BASF Se v The Lubrizol Corporation - [2019] APO 8

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
BASF SE v The Lubrizol Corporation [2019] APO 8

Patent Application: 2010248022

Title:Quaternary Ammonium Amide and/or Ester Salts

Patent Applicant:                   The Lubrizol Corporation
Opponent:  BASF SE
Delegate:  K. Wagg
Decision Date:  13 February 2019
Hearing Date:  14 November 2018 (in Melbourne)

Catchwords: PATENTS - opposition under section 104 – allowability under sections 102(1) and 102(2) considered – as a result of the amendment – the amendments narrow the claims and do not introduce new matter or issues – amendments allowed – costs awarded against the opponent – stay on s 59 lifted and evidence in answer due in two weeks from the date of this decision.

Representation: Patent attorney for the applicant: Michael Houlihan and Jim Onishi, Houlihan²
Patent attorney for the opponent: Gavin Adkins and Kathryn Morris, Griffith Hack

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010248022

Title:Quaternary Ammonium Amide and/or Ester Salts

Patent Applicant: The Lubrizol Corporation
Date of Decision: 13 February 2019
DECISION
The amendments filed on 19 May 2017 and 7 July 2017 are allowed.
Costs are awarded against the BASF SE in accordance to Schedule 8.
Evidence in Answer for the s 59 opposition is due in two weeks.
REASONS FOR DECISION
Background

Patent application number 2010248022 (the application) was filed by The Lubrizol Corporation (the Applicant) and a request for examination was filed with the Commissioner on 13 January 2015. The application was advertised as accepted on 10 March 2016. On 10 June 2016 BASF SE (the Opponent) filed a notice of opposition to the grant of the application (the substantive opposition). The Opponent filed a request for an extension of time to complete evidence in support to the substantive opposition and this request was opposed by the Applicant. A delegate of the Commissioner of Patents granted the Opponent an extension of time and set the time period for filing evidence in answer to three months from the 27^th February 2017.[1] On 19 May 2017 the Applicant filed a statement of proposed amendments and requested a stay on the substantive opposition. A delegate of the Commissioner directed that the substantive opposition be stayed until two weeks after the Commissioner notifies the parties of the allowance, refusal or withdrawal of the amendments, at which time evidence in answer will be due.[2]
[1] BASF SE v The Lubrizol Corporation [2017] APO 10 at [36].
[2] See letter of 19 June 2017.
The Applicant was provided with comments from the Opponent on the 19 May 2017 amendments and filed further amendments on 7 July 2017. An examiner of patents granted leave to amendment the specification incorporating the amendments of 19 May 2017 and 7 July 2017 (the amendments) on 29 August 2017. The amendments were advertised in the Supplement to the Australian Official Journal of Patents on 14 September 2017. On 14 November 2017 the Opponent filed a notice of opposition to the amendments.
An oral hearing was held in Melbourne on 14 November 2018 to decide the outcome of the amendments.
Legislative provision
The present opposition is governed by the Patents Act 1990 (the Act) as amended by the
Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act).
This includes an amendment to subsection 102(1) which precludes the inclusion of subject matter extending beyond the original disclosure and, relevant to subsection 102(2), the amendments to section 40(2) and 40(3).
Section 104 states that the applicant is entitled to request amendments:
(1) An applicant for a patent or a patentee, may, subject to this Act, and subject to and in accordance with the regulations, ask the Commissioner for leave to amend the relevant patent request or complete specification, or any other filed document, for any purpose including either or both of the following:
(a)removing a lawful ground of objection to the request or specification, whether that objection is raised in the course of an examination or re-examination or otherwise;
(b)correcting a clerical error or an obvious mistake.
Section 104(4) provides for opposition to an amendment:
(4) The Minister or any other person may, subject to and in accordance with the regulations, oppose allowing an amendment.
Section 104(5) then sets out the criteria for allowability of an amendment:
(5) The Commissioner must not allow an amendment that is not allowable under section 102.
The opposition
The statement of grounds and particulars sets out the following grounds:
(1) The amended claims include subject matter not disclosed in the specification as filed ss 102(1)
(2) The amended claims do not fall within the scope of the claims before amendment
(3) The amended specification fails to comply with section 40(2) and
(4) The amended claims fails to comply with section 40(3).
At the hearing the Opponent pressed all grounds, including that the amendments fail to comply with ss 40(2)(a) in that they lack a clear enough and complete enough disclosure, and fail to comply with s 40(3) in that they result in both a lack of clarity and a lack of support.
Both the Opponent and the Applicant relied on expert evidence in this Opposition. It consists of the following declarations and exhibits:

Evidence Declarant Date Reference Exhibits

In Support Prof. Rob Atkin 8 February 2018 Atkin #1 RA-1 to RA-4

Kathryn Barbara Morris 12 February 2018 Morris KBM-1 to KBM-5

In Answer Assoc. Prof. Frederick Matthew Pfeffer 15 April 2018 Pfeffer FP-1 to FP-8

In Reply Prof. Rob Atkin 17 May 2018 Atkin #2 RA-5 to RA-6[3]
[3] These exhibits were filed with labels RA-1 and RA-2.
The Specification

The field of the invention is said to relate to:
“quaternary ammonium amide and ester salts, processes for making them, and their use as additives, including their use in fuels, such as diesel fuel and fuel oils.”[4]
[4] The Opposed Specification at [0001].
The specification then provides some background by way of stating:
“It is known to use certain polyisobutylsuccinimide-derived quaternized PIB/amine dispersants/detergents as additives in fuel compositions”[5]
[5] The Opposed Specification at [0004].
The specification then discusses the benefits of these and the need for improvements before stating that:
“The present invention deals with a new class of detergents which offer significant improvements over traditional PIB/amine detergents, including polyisobutylsuccinimide-derived quaternized detergents”.[6]
[6] The Opposed Specification at [0006].
The person skilled in the art
It has long been established that many of the issues arising in an opposition are answered by viewing the patent through the eyes of the person skilled in the art:
“He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious.”[7]
[7] Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 at [70].
However the skilled addressee is not a real person but an artificial construct that is used to analyse and interpret the patent, and there is a danger in trying to identify them as an actual person or persons:
“The notional person is not an avatar for expert witnesses whose testimony is accepted by the court. It is a pale shadow of a real person – a tool of analysis which guides the court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step.”[8]
[8] AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30 at [23].
Lord Diplock stated that those likely to have a practical interest in the subject matter are the PSA:
“My Lords, a patent specification is a unilateral statement by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his invention (i.e. ‘skilled in the art’)”[9]
[9] Catic Industries Inc. v Hill & Smith Limited [1982] RPC 183 at 243.
In Australia the Full Federal Court approved this approach with Heerey, Emmett and Dowsett JJ stating:
“The uninventive but skilled worker is likely to have a practical interest in the subject matter of the claimed invention.”[10]
[10] Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd [2002] FCAFC 315; 56 IPR 248 at [39], 257.
The declaratory evidence filed includes that of Dr Kathryn Morris, Patent Attorney, who exhibits documents, Prof Rob Atkin, a Physical Chemist and Assoc Prof Pfeffer, an Organic Chemist. The Applicant submitted that Prof Atkin’s evidence should be discounted as he cannot provide evidence in relation to chemical components and does not read the specification through the eyes of an Organic Chemist. On the other side the Opponent submitted that Prof Atkin’s evidence should be preferred given his experience in working with quaternary ammonium salt detergents. In my view, the compounds per se, which in this case is the surfactant, and the synthesis of them is indeed something an Organic Chemist would have a practical interest in, and, the fact that the compounds are detergents and used as fuel additives means the surface chemistry, the thermal stability and oil compatibility is also part of the invention. These properties of the surfactant would lie in the field of Physical Chemistry. I therefore expect that both experts will be able to inform me of these two different characteristics of the PSA and I will weigh and evaluate the evidence accordingly. This is the normal work of a delegate of the Commissioner of Patents.
The Amendments
The amendments of 19 May 2017 propose to delete all pages of the description and claims as well as amend the title and replace them with the filed pages. The amendments of 7 July 2017 delete all the claims pages and replace them with pages 25-27 and delete description pages 2, 3, 4, 8, 9 , 14, 15, 17 and replace them pages of the same numbers. Thus the amendments of 7 July 2017 to the claims supersede those of 19 May 2017. Of relevance to this opposition is the amendment to paragraph [0037] of the description as filed which is proposed to be amended as follows:
~~[0037]~~[0032] ~~In some embodiments the acid used with the hydrocarbyl epoxide~~
~~may be a separate component, such as acetic acid. In other embodiments, for~~
~~example when the hydrocarbyl acylating agent is a dicarboxylic acylating agent,~~
~~no separate acid component is needed. In such embodiments, t~~The detergent ~~may be~~ is prepared by combining reactants which are essentially free to free of an acid component, such as acetic acid, and ~~rely~~ relies on the acid group of the hydrocarbyl acylating agent instead. ~~In other embodiments, a small amount of an~~
~~acid component may be present, but at <0.2 or even <0.1 moles of acid per mole~~
~~of hydrocarbyl acylating agent.~~
The amendments of 19 May 2017 take some features of the accepted claim 2 and put them into claim 1 and this amendment is kept in the 7 July 2017 claims. The amendments of 7 July 2017 remove references in the claims to condensation product and condensation reactions and these become products and reactions. The amendments to claim 1 and 2 are shown below:
1. A composition comprising a quaternary ammonim salt detergent containing an amide group, where the quaternized detergent comprises the reaction product of:
a) a non-quaternized detergent containing an amide group, where the detergent has a tertiary amine functionality; and
b) a quaternizing agent;
and wherein the reaction of (a) and (b) is essentially free of any additional acid component other than an acid group present in the structure of the detergent; and wherein (b) the quaternizing agent comprises ethylene oxide, propylene oxide, butylene oxide, styrene oxide, or combinations thereof.
2. The composition of claim 1, wherein a protic solvent is present during the reaction of (a) and (b) ~~and wherein the reaction of (a) and (b) is essentially free of any additional acid component other~~ ~~than any acid group present in the structure of the detergent~~.
Claim 4 as proposed to be amended is repeated below showing the removal of the word condensation and replacing the word condensing with reacting:
4. The composition of any one of claims 1 to 3, wherein (a) the non-quaternized detergent comprises the ~~condensation~~ product of a hydrocarbyl-substituted acylating agent and a compound having a nitrogen atom capable of ~~condensing~~ reacting with the acylating agent and further having at least one tertiary amino group.
A marked up copy of the full set of claims is attached at the end of this decision.
Subsection 102(1)
The Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 makes it clear that section 102 as amended is intended to prevent the addition of new matter to the description:
"The item introduces a provision preventing amendment of a complete patent specification after filing to add new matter that would go beyond the disclosure contained in the specification at its filing date. An applicant would not be able to amend the specification to add any material that the hypothetical skilled person could not directly derive by reading the information in the specification as filed."[11]
[11] Item 29, at page 61.
Section 102(1) as amended by the Raising the Bar Act states:
(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together:
(a) the complete specification as filed;
(b) other prescribed documents (if any).
The documents that have been prescribed for the purposes of paragraph 102(1)(b) are set out in regulation 10.2A. For the purposes of this decision, it is not necessary to consider these documents.
The expression “as a result of the amendment” was a feature of s 102 before the recent changes and had been considered on many occasions. In RGC Mineral Sands Ltd v Wimmera Industrial Minerals Pty Ltd[12] Carr and Sundberg JJ discussed section 102(1) as it stood at the that time:
“That subsection requires one first to identify precisely what is the amendment. In this case that is done by identifying the difference between the specification as accepted (and as it stood at the hearing of the motion at first instance) on the one hand and, on the other hand, as the specification would read if amended in the manner sought.”… “The subsection focuses on the amendment proposed and it must be that amendment which has the result of pushing the claimed matter over the line defined by the expression [‘matter that extends beyond that disclosed’]”…“The key point to keep in mind is, as counsel for the respondent contended (in our view correctly), that the words ‘as a result of the amendment’ are not to be confused with the expression ‘after the amendment’.”
[12] RGC Mineral Sands v Wimmera Industrial Minerals Pty Ltd [1998] FCA 1358; 42 IPR 353 at 360
Subsection 102(1) requires that the specification as proposed to be amended does not claim or disclose matter that extends beyond that disclosed in the complete specification and abstract as filed. As a result I must confine my analysis to a consideration of the consequences that follow as a result of the amendment. In Gabriele Ludwig v The Arizona Board of Regents on behalf of The University of Arizona the Delegate stated that:
“This assessment accordingly necessitates a comparison between the specification as it stands and how it would stand if amended as proposed”.[13]
[13] [2018] APO 55 at [28].
This is a comparison between the specification as filed and how it would stand if amended as proposed.[14] The approved[15] test for added matter in the UK is that of Aldous J in Bonzel v Intervention (No 3) and put forward by the Opponent:
“(1) To ascertain through the eyes of the skilled addressee what is disclosed, both explicitly and implicitly in the application.
(2) To do the same in respect of the patent as granted.
(3) To compare the two disclosures and decide whether any subject matter relevant to the invention has been added whether by deletion or addition. The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application either explicitly or implicitly.”[16]
[14] RGC Mineral Sands v Wimmera Industrial Minerals Pty Ltd [1998] FCA 1358; 42 IPR 353 at 466.
[15] Bose Corporation v Freebit AS [2018] EWHC 889 (Pat) at [84].
[16] [1991] RPC 553 at 574
I note that this test requires something to be clearly and unambiguous disclosed in the specification as filed if it is to be later claimed or disclosed. This is consistent with the explanatory memorandums intention that no matter can be added which would not be directly derived from the specification as filed. The previous test where something was only required to be disclosed in substance also allowed for something being expressly disclosed or “impliedly” disclosed.[17] In relation to an opposition under s 102(1) the test is done by way of comparison between the specification as filed and the proposed amendments and to determine if “as a result of the amendment” the specification would claim or disclose matter that extends beyond that disclosed in the specification as filed.
[17] Ethyl Corporation Patent (1972) RPC 169 at 189.
The Opponent submitted five reasons they alleged the proposed amendments fail under ss 102(1). I will deal with each of these separately and if what arises as a result of the amendment is the adding or claiming of new matter which extends before the disclosure of the specification as filed then the claim amendments would not be allowable. If, however, the issues do not arise as a result of the amendment then they are suited to the s 59 opposition.
Firstly, the Opponent’s submissions appear to relate to the deletion in paragraph [0037] of the dicarboxylic acid. The deleted sentence is as follows:
“In other embodiments, for example when the hydrocarbyl acylating agent is a dicarboxylic acylating agent, no separate acid component is needed. In such embodiments, for example,” (my emphasis)
This is followed by the passage which is kept:
“The detergent is prepared by combining reactants which are essentially free to free of an acid component, such as acetic acid and rely on the acid group of the hydrocarbyl acylating agent instead.”
What arises as a result of the amendment?
Paragraph [0037] before amendment contained two embodiments, one with acid present (e.g. acetic acid is specifically added separately) and the other with the acid group as part of the hydrocarbyl acylating agent instead. The result of the amendment is that only the embodiment where the acid group is part of the hydrocarbyl acylating agent is disclosed in the paragraph and is also claimed in claim 1.
The Opponent submitted that the amended claim 1 and 11 both allow for reaction products where no carboxylic acid is present in the structure of detergent. I disagree with this construction. The claim has a non-quarternized detergent containing an amide group and the claim uses the words
“is essentially free from any additional acid component other than an acid group present in the structure of the detergent” (my emphasis)
In my view it is clear that there is an acid group present in the structure of the non-quaternized detergent.
It is clear to me that the claim requires that the starting material must have something to form the amide, i.e. at least one carboxylic acid group or derivative, and must have something to provide the proton source for the reaction of the amine with the epoxide (quaternizing agent). The proton source is the acid group present in the structure of the detergent. I do not have evidence of what other possibilities could be added and it appears a second carboxylic acid group must be present for the reaction to take place. Furthermore it is referred to as the acid group present in the structure of the detergent.

I note that the passage which is deleted clearly stated “in other embodiments, for example” and therefore in my opinion is not limited to just the embodiment in which a dicarboxylic acylating agent is present. Furthermore, the Opponent has focused on an amendment to a single paragraph in isolation and has not looked at the disclosure as a whole of the specification as filed. The Applicant pointed out original paragraph [0008] states:
“The invention further provides for these additives and methods of making them, where the additives are formed by a reaction completed in the present of a protic solvent and/or is essentially free to free of any additional acid component other than the acid group(s) present in the structure of the detergent itself.”
This paragraph has not been changed with the amendments and it explicitly states a reaction free or essentially free of any additional acid component other than the acid group(s) present in the detergent. In the above paragraph the acid group(s) uses the (s) in brackets which I interpret as there being one or a plurality of acid groups, in other words, one or more acid groups present in the structure of the detergent.
I see no issues arising under s 102(1) as a result of this amendment. The Opponent’s submission is therefore unsuccessful as the result of the amendment does not claim or disclose new matter extending beyond the original disclosure.
Secondly, the Opponent submitted that the word “comprises” in claim 1 and 11 allows the applicant to extend the quarternizing agent so that they are “no longer limited to said particular list of hydrocarbyl epoxide-type reagents” stating that the original disclosure was only of the hydrocarbyl epoxide with an acid and that now “no acid” is present.
What arises as a result of the amendment?
The word “comprising” was present in both claim 1 and claim 11 before the amendment in reference to “a quaternizing agent” and for the same reasons as above, the acid is now present in the structure of the detergent. Furthermore the claim is now limited to a particular list of hydrocarbyl epoxides, specifically comprising ethylene oxide, propylene oxide, butylene oxide, styrene oxide or combinations thereof and before the amendment the claim was not limited to these at all. Therefore the effect of this amendment does not add new matter extending beyond the original disclosure.
Thirdly, the Opponent submitted that the use of the term “an acid group”, i.e. the one on the detergent and which as a result of the amendment would be in claim 1, was broadening since accepted claim 2 referred to “any acid group”.
What arises as a result of the amendment?
This point was debated in the evidence with Assoc Prof Pfeffer stating that an acid group is slightly narrower than any acid group stating:
“My interpretation is that the change to “an acid group” has made the term slightly narrower, in that reference is now to a recognised acid group as would be known to the skilled reader to be present. According to this interpretation, “any acid group” is a more general reference to hypothetical acid groups that may be present, yet which are not recognised in advance by the reader.”[18]
[18] Pfeffer at 41.
Prof Atkin stated that this interpretation would result in a:
“completely new generic definition of the non-quarternized detergent component a) of the claims.”[19]
[19] Atkin #2 at 5.1.
I agree with the evidence of Assoc Prof Pfeffer on this point, any acid group, could be viewed as any acidic group and including things other than what is more specifically referred to as “an acid group” which would be known to the skilled reader. I do not think this results in a completely new generic definition of the non-quarternized detergent component as suggested by Prof Atkin as the presence of an amide, an acid group on the detergent and an amine makes up the non-quarternized agent of paragraph [0007] and [0008]. Furthermore in “any acid” the word any is being used as an indiscriminate adjective such as “any examiner” meaning one, but no matter which of several types of examiners “an acid” is an indefinite article such as in “an examiner” mean one examiner specifically. The result of the amendment therefore does not add matter extending beyond the specification as filed.
Fourthly the Opponent submitted that, although the quarternizing agents have now been listed as the specific epoxides the specification as filed only states that they have been used in the presence of a protic solvent in paragraphs [0062] to [0065].[20] Indeed in the process that is in these paragraphs a protic solvent is used in [0063].[21] A more detailed discussion of the protic solvent is provided for in the following pages with paragraph [0072] stating:
“While not wishing to be bound by theory, it is believed that a polar protic solvent is required in order to facilitate the dissociation of the acid into ions and protons. The dissociation is required to protonate the ion formed when the detergent having an amine functionality initially reacts with the quaternizing agent. In case where the quaternizing agent is an alkyl epoxide the resulting ion would be an unstable alkoxide ion. The dissociation also provides a counter ion from the acid group of the additive that acts to stabilize the quaternary ammonium ion formed in the reaction, resulting in a more stable product.”[22]
What arises as a result of the amendment?
[20] The specification as filed; The specification as amended at [0057] to [0060].
[21] The specification as filed; the specification as amended at [0058].
[22] The specification as filed; the specification as amended at [0067].
The Opponent’s argument states that the protic solvent is an essential feature of the invention and the amendments include subject matter not described in the specification as filed. The Applicant responded by noting the description as filed also states at [0066] that:
“The additives of the present invention may be derived in the presence of a protic solvent.”[23] (Applicant’s emphasis)
[23] The specification as filed; the specification as amended at [0061].
The use of the term “may” at the beginning of the discussion on the protic solvent appears to allow for the reaction without the use of a protic solvent. In my view, and as pointed out by the Applicant, claim 1 in the specification as filed was not limited to the use of the protic solvent and consequently new matter will not be claimed as a result of the amendments as it was already claimed prior to the amendment. As a consequence this submission fails.
Fifthly, the Opponent submitted that in the method where a non-quaternized dicarboxylic acid detergent is used the reaction temperature is essential. The specification states that:
“In other embodiments where the hydrocarbyl acylating agent is derived from a dicarboxylic acid, the reaction temperature may be 50 ºC to 80 ºC or 50 ºC to 70 ºC.”[24]
[24] The specification as filed at [0063]; The specification as amended at [0058].
The Opponent submitted that this is confirmed by Example 3 which uses a succinamide derived detergent and the maintenance of a low temperature is essential to avoid the succinamide cyclising.
What arises as result of the amendment?
In my view, although the claims have been limited to this embodiment, they also included this embodiment before the amendments,the relevant disclosure in the specification has not changed and the amendments do not result in claiming something that was not already with the scope of the claims. I therefore do not find that this is new matter has been added or claimed as a result of the amendments.
This ground of opposition fails.
Subsection 102(2)(a)
Section 102 (2) states:
(2) An amendment of a complete specification is not allowable after the relevant time 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;
This provision has not been changed with the Raising the Bar Act. Section 102 (2) applies to amendments after a relevant time. The application has been accepted and it follows that this criteria is met. Yates J stated that:
“the reference to ‘within the scope of the claims’ before amendment is significant. The comparison is not between a particular amended claim and that claim before amendment. The expression ‘within the scope of the claims’ directs attention to all the claims.”[25]
Yates J went on to endorse the test:
“For this reason a practical test is to ask whether an amendment makes anything an infringement which would not have been an infringement before the amendment. If the answer is ‘yes’ the amendment is proscribed by s 102(2)(a) of the Act [citation omitted].”[26]
[25] Bristol-Myers Squibb Co v Apotex Pty Ltd [2010] FCA 814 at [40].
[26] Ibid.
The Opponent focussed on claim 2 as accepted. This claim as accepted stated:
“2. The composition of claim 1, wherein a protic solvent is present during the reaction of (a) and (b) and wherein the reaction of (a) and (b) is essentially free of any additional acid component other than any acid group present in the structure of the detergent.”
Their submission is that the amendments add the feature of claim 2 relating to it being essentially free from any additional acid other than an acid group present in the structure of the detergent. They submitted that claim 1 as amended does not fall within the scope of the claims as accepted.
Claim 1 at acceptance is a composition claim and reads as follows:
“1. A composition comprising a quaternary ammonium salt detergent containing an amide group, where the quaternized detergent comprises the reaction product of:
(a) a non-quaternized detergent containing an amide group, where the detergent has a tertiary amine functionality; and
(b) a quaternizing agent.
This claim in my view is the broadest claim at acceptance and in my view the amendment adds a limitation which results in the broadest claim being narrower. The amendment adds the following feature:
“and wherein the reaction of (a) and (b) is essentially free of any additional acid component other than an acid group present in the structure of the detergent; and wherein (b) the quaternizing agent comprises ethylene oxide, propylene oxide, butylene oxide, styrene oxide or combinations thereof.”
Before amendment additional acid could have been used to make the composition of claim 1 and any “quaternizing agent” could have been used. The quaternizing agent is now limited to the epoxides listed but may contain some additional additives as the term “comprising” is non exhaustive as defined in the specification.[27] Claim 1 is also now narrower in that it is essentially free of any additional acid component and there is an acid group present in the structure of the detergent. The Opponent’s submission that the solvent has not been limited applied equally toclaim 1 at acceptance. There was no limitation of solvent in claim 1 as accepted so I do not see how this could now be an infringement of something that wasn’t an infringement at acceptance. The test is whether something would be an infringement after the amendment which was not an infringement before the amendment and in my view this criteria has not been made out.
[27] Specification as accepted at [0096].
The Opponent’s further submissions on this ground related to changes in the dependent claims, such as changing the term “condensing” to “reacting” in claim 4, 6, 7 and 13. In fact a large amount of the expert evidence in the case focussed on condensation reaction, addition reaction and reactions generally. The evidence did not address the claims before amendment as a whole and the broadest claims in my view are the independent claims 1 and 11. The analysis of this section must focus on what would be an infringement now which was not an infringement before looking at the claims as a whole. I accept that some dependent claims can shift the scope sideways and may indeed be broader than an independent claim, however, that is not the case here. Claim 1 as accepted refers to a “reaction product” thus, although claim 4 referred to a condensation product before amendment any reaction products that are not the product of a condensation reaction would still have been an infringement of claim 1.
I do not find any evidence of something that would be an infringement in the amended claims which was not an infringement in the accepted claims. This ground of opposition fails.
Subsection 102(2)(b)
Subsection 102(2)(b) states:
(2) An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
…
(b) the specification would not comply with subsection 40(2) or (3).
In relation to subsection 40(2)(a)
The opponent submitted that the proposed amendments are not allowable under paragraph 102(2)(b), in that as a result of the amendment, the specification would not comply with subsection 40(2)(a) because the specification would not disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.
The provisions of s40(2)(a) were recently considered in detail in Evolva where the delegate reviewed numerous recent UK and EPO decisions, having regard for the guidance they provided,[28] and in doing so, reformulated the test for clear enough and complete enough disclosure, laid down in by the delegate in CSR[29] in the following way, as a process of construing the specification to determine:
[28] Evolva SA [2017] APO 57 at [22] to [45].
[29] CSR Building Products Limited v United States Gypsum Company [2015] APO 72 at [95].
·What is the scope of the invention as claimed?
·What does the specification disclose to the skilled person?
·Does the specification provide an enabling disclosure of all the things that fall within the scope of the claims, and in particular:
a)Is it plausible that the invention can be worked across the full scope of the claims?
b)Can the invention be performed across the full scope of the claims without undue burden?
The Opponent’s submissions focussed on the claims as proposed to be amended and stated that they now include embodiments where:
(i) the reaction mixture is essentially from any added acid and the non-quaternized detergent does not contain a carboxylic acid group in its structure and/or
(ii) when the reaction is not performed in the presence of a protic solvent.
In my view the scope of the claims as filed and as accepted included both of these possibilities. Therefore I fail to see how they can be a result of the amendment. Furthermore, in my view, when the detergent is “essentially free from any added acid other than an acid group present in the structure of the detergent” then an acid group is present in the structure of the detergent.
The discussion in the description of the protic solvent is set out above. I note that claim 1 as filed and accepted was not limited to a protic solvent system. I have do not have any evidence that an expert would have construed claim 1 before the amendment to include reactions only carried out in protic solvents and then after the amendment would construe now construe claim 1 to include reactions without the use of protic solvents. Neither claim before or after the amendments refers to the protic solvent and in my view, in order for this ground to be successful limitations of a protic solvent system would have had to have been imported from the description before amendment and not after amendment. There is no evidence to support this and therefore I do not have to make any further analysis of the clear enough and complete enough disclosure.
The Opponent also submitted that the description only provides a clear enough and complete enough disclosure of specific temperature ranges when the embodiment of the current claims is practiced. I have discussed this issue above, however, I do not see that this is a consequence of the amendments. If this s 40(2) issue exists it is in the claims before the amendment therefore I cannot find that it fails s 102(2)(b).
In relation to subsection 40(3)
The opponent submitted that the proposed amendments are not allowable under paragraph 102(2)(b), in that as a result of the amendment, the specification would not comply with subsection 40(3) because the claims would not be clear and would not be supported by the specification.
Clarity
It is a requirement of subsection 40(3) that the claims be clear. This requirement is understood to be satisfied if a person could ascertain “whether or not what he proposes to do falls within the ambit of the claims”.[30] Furthermore in outlining principles of construction, Hely J noted that:
“It is permissible for an invention to be described in a way which involves matters of degree. Lack of precise definition in claims is not fatal to their validity, so long as they can provide a workable standard suitable to the intended use. The consideration is whether, on any reasonable view, the claim has meaning. In determining this, the expressions in question must be understood in a practical, commonsense manner. Absurd constructions should be avoided and mere technicalities should not defeat the grant of protection.”[31] (citations omitted)
[30] Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59 at 60.
[31] Flexible Steel Lacing Co v Beltreco Ltd [2000] FCA at [81].
This approach was approved by the Full Federal Court in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag.[32]
[32] [2008] FCAFC 121 at [14]
The Opponent submitted that by replacing the terms “any acid” in claims 1 and 11 with “an acid” resulted in a lack of clarity. This issue was discussed above. The phrase in the amended claim states “an acid group present in the structure of the detergent”. Assoc Prof Pfeffer made the following comment on this point:
“I also note that ‘any acid group’, which was previously specified in Accepted Claim 1 now reads “an acid group’ in Amended Claim 1. The ‘acid group’ being referred to is one present on the (a) non-quaternized detergent and may be, for example, a carboxylic acid.”[33]
[33] Pfeffer at 40.
As I mentioned above Assoc Prof Pfeffer found this change to be slightly narrowing.[34] I disagreed with Prof Atkin’s response to this above. I note that both experts did not appear to have trouble understanding what was meant by the term “an acid” generally. The Opponent, however, submitted that the Applicant is avoiding a clear structural definition of the detergent and believed that it does not place any clear limitation that there must be an acid group present in the structure of the detergent. I note there was no more structural definition in the claims before the proposed amendment. Furthermore the term “an acid” does not appear to obscure the scope of the claims. Consequently this aspect of the opposition fails.
Support
[34] Pfeffer at 41.
The provisions of s40(3) were recently considered in detail by a delegate of the commissioner in CSR. The delegate reviewed several recent UK and EPO decisions, having regard for the guidance they provided,[35] and formulated the relevant test (which I will apply to the context of what arises as a result of the effect of the amendment) in the following way:[36]
i)Construe the claims to determine the scope of the invention as claimed,
ii)construe the description to determine the technical contribution to the art, and
iii) decide whether the claims are supported by the technical contribution to the art.
[35] CSR Building Products Limited v United States Gypsum Company [2015] APO 72 at [109] to [114]
[36] Ibid, at [115]
The Opponent has submitted that the technical contribution that corresponds to what is being claimed can be gleaned from paragraph [0063].[37] I have discussed the issues raised by the Opponent earlier. They relate to the protic solvent and the temperature ranges used in the reactions. It is the Opponent’s view that there is only support for what is now claimed when the reaction is maintained at least below 80 ºC and in the presence of a protic solvent. It is their view that this is the technical contribution and what has been enabled and should form part of the amended claims. In my view, as I have discussed this above earlier, claim 1 before the amendment was the broadest claim and the protic solvent and temperature ranges were not part of the broadest claim before the amendment. Therefore, I do not see how this is a result of the amendment and instead these issues should be dealt with in the s 59 opposition.
Conclusion on section 102(2)(b)
The issues raised have not been established to be a result of the amendment and thus this ground of opposition fails.
[37] In the specification as filed; in the specification as amended at [0058].
Conclusion

The evidence does not establish that the claims are not allowable under section 102; the Opponent has not established that as a result of the amendment the claims would not be allowable. Therefore the Opposition under s 104 has been unsuccessful on all grounds. I allow the amendments.
The Stay
The letter of 19 June 2017 from the Commissioner to both parties directed that the opposition be stayed until two weeks after the Commissioner notifies the parties of the allowance, refusal or withdrawal of the amendments. This decision is to be taken as notification from the Commissioner that the amendments have been allowed. Evidence in Answer in the s 59 Opposition is due 2 weeks from the date of this decision.
Costs
Both parties submitted at the hearing that costs should follow the event. The Applicant sought actual costs at the hearing. In their view the Opponent was abusing the process and pressing grounds which the Applicant thought the Opponent knew would fail. The Commissioner can make deviations and variations to the award of costs. It is important that Oppositions be accessible and, although the Opponent has been unsuccessful, they presented their case professionally and they followed a process which was available to them. I award costs in accordance with Schedule 8 are awarded against the Opponent.
K. Wagg
Delegate of the Commissioner of Patents
The Claims defining the invention are as follows:
1.    A composition comprising a quaternary ammonim salt detergent containing an amide group, where the quaternized detergent comprises the reaction product of:
(a)              a non-quaternized detergent containing an amide group, where the detergent has a tertiary amine functionality; and
(b) a quaternizing agent;
and wherein the reaction of (a) and (b) is essentially free of any additional acid component other than an acid group present in the structure of the detergent; and wherein (b) the quaternizing agent comprises ethylene oxide, propylene oxide, butylene oxide, styrene oxide, or combinations thereof.
2.    The composition of claim 1, wherein a protic solvent is present during the reaction of (a) and (b) ~~and wherein the reaction of (a) and (b) is essentially free of any additional acid component other~~ ~~than any acid group present in the structure of the detergent~~.
3.    The composition of claim 2, wherein the protic solvent comprises a linear or branched alcohol containing 1 to 10 carbon atoms.
4.    The composition of any one of claims 1 to 3, wherein (a) the non-quaternized detergent comprises the ~~condensation~~ product of a hydrocarbyl-substituted acylating agent and a compound having a nitrogen atom capable of ~~condensing~~ reacting with the acylating agent and further having at least one tertiary amino group.
5.    The composition of claim 4, wherein the hydrocarbyl-substituted acylating agent comprises polyisobutylene succinic anhydride.
6.    The composition of claim 4 or claim 5, wherein the compound having a nitrogen atom capable of ~~condensing~~ reacting with the acylating agent comprises l-aminopiperidine, 1-(2- aminoethyl)piperidine, 1-(3-aminopropyl)-2-pipecoline, 1-methyl-(4-methylamino)piperidine, 4- (l- pyrrolidinyl)piperidine, l-(2-aminoethyl)pyrrolidine, 2-(2-aminoethyl)-l-methylpyrrolidine, N,N- diethylethylenediamine, N,N-dimethylethylenediamine, N,N-dibutylethylenediamine, N,N- dimethyl-1,3-diaminopropane, N,N-diethyl-1,3-diaminopropane, N,N-dibutyl-1,3- diaminopropane, N,N,N'-trimethylethylenediamine, N,N-dimethyl-·N'-ethylethylenediamine, N,N-diethyl-N’- methylethylenediamine, N,N,N'--triethylethylenediamine, N,N,N' -trimethyl-1,3-· propanediamine, N,N,2,2-tetramethyl-1,3-propanediamine, 2-amino-5-diethylaminopentane, N,N,N’,N’- tetraethyldiethylenetriamine, 3,3'-diamino-N-methyldipropylamine, 3,3'- iminobis(N,N- dimethylpropylamine), ~~triethanolamine,~~ or combinations thereof.
7.    The composition of claim 4 or claim 5, wherein the compound having a nitrogen atom capable of ~~condensing~~ reacting with the acylating agent comprises N,N-diethylethylenediamine, N,N- dimethylethylenediamine, N,N-dibutylethylenediamine. N,N-dimethyl-1 ,3-diaminopropane, N,N- diethyl-1.3-diaminopropane, or combinations thereof.
8.    The composition of any one of claims 1 to 7, wherein (b) the quaternizing agent comprises ~~ethylene oxide, propylene oxide, butylene oxide, styrene oxide, or combinations thereof.~~
9.8.             A fuel composition comprising the composition of any one of claims 1 to 87 and further comprising a fuel.
10.9.          The fuel composition of claim 98, further comprising one or more fuel additives other than the quaternary ammonium salt detergent
11.10. A method of operating an internal combustion engine or open flame burner comprising supplying to the engine or burner the fuel composition of claim 98 or claim 109.
~~12.11.~~A process of making a quaternary ammonium salt detergent comprising:
I.   reacting (a) a non-quaternized detergent containing an amide group, where the detergent has a tertiary amine functionality with (b) a quaternizing agent;
thereby obtaining a quaternized detergent;
wherein a protic solvent is present during the reaction of (a) and (b) and wherein the reaction of (a) and (b) is free of any additional acid component other than any acid group present in the structure of the detergent; and
wherein (b) the quaternizing agent comprises ethylene oxide, propylene oxide, butylene oxide, styrene oxide, or combinations thereof.
12.   The process of claim 11, wherein the protic solvent comprises a linear or branched alcohol containing 1 to 10 carbon atoms.
13.   The process of claim 12, wherein (a) the non-quaternized detergent comprises the ~~condensation~~ product of a hydrocarbyl-substituted acylating agent and a compound having a nitrogen atom capable of ~~condensing~~ reacting with the acylating agent and further having at least one tertiary amino group.
14.   The process of claim 12 or claim 13, wherein (b) the quaternizing agent comprises ethylene ~~oxide, propylene oxide, butylene oxide, styrene oxide, or combinations thereof.~~
15.14. The process of any one of claims 1211 to 1413, wherein the process further comprises:
II.           heating the mixture of (a) and (b) to a temperature between about 50°C and about 130°C; and
III.          holding for the reaction to complete; thereby obtaining the quaternized ~~dispersant~~detergent.
16.15. A quaternized detergent made by the process of any one of claims 1211 to 1514.

Evidence	Declarant	Date	Reference	Exhibits
In Support	Prof. Rob Atkin	8 February 2018	Atkin #1	RA-1 to RA-4
In Support	Kathryn Barbara Morris	12 February 2018	Morris	KBM-1 to KBM-5
In Answer	Assoc. Prof. Frederick Matthew Pfeffer	15 April 2018	Pfeffer	FP-1 to FP-8
In Reply	Prof. Rob Atkin	17 May 2018	Atkin #2	RA-5 to RA-6[3]