Bethlehem Steel Corporation v Bagale Pty Ltd

[1994] APO 28

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 615458 in the name of Bethlehem Steel Corporation

Title:    PROCESS FOR STABILIZATION OF HEAVY METAL BEARING DUSTS AND SLUDGES, SUCH AS EAF DUST

Action: Opposition under section 59 (Patents Act 1952) by BAGALE PTY LTD; no evidence served; hearing scheduled; neither party attended hearing.

Decision:    Issued            . 

No evidence served. Grounds of opposition not established.  Opposition dismissed.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 615458 by BETHLEHEM STEEL CORPORATION and opposition thereto under section 59 of the Patents Act 1952 by BAGALE PTY LTD

background

Patent Application No 615458 was filed by Bethlehem Steel Corporation (Bethlehem) on 9 June 1988 under the Patent
Co-operation Treaty.  Acceptance of the application was advertised on 3 October 1991.  Bagale Pty Ltd (Bagale) filed a notice of opposition on 3 January 1992.  Bagale served a copy of the statement of grounds and particulars on the applicant on 3 February 1992 and filed a copy with the Patent Office on 6 February 1992.

The applicant requested dismissal of the opposition on the grounds that the applicant had no locus standi in the matter.  In a decision issued on 11 June 1992 a delegate of the Commissioner of Patents refused to dismiss the opposition. The time for filing evidence in support was set at three months from the date of the decision.

The opponent sought extensions of time in which to file evidence in support from 11 September 1992 to 11 December 1992 and from 11 December 1992 to 11 March 1992.  The applicant objected to the latter extension.  Irrespective of the request for extension of time, no evidence had been served in that time, nor had any further extensions of time been sought.  In those circumstances a delegate of the Commissioner notified the parties that the Commissioner did not intend to determine the opponent's request for an extension, and directed that the time for filing evidence in answer ran from 11 March 1992.  Mr Stephen G Krouzecky, of Wray & Associates (patent attorneys for the applicant) advised the Commissioner that the applicant did not intend to serve any evidence in answer.

A hearing was set down for 16 February 1994 in Canberra to consider the section 59 opposition. F B Rice & Co, who had been acting as patent attorneys for Bagale, advised the Patent Office that they were no longer representing the opponent. A letter was sent directly to Bagale informing them of the hearing, and stating that if there was no contact from Bagale within seven days the Commissioner would proceed on the basis that Bagale would not be appearing. As there was no response from the opponent, Mr Krouzecky advised that the applicant also did not wish to be heard. Neither party attended the hearing.

STATEMENT OF GROUNDS AND PARTICULARS

No evidence has been served by either party to these proceedings and neither party attended the hearing.  The only information I have before me is the information contained in the statement of grounds and particulars.

The grounds of opposition were that claims 1 to 20 were published in Australia before the priority date of the claims; claims 1 to 20 were otherwise not novel in Australia; claims 1 to 20 were obvious and did not involve an inventive step; and that the complete specification does not comply with section 40 of the Patents Act 1952 or the Patents Act 1990. In support of the grounds of prior publication, novelty and obviousness, the statement of particulars listed 26 documents, including 6 patent documents. The statement of particulars also listed a number of deficiencies under section 40 of the Act.

decision

No evidence has been filed in relation to this opposition, nor did either party attend a hearing. However the opposition has not been formally withdrawn. The statement of grounds and particulars raised a number of issues concerning anticipation and alleged section 40 deficiencies. Therefore, as far as I am able to, I must decide on these issues.

Anticipation

The opponent has filed a statement of grounds and particulars which identifies a number of documents.  But the opponent has failed to serve any evidence in support of its opposition.  Subject to any bar to sealing action, I have no basis for finding that the invention claimed is anticipated.  Consequently, the opposition has failed in relation to the grounds of prior publication, novelty and obviousness.

Section 40

The statement of particulars alleges that the specification does not comply with the requirements of section 40. As section 40 deficiencies are generally less dependent on evidence, I am able to give some consideration to the particularised section 40 issues. I will now deal with each of the issues raised.

The particulars state that claims 1, 10 and 13 are not fairly based on the specification in that the specification at page 4, lines 1-2, states that the presence of ferrous ions is essential, whereas these claims refer to the presence of a ferrous compound.  However I note that the examples include adding ferrous ions in the form of specific compounds.  Also, the description at page 4 states that the source of ferrous ions may be derived from industrial sources such as waste pickle liquor.  There are also consistory statements couched in identical words to the claims included in the description.  In my opinion there is no inconsistency between the claims and the description and there is basis in the description for the phrase "ferrous compound".

Several of the particulars allege that the claims are not clear because of the use of indefinite terminology.  Specifically, the terms identified as being indefinite were "flowable", "concrete-like", "chemically stabilising", "physically entrapped or incorporated therein", "effective" and "about".  I consider that a person skilled in the art would readily understand the scope of these terms in the context in which they are used in the claims of the present application.

The particulars also state that claims 1, 10 and 18 are indefinite in that they fail to specify the amounts of lime, pozzolan and ferrous compound that are required to achieve a chemically stabilised waste material.  However the description nowhere indicates that it is essential that the ingredients must be present within given amounts.  The claims are limited, in effect, by the result that the method produces a concrete-like solid waste in which heavy metals are physically entrapped or incorporated therein.  In the present case it appears to me that the relative amounts of ingredients could be ascertained without the exercise of any inventive faculty (No-Fume Ltd v Frank Pitchford and Co Ltd, (1935) 52 RPC 231).

The particulars further state that claims 5, 14 and 19 are not clear and are indefinite in the use of the phrase "6X drinking water standard".  This standard is clearly set out at pages 2b and 3 of the specification.  I consider that the phrase is clear and definite when the claims are read as part of the entire document.

Finally, it is also stated that "claim 20 does not define the invention as it refers to the stabilising of waste material described in the specification.  The Figure and related description refer to chemically stabilising a waste material in the absence of ferrous ions which are an essential feature of this invention".  Claim 20 is an omnibus claim which refers back to the description.  While the examples and figure do show some cases where ferrous ions are not present, these are clearly distinguished in the description from the invention.  It is clear that claim 20 as it stands only includes those examples which describe the invention and excludes the comparative examples.

I have considered each of the points raised in the statement of particulars relating to section 40 deficiencies. In my opinion none of the alleged deficiencies invalidates the claims. I therefore find that the specification complies with section 40.

Conclusion

No evidence has been served relating to the section 59 opposition to this application. As the opponents have provided no basis for finding that the invention claimed is anticipated, the opposition fails on the grounds of prior publication, novelty and obviousness. I have also found the opposition fails on the ground of non-compliance with section 40.

While I have found that the opposition fails, the statement of particulars identified a number of documents which were alleged to anticipate the claims.  I have not considered any of those documents because they were not provided in evidence.  In these circumstances, I consider it appropriate that the Commissioner conduct a bar-to-sealing investigation before sealing the application.

Consequently I dismiss the opposition filed by Bagale and, subject to there being no bar to sealing, direct that the application proceed to sealing.

costs

With regards to costs, the normal practice is for costs to follow the event.  As the opposition has been unsuccessful, I award costs in accordance with Schedule 8 of the Patent Regulations against Bagale Pty Ltd.

Brendan Bourke
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Wray & Associates, Perth