not intend to summarise all this evidence because I will discuss the relevant parts of the evidence later in this decision.
Submissions
         Dr. Ernst said that the specification of application No. 515896 should be construed on the basis that US patent No. 3447978 was common general knowledge in the art.  He also pointed out that the phrase "consisting essentially of" rendered claim 1 as lodged unclear (Boeing's Application 1967 AOJP 409).  Thus he argued that the specification of application No. 515896 as lodged could be interpreted in several ways with respect to the amount of air which was entrapped within the composition.
Turning to the proposed new page 5a, Dr. Ernst directed my attention to several phrases which he said introduced ambiguity into the specification, for example the phrase "a minor amount of air". He submitted that an amendment should be refused if it introduced uncertainty or ambiguity into a specification (Farbwerke Hoechst A.T. Vormals Meister Lucius and Bruning v. Commissioner of Patents 124 CLR 654 at page 663). Dr. Ernst also said that the specification as lodged was silent with respect to some of the features disclosed in the new text on the proposed page 5a, for example "a minor amount of air". On the basis of the test in the Mond Nickel case (Mond Nickel Co. Ltd.'s Application 1956 RPC 189 at page 194) he submitted that the proposed page 5a related to matter which was not in substance disclosed in the specification as lodged.
Dr. Ernst said the words "being the sole material selected to impart said density" in part "(e)" of the proposed claim 1 rendered the claim unclear because all the components of the composition contributed to the density of the composition. He also suggested that the inclusion of the words "the sole material selected to impart said density" had shifted the centre of gravity of the proposed amended specification so that this specification was concerned with a different invention to the invention disclosed in the specification as lodged (May and Baker Ltd. v. Boots Pure Drug Company Ltd. 1950 RPC 23 at pages 34 and 35).
         Dr. Ernst criticised the clause in proposed claim 1 which reads as follows:

"said explosive composition being detonable by a No. 6 blasting cap in a charge diameter of 1.25 inches."

He said the effect of this claim by result (No Fume Ltd. v. Frank Pitchford and Co. 1935 RPC 231) was that the proposed amended specification related to a different invention to that disclosed in the specification as lodged.
         Dr. Ernst then argued that the ratio of water to oxidizer defined in proposed claim 30 lay outside the range disclosed in the preferred embodiments.  Finally he submitted that the request under section 77 should be refused because the amendment did not comply with the requirements of sub‑sections 78(1) and 78(4).
         Mr. Whenman commenced by disputing that US patent No. 3447979 was common general knowledge in the art in Australia at the relevant time.  He said it was apparent from US patent No. 3447979 that the amount of air in an explosive emulsion was related to the manner in which the components were mixed and the temperature at which mixing took place.  According to Mr. Whenman it was well known that some air is entrapped when an emulsion is prepared under normal conditions but this was a minor amount of air compared to the amount deliberately entrapped in the compositions described in US patent No. 3447979.  Thus Mr. Whenman submitted that a person skilled in the art would understand what was meant by the words "a minor amount of air" on the proposed page 5a.
         Mr. Whenman said that the use of the words "sole material" in the proposed claim 1 was to contrast this minor amount of air, which was inherent in the emulsification process, with the amount of air deliberately entrapped in the compositions disclosed in US patent No. 3447979.  He also argued that some of the changes, for example the introduction of the feature of the explosive being detonable by a No. 6 blasting cap in a charge diameter of 1.25 inches, were not necessary but were desirable to explain the nature of the invention (AMP Inc v. Commissioner of Patents 1974 AOJP 3224 at page 3227).  Consequently he submitted that the section 77 request should be allowed.
Decision
I conclude from the submissions made by Dr. Ernst and Mr. Whenman that before construing the specification as lodged, it is necessary to decide whether US patent No. 3447979 is part of common general knowledge. A patent specification may form part of the common general knowledge in a particular art in Australia if there is evidence which establishes that those who work in the art study and make themselves familiar with the contents of the patent specification (Minnesota Mining and Manufacturing Co. and 3M Australia Pty. Ltd. v. Beiersdorf (Aust.) Ltd. 29 ALR 29 at page 59).
         Mr. Sujansky declares that he was skilled in the art of explosive emulsions and that he was acquainted with other workers in Australia having similar skills.  He estimates that there were fewer than a dozen persons in Australia skilled in the art of emulsion explosive compositions at the relevant date and consequently he believes he is qualified to testify as to what those of ordinary skill in the art in Australia considered to be part of common general knowledge.  Mr. Sujansky asserts that US patent No. 3447979 was a master patent and all those engaged in the development of explosive emulsions were fully familiar not only with the patent itself but also with the surrounding technology.  In his opinion this US patent constitutes common general knowledge in the art.  I think Mr. Sujansky's declaration establishes his own skill and knowledge in the art of emulsion explosive but it seems to me that one declaration by itself cannot establish that a particular US patent formed the background knowledge and experience which was available to all in the art (Minnesota Mining case, supra, page 57).  I also think the fact that the present specification refers to US patent No. 3447979, does not necessarily mean that the present applicant admits that this patent is part of common general knowledge.  Therefore I consider there is insufficient evidence before me to find that US patent No. 3447979 is part of common general knowledge.  Consequently I will interpret the specification as lodged in light of the fact that US patent No. 3447979 is merely admitted to be relevant prior art.
         Claim 1 of the specification as lodged defines an "explosive composition consisting essentially of" four components and these components do not include entrapped air.  In my view this claim defines an explosive composition which must contain the four components in the minimum proportions specified in the claim.  However I do not interpret the claim to mean that the sum of the proportions of all the components is 100% (cf. Boeing Co.'s Application 1967 AOJP 409).  In other words the composition may contain components which are not defined in claim 1.  For example page 8 of the specification as lodged states that a minor portion of the water can be replaced with a water soluble fuel.  This feature is not defined in any of the claims as lodged.
         In Mr. Sujansky's opinion the amount of air incorporated during emulsification will depend on the composition of the emulsion and its physical properties (e.g. viscosity), the conditions under which it is processed (e.g. temperature, pressure), and the equipment used.  Dr. Wade declares that those skilled in the art know how to process an emulsion to exclude substantially all occluded air.  He says the possibility always exists that a minuscule portion of air may unintentionally be included during manufacturing without materially altering the essence of his invention.  Mr. Sujansky responds by pointing out that the amount of air is indeterminate.
The specification as lodged specifically directs attention to US patent No. 3447979, which describes methods for deliberately adding bubbles of gas, including air, to an explosive composition. However the description of the present emulsification process does not specifically state that air is deliberately added to the composition nor is there any description of a procedure for doing so. Moreover the first sentence on page 6 of the specification as lodged states that merely imparting the same density of compositions which would otherwise fall within the scope of the subject invention by entrained air bubbles or by porous glass agglomerates and the like, rather than closed cell void containing material, will not yield No. 6 cap sensitive explosives. Thus in my view the specification as lodged does not teach that air is deliberately added to the explosive compositions. However I think a purposive construction (Catnic Components Ltd. v. Hill Ltd. 1982 RPC 183) of the specification as lodged is that the specification does not teach all air is excluded from the explosive compositions. For example there is no specific teaching that all air is removed from the solutions prior to emulsification or that the emulsification is conducted so that no air is entrained in the composition during emulsification. Therefore I conclude that the explosive compositions which are disclosed in the specification as lodged may contain some air which is unintentionally entrapped in the composition.
         Turning to the proposed page 5a I note that the effect of the amendment is to insert a sentence between the first and second sentences of the first paragraph on page 6 as lodged.  The first two sentences on page 5a read as follows:

"In general, I have found that merely imparting the same density of compositions which would otherwise fall within the scope of the subject invention by entrained air bubbles or by porous glass agglomerates and the like, rather than the closed cell void containing material, will not yield No. 6 cap sensitive explosives which will detonate in 1.25 inches and smaller diameter cartridges at densities greater than about 1.1.  Although it will be appreciated by a person skilled in the art, that during normal processing of an emulsion type composition, a minor amount of air may become entrained in the compositions whereas the aforementioned entrained air bubbles, porous glass agglomerates and like materials have been used to deliberately incorporate gas in a composition, in addition to air present as a result of the emulsification process, to yield a desired composition density."

Dr. Ernst objected to the phrase "a minor amount of air" which occurs in the second sentence of the quotation above.  I have already found that the compositions described in the specification as lodged may contain some air which is unintentionally entrapped in the composition.  The first sentence of this quotation, which also occurs on page 6 of the specification as lodged, compares the present explosive compositions with prior art explosive compositions which contain deliberately entrapped air, for example the compositions described in US patent No. 3447979.  In my view it is clear that an explosive composition, in which air is not deliberately entrapped, will contain a minor amount of air compared to an explosive composition in which air is deliberately entrapped.  Thus I think the specification as lodged discloses explosive compositions which contain a minor amount of air.  I also think that the phrase "a minor amount of air" is not ambiguous in the proposed amended specification because the phrase occurs in a paragraph which compares the prior art explosive compositions, which contain deliberately entrapped air with the explosive compositions of the invention, which do not contain deliberately entrapped air.
         Claim 1 as proposed to be amended, as well as the corresponding description, contains a clause which reads as follows:

"said explosive composition being detonable by a No. 6 blasting cap in a charge diameter of 1.25 inches"

According to Dr. Ernst this clause, which was introduced by the present request under section 77, completely changes the nature of the invention.
          The specification as lodged commences as follows:

"This invention relates to water‑in‑oil emulsion explosive compositions.  In a specific aspect, this invention relates to improved water‑in‑oil emulsion explosive compositions which are detonable by a No. 6 blasting cap, and are made of nonexplosive components."

On page 3 of this specification, in the section entitled "Summary of the Invention", is a statement which reads as follows:

"According to the invention, improved water‑in‑oil explosive compositions are provided which can be detonated with a No. 6 cap at diameters of 1.25 inches and lower which do not contain an explosive ingredient nor a detonation catalyst."

After the title "Detailed Description of the Invention" the specification as lodged states as follows:

"Thus, I have discovered that water‑in‑oil emulsion explosive compositions can be made and detonated with a No. 6 cap at diameters of 1.25 inches and lower."

Also, following the description of the preferred embodiments, the specification states that the explosive compositions are sensitive to conventional No. 6 blasting caps and are suitable for detonation in small diameters (of 1.25 inches and less).

         Claim 1 as lodged claims a cap sensitive water‑in‑oil explosive emulsion but claim 16 as lodged defines a composition which is detonable by a No. 6 cap in cartridge diameters of 1.25 inches.  I conclude from the whole of the specification as lodged that the invention relates to cap sensitive explosive compositions and that the preferred compositions are detonable by a No. 6 blasting cap with a charge diameter of 1.25 inches.
The specification as proposed to be amended only relates to explosive compositions which are detonable by a No. 6 blasting cap in a charge diameter of 1.25 inches. Therefore the result of the amendment is that a feature, which is described as an optional feature in the specification as lodged, is described as an essential feature in the proposed amended specification. Such a change in the description of a feature does not result in the specification as proposed to be amended claiming matter which is not in substance disclosed (AMP Inc. v. Hellerman Ltd. 1962 RPC 55).
         Part "(e)" of claim 1 as proposed to be amended reads as follows:

"an amount of closed cell void containing material, selected from within the range of from 0.25 to 10% by weight, to impart a density in said composition, of from 1.1 to 1.3 g per cc, said void containing material having a particle size of from 10 to 175 microns, and being the sole material selected to impart said density,"

Mr. Sujansky states that all the components in the composition influence the final density of the composition and thus the meaning of the closed cell void containing material being "the sole material selected to impart said density" is unclear.  In his opinion the proposed page 5a introduces the gloss that "sole" means to the exclusion of density reducers except a minor amount of air which may become entrapped in the composition as a result of the emulsification process rather than meaning to the total exclusion of any other density reducer.  Dr. Wade comments as follows:

"One skilled in the art also knows that to render a water‑in‑oil emulsion composition detonable, void spaces must be incorporated into the emulsion in a substantially uniform manner to achieve detonation.  If one mixes all the components and leaves out the closed cell void containing material and does not gas the composition, the densities will be higher than 1.34.  The typical ranges for non‑aerated emulsions are from 1.35 gm/cc to 1.45 gm/cc.  Thus, one skilled in the art would clearly understand that the recitation of the sole material to achieve the recited density refers to utilization of closed cell void containing material to lower the density of the unaerated emulsion into the specified range."

I have already found that there may be some air which is unintentionally entrapped in the compositions described in the specification as lodged and whilst this air will reduce the final density of the composition it does not, in my view, introduce the gloss suggested by Mr. Sujansky because the air is added unintentionally and is not "selected".
         I think Dr. Wade's interpretation of the recitation of the closed cell void containing material as the sole material to achieve the density assumes the skilled person knows that the density of an unaerated composition is greater than 1.34g per cc.  However there is no evidence before me that this assumption is common general knowledge in the art in Australia.
         The specification as proposed to be amended describes the closed cell void containing material in the context of its use to yield a density in the resulting emulsion of from about 1.1 to about 1.3.  It is also apparent that the closed cell void containing material is a low density material (0.032 to 0.40 g per cc).  However I note that the amended specification does not describe the basis on which the closed cell void containing material is defined as the sole material selected to impart said density.  In my view this is a serious omission because it is well known that all the components of a composition contribute to the final density.
          I consider a difficulty with the phrase "being the sole material selected to impart said density" is that this feature is not apparent in the final composition.  Thus according to the specification as proposed to be amended the composition described in example 1 of Table 1 has a density of 1.15 g per cc because 2% by weight of glass microbubbles was the sole material selected to impart said density.  However it is equally true that this density arose because 1% by weight of Kaydol Oil was selected rather than a different percentage by weight of another carbonaceous fuel.  In other words the relevantly skilled person who made the composition described in example 1 of Table 1 on the basis that the carbonaceous fuel was the sole material selected to impart said density would not know if claim 1 as proposed to be amended was infringed.
          I think one possible interpretation of the phrase "being the sole material selected to impart said density" is that the closed cell void containing material is the final component added to the composition so that density of the composition falls in the required range.  However this interpretation is not supported by the description of the method of formulating the composition wherein the closed cell void containing material may be added to the other components along with the auxiliary fuel, if desired.  Another possible interpretation of the phrase is that the nature and proportion of closed cell void containing material is selected after the nature and proportions of the other components have been finalised in order to impart the required density.  It seems to me that this interpretation suffers from the difficulty mentioned above, namely selection of the closed cell void containing material as the final component of the composition is not apparent in the composition.
I conclude that the phrase "being the sole material selected to impart said density" does not have a clear unambiguous meaning. I also think that the phrase prevents claim 1 from defining with precision the monopoly claimed, so that others may know the exact boundaries of the area within which they will be tresspassers (E.M.I. V. Lissen 56 RPC 23 at page 29). I note that claim 15 as proposed to be amended is open to a similar objection. I also note that the phrase occurs in the consistory statement on page 3a, thus the invention is not fully described. This phrase was proposed to be introduced into the claims and description as a result of the request under section 77 lodged on 30 September 1986. The High Court considered that it is sufficient ground to refuse an amendment if the amendment introduces uncertainty or ambiguity into the specification (Fabwerke Hoechst A.G. Vormals Meister Lucius and Bruning v. Commissioner of Patents, loc. cit.). Therefore I am satisfied that claims 1 and 15 as proposed to be amended, as well as page 3a, are not allowable amendments as the proposed amended specification does not comply with section 40.
         Claim 1 as lodged as well as the corresponding description states that the explosive composition consists essentially of from about 0.25 to about 10% by weight of closed cell void containing material.  The specification as lodged states that it is necessary for the proportions of the constituents to be held in the ranges set forth and for closed cell void containing materials to be utilized.  The specification also states as follows:

"Sufficient closed cell void containing material should be utilized to yield a density in the resulting emulsion of from about 1.1 to about 1.3.  In general, the water‑in‑oil emulsions of the subject invention can contain from about 0.25 to about 10% by weight of the closed cell void containing material."

Page 6 of the specification as lodged states that merely imparting the same density to a composition which falls within the scope of the invention by entrained air bubbles or by porous glass agglomerates and the like, rather than closed cell void containing material, will not yield No. 6 cap sensitive explosives which will detonate in 1.25 inches and smaller diameter cartridges.  Thus I conclude that the specification as lodged describes the closed cell void containing material as an essential component of the explosive composition.
Dr. Ernst argued that the feature of the closed cell void containing material being the sole material selected to impart said density was not in substance disclosed in the specification as lodged because the specification as lodged was silent with respect to this feature. This argument is based on the conclusion that the requirement for an amendment to be in substance disclosed is virtually the same as the requirement with respect to fair basis (Ethyl Corporation's Patent 1972 RPC 169 at page 195) and the conclusion that the Mond Nickel test (Mond Nickel Ltd.'s Application loc. cit.) provides guidance in determining the question of fair basis (Hoffman‑La Roche and Co. A.G. v. Commissioner of Patents 123 CLR 529 at page 538). It is well known that all the components of a composition contribute to the density, but it seems to me that the specification as lodged does not disclose any basis on which the closed cell void containing material could be defined as the sole material selected to impart said density. Therefore I am satisfied on the basis of the Mond Nickel test that the feature of the closed cell void containing material being the "sole material selected to impart said density" is not in substance disclosed in the specification as lodged. This feature occurs in both claims 1 and 15 as proposed to be amended and the description on page 3a and was introduced by the section 77 request lodged on 30 September 1986. Therefore claims 1 and 15 as proposed to be amended, as well as page 3a, are not allowable amendments because the proposed amended specification claims matter not in substance disclosed in the specification as lodged.
         The proposed claim 30 defines the ratio of water to oxidizer salt as being from 1:6.1 to 1:7.6.  Whilst I agree that the specific embodiments described in the specification as lodged do not disclose this range for the ratio, it seems to me that the range lies within the broader disclosure of claim 1 as lodged.  Thus, in my opinion, the range of the ratio of water to oxidizer salt is in substance disclosed in the specification as lodged (see Ethyl Corporation's Patent case, supra).
         In summary therefore I refuse to allow the request under section 77 lodged on 30 September 1986 because the amendment is not allowable under sub‑sections 78(1) and 78(4).  Accordingly I award costs against ATLAS.

(M. KENDALL)

Attorneys for the Applicant: F.B. Rice & Co.