BAC Tech (Australia) Pty Ltd v Billiton South Africa Limited, and Technological Resources Pty Ltd

[1998] APO 55

official notice

decision of a delegate of the commissioner of patents

Application  :          No.652231 in the name of BAC Tech (Australia) Pty.Ltd.

Title:          Oxidation of metal sulphides using thermotolerant bacteria

Action: Opposition under section 59 of the Patents Act 1990 by Billiton South Africa Limited and Technological Resources Pty. Ltd

Decision:          Issued            .

Abstract

Claim 9 was found not to have been disclosed in the provisional and thus only entitled to a priority date of 22 March 1992. Claim 10 found to be not fairly based. The alleged invention was found to be a Manner of Manufacture but claims 1 to 9 found not to be novel and also to lack an inventive step. Application refused. Costs awarded against the applicant

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 652231 by BAC TECH (AUSTRALIA) PTY. LTD. and opposition under section 59 of the Patents Act 1990  by  BILLITON SOUTH AFRICA LIMITED and TECHNOLOGICAL RESOURCES PTY. LTD.

background

Patent Application no. 652231 relating to oxidation of metal sulphides by thermotolerant bacteria was filed on 20 March 1992 by Bac.Tech (Australia) Pty. Ltd. ("Bactech”) via the PCT route with priority claimed from an Australian provisional specification PK 5204 filed on 22 March 1991. The application was advertised accepted on 18 August 1994.

Technological Resources Pty Ltd ("Technological Resources") filed a notice of opposition on 18 November 1994, and a Statement of Grounds and Particulars on 20 May 1995.
Billiton South Africa Limited ("Billiton") filed a notice of opposition on 18 November 1994 and a statement of grounds and particulars on 20 May 1995. The evidentiary stages of both oppositions were completed on 25 March 1996.

The matter was set down for hearing in Canberra. Due to a request by Billiton there were two separate hearings; 20 and 21 July 1998 for Billiton; and 22 July 1998 for Technological Resources. All parties were informed in writing well before the hearing that the normal practice of the commissioner in these circumstances was only to issue a single decision.

Mr Richard Baddeley and Mr Paul Fong of Watermark Perth appeared for Bactech.
Dr Annabelle Bennett SC of Counsel and Mr Colin Bodkin of Spruson and Ferguson Sydney appeared for Billiton.
Mr B. J Hess of Counsel and Mr. C. M Bentley of Griffith Hack assisted by Mr T.A Matthews and Ms C. Monger appeared for Technological Resources.

PROCEDURAL

At the hearing between Technological Resources and Bactech the publication date of one of the pieces of evidence [exhibit CND9] was contested. This piece of evidence is the Proceedings of a conference held in Portugal. It purports to anticipate claim 9, if this claim does not warrant the same priority date as the rest of the specification. Consequently both parties sought leave to adduce further evidence by way of statutory declarations as to the date at which these proceedings were made publicly available. Since neither party raised any objection I granted leave orally at the hearing. I directed that this additional evidence should be filed and served within two weeks of the hearing. I also agreed that both parties should have the right to address me further on this matter if required.

EVIDENCE-IN-SUPPPORT

Evidence in support;

For Technological Resources consists of:

1. A declaration by Cyril Montague Bentley  (“Bentley -1”) with exhibits CMB-1 to CMB-7
2. A declaration by Charles Norman Davies (“Davies-1”) with exhibits CND-1 to CND-6

For Billiton consists of:

1. A declaration by Alistair Ian Maxwell Ritchie (“Ritchie-1”) with exhibits IR-1 and IR-2
2. A declaration by John Francis McCann (“McCann-1”) with exhibits JFM-1 to JFM-24

EVIDENCE-IN-ANSWER

Evidence-in- answer;

In respect of the Technological Resources opposition consists of:

1. A declaration by Michael John Dilworth (“Dilworth-1”) with exhibits MJD-1 to MJD-3

In respect of the Billiton Opposition consists of:
1. A declaration by Michael John Dilworth (“Dilworth-2”) with exhibit MJD-2

EVIDENCE-IN-REPLY

Evidence-in- reply
For Technological Resources consists of:

1. A declaration by Charles Norman Davies (“Davies-2”) with exhibits CND-7 to CND-11
2. A declaration by Charles Norman Davies (“Davies-3”)

For Billiton consists of:

1. A declaration by Ellen Nanda Lawson with exhibits ENL-1 and ENL-2
2. A declaration by Alistair Ian Maxwell Ritchie (Ritchie 2) with exhibits IR-3 to IR-8

THE SPECIFICATION

The specification describes a hydrometallurgical bacterial oxidation process. It is specifically directed to the recovery of precious or base metals from refractory sulphide materials by leaching with thermotolerant bacteria. It relates how prior art bacterial leaching processes were limited by the use of bacteria of the Thiobacillus strain that could only operate at temperatures below 40°C. It goes on state that oxidation leaching with these prior art bacteria was an exothermic process which meant cooling of the leach reactors was sometimes needed.

The specification then goes on to describe how this shortcoming has been overcome by the use of thermotolerant bacteria which operate at temperatures up to 55°C. It then describes the bacteria by reference to a 1986 textbook “Thermopiles General, Molecular, and Applied Microbiology” edited by Thomas D. Brock.

The specification then relates some embodiments of the invention and specifies some desired process conditions. There are then some 4 examples. The specification then ends with 10 claims of which only one [apart from the omnibus claim] is independent.

The claims read as follows:

1. A process for recovering metals from particulate refractory precious or base metal containing sulphide material characterised in that it comprises contacting the sulphide material with an aqueous solution at a temperature in the range 25°C to 55°C, the aqueous solution containing a thermotolerant bacteria culture having an optimum growth temperature of 40°C to 45°C and capable of promoting oxidation of the sulphide  material at a temperature in the range from 25°C to 55°C, separating the oxidised residue from the aqueous liquid and treating the oxidised residue and/or the aqueous liquid to recover metal therefrom.
2. A process according to claim 1, characterised in that the aqueous solution is acidic.
3. A process according to claim 2, characterised in that the aqueous solution has a pH in the range from 0.5 to 2.5.
4. A process according to any one of claims 1 to 3, characterised in that the thermotolerant bacteria is acidophilic.
5. A process according to any one of the preceding claims, characterised in that the thermotolerant bacteria is aerobic.
6. A process according to claim 5, characterised in that the aqueous liquid is aerated during the operation of the process.
7. A process according to any one of the preceding claims characterised in that the thermotolerant bacteria is capable of autotrophic growth.
8. A process according to any one of the preceding claims characterised in that no CO2 is supplied to the thermotolerant bacteria  during the operation of the process other than that available from ambient air.
9. A process according to any one of the preceding claims characterised in that the aqueous liquid contains sodium chloride in an amount up to 20 grams per litre.
10. A process for recovering metals from particulate refractory precious or base metal containing sulphide material substantially as hereinbefore described with reference to any one of examples 1 to 4.

SUBMISSIONS

Both opponents and the applicant made various submissions at the hearings. I shall refer to them as convenient when I discuss each of the grounds of opposition.

DECISION

PRIORITY DATE OF THE CLAIMS

All the features contained in claims 1 to 8 inclusive and claim 10 are clearly disclosed in the provisional specification. Thus these claims are all entitled to a priority date of 22 March 1991.

Dr Bennett asserted that on the face of the specification there was nothing in the description to support claim 9. This is the claim that claims the use of the process in saline conditions up to 20grams/litre NaCl.

Mr Hess asserted the same, and further argued that the provisional specification is totally silent on the use of the bacterial oxidation process in saline conditions. Consequently he argued that the claim should have a priority date the same as that of the filing date of the PCT application and not the priority date of the provisional specification.

The only reference to the use of the process in saline conditions, apart from the claim, is at page 4 lines 11 to 16. Here the specification states:

"Also, the thermotolerant bacteria culture used in the process of the present invention is preferably capable of  [emphasis added] oxidising iron and sulphides in an aqueous liquid containing up to 20 grams/litre of sodium chloride without the addition of special nutrients or employment of special conditions"

There was argument from counsel that the declaration of Dr Lawson indicated that aqueous solutions used in a bacterial leaching metal recovery process often contain some sodium chloride. Dr Lawson did however express some surprise that the bacteria culture was capable of metal sulphide oxidation at as high a level as 20 grams/litre sodium chloride.  This may well be so but the provisional specification is totally silent [emphasis added]on the use of the process in any kind of saline conditions. Therefore claim 9, which refers to the use of saline, is only entitled to a priority date of 20 March 1992.

NOVELTY

The" reverse infringement test "as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd,(1977)CLR 228 at page 235 is generally appropriate. Here Aiken J stated:

"The basic test for anticipation or want  of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would , if the patent were valid, constitute an infringement."

"Infringement of a claim occurs where "each and every one of the essential integers of that claim have been taken." See Rodi and Wienberger AG v Henry Showell Ltd,(1969) RPC 367 at 391

Both these are referred to in:

(i) R D Werner & Co  Inc v Bailey Aluminium Products Ltd (1989) 13 IPR at 513 and also
 (ii) Nicaro Holding Pty Ltd v Martin Engineering Co. (1990) 16 IPR 545.

Both counsel directed my attention to a number of publications tendered in Evidence. I will refer to them by name with a cross reference to their exhibit number in brackets.

(1) A Paper  published in Perth in 1988 by two of the named inventors "Randol-Perth International Gold Conference " [CND 2 and JFM-5 referring to JFM-6]

There was some argument from Mr Baddeley that this paper did not give clear and unmistakable directions on how to operate a bacterial leach process according to the claimed invention.

I disagree. This paper discloses the use of a mixed bacterial culture isolated from a mine in Western Australia. It is described as a moderate thermophile which has a maximum growth rate at 40°C to 45 °C. Thus I believe it is well within the scope of the thermotolerant bacteria culture claimed, in fact since the same inventors are involved it is entirely possible that it is the exact same thing.
The paper then goes on to describe how this culture is used to bio-oxidise gold bearing pyrite and arsenopyrite concentrates. Both these minerals are sulphide materials such as are claimed in the specification in suit. The paper then goes on to explain how the bio-oxidation was carried out between 30° C and 50° C, how the pH was around 1.6. Clearly as the oxidation occurred at this pH then the bacteria used must be acidophilic [as claimed in claim 4] or they would not have exhibited their optimum growth.

This paper also teaches that the bacteria is capable of autotrophic growth. The process conditions teach the use of air saturated with water vapour. There is no mention of added CO2 which is the same as claims 5 and 8.

Thus the paper details the exact same features as are claimed in claims 1 to 8

Mr Baddeley further argued that this document only covered the use of the bacterial culture to recover gold bearing material, and thus the claims as far as they referred to base metal only were still novel. I totally disagree. Firstly the bacterial leaching mechanism oxidises insoluble sulphides to soluble sulphates; thus in some respects whether the metal involved is base or precious is immaterial. Secondly this document teaches the leaching of pyrite, an iron sulphide mineral which does not necessarily have to be gold bearing.

Thus I am of the view that this conference paper completely satisfies the reverse infringement test with respect to claims 1 to 8 and I find that all these claims are totally anticipated by the document

However this particular document does not teach to use the specific bacterial culture of the examples (MTC-1) and thus does not anticipate claim 10. It does not teach the use of saline solutions and thus does not anticipate claim 9.

2) Abstracts of Proceedings of a Symposium "Biohydrometallurgy 91"

This was the document whose publication date was questioned. It is the proceedings of a symposium held in Portugal between 9 September and 13 September 1991. This is after the priority date of the specification as a whole but before the priority date I have determined for claim 9.  The applicant submitted that the full document [rather than the abstract that I am relying on] was not published until 1993. There is also a submission from Mr Baddeley that the abstract was not particularised. This is correct. It was submitted as evidence in reply by Technological Resources. This was however only after the applicant attempted to assert in the evidence-in-answer that the "real invention" was the high saline tolerance of the bacterial culture used in the oxidation leaching process. Up to this time this feature was only preferable.

Because it was not particularised Mr Baddeley argued it is not part of the evidence I may have regard to. I disagree, the abstract [only] is clearly entered as a piece of evidence in reply for the reasons I have indicated, it is published before the priority date I have determined for claim 9, and I will have regard to it.

The content of the abstract is how Bactech (who is the applicant in this matter) has found that its moderately thermophilic bacteria culture has operated at 55°C to leach sulphidic base or precious metal containing material without the need for cooling. This is what is claimed in claim 1.They then go on to explain how the plant trials have used saline [emphasis added], hard bore water and better quality dam water. To me the applicants own personnel have clearly disclosed the use of the claimed bacteria as claimed in claim 1 but in highly saline conditions which clearly anticipates claim 9.

3) US Patent 4,729,788 [exhibit CND-3  and JFM-18]

This Patent teaches all the features of the opposed specification except the type of bacteria used. Rather then a thermotolerant bacteria culture, it discloses the use of an obligate thermophile to bio-leach the precious metal containing sulphides. This bacteria is one of the Sulfolobus variety which operates at temperatures from 45° C to 90° C which overlaps the claimed temperature range. However there is no indication that it has an optimum growth temperature of 40C° to 45°C as required by the opposed specification.  I therefore find that this document does not anticipate the opposed specification.

4) US Patent 3,305,353 [exhibit CND-4]

This discloses the use of prior art thiobacillus type bacteria to leach metal sulphide containing material. This seems to be the admitted prior art and is not within the scope of the claims of the opposed specification. There were some submissions from the opponent's attorney that since this document included leach temperatures in the range of 20°C to 40°C it was an anticipation. However there is no indication that it has an optimum growth temperature of 40C° to 45°C as required by the opposed specification. For this reason, I find that it does not anticipate the opposed specification.

5) Australian Patent 583151 (623936/86) [exhibit CND-5]

This specification also relates to the use of prior art thiobacillus type bacteria. Again there is no teaching of the optimum growth rate claimed. I therefore do not consider that this document anticipates any of the claims.

6) Australian Patent 592161 (699343/87) [exhibit CND-6]

Again this specification only relates to the use of prior art thiobacillus type bacteria. Although a process temperature range of 30°C to 35° C is disclosed there is no teaching of the optimum growth rate claimed. I therefore do not consider that this document anticipates any of the claims.

LACK OF INVENTIVE STEP

The argument relating to lack of inventive step was with respect to the textbook cited in the specification "Thermopiles General, Molecular, and Applied Microbiology” edited by Thomas D. Brock clearly shows that bacterial oxidation of sulphide metal ores to soluble sulphates was generally well known.

It also shows that prior art bacteria used for bio-oxidation of metalliferous sulphidic material encountered a major problem. The thiobacillus type only operated at low temperatures and the reaction was exothermic. This meant that cooling was sometimes required to prevent the bacteria from ceasing to be viable.

The other prior art bacteria operated at elevated temperatures as high as 90°C and these processes required the use of some kind of heating. Thus some of the different bacteria suitable for bacterial oxidation of sulphide ores were believed to be capable of operating in a wide range of different conditions

It seems to me that a non-inventive skilled addressee would inevitably be led to look for a moderately thermophilic bacteria that would enable the required bio-oxidation to take place at optimum temperatures in the middle range of 40°C to 45°C between the mesophilic bacteria of the thiobaciullus type operating around 30°C and the obligate thermophiles operating around 70°C.

I thus consider that the invention claimed in claims 1 to 8 lacks an inventive step.

The other problem that existed was to operate in highly saline solutions. This is particularly so in the Australian context where the only water available in some remote areas is bore water that has a high salt content. Anyone attempting to solve this problem would be led to test the properties of existing bacteria. Dr Lawson's declaration tells us that some prior art bacteria are known to be capable of operating in mildly saline conditions. There is evidence on file from the expert witness that all bacteria need some medium in which to grow. There is clear evidence that this medium commonly includes some NaCl [typically up to 5g/litre].

Thus the person skilled in the art would expect that some of the existing bacteria would be tolerant of highly saline conditions because thermophiles are known to operate in a range of extreme environments. Thus to select one that was suitable is not inventive.

Thus in my view claim 9 also lacks an inventive step.

There is no suggestion that the bacteria culture MTC-1 would be selected so I consider that claim 10 does not lack an inventive step

SUFFICIENCY

Both counsel argued that the specification was insufficient as the strain of bacteria used in the process had not been characterised, either in the description or by making a deposit. However they both argued if the specification was found to be sufficient then the alleged invention was not a manner of manufacture because it was directed to the use of a known substance selected for the properties it was known to have.

At the hearing and in the specification it has been admitted that the use of micro-organisms to oxidise metal sulphides as a means to the recovery of metals is well known. Thus it is apparent that the general bacterial leach process is not where the invention resides. The invention, if any, must reside in the choice of particular bacteria. In this case the bacteria used must be properly characterised.

Despite complicated argument from counsel I am of the view that the specification contains sufficient information for the skilled addressee to carry out the invention. Indeed I must do so since I have already ruled that the citations I have relied to destroy the novelty of the invention have a similar level of detail. Since they are enabling for novelty purposes then the specification in suit must be sufficient.

MANNER OF MANUFACTURE

It was then argued that if I found the specification to be sufficient then I must find it was not a manner of manufacture. I was referred to Advanced Building Systems Pty Limited v Ramset Fasteners (Aust) Pty Limited (198) 152 ALR 604, where it is stated that there is a requirement that a manner of new manufacture for the purposes of the Statute of Monopolies should appear on the face of the specification, and that a claim for a new use of an old substance lacked inventiveness.

I was invited to consider NV Philips Gloeilampenfabrieken v Mirabella International Pty Limited (1995) 183 CLR 232 as the basis for finding that there is no patentable invention. It was alleged that the applicant has chosen desirable characteristics of thermotolerant bacteria and claimed all processes using bacteria possessing those characteristics. This it is alleged is not an invention. I was also referred to the Commissioner of Patents v Microcell Limited (1959) 102 CLR 232 where it was held that mere new use of a known product is not an invention. Counsel argued that all the applicant had done was discovered a new use for thermotolerant bacteria. The specification allegedly concedes that thermotolerant bacteria are known.

To select a new use for an old substance for which its known properties make it suitable is not inventive. For this argument to hold, it is not sufficient that something is known, what must also be known are all its properties.

In this instance what must be established is that;

• thermotolerant bacteria are known and;

• their optimum growth temperature of 40°C to 45°C is known and;

• their ability to bio-oxidise base or precious metal containing sulphidic material between 25° C and 55° C is also known.

From the statutory declarations of the various declarants and the specification as a whole I am not convinced that all these properties were known. I am therefore not persuaded that the application is merely directed to a new use of an old substance for which its properties make it suitable. I therefore cannot find that the specification is not a manner of manufacture as required by the Act.

FAIR BASIS

Dr Bennett put forward a great deal of argument that the claims were not fairly based. She made much of the fact that a number of the features were not exemplified. In particular there was nothing in the body of the document dealing with the optimum growth temperature of the bacteria culture nor any test results or details about the range of NaCl concentrations that the bacteria culture could tolerate. The salt tolerance in particular [claim 9] was added to the complete specification and was not present in the provisional. However this only goes to the priority date of the claim in question and not to whether it is fairly based.

Th question of fair basis has been dealt with in CCOM Pty Ltd v Jiejing Pty Ltd AIPC 91-079 and Leonardis v Sartas (No1) 35 IPR 23. In these decisions the court determined the fair basis of the claims by deciding whether or not there was a real and reasonably clear disclosure of the claimed invention in the body of the specification.

I cannot agree with counsel's submissions on fair basis. To rule out all claims that are not exemplified is hardly in accordance with normal practice. I am not aware of any requirement that a specification has to exemplify everything that is claimed.

There is clear disclosure of the actual leach process claimed. There is clear disclosure of the operating temperature, there is clear disclosure of the leach solution containing the thermotolerant bacteria culture having the required optimum growth rate. In short there is sufficient detail in the body of the specification to support claims 1 to 8. I am satisfied that there is real and reasonably clear disclosure of the claimed invention in the body of the specification.

Although the salt tolerance claimed in claim 9 was not introduced until the complete specification was filed there is also a clear disclosure of this feature as, in my view, an optional feature.

Consequently I am of the view that all of claims 1 to 9 are fairly based.

The only teaching of the specification on how to isolate the thermotolerant bacteria culture MTC-1 is to obtain it from an unspecified place in an unspecified coal mine in Western Australia and to grow in on a standard medium. This is hardly a real and reasonably clear disclosure Accordingly I do not consider claim 10 to be fairly based

CONCLUSION

Although I have decided that the specification is directed to a manner of manufacture and it is sufficient I have decided that claim 10 is not fairly based and none of claims 1 to 9 are novel.

I have decided that claim 9 is only entitled to a priority date of 20 March 1992 and is thus rendered not novel by Abstracts of Proceedings of a Symposium "Biohydrometallurgy 91".

I have decided that claims 1 to 8 are rendered not novel by a Paper published in Perth in 1988 by two of the named inventors "Randol-Perth International Gold Conference " [CND 2 and JFM-5 referring to JFM-6].

I note that the two anticipating documents are by authors who are either named as inventors or else are employees of Bactech. The applicant has effectively put the material in the public domain itself before the relevant priority dates and then come along later and tried to monopolise what it had already given to the public for free. This is fundamentally against everything the patent system stands for.

In addition I have decided that claims 1 to 9 lack an inventive step.

In the light of this I cannot see how the specification can possibly be amended to leave any patentable subject matter. Consequently I must refuse the application.

COSTS

Both sides made submissions that costs should follow the event. Also Mr Baddeley submitted that the evidence was prolix and that his client had been obliged to consider more evidence than was really necessary. In the circumstances if the opposition should succeed he believed that the costs should be discounted. Dr Bennett however submitted that all the evidence had been relied on and that there was no reason to discount any costs.

Mr Baddeley further submitted that as the opponents had both a patent attorney and counsel that if the applicant was successful they should be awarded costs for two patent attorneys. This proposition was not contested by either opponent. Consequently the reverse must apply and the applicant is unsuccessful it should bear the full costs for both opponents

Mr Hess also asked that costs should follow the event. I can see no valid reason to discount costs in any way. I believe both opponents relied on the full range of their evidence.

In the circumstances I award full costs against Bactech

R.A.Melvin
Delegate of the Commissioner of Patents

Patent attorneys for the applicant:    Watermark Perth

Patent attorneys for the opponent:   Spruson and Ferguson Sydney(Billiton)

Griffith Hack and Co Melbourne (Technological Resources)