Baroid Drilling Fluids, Inc and Henkel Komanditgessellschaft Auf Aktien v Fina Research Fa
[2000] APO 34
•5 May 2000
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 639219 in the name of BAROID DRILLING FLUIDS, INC AND HENKEL KOMANDITGESELLSCHAFT AUF AKTEIN
and 634207 in the name of BAROID DRILLING FLUIDS, INC
Title: "The use of selected ester oils in bore flushing fluids particularly for the offshore development of oil and gas fields (I)" and "The use of selected ester oils in drilling fluids particularly for the offshore development of oil and gas sources (II)."
Action: Opposition by FINA RESEARCH FA under Sections 59 and 104 of the Patents Act 1990
Decision: Issued .
Abstract
Opponent failed to establish the common general knowledge in Australia
Patent application No 634207 is not obvious and all its claims are clear and fairly based.
The amendments to patent application No. 639219 are allowable. Although they broaden the scope of claim 1 they do not broaden it beyond the scope of claim 12 as accepted and are thus still within the scope of the claims as accepted.
All the claims of 639219 are novel over the prior art of the Barthel patent and none of them are obvious.
All the claims of 639219 are fairly based and are clear.
Costs awarded against the opponent.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re: Patent Applications No. No. 639219 in the name of BAROID DRILLING FLUIDS, INC and HENKEL KOMMANDITGESELLESCHAFT AUF AKTIEN and 634207 in the name of BAROID DRILLING FLUIDS,INC and opposition by FINA RESEARCH FA under Section s 59 and 104 of the Patents Act 1990
BACKGROUND
Patent application 634207 in the name of Baroid Drilling Fluids, Inc was filed on 11 December 1989 as PCT/EP89/01513 claiming priority from a German basic application P38 42 703.6 filed on 19 December 1988. The application was advertised accepted on 18 February 1993.
Fina Research FA (Fina) filed a notice of opposition to the grant of a patent on 18 May 1993 followed by a statement of grounds and particulars on 17 June 1993.
Patent application 639219 in the name of Baroid Drilling Fluids, Inc and Henkel Kommanditgeselleschaft Auf Aktien was filed on 11 December 1989 as PCT/EP89/01512 claiming priority from a German basic application P38 42 659.5 filed on 19 December 1988. The application was advertised accepted on 27 July 1993.
Fina Research FA (Fina) filed a notice of opposition to the grant of a patent on 22 October 1993 followed by a statement of grounds and particulars on 24 January 1994.
Patent application 639219 was the subject of section 104 amendments, which were advertised on 25 June 1998, and opposed by Fina on 25 September 1998.
After a decision of the delegate and some extensions of time, the evidenciary stage of both the proceedings was finalised on 13 December 1999.
On 11th February 2000 the opponent sought to serve further evidence in respect of patent application 639219.
Since both specifications relate to very similar subject matter and the opponent has filed evidence common to both oppositions both section 59 matters and the one section 104 matter were set down for hearing together.
A hearing took place in Sydney on 22nd,23rd,24th and 25th February 2000. Dr Annabelle Bennett SC and Mr Stephen Burley of counsel and Ms Jill Newton and Mr John O'Connor of Spruson and Ferguson represented the applicants. Mr John Garnsey QC and Mr Paul Whenman of F.B.Rice & Co represented the opponent. Dr Francis Leyder, European Patent Attorney of Fina; and Dr Jurgen Reinhardt and Mr Heinz Muller of Henkel attended as observers.
Prior to this hearing the opponent had sought and obtained a notice for the production of documents. Henkel and Baroid were required to produce "documents relating to the availability and/or circulation inside and outside Australia of the prior art documents
1. Proposal (Henkel) "Formulations of formation-protecting drilling fluids for deep drilling with special regard to environmental aspects" (June 1986) [in evidence in respect of this opposition]
2. "Mineral oil free oil-based drilling fluids developments and outlook" (Herold, Muller, von Papavicza, Henkel)"
At the hearing Mr Garnsey indicated that Fina did not wish to proceed with respect to the document identified in the second bullet point. In relation to the first bullet point, Fina sought production of documents up to the priority date of 19 December 1988.
The applicant did not produce these documents at the hearing. They sought to be heard as to why they should not have to produce the documents sought. Since I do not have the authority to hear this particular matter the parties were heard by telephone by Deputy Commissioner Werner.
She found that Henkel and Baroid had lawful excuse not to comply with the notice for production on the ground that the notice was not served in sufficient time to enable them to reasonably make arrangements to produce the items required. Furthermore the documents in the notice are not sufficiently identified and compliance with the notice would be oppressive. She asked me to consider costs in relation to this other hearing as well.
SPECIFICATIONS
The two closely related specifications relate to the use of selected ester oils in drilling fluids. Drilling fluids are typically used in drilling for the development of oil or gas. They comprise so called invert emulsion muds. These muds are composed of oil and/or water and finely divided solids . In practice oil based systems are now more generally used and this is what both specifications are directed to, that is a water in oil emulsion with oil as the continuous phase. When used in offshore drilling applications in particular, there is a problem with using traditional oil based fluids made from the diesel oil fractions having aromatic constituents. These aromatic constituents tend to pollute the environment and create ecological problems.
To overcome this problem certain prior art drilling fluids have proposed the use of hydrocarbon fractions substantially free from aromatic compounds, the so called non-polluting oils.
In a sensitive marine environment, such as found when offshore exploration drilling, even these drilling fluids have been found to be too toxic.
The present inventions are directed to the use of ester oils as a basis for the drilling fluids. These are said to exhibit the same behaviour as the best of the prior art oil-based drilling fluids but have the advantage of increased environmental compatibility.
Patent application 639219, which was the subject of proposed section 104 amendments, which were opposed by Fina ends with 49 claims only two of these are independent and read, as proposed to be amended, as follows:
1 Use of selected esters, which are flowable and pumpable within the temperature range of from 0°C to 5°C, of monofunctional alcohols having from 2 to 12 carbon atoms and olefinically mono-and/or polyunsaturated monocarboxylic acids having from 16 to 24 carbon atoms or mixtures thereof with minor quantities of other, especially saturated, monocarboxylic acids as the oil phase or at least a substantial part of the oil phase of invert drilling muds suitable for an environmentally acceptable exploitation of off-shore natural oil and/or natural gas deposits, which drilling mud contains, in a continuous oil phase: a disperse aqueous phase; emulsifiers; thickeners; weighting agents; fluid loss additives; an alkali reserve, and optionally other common additives; wherein concomitant use of significant quantities of strong hydrophilic bases such as alkali metal hydroxide and/or diethanolamine is excluded and wherein the amount of lime, if present as an additive, is limited to a maximum content of about 2lb/bbl of drilling mud.
32. Mineral oil-free invert drilling muds which are suitable for the off-shore development of natural oil and/or natural gas sources and which comprise, in a continuous phase: esters, which are flowable and pumpable within the temperature range of from 0°C to 5°C, of monofunctional alcohols having from 2 to 12 carbon atoms and olefinically mono-and/or polyunsaturated monocarboxylic acids having from 16 to 24 carbon atoms or mixtures thereof with minor quantities of other, especially saturated, monocarboxylic acids; a disperse aqueous phase; emulsifiers; thickeners; weighting agents; fluid loss additives; an alkali reserve, and optionally other common additives; wherin the muds are mildly alkalised and the amount of lime, if added as an alkali reserve, is limited to a maximum content of about 2lb/bbl of drilling mud.
At acceptance there were only 16 claims again only two of which are independent and read as follows:
1. Use of selected esters, which are flowable and pumpable within the temperature range of from 0°C to 5°C, of monofunctional alcohols having from 2 to 12 carbon atoms and olefinically mono-and/or polyunsaturated monocarboxylic acids having from 16 to 24 carbon atoms or mixtures thereof with minor quantities of other, especially saturated, monocarboxylic acids as the oil phase or at least a substantial part of the oil phase of invert drilling muds suitable for an environmentally acceptable exploitation of off-shore natural oil and/or natural gas deposits, which drilling fluids contain, in a continuous oil phase: a disperse aqueous phase and emulsifiers; weighting agents; fluid loss additives and optionally other common additives together with an alkali reserve, with the proviso that strong hydrophilic bases such as alkali metal hydroxide and/or diethanolamine are excluded from the comcomitant use and the amount of lime, if present as an additive, is limited to a maximum content of about 2lb/bbl of drilling mud.
11. Mineral oil-free invert drilling fluids which are suitable for the off-shore development of natural oil and/or natural gas sources and, in a continuous phase based on ester oils, contain a disperse aqueous phase with emulsifiers, thickeners; weighting agents; fluid loss additives and if desired further common additives, characterised in that the oil phase consists of at least a substantial proportion of esters of monofunctional alcohols having from 2 to 12 carbon atoms and olefinically mono-and/or polyunsaturated monocarboxylic acids having from 16 to 24 carbon atoms, in that further the W/O emulsion is mildly alkalized and where lime is added, this alkali reserve preferably does not exceed quantities of about 2lb/bbl (lime/oil fluid), while preferably it is slightly below this limit.
Patent application 634207
At acceptance this application had 30 claims only two of which are independent and read as follows:
1. Use of selected esters - flowable and pumpable within the temperature range of from 0°C to 5°C, of monofunctional alcohols having from 2 to 12 C atoms and aliphatically saturated monocarboxylic acids having from 12 to 16 C atoms or mixtures thereof with at most substantially equal quantities of other monocarboxylic acids as the oil phase or at least a substantial part of the oil phase of invert drilling muds which are suitable for the environmentally safe off-shore development of oil and gas sources and, in a continuous oil phase, contain a disperse aqueous phase with viscosifiers, emulsifiers; weighting agents; fluid loss additives and, if desired, other standard additives.
11. Mineral oil-free invert drilling fluids which are suitable for the offshore development of oil and gas sources and which in a continuous phase based on ester oils, contain a disperse aqueous phase together with emulsifiers, viscosifiers; weighting agents; fluid loss additives and, if desired, other standard additives, characterised in that the oil phase consists of at least a substantially of esters of monofunctional alcohols having from 2 to 12 C atoms and aliphatically saturated monocarboxylic acids having from 12 to16 C atoms, these esters of the oil phase having a Brookfield (RVT) viscosity at 0 to 5°C of no more than 50mPa.s.
GROUNDS OF OPPOSITION
The proposed amendments to Patent application 639219 were opposed on the grounds that the amendment is not allowable under section 102, and that as a result of amendments the specification would:
Claim matter not in substance disclosed,
A claim would fall outside the scope of the claims at acceptance
Not comply with section 40.
Both specifications were opposed under section 59 on the grounds that they were:
Not Novel, [639219 only]
Were obvious and lacked an inventive step
Did not comply with section 40 of the Act
EVIDENCE
In respect of the section 59 opposition to 634207.
Fina have served statutory declarations and accompanying exhibits by Mr Paul Whenman and , Mr Charles Lagrange.
Baroid have served a statutory declaration by Dr Sheikh Rahman.
Baroid have served further evidence in the form of a statutory declaration by Mr Heinz Muller.
Fina have served evidence in response to further evidence in the form of a further statutory declaration by Mr Paul Whenman accompanied a further exhibit.
In respect of the section 104 opposition to 639219
Fina have filed statutory declarations by Dr Johann Fues and Mr Gunter Fricke.
In respect of the section 59 opposition to 639219
Fina have served statutory declarations and accompanying exhibits by Mr Trevor Davies and Mr Charles Lagrange.
Baroid and Henkel have served a statutory declaration by Dr Sheikh Rahman.
Baroid and Henkel have served further evidence in the form of a statutory declaration and accompanying exhibits by Mr Heinz Muller.
Mr Whenman and Mr Davies are both employees of F.B.Rice, patent attorneys for the opponents.
Mr Lagrange is a mining engineer employed by Fina SA in Belgium.
Dr Rahman is an academic at the University of New South Wales.
Mr Muller is one of the inventors and an employee of Henkel.
Dr Fues is the European patent attorney who drafted the original PCT applications in German
and Mr Fricke is the translator who translated them into English.
On February 11th, just 10 days prior to the hearing, the opponents filed and sought to have admitted further evidence in the form of another statutory declaration by Mr Whenman accompanied by 4 exhibits. At the hearing I took submissions by both parties about whether this evidence should be admitted.
I will refer to the evidence and the parties' submissions where appropriate in my decision
DECISION
THE FURTHER EVIDENCE
This consisted of a declaration by Mr Whenman and 4 exhibits. These were
PCW 1 The notice of appeal to the European Patent Office in respect of EP 0374672 [equivalent to AU 634207];
PCW 2 A declaration by Dr Martin Chenevert made in relation actions in the USPTO
PCW 3 A declaration by Kenneth Parkinson
PCW 4 A decision of the European patent office to revoke EP 0374671[equivalent to AU 639219];
At the hearing the applicant conceded that PCW 1 and PCW 4 were both a matter of public record and did not object to them being admitted as evidence.
PCW 3 is a statutory declaration by Kenneth Parkinson relating the history of the Irish Patent corresponding to AU 639219. It states that this Irish patent was in fact surrendered after the revocation action had been discontinued. During the course of the hearing statutory declarations by William Ray Peoples and Dr Jurgen Reinhardt were filed. These indicated that the revocation action had been discontinued because a corporate merger had effectively made the plaintiff and the defendant the same company, and the patent had been surrendered because drilling in Ireland had been discontinued. On this basis, although the relevance of PCW 3 was questioned by the applicant, they did not object to it being in evidence.
PCW 2 is a statutory declaration by Dr Martin Chenevert made in relation actions in the USPTO. It purports to show that the present invention works at limits of lime addition above those claimed. The applicant argued that it was in relation to the matter of a reissue patent under US law and was not relevant to these proceedings. They also argued that even if the material showed that the invention worked above the claimed limits, that would not be a reason to refuse the Australian Patent. They also argued that to deal with this properly they would need significant additional time and the hearing would have to be reconvened. They also pointed out that this hearing had already been delayed substantially.
The opponent countered this by pointing out that part of Dr Chenervert's declaration was already in evidence, which indeed it is.
I came to the view that this declaration is not relevant to these proceedings for the following reasons;
US Law is different to Australian law;
Even if the Chenervert declaration establishes that the invention works above the claimed range, there is no legal reason why the applicant should not limit themselves to what they have claimed. If a selection patent was what was claimed this might be relevant, but this is not the case here.
Consequently I refuse to allow PCW 2 into evidence.
ALLOWABILITY OF THE AMENDMENTS TO PATENT SPECIFICATION 639219
APPLICABLE LAW
Section 102 of the Patents Act governs the allowability of an amendment.
"102. (1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.
(2) An amendment of a complete specification is not allowable after the specification has been accepted if, as a result of the amendment,
(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2) or (3).(3) This section does not apply to an amendment for the purpose of correcting a clerical error or obvious mistake made in, or in relation to, a complete specification."
Subsection 40(2) requires that a complete specification describes the invention fully, including the best method known to the applicant of performing the invention, and end with a claim or claims defining the invention. Subsection 40(3) requires the claim or claims to be clear and succinct and fairly based on the matter described in the specification.
Since the specification has been accepted the relevant law is that the claims must either be within the scope of the claims of the specification before amendment, or failing that they must be for the purpose of correcting a clerical error or obvious mistake.
There are two issues to consider; the amendment to some claims which allow minor amounts of strong hydrophilic bases; and whether the amended claims comply with section 40(2).
On the first issue:
Claim 1 as proposed to be amended has the phrase "…wherein the concomitant use of significant quantities of strong hydrophilic bases such as alkali metal hydroxide and/or diethanolamine is excluded…". The corresponding phrase in the claim prior to amendment was "with the proviso that strong hydrophilic bases such as alkali metal hydroxide and/or diethanolamine are excluded from concomitant use…".
The opponent argued that the scope of claim 1 had been broadened to include some strong hydrophilic bases whereas before none at all had been allowed.
Whilst I agree with this argument, it is only part of the test. The word "claims " in section 102(2)(a) means the monopoly claims at the end of the specification (Roussel-Uclaf v Herchel Smith, (1974) AOJP 1549). In W.J .Voit Rubber Corp's Application,(1965) AOJP 1752 the scope of the claims was held to mean the scope of the claims as a whole [my emphasis].
Thus the fact that claim 1 has been broadened by the proposed amendment is not necessarily fatal.
A useful test for the allowability of amendments under Section 102(2)(a) is "would the amendment make anything an infringement which would not have been an infringement before the amendment?" (Distillers Co Ltd's Application (1953) 70 RPC 221 at page 223 and W.J .Voit Rubber Corp's Application,(1965) AOJP 1752).
In this regard it is useful to consider claim 12 at acceptance. It is appended to claim 11 and reads
12 An invert drilling fluid according to claim 11, characterised in that in the oil fluid there are not present any significant amounts [my emphasis] of strongly hydrophilic bases such as alkali metal hydroxides or highly hydrophilic amines such as diethanolamine, but that there are present ,optionally in addition to or in the place of lime, limited amounts of metal oxide of the zinc oxide type as alkali reserve.
Much was made by the opponents of the difference in wording of the claims. They argued that claim 1 was directed to the use of esters in a drilling mud whereas old claim 11 and new claim 32 were directed to the drilling mud per se.
However, in accordance with the opponents own argument, the amendment to claim 1 whilst broadening it's scope does not make anything an infringement that would not already have infringed claim 12 as accepted. [I note that although new claim 1 does not include zinc oxide the use of the zinc oxide in claim 12 as accepted is optional.] Consequently the amendment are allowable in the light of this argument.
The second issue is that there was some argument from the applicant about the amendments being allowable under the head of clerical error. As I have already found that the amended claims are within the scope of the claims as accepted I do not need to make any ruling on the matter of clerical error.
On the issue that as a result of the amendments [my emphasis] the specification would not comply with section 40:
Whilst I accept that some of the claims as proposed to be amended may not comply with section 40, it is not as a result of the amendments, rather due to difficulties that were present at acceptance and some of which may still be present.
Consequently I am of the view that the amendments are allowable, but the claims may possibly still have section 40 defects. The rest of this decision will be based on the specification of 639219 as proposed to be amended, and 634207 as accepted. My reasons for whether the specifications comply with section 40, or not as the case may be, are set out under the relevant heading below.
NOVELTY
At the hearing the opponent chose to rely solely on US Patent 4481121 to Barthel, and only in respect of Patent application 639219. It has been agreed by both parties that the terms "drilling fluid "and "drilling mud "can be considered to be the same for the purpose of these proceedings. In each case the fluid or mud is defined by its actual composition.
The test for determining whether the invention lacks novelty is the " reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at page 235 where 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 whether the alleged anticipation would, if the patent were valid, constitute an infringement."
Infringement occurs when "each and every one of the essential features" of the claim have been disclosed in the prior document: See Rodi and Wienenberger AG v Henry Showell Ltd (1969) RPC 367 at page 391. However, the claim will still lack novelty even if the citation does not disclose all of the features of the claim provided all essential features are disclosed: See Nicaro Holdings v Martin Engineering (1990) 16 IPR 545 and Catnic Components Ltd v Hill and SmithLtd (1982) RPC 183.
The features of claim 1 are as follows:
Use of selected esters as the oil phase of a drilling mud or at least the major part of the oil phase;
the mud is an emulsion having a continuous oil phase and a disperse aqueous phase;
the esters used are flowable and pumpable within the temperature range of from 0°C to 5°C,
the esters are of monofunctional alcohols having from 2 to 12 carbon atoms and olefinically mono-and/or polyunsaturated monocarboxylic acids having from 16 to 24 carbon atoms or mixtures thereof with minor quantities of other, especially saturated, monocarboxylic acids;
the mud contains the usual emulsifiers, thickeners, weighting agents, fluid loss additives and optionally other common additives;
the mud is suitable for an environmentally acceptable exploitation of off-shore natural oil and/or natural gas deposits;
the mud contains an alkali reserve;
the use of significant quantities of strong hydrophilic bases such as alkali metal hydroxide and/or diethanolamine is excluded;
lime if present as an additive is limited to a maximum of about 2lb/bbl of drilling mud.
I am of the view that the mud's environmental suitability is a consequence of its composition rather than an essential feature as such.
The citation is directed to a viscosifier for oil based drilling fluids. The viscosifier specified is montan wax that has been at least partially saponified. The citation does not teach anywhere that the drilling fluid is suitable for an environmentally acceptable exploitation of off-shore natural oil and/or natural gas deposits. The opposed specification teaches that prior art oil based drilling fluids used polluting mineral oils such as diesel, and the citation is directed the use of just such oils or certain esters.
The citation also teaches that dispersed asphalt had previously been used as a thickener, but the use of saponified montan wax, instead of asphalt , as a thickener also allowed the use of vegetable oils, including tall oil esters. Such a tall oil ester is within the scope of the esters of the opposed specification. I note that all the examples of the citation are directed to diesel oil, which is not within the scope of the claimed invention. The citation teaches that when asphalt was used as a thickener, diesel oil had to be used as the oil phase, but the use of saponified montan wax as a thickener could allow the use of other vegetable oils as an alternative to diesel oil.
It is true that the claimed invention includes thickeners but in the context of being "normal additives" rather than the invention per se, which is the use of selected non polluting esters as the oil phase of the drilling mud.
Although the alkali addition rates overlap and the citation includes the use of lime as an alternative to the excluded strong hydrophilic bases such as alkali metal hydroxide and/or diethanolamine, the whole citation teaches away from the opposed specification. In Barthel the alkali is added both to provide an alkali reserve, and also to partially saponify the montan wax. In the opposed specification the stated object is keep the alkali level low enough to prevent saponification of the selected esters used as the oil phase. This is directly contrary to the teaching of Barthel.
This is an instance where the relevant law is as follows:
There must be clear and unmistakeable directions to do what the patentee has done. See General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd, ( 1972) RPC 457 at pages 485, 486.
"if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim."
Thus:
"To anticipate the patentees claim, the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee."
It follows that a prior disclosure will only invalidate a claim if, after having read it, the skilled addressee would rather than could have produced all the essential integers of the claim:
"Any information as to the alleged invention given by any prior publication must be for the purpose of practical utility, equal to that given by the subsequent patent. The latter invention must be described in the earlier publication that is held to anticipate it, in order to sustain the defences of anticipation. Where the question is solely one of prior publication, it is not enough to prove that an apparatus described in an earlier specification could have been used to produce this or that result. It must also be shown that the specifications contain clear and unmistakable directions so to use it. It must be shown that the public have been so presented with the invention that it is out of the power of any subsequent person to claim the invention as his own."
"If ... the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least be as likely to be carried out in a way that would not do so, the patentee's claim will not be anticipated."
It seems to me that is exactly the situation here. The directions of Barthel if carried out would be to saponify the ester, which would definitely not infringe the claimed invention.
Consequently the claimed invention is novel in the light of this citation.
OBVIOUSNESS/INVENTIVE STEP
Since these two applications were filed prior to the commencement of the 1990 Act the relevant law is contained in Section 234 (2) and (5). In summary the sections state that any application filed under the 1952 Act cannot be found invalid on any ground contained in the 1990 Act and not contained in the 1952 Act.
The appropriate subsection of the 1952 Act reads as follows:
Subsection 59(1) (g) that the invention, so far as claimed in any claim, was obvious and did not involve an inventive step, having regard to what was known or used in Australia on or before the priority date of that claim;
In essence that means that on the question of obviousness, the two judgements, namely Minnesota Mining and Manufacturing Company and 3M Australia Pty. Ltd. v. Beiersdorf (Aust.) Ltd. 29 ALR 29 and Graham Hart (1971) Pty. Ltd. v. S.W. Hart & Co. Pty. Ltd. 52 ALJR 279 state the law applicable in this instance. Namely that the claimed invention, to a non inventive skilled addressee, must not be obvious when compared with the common general knowledge in Australia. It is apparent from these judgements that obviousness has to be considered against the background of the proven common general knowledge in the art in Australia at the relevant priority date.
To establish this I have a number of statutory declarations before me that could be pertinent. These are the three statutory declarations of Charles Lagrange dated 14 July 1994, 10 May 1995 and 13 June 1995 and the two statutory declarations of Dr Rahman dated 20 October 1994 and 24 January 1995.
Mr Lagrange is a mining engineer with extensive worldwide oilfield drilling experience, including a period from July 1985 to May 1986 when he was responsible for an offshore drilling campaign off Darwin. This is his only Australian experience. His declarations state that he believes the oil drilling [my emphasis] industry operates throughout the world and the art is reasonably common to the countries involved in the industry. He then goes on to comment on a number of the patent specifications in evidence. What he does is use each of them to state that this or that fact is "known" as a result of these specifications having been published.
On the other hand Dr Rahman, who is currently employed in Australia, states that he is an expert in the field of formulating drilling fluids. He freely concedes that he did not take up his academic appointment in Australia until 1992. This is after the priority date of both the claimed inventions. However it is interesting to note that he declares that, contrary to what Mr Lagrange asserts, as of October 1994 the patent material referred to was not part of the common general knowledge in Australia. It is reasonable to imply from this that the material was not part of the common general knowledge in Australia at the priority date of the two claimed inventions.
I am of the view that the skilled addressee in this case is an engineer with experience in formulating drilling fluids, not one who merely has experience in using them, therefore, regardless of what Mr Lagrange may or may not state, he does not have the qualifications or expertise to attest to the state of the common general knowledge in this art, either in Australia or anywhere else. I am therefore of the opinion that the evidence of Dr Rahman is to be preferred to that of Mr Lagrange.
There is thus no evidence before me to establish what was the common general knowledge in respect of the art here in question. Clearly the patent specifications cited by Mr Lagrange cannot be treated as representing common general knowledge in the art in Australia ,especially in the absence of evidence from appropriate addressees to establish why these particular specifications rather than others were selected. Consequently, given the absence of any expert evidence before me relevant to the issue of obviousness, I am unable to conclude that either of the claimed invention was obvious and did not involve an inventive step.
I also note at this point that counsel for the opponent argued that the results of proceeding under US law or European law, in respect of the corresponding overseas patents, would assist me in my deliberations on obviousness. This is an argument totally without merit. Obviousness in Australia must be determined solely on the basis of applicable Australian law.
SECTION 40
I will deal with this matter in relation to each specification in turn;
Patent Application 634207
Clarity of claims;
The opponent submitted that the claims lacked clarity in a number of respects. Most of these matters were of a trivial nature and I do not propose to deal with them in detail. There is only one matter I propose to examine in more detail.
The opponent argued that claims 7,8,9 and 20 are not clear with respect to the use of the term "Brookfield (RVT) viscosity". The opponent has asserted that the viscosity values are meaningless as the spindle number used and the speed (rpm) at which the measurements were made is not given. At the hearing, the applicant asked to admit further evidence on this matter in the form of instructions as to how to use the Brookfield viscometer. The opponent agreed, but the opponent sought leave to file further evidence on this matter within 1 month of the hearing. I gave them such leave and they submitted a statutory declaration by Michel Janssen, one of their employees versed in the use of the viscometer in question.
This declaration shows that the viscosity of esters within the range of the esters used in the claimed invention, varies according to the speed and spindle number used. However from the instructions supplied by the applicant it is clear to me that the makers of the instrument knew this, and that they have supplied a table of factors to overcome the problem. They also indicate the spindles to use for certain kinds of materials. Consequently I see no reason why a skilled addressee would have problems understanding the claims. Thus in my view they are clear.
Thus Australian Patent Application No 634207 complies with section 40 of the Patents Act.
Patent Application No. No. 639219
Clarity of claims and fair basis;
The opponent submitted that the claims lacked clarity and fair basis for a number of reasons. Some of these have already been addressed, in my consideration of the allowability of the amendments. Most of the others are of a trivial nature and I do not propose to consider them in detail. There are a few matters I need to consider, which are:
The use of the term "about" in various claims. To me the use of the term "about" in claims 1 and 32 could be considered to render these claims unclear because the lime addition seems to me to have a very vague upper limit. It is difficult to see how a maximum value can be qualified by the term "about". However I feel that a skilled addressee would construe this as limiting the lime addition such as to give effect to the invention and that this was likely to be around the 2lb/bbl of drilling mud. Although the language is not as precise as I might wish the inventive concept does not revolve around the exact lime addition. Consequently I find claims 1 and 32 are clear. The use of the term about in claims 2, 22,23,26,35,36,38,and 39 in relation to a range of values poses a slightly different question. They all impose limitations on the values of certain parameters. All these claims are appended to claims that have no such limitations and so in my view do not render the claims unclear.
The matter of the Brookfield viscometer has already been discussed and does not render unclear those claims in which it appears.
The opponent also asserted that claim 32 was not fairly based as it did not have the feature that the use of significant quantities of strong hydrophilic bases such as alkali metal hydroxide and/or diethanolamine is excluded. However the description at page 4, lines 1 to 11 has a statement of one aspect of the invention which supports this claim. On a fair analysis the invention is directed to the use of certain esters as the oil phase of a water in oil emulsion used as a drilling mud. The key to success is that although the mud must be alkali to prevent corrosion of the drill steels, it must not be so alkali as to saponify the esters and cause the emulsion to become too thick and unpumpable. To me the term mildly alkalised in claim 32 encompasses this. Thus I believe the claim is fairly based.
CONCLUSION
The amendments to 639219 are allowable. The claims are all novel and non obvious. This opposition fails totally.
The claims of 634207 are all clear and not obvious. This opposition also fails totally.
The order for the production of documents, in relation to the publication date of a certain document in evidence in the opposition to 639219, was held by Deputy Commissioner Werner to be oppressive on the applicant. I was asked to consider costs in relation to this as well as the present hearing.
I allow the amendments to 639219.
Since I have found that all the oppositions have failed I direct that both applications be sealed after 30 days from the date of this decision. If the Commissioner has been served with a notice of appeal before that time, I direct that sealing not occur until the appeal has been decided or discontinued.
COSTS.
Both parties made submissions that costs should follow the event.
In the matter of 634207 the section 59 opposition has failed totally. I therefore award costs in this matter against Fina.
In the matter of 639219 the section 59 and section 104 oppositions have failed totally. I therefore award costs in both these matters against Fina.
In respect of the decision regarding the order for the production of documents, the delegate has decided that the applicant does not have to comply with the order as it would be too onerous to do so. I note that the documents sought to be produced, were in relation to the publication date in
Australia of another document, that had been in evidence since 1995. Despite this the opponent only sought the order some two weeks before the hearing.
Even if the opponent had been able to produce evidence that this document was published in Australia before the priority date of the opposed specification, it would have had no bearing on my decision. This is because the opponent stated that they were only seeking to rely on this document for obviousness, and I have already found that their declarant was not a person skilled in the relevant art in Australia.
I cannot see that there were any additional costs in this matter considering that it was heard by telephone during the course of this hearing. Taking into account all the circumstances I have decided not to award any costs in respect of the order for production of documents.
R.A.Melvin
Delegate of the Commissioner of Patents
Patent attorneys for the applicants: Spruson and Ferguson , Sydney
Patent attorneys for the opponent: F.B.Rice & Co Sydney
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