BHP Billiton Aluminium Australia Pty Ltd v Central Chemical Consulting Pty Ltd

[2014] APO 16

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

BHP Billiton Aluminium Australia Pty Ltd v Central Chemical Consulting Pty Ltd
[2014] APO 16

Patent Application:                   2006225251

Title:Method and system for the measurement of chemical species in caustic aluminate solutions

Patent Applicant:  Central Chemical Consulting Pty Ltd

Opponent:  BHP Billiton Aluminium Australia Pty Ltd

Delegate:  Greg Powell

Decision Date:  20 March 14

Hearing Date:  20 November 2013

Catchwords:  PATENTS - section 59 – opposition to the grant of a patent – whether the claimed invention involves an inventive step – invention obvious in light of common general knowledge – limited comment on lack of inventive step in light of documents in light of common general knowledge as the result is no different – whether invention disclosed by prior secret use – prior secret use not established – whether the claims are fairly based – no claims found to lack fair basis – whether the invention fully described – invention fully described – opposition successful – costs awarded against applicant

Representation:  Patent applicant:  Watermark, Perth

Opponent:Mr Andrew Fox of Counsel assisted by Dr Marguerite Port of McCarthy Port Patent and Trade Mark Attorneys

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                   2006225251

Title:Method and system for the measurement of chemical species in caustic aluminate solutions

Patent Applicant:  Central Chemical Consulting Pty Ltd

Date of Decision:  20 March 14

DECISION

The claimed invention lacks inventive step in light of the common general knowledge considered on its own.

Although it is difficult to see what material could be added to the claims to avoid this finding, the applicant is given 60 days to file amendments if they wish to do so in an attempt to overcome my finding.

Costs according to Schedule 8 awarded against the applicant.

REASONS FOR DECISION

Background

1. Application 2006225251 in the name of Central Chemical Consulting Pty Ltd (“CCC”) was filed on 5 October 2006.  It was advertised accepted on 13 December 2007.  A notice of opposition to the grant of a patent was filed by Billiton Aluminium Australia Pty Ltd on 6 June 2008 following the grant of an extension of time.  Billiton Aluminium Australia Pty Ltd later became BHP Billiton Aluminium Australia Pty Ltd (“BHP”).  Two other oppositions were also filed, but were withdrawn and I will not refer to them.

2. Following extensive evidentiary proceedings, including rounds of further evidence, the matter was heard on 20 November 2013. CCC did not appear in person, but filed written submissions.

3. Shortly before the hearing, BHP, in response to a letter from CCC detailing concerns it had with a declaration filed as part of further evidence, filed a further declaration and asked for leave to file further evidence.  I considered the evidence at the hearing and, noting that CCC had foreshadowed no objection to the further evidence, granted leave to file.  CCC was given an opportunity to file evidence in response, but decided not to do so.

4. Additionally, on 6 November 2013, BHP filed an amended Statement of Grounds and Particulars (“SGP”).  The amendments added in further particulars under the grounds that the specification did not comply with subsection 40(2) or (3).  At the hearing CCC was given an opportunity to make representations concerning the proposed amendment (as required by reg 5.9(3)).  I note that CCC addressed the added particulars in their submissions but did not specifically comment on the proposed amendments.  In the circumstances, I take the view that, by their provision of submissions, CCC has made any representations that they might have wished to make regarding the proposed amendments to the SGP.  Given that there is no discretion with respect to the allowance of amendments to particulars (see reg 5.9(1)(c) – “the Commissioner ... must amend particulars ...”), I allow the amendments.  I note that CCC must be sent a copy of the amended SGP (as required by reg 5.9(4)).  A copy of the amended Statement will now be sent to CCC.

   The Opposition

5. The grounds for opposition set out in the amended SGP were that the claimed invention was not a manner of manufacture, lacked novelty, lacked inventiveness, was secretly used and did not satisfy section 40(2) or (3) of the Act.  At the hearing, BHP indicated that it no longer pressed the ground of lack of novelty.

   The Specification

6. The present invention relates to a method and system for the quantitative measurement of chemical species in caustic aluminates solutions.  In particular, it is focused on measurement of chemical species in what are known as Bayer liquors, which are a key component in the Bayer process used to produce alumina.  In this decision I will often use the term “Bayer liquor” in preference to “caustic aluminate solution”, but it should not necessarily be taken that I am confining my consideration purely to Bayer liquors (although that will be the case in some instances).

7. The specification notes that it is necessary to analyse Bayer liquors as part of controlling the Bayer process.  The specification indicates that there are several methods of Bayer liquor analysis, such as titration to the inflection point, which require several minutes to perform and are not suited to direct measurement of the strongly caustic Bayer liquors.  It is also the case that different chemical species require different analytical techniques.  The specification identifies a recent invention for analysing Bayer liquors described in PCT/AU2005/001029 (WO 2006/007631) which is described as “useful”, but which has not replaced the conventional procedures.  The specification notes the technique of Fourier Transform Infra-red Spectroscopy (FTIR) has been used to examine the speciation of sodium aluminate in sodium hydroxide solutions, but states that:

   “it appears that there has been no attempt to use this technique for the routine quantitative analysis of chemical species in caustic aluminate solutions such as Bayer liquors.”

8. The specification then discusses the use of FTIR as a monitoring method for species in Kraft industrial liquors (which are caustic solutions) and exemplifies US patent 5378320, which describes the use of FTIR as a direct monitoring and control method for hydroxide and carbonate in Kraft paper pulp liquors. 

9. The specification then states:

   “Earlier patents and scientific literature do not appear to disclose that Fourier Transform Infra-red Spectroscopy Attenuated Total Reflectance (FTIR-ATR) is a practical method for the accurate and direct measurement of aluminate, hydroxide and carbonate in Bayer and other caustic aluminate liquors.”

   The step that CCC took is to apply infra-red (IR) spectroscopy to quantitatively analyse Bayer liquors.

10. The specification ends with 28 claims as follows:

    1.        A method for quantitative measurement of a concentration of at least one chemical species present in a sample caustic aluminate solution, the method comprising the steps of:
    a) measuring the infra-red transmission or absorption intensities at four or more frequencies in the range of about 400 cm^-1 to 6000 cm^-1 for a range of reference Bayer liquors, or for a range of caustic aluminate solutions with a known composition of said at least one chemical species;
    b) forming a model which correlates the measured intensities at the  four or more frequencies with the concentration of the at least one chemical species in the reference Bayer liquors or caustic aluminate solutions;
    c) measuring the infra-red transmission or absorption intensities at four or more frequencies in the range of about 400 cm^-1 to 6000 cm^-1 for the sample Bayer liquor or caustic aluminate solution; and

    d) calculating the concentration of the at least one chemical species in the sample Bayer liquor or caustic aluminate solution from the measured infra-red intensities of step c) by using the model of step b).

    2.        The method of claim 1 wherein the at least one chemical species is selected from the group consisting of aluminate, hydroxide, carbonate, alkali metal, silica, phosphate, chloride, sulphate and total organic carbon.

    3.        The method according to claim 1 or 2, wherein correlation of the measured intensities with the concentration of the at least one chemical species in the reference liquor or solution is calculated using a rate of change of the intensities or integrated areas from at least four infra-red wavelength regions having predetermined wavelengths.

    4.        The method according to claim 3, wherein the predetermined wavelengths are selected from wavelengths within 11 cm^-1 of one or more of the following spectral regions (cm^-1): 588, 602, 650, 680, 700, 710, 715, 720, 730, 740, 757, 763, 775, 790, 867, 884, 890, 910, 950, 1014, 1040, 1053, 1072, 1100, 1131, 1160, 1190, 1330, 1350, 1382, 1390, 1400, 1433, 1470, 1535, 1550, 1560, 1570, 1580, 1602, 1628, 1654, 1950, 1969, 2028, 2050,2125, 2158, 2265, 2283, 2650, 2830, 2900, 2920, 3000, 3123, 3143, 3150, 3155, 3250, 3350, 3425, 3750, and 5350 cm^-1

    5.        The method according to any one of claims 2 to 4, wherein one or more groups of species are measured as in step b) with the application of intensities at additional wavelengths, selected from 640, 1315, 1700, 2713, 2953, 3277 and 3400 cm^-1

    6.        The method according to any one of claims 2 to 5, wherein the infra red intensities or their rates of change are measured at infra-red absorption regions characterised for the at least one chemical species and at multiple wavelength regions that are not characteristic of principal infra-red absorption regions for the at least one chemical species.

    7.        The method according to any one of claims 1 to 6, wherein the model for correlating measured intensities with the concentration of the at least one chemical species is a statistical model.

    8.        The method according to claim 7, wherein the model is a multivariable model.

    9.        The method according to claim 7 or 8, wherein the statistical model uses one or more statistical techniques selected from partial least squares regression, principal component analysis or multiple regression.

    10.      The method according to any one of the preceding claims, wherein the model of step b) is applied to correlate liquor or solution species over a restricted concentration range or over a specific Bayer liquor type.

    11.      The method according to any one of claims 1 to 10, comprising Fourier Transform Infra-Red Spectroscopy (FTIR) to measure the infra-red transmission intensities.

    12.      The method according to claim 11, wherein the FTIR used is FTIR attenuated total reflectance (FTIR-ATR) to measure the infra-red transmission frequencies.

    13.      The method according to claim 12, wherein the FTIR utilises a diamond crystal ATR attachment.

    14.      The method according to claim 12 or 13, wherein the effect of sodium chloride on the FTIR-ATR spectrum is modelled.

    15.      The method according to any one of claims 1 to 14, wherein a model based on synthetic liquors is used for estimating the concentration of one or more of the chemical species in industrial Bayer liquors.

    16.      The method according to claim 15, wherein total organic carbon is represented in the synthetic liquor by addition of organic acids or salts.

    17.      The method according to any one of the preceding claims, wherein one or more additional parameters, selected from the group consisting of temperature, conductivity, viscosity, refractive index, light absorption or sound attenuation of the solution or liquor are used to assist in determining concentrations of the chemical species.

    18.      The method according to any one of the preceding claims, wherein the sample solution or liquor is separated into soluble and insoluble components prior to analysis.

    19.      The method according to any one of the preceding claims, wherein the method is applied to on-line processing.

    20.      The method according to claim 19, wherein the on-line processing application samples a portion of the solution or liquor from a stream or side-stream of processing equipment.

    21.      The method according to claim 19 or 20, wherein the portion of solution or liquor is pumped from a main process Bayer liquor stream, cooled and clarified prior to quantitative determination of the or each chemical species.

    22.      The method according to any one of claims 20 or 21, wherein concentration of the chemical species is determined by FTIR-ATR wherein an ATR probe is inserted directly into the process stream.

    23.      The method according to any one of claims 11 to 22, wherein the FTIR measurements are made at a constant temperature.

    24.      The method according to any one of claims 1 to 23 performed by an automated laboratory analysis.

    25.      The method according to claim 24, wherein the laboratory based analysis utilises a mobile FTIR-ATR probe with an automated carousel and sample delivery system.

    26.      The method according to claim 24, wherein the analysis utilises a fixed FTIR-ATR crystal with an automated carousel, and a mobile sample delivery and cleaning system.

    27.      A system for quantitative measurement of a concentration of at least one chemical species present in a sample caustic aluminate solution, the system comprising:

    a) means for measuring the infra-red transmission or absorption intensities at four or more frequencies in the range of about 400 cm^-1 to 6000 cm^-1 for a range of reference Bayer liquors, or for a range of caustic aluminate solutions having a known composition of said at least one chemical species;
    b) a microprocessor programmed with a statistical model which correlates the measured intensities at the four or more frequencies with the concentration of the at least one chemical species in the reference Bayer liquors or caustic aluminate solutions;
    c) means for measuring the infra-red transmission or absorption intensities at four or more frequencies in the range of about 400 cm^-1 to 6000 cm^-1 for the sample Bayer liquor or caustic aluminate solution; and

    d) means for calculating the concentration of the at least one chemical species in the sample Bayer liquor or caustic aluminate solution from the measured infra-red intensities by using said model.

    28.      A method of controlling a Bayer process wherein concentration of at least one chemical species is measured using the method of any one of claims 1 to 26 or the system of claim 27, said concentration being used as a control parameter for the Bayer process.

11. BHP did not argue any lack of clarity for these claims and I agree that they are clear.  There are no terms that require any specific construction.

    Evidence

    Evidence-in-support

12. The evidence in support consisted of the following statutory declarations and accompanying exhibits:

    • A first declaration by Stephen Charles Grocott, with exhibits SCG-1 and SCG-2, dated 16 December 2008 (Grocott-1) setting out Dr Grocott’s relevant experience and his knowledge of methods and systems for quantitative measurement of caustic aluminate solutions.  It is clear that Dr Grocott is an experienced chemist in the alumina industry with extensive experience in measurement of chemical species in Bayer liquors.
    • A second declaration by Stephen Charles Grocott, dated 1 May 2009 (Grocott-2) setting out his views on the opposed specification
    • A first declaration by Steven Philip Rosenberg, with exhibits SPR-1 to SPR-8, dated 20 April 2009 (Rosenberg-1), setting out his knowledge of commercial dealings that took place between CCC and BHP Billiton Worsley Alumina Pty Ltd regarding co-development of a method using FTIR to quantitatively measure chemical species in Bayer liquors.
    • A declaration by Marguerite Rosanne Port, with exhibits MRP-1 to MRP-21, dated 12 August 2009, providing copies of documents mentioned in Grocott-1 and Grocott-2.  While this declaration was filed as further evidence it was, by direction, taken to be part of the evidence in support for the purposes of CCC providing its evidence in answer.

    Evidence-in-answer

13. The evidence in answer consisted of the following statutory declarations and accompanying exhibits:

    • A first declaration by Gregory Philip Power, with exhibits GPP-1 to GPP-14, dated 17 December 2009 (Power-1), setting out Dr Power’s relevant experience and his knowledge of methods and systems, and their development, for quantitative measurement of caustic aluminate solutions.  It is clear that Dr Power is an experienced chemist in the alumina industry with extensive experience in measurement of chemical species in Bayer liquors.
    • A second declaration by Gregory Philip Power, dated 21 January 2010 (Power-2), responding to the statements made in Grocott-1.
    • A third declaration by Gregory Philip Power, with exhibits GPP-15 to GPP-17, dated 4 May 2010 (Power-3), responding to the statements made in Grocott-2.
    • A declaration by Richard Hiram Baddeley, with exhibit RHB-1, dated 4 May 2010.  Mr Baddeley is the responsible patent attorney for CCC.
    • A first declaration by Vincent Andrew Patrick, dated 5 March 2010 (Patrick-1), responding to statements in Rosenberg-1.  Dr Patrick is listed as an inventor on the present application.

    Evidence-in-reply

14. The evidence in reply consisted of the following statutory declarations and accompanying exhibits:

    • A third declaration by Stephen Charles Grocott, with exhibits SCG-3 to SCG-27, dated 29 June 2011 (Grocott-3), responding to statements made in Power-1, Power-2, Power-2 and Patrick-1.
    • A second declaration by Steven Philip Rosenberg, with exhibits SPR-9 to SPR-12, dated 22 February 2011 (Rosenberg-2), responding to statements in Patrick-1.

    First round of further evidence

15. The first round of further evidence (provided by CCC) consisted of the following statutory declarations and accompanying exhibits:

    • A second declaration by Vincent Andrew Patrick, with exhibits VAP-1 to VAP-5, dated 29 November 2011 (Patrick-2), responding to statements in Rosenberg-2.
    • A first declaration by Emmanuel Karakyriakos, with exhibits EK-1 to EK-11, dated 28 November 2011 (Karakyriakos-1), commenting on the relationship between CCC and BHP Billiton Worsley Alumina Pty Ltd and the development of the present invention.  Dr Karakyriakos is listed as an inventor on the present application.
    • A declaration by Jennifer Mary Patrick, with exhibits JMP-1 to JMP-4, dated 25 November 2011, commenting on dealing between CCC and BHP Billiton Worsley Alumina Pty Ltd.

    Evidence in response to the first round of further evidence

16. The evidence in response to the first round of further evidence consisted of the following statutory declarations and accompanying exhibits:

    • A fourth declaration by Stephen Charles Grocott, dated 22 February 2012 (Grocott-4), responding to statements made in Patrick-2 and Karakyriakos-1.
    • A declaration by Eris Antoinette Jozef Marie Boom, with exhibits EB-1 to EB-8, dated 20 March 2012, commenting on the commercial relationship between BHP Billiton Worsley Alumina Pty Ltd and Mettler Toledo in co-developing on-line FTIR analysis of Bayer liquors prior to the priority date.
    • A first declaration by Alex Richmond Aboagye, dated 21 March 2012 (Aboagye-1), responding to statements in Patrick-2 and Karakyriakos-1 with specific reference to the relationship between CCC and BHP Billiton Worsley Alumina Pty Ltd.
    • A second declaration by Alex Richmond Aboagye, with exhibit ARA-1, dated 21 March 2012 (Aboagye-2), responding to a statement made in Patrick-2 regarding CCC’s unsuccessful attempts to attract support from BHP Billiton Worsley Alumina Pty Ltd for establishing an FTIR-ATR quantitative measurement technique for Bayer liquors.
    • A declaration by Stuart Charles Brown, dated 21 March 2012, responding to a statement made in Patrick-2 about an email seeking an indemnity from CCC for proposed FTIR analysis work to be carried out by Mettler Toledo for BHP Billiton Worsley Alumina Pty Ltd.

    Second round of further evidence

17. The second round of further evidence (provided by CCC) consisted of the following statutory declarations and accompanying exhibits:

    • A second declaration by Emmanuel Karakyriakos, with exhibits EK-12 to EK-31, dated 13 August 2012 (Karakyriakos-2), providing further information of the development of the present invention and commenting on parts of Grocott-4, the Boom declaration, Aboagye-1, Aboagye-2 and the Brown declaration.
    • A fourth declaration by Gregory Philip Power, with exhibits GPP-18 to GPP-19, dated 3 September 2012 (Power-4), commenting on statements made in Grocott-4 and the Boom declaration.  Dr Power also supplies additional comments to parts of Grocott-3.

    Evidence in response to the second round of further evidence

1. The evidence in response to the second round of further evidence consisted of the following statutory declaration:

   • A fifth declaration by Stephen Charles Grocott, dated 11 February 2013 (Grocott-5), responding to statements made in Karakyriakos-2 and Power-4.

   Third round of further evidence

2. The third round of further evidence (provided by BHP) consisted of the following statutory declaration and accompanying exhibit:

   • A sixth declaration by Stephen Charles Grocott, with exhibit SCG-28, dated 31 October 2013 (Grocott-6), providing a corrected version of Grocott-5 by deleting incorrect assertions.

   As noted above, no evidence in response to the third round of further evidence was filed.

   Observation on evidence

3. As it has turned out, to reach my conclusions set out in the following paragraphs, the evidence of Dr Grocott and Dr Power supplied as evidence in support, evidence in answer and evidence in reply is almost all that was required to decide this matter.  The evidence relating to commercial arrangements between various parties has turned out to be unnecessary given my conclusions on the ground of prior secret use.  Moreover, given my findings with respect to inventive step, a lot of the information on the development of the invention, while extremely interesting, does not play a large part.

   DECISION

   Weight to be given to evidence

4. As an initial step, I will address the concerns raised by CCC about the weight that should be given to the evidence of Dr Grocott.  This contention arose as the result of Dr Grocott’s fifth declaration attributing admissions to Dr Power that he simply did not make.  Specifically, paragraphs 31, 62, 64, 75, 78, 83, 94, 95 and 124 of the fifth declaration indicate that Dr Power had made statements in paragraph 150–152 of his fourth declaration.  Those statements do not exist.  While BHP filed the sixth Grocott declaration which exhibited an excised version of Dr Grocott’s fifth declaration as further evidence, and I have accepted that further evidence given no objection from CCC, CCC submitted that Dr Grocott’s evidence as a whole should be accorded significantly less weight than Dr Power’s.

   I cannot agree.

5. CCC has attempted to turn this error in one declaration into a suggestion that similar errors infect the rest of Dr Grocott’s evidence.  In a letter filed prior to the hearing (dated 1 November 2013), CCC stated:

   “Evidence which contains misrepresentations and/or which has been hastily reviewed by the declarant cannot be logically probative.  How much of the remainder of the Opponent’s evidence could this criticism extend to?”

6. While I take the point about misrepresentations not being logically probative, I cannot see anything to support a finding that Dr Grocott’s other evidence is riddled with misrepresentations.  Indeed, CCC raised no issues with the earlier evidence of Dr Grocott.  Given that, I am prepared to proceed on the basis that Dr Grocott made an honest mistake in including the statements noted above when preparing his fifth declaration and was not looking to deceive anyone.  I do not think that the weight of his evidence should be diminished for this reason alone.

   INVENTIVE STEP

7. The Opponents opposed all claims under this ground, submitting that the claimed invention was obvious on the basis of the common general knowledge alone, and the common general knowledge in combination with some of the documents as set out in the SGP.

8. Section 7 of the Act sets out that: 

   ”(2)For the purposes of this Act, an invention is taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to the person skilled in the art in light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).

   (3)The information for the purposes of subsection (2) is;

   (a)       any single piece of prior art information; or
   (b)       a combination of any 2 or more pieces of prior art information;
   being information that the skilled person... could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.’

9. The test for obviousness is whether it would have been a matter of routine to proceed to the claimed invention.

   “The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.” (Aicken J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; (1981) 148 CLR 262 at 286)

10. More recently, the High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 at [51] - [53]; 212 CLR 411at [51] - [53] approved the approach taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187 in which Graham J had posed the reformulated Cripp’s question:

    “Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce a useful [desired result]?”

11. The invention to be considered when assessing inventive is the invention as claimed.  As noted by Jagot J in Apotex Pty Ltd v AstraZeneca AB (No 4) [2013] FCA 162:

    “...in Danisco at [326] one principle which Bennett J identified as orthodox having regard to the reasons “as enunciated by the High Court in Aktiebolaget, Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21; (2007) 235 CLR 173 [(Lockwood v Doric (No 2)] and Wellcome and by the Full Court in Lundbeck [H Lundbeck A/S v Alphapharm Pty Ltd (2009) 177 FCR 151 ; [2009] FCAFC 70] and Apotex”, and which was not disturbed in Novozymes A/S v Danisco A/S [2013] FCAFC 6, is that:

    In assessing obviousness, it is necessary first to determine the nature of the claimed invention and the inventive step described in the Patent.  This may involve ascertaining the starting point of the inventive step, sometimes described in terms of an existing problem for which the inventor found a solution.  The obviousness of the invention as claimed is then assessed by reference to common general knowledge in Australia at the priority date.”

    The problem and the person skilled in the art

12. In this opposition, the characterisation of both the problem and the subsequent identification of the person skilled in the art are crucial to determining the outcome of this ground.

13. BHP submitted that from reading the specification the problem was, “if a person skilled in the art was looking to develop an improved method for the quantitative measurement of the concentration of at least one chemical species present in a caustic aluminate solution, what methods might they have taken, or what might they have considered, and what is the likely result which would have been achieved from taking such steps?”

14. CCC, on the other hand submitted that the problem was “if a person skilled in the art ... – well versed in titration and ICP techniques – was looking to develop an improved method for the quantitative measurement of the concentration of at least one chemical species present in a caustic aluminate solution, what methods might they have taken, or what might they have considered, and what might they have done next?”

15. It is clear that, apart from the words I have italicised in CCC’s statement of the problem, these problems are almost identical.  With respect to the italicised wording at the end of CCC’s statement of the problem, I agree with BHP’s submissions that there is little difference between these two formulations.

16. From these problems the persons skilled in the art were identified as such:

    For BHP – the person skilled in the art is an analytical chemist charged with the responsibility of making quantitative measurements of chemical species present in caustic aluminate solutions, and Bayer liquors in particular, in Australia at the priority date.

    For CCC – the person skilled in the art is an analytical chemist charged with the responsibility of routinely making quantitative measurements of chemical species present in caustic aluminate solutions, and Bayer liquors in particular, in alumina refineries in Australia before the priority date of 3 March 2006.

    Again, the words are almost identical except for the italicised highlights.

17. It appears to me that, in identifying that the problem requires the person skilled in the art be “well versed in titration and ICP techniques” and that the person skilled in the art be someone who “routinely” makes measurements “in alumina refineries”, CCC is seeking to draw a distinction between those employees of alumina refineries who are responsible for taking measurements (which are typically titration and ICP techniques) to control the refinery’s processes and those scientists who take measurements purely for research purposes.  From CCC’s submissions it appears that these are two separate worlds which do not mix and that one would never look to the other world when seeking out ideas.

18. I disagree with CCC’s characterisations and adopt BHP’s characterisations.  As pointed out by BHP, page 18, lines 2–9 of the present application state:

    “The invention is of particular application as a laboratory technique or a process technique for measuring the soluble chemical species in industrial Bayer liquors, and may also be used to provide information on aluminium trihydroxide or other solids in the liquor.  Where only concentrations of the soluble components of a liquor are required, the liquor can be clarified by filtration or settling prior to measurement.  The invention also finds particular and advantageous applications for rapid on-line measurement and analysis, permitting analysis of small samples of liquor or solution without necessitating dilution of the sample prior to analysis.”

19. As such, while there is no doubt that the invention can be applied to the on-line measurement systems of an alumina refinery, it is clearly intended by the application that the invention be a general technique, unlimited by any specific environment.

20. With respect to considerations of the person skilled in the art, I note from Grocott-1 (at [6]) he attended conferences and that:

    “[t]hese conferences are attended by industry technical personnel and researchers e.g.  research chemists of the major alumina companies, alumina refinery operators and service providers such as contractors, technical specialists, and equipment manufacturers.” (my emphasis)

21. I also note from Power-1 (at [15] and at [17]) that his main sources of knowledge and information were:

    “the academic literature, conferences proceedings and attendance at conferences, internal company reports, personal contacts including discussions and meetings with scientists and practitioners in the field on an ongoing basis” (my emphasis).

    I also note that Dr Power, who is commenting as a person skilled in the art, started his career as a research chemist developing automatic titration methods for use in alumina refineries.

22. To my mind it is clear that there is no demarcation present between those who work in the “real world” of refinery analysis and those who work in the “research world”.  If that were truly the case, then there would be no need for contact between people working in those two areas.  Indeed, it seems from the above evidence of both Grocott and Power that there is a constant and ongoing flow of information between the two “worlds”.  What is known or discovered in one would soon be known in the other.

23. This creates problems with the evidence from Power.  While there is absolutely no doubt that he is eminently qualified with respect to the subject matter of the invention, as is Dr Grocott, his approach is “tainted” by a view that the hypothetical person skilled in the art cannot include a research scientist, or that things known to a researcher would not form part of the background knowledge of the hypothetical person skilled in the art.  I cannot see the justification for taking this narrower view.  As such, notwithstanding Dr Power’s statements distinguishing techniques used in research to those used at a refinery, I do not accept them.

    In Light of Common General Knowledge

24. To my mind, BHP has established that each and every feature found in the claims forms part of the common general knowledge of the person skilled in the art.

25. Dr Grocott’s first declaration establishes to me that IR spectroscopy, including FTIR spectroscopy, was a known technique in the analysis of Bayer liquors (see Grocott-1 at [24] and [26] for example).  Dr Power also confirms in his first declaration that FTIR spectroscopy was a known research tool (see Power-1 Table 2 and additionally Power 3 at [94]).  Given my opinion with respect to the knowledge base of the person skilled in the art, it seems reasonable to me to conclude that the person skilled in the art knew of FTIR as a potential tool to investigate Bayer liquors.

26. With respect to the steps set out in claim 1, BHP provided:

    D1 – ASTM International Standard E 1655-05: “Standard Practices for Infrared Multivariate Quantitative Analysis”

27. With respect to this document Dr Grocott declares that:

    “[w]hilst I was not already familiar with Document D1, at March 2006 I note that it simply describes in detail the well-known practices of Infrared Multivariate Quantitative Analysis which I employed on numerous occasions when conducting IR analysis before March 2006 ... . I am familiar with ASTM as being an organisation which publishes standards which are followed in laboratories that I have worked in prior to March 2006.” (see Grocott-2 at [22])

28. Dr Power also comments on D1 and states:

    “D1 ... is a reference work for analysis by IR spectroscopy generally” (see Power-3 at [66])

    and

    “Document D1 provides a general standard for conducting Infrared Quantitative analysis which is well known.” (see Power-3 at [74(a)])

29. Later he declares:

    “The practice of the method described and [applied] in the Application is indeed consistent with the procedures outlined in document D1.  This is as it should be, for if it were not so then the method described in the Application would potentially be unsound.” (see Power-3 at [105])

30. I take it from these statements that both Dr Grocott and Dr Power accept that what is disclosed in D1 can be considered common general knowledge in the art when seeking to undertake quantitative IR measurement.  I am also of the view (as noted in Grocott-5 at [101]) that “standards” exist once a procedure is recognised as being routine.

31. Taking that stance, and using claim 1 as guidance, it can be said that the following is common general knowledge when undertaking quantitative IR measurement:

    • measuring the infra-red transmission or absorption intensities at four or more frequencies in the range of about 400 cm^-1 to 6000 cm^-1 for a range of reference solutions with a known composition of said at least one chemical species (see D1: 6.1.1–6.1.3, 9.1–9.2, 12.2.4);
    • forming a model which correlates the measured intensities at the four or more frequencies with the concentration of the at least one chemical species in the reference solutions (see D1: 6.1.4, 12.1);
    • measuring the infra-red transmission or absorption intensities at four or more frequencies in the range of about 400 cm^-1 to 6000 cm^-1 for the sample solution (see D1: 6.1.6); and
    • calculating the concentration of the at least one chemical species in the sample solution from the measured infra-red intensities by using the model (see D1: 3.2.1, 6.1.6, 9.1).

32. The question to be asked then is, (i) given that FTIR is a tool that has been used to investigate samples and (ii) given that such a process would involve (a) measuring the properties of reference samples, (b) calculating a model linking the measurements to the properties, (c) measuring unknown samples and (d) using the model to calculate the properties of the sample from the measurements received from the unknown sample, would the person skilled in the art directly be led as a matter of course to try FTIR to analyse samples of Bayer liquors having built a mathematical model from reference Bayer liquors in the expectation that it might well result in useful measurements of properties of the Bayer liquors?

    In my opinion, the answer to that question must be “Yes”.

33. To my mind the evidence establishes that investigation of alternative analytical techniques was an ongoing concern (see, for example, Power-1 tables 1 and 2). It also seems clear to me that FTIR was used is alumina refineries for measuring properties of feedstock for the Bayer process, although not the liquor derived from that process (see Grocott-2 at [37], Power-3 at [78(b)], [81], [92] and Grocott-3 at [17]-[22] and [38]). FTIR was also used to measure high molecular weight organics in caustic aluminate solutions, like Bayer liquors (see Power -1 at table 1). In these circumstances, I cannot see the selection of FTIR as an option that is likely to produce a useful result as being anything other than what the person skilled in the art would do.

34. Dr Power notes that (in Power-3 at [79]) while FTIR may have been used Bayer process solutions, he disputed that this was routine.  He stated that:

    “[r]outine Bayer liquor characterization, ... , is, and was prior to March 2006, carried out by titration methods for determination of the alumina, caustic and carbonate contents, and by a suite of other standard methods for other parameters of interest ... . IR and FTIR-ATR spectrometry was not used or routine analysis of Bayer liquors, because no method of sufficient robustness (accuracy, precision, stability, operability) had been developed for that purpose that could compete with the established methods...”

35. However, as I have noted previously, Dr Power’s evidence is narrowed somewhat by his position that there was some sort of separation between researchers (i.e. off-line people) and persons working at alumina refineries (i.e. on-line people).  See, as another example, Power-2 at [52(d)].  As I have explained, I do not believe that such a separation exists and the knowledge of researchers and alumina refinery personnel would be the same.  In the case of the above quote, Dr Power insists on referring to routine analysis to demonstrate that FTIR would not be chosen.  I do not think this position is correct given my conclusion about the person skilled in the art.

36. The quote also highlights another issue that I have with Dr Power’s evidence, as well as evidence from other declarants for CCC.  These declarants often comment that CCC has created a specific model for measuring the components of a Bayer liquor requiring considerable effort over time and that this is worthy of protection (see, for example, Power-3 at [60(c)], [78(d)], [83(e)] and Karakyriakos-2 at [8.9]).  There are also comments that there is no known successful implementation of on-line spectroscopic techniques (see, for example, Power-2 at [52(b) and [53(b)]).  However, to the extent that a specific model is disclosed in the present application (appearing on pages 12–15 of the description), the claims are not directed to those specific models.  Instead, they are drafted in very generic language that essentially mirrors what is given in D1 with the proviso that the IR spectroscopy technique be applied to Bayer liquors.

37. Claim 1 lacks an inventive step in light of the common general knowledge.  It follows from this that claim 27 also lacks an inventive step since it would be obvious to the person skilled in the art that a system as defined in claim 27 (which simply defines the system as having a generic means for carrying out a particular method step) is required to carry the method.  I am also of the opinion that the method, as defined in claim 28, of controlling a Bayer process using the method of claim 1 or the system of claim 27 is an obvious application of the method and/or system.  It is a step that the person skilled in the art would take as a matter of routine.

    Dependent claims

1. Turning to the dependent claims, claim 2 simply defines the chemical species that are being looked for.  These are well-known species that are of interest in Bayer liquors that the person skilled in the art would automatically select.  Claim 2 adds no inventive step.

2. The features of claim 3 are disclosed in D1 (see 4.3, 4.4).  Both Dr Grocott and Dr Power accept that claim 3 is a restatement of Beer’s Law relating the absorption of light to the properties of the material through which the light is travelling.  It adds no inventive step.

3. Claim 4 defines wavelengths at which (or near to which) spectral measurements are taken.  The wavelengths are known wavelengths at which absorption of light by the chemical species of interest in Bayer liquors occurs.  While D1 does not specially mention the wavelengths defined, it is noted in 12.5.1 (and, therefore, I am prepared to accept to be common general knowledge) that wavelengths for IR spectroscopy should be chosen based on knowledge of where the analyte signals occur.  This is all that claim 4 defines.  It adds no inventive step.

4. Similarly, claim 5, defining a smaller group of wavelengths is simply adding common general knowledge imparting no inventive step.

5. Claim 6 adds no inventive step when the disclosure of 12.2.4 of D1 is noted.  Section 12.2.4 notes that the selection of wavelengths “is a critical factor in the model development”.  It is accepted by Dr Power that selection of wavelengths other than the principal IR regions of interest (as claim 6 defines) is “part of the task of identifying the optimum set of wavelengths in the development of the calibration model” (see Power-3 at [90]).  As such, I take this to mean that the selection defined in claim 6 is a known technique.  However, Dr Power states that the suitable set of wavelengths, as stated in 12.2.4, can only be determined by trial and error which Dr Power identifies as “effort, and hence must rely upon the professional judgement and ingenuity of the scientists developing the method”(at [90] again).  However, it is a well-established principle in patent law that mere trial and error cannot result in an inventive step.  While Dr Power believes that was ingenuity in the selection of wavelengths, this is not supported by the description of the present application.  There is no instruction of what needs to be done to ensure selection of the right wavelengths.  What is described is mere trial and error.

6. The features of claims 7, 8 and 9 are found in D1 (see section 4 in particular).  It is common general knowledge in the IR spectroscopy art to build a statistical, multivariate calibration model.  These claims add no inventive step.

7. Likewise, the features of claim 10 are mentioned in D1 at Note 21 where it is stated that the “calibration space” can be enhanced by including more calibration samples in the area where enhancement is required or by partitioning the calibration space into sub-spaces and calibrating in each sub-space.  In my opinion claim 10 is defining the common general knowledge and has no inventive step.

8. Use of FTIR-ATR using a diamond crystal ATR attachment to measure the IR transmission intensities as defined in claims 11-13 is common general knowledge in the art (see Power-3 at [94]).  As shown in D1 (see 7.3.3 for example), FTIR is a well-known measurement method and system and FTIR-ATR is a well-known sampling technology which can be employed (see 8.3).  While Dr Power states (Power-3 at [94]) that the FTIR-ATR technique was not used in the quantitative measurement of Bayer liquors, given that I have found that using IR spectroscopy to investigate Bayer liquors would be obvious to the person skilled in the art, it follows that the use of well-known techniques in the IR spectroscopy field are equally as obvious.  Claims 11-13 add no inventive step.

9. Claim 14 defines that the effects of sodium chloride (NaCl) on the FTIR-ATR spectrum is modelled.  Given Note 21 of D1 discussed above, it could be said that it is common general knowledge to include the effects of other molecules to enhance the calibration model.  The question is whether it was common general knowledge to model for the effects of NaCl.  Dr Grocott states (Grocott-2 at [55]) that he was aware of the effect that NaCl had on ionic strength and the activity of water molecules as this was taught in undergraduate chemistry and through public domain research funded by the alumina refining industry performed by Professors Glen Hefter and Peter May.  He states that NaCl can have indirect effects on anion hydration and, hence, an effect on an IR/NIR spectrum.  He states that it would have been a matter of routine to model the effect of NaCl.  Dr Power states (power-3 at [95]) that:

   “an awareness of the impact of NaCl on ionic strength and activity of water molecules would not generally be sufficient to alert practitioners to its possible indirect effects on the IR spectrum of other species.  The inclusion of Claim 14 ensures that practitioners are aware of this important aspect in the application of FTIR/ATR to the determination of concentrations of chemical species in caustic aluminates liquors.”

10. It seems clear to me that Dr Power is aware that sodium chloride can have effects on ionic strength and activity of water molecules.  However, he is of the opinion that “practitioners” would not know that such effects could affect the IR spectrum and, it seems to follow, would not model those effects as a matter of routine.  The issue here is the word “practitioners”.  I can only assume that the term is meant to refer to persons skilled in the art.  That being the case, the issue I have with Dr Power’s evidence being narrowed somewhat by CCC’s view of the person skilled in the art arises.  To my mind, it seems more likely that the person skilled in the art would know of the possible effect of NaCl of spectra and would, as a matter of routine, incorporate the effect into any model being developed.  I also note that Dr Power does not dispute the assertion by Dr Grocott that work done by Professors Glen Hefter and Peter May on this effect was widely published in the field.  In my opinion it is more likely than not that the person skilled in the art (having the characteristics that I have previously decided) would know of this information.  Claim 14 is not inventive.

11. Claim 15 also lacks an inventive step.  It is clear to me that the “synthetic liquors” of this claim are equivalent to the “reference samples” referred to in D1 (see 3.2.4 for example) as being necessary to create a calibration model.  As such, creating a model based on synthetic liquors is common general knowledge in the art.  It is also obvious that the synthetic liquors would be fashioned with a view to what chemicals were to be measured in the unknown samples (i.e. chemical species in Bayer liquors in the present application).

12. With respect to claim 16, both Dr Grocott (Grocott-2 at [57]) and Dr Power (Power-3 at [97]) agree that the addition of organic salts or acids to the synthetic liquors can be done to represent organic carbon in the synthetic liquors.  It follows that claim 16 defines a standard practice that the person skilled in the art would undertake when looking to create a synthetic liquor with an organic content.  While Dr Power notes (at [97]) in his evidence that such a step had not previously been done for synthetic Bayer liquors in a FTIR-ATR system, given my conclusion that such a quantitative measurement system was obvious, such a point is irrelevant here.  Claim 16 lacks an inventive step.

13. D1 discloses at 12.1.4 that it is useful to combine the spectral data gathered with other measured variables, such as temperature, pH and mixing rates, as these are potential sources of spectral variation.  Both Dr Grocott (Grocott-2 at [58]) and Dr Power (Power-3 at [98]) acknowledge that this would be known to enhance the accuracy of the FTIR determination of concentrations of the looked-for chemical species.  As such, the features of claim 17 are considered to be common general knowledge and claim 17 lacks an inventive step.

14. With respect to claim 18, Dr Grocott indicates (Grocott-2 at [59]) that separating a solution into soluble and insoluble components prior to analysis is standard practice.  Dr Power agrees (Power-3 at [99]) that this is standard laboratory practice but, again, distinguishes on the basis that such a step had not previously been done for synthetic Bayer liquors in a FTIR-ATR system.  As I have stated above with respect to the knowledge of the person skilled in the art means that such a distinction cannot be made.  Claim 18, defining standard laboratory practice is merely defining the common general knowledge.  Hence, claim 18 lacks an inventive step.

15. Claims 19 and 20 add the features that the quantitative measurement method is applied to on-line processing where a portion of the Bayer liquor is flowed from the main Bayer liquor process stream.  D1 (at 8.2) discloses that it is common in IR measurement systems to take a sample using transfer pipes.  It is also anticipated by D1 (see Note 7) that on-line analysis (“at-line” in D1, see also Power-2 at [43(a)] which appears to equate the two) is common.  I do not see claims 19 and 20 adding anything inventive.

16. D1 makes it clear (at note 7) that it is critical that samples taken for analysis be as representative of the process at the time the samples are taken.  Dr Grocott notes (Grocott-2 at [60]) that the techniques of claim 21 “have been applied to caustic aluminate solutions in the Bayer processing industry since before ... 1981”.  Dr Power makes no specific comment on the features of claim 21 other than to note (Power-3 at [100]) that he views the steps “claimed in claims 19 to 22 as novel and highly significant for the Bayer process industry”.  It would appear to me to be necessary, and, therefore, something the person skilled in the art would do, for the sample be cooled and clarified to the extent that an accurate measurement of the soluble components of the Bayer liquor was possible.  I also note that the present application places no particular emphasis on this step which reinforces my view that it is a standard practice.  To my mind, claim 21 is not inventive.

17. Claim 22 also lacks an inventive step since it simply defines inserting the measurement apparatus into the stream being analysed.  This is disclosed in D1 (see 8.2) and, as such, is considered common general knowledge in the IR spectroscopy art.  Claim 22 adds nothing inventive.

18. Claim 23 specifies that the quantitative measurement occurs at a constant temperature.  Both Dr Grocott (Grocott-2 at [61]) and Dr Power (Power-3 at [101]) agree that this is desirable.  D1, at 15.3.2, also points to temperature variations possibly inducing spectral variations.  Hence, in my opinion, the person skilled in the art would have performed measurements at a constant temperature as a matter of routine.  Claim 23 lacks an inventive step.

19. Claims 24-26 define that the measurement is carried out by an automated analysis laboratory consisting of either (i) a mobile FTIR-ATR probe with an automated carousel and sample delivery system, or (ii) a fixed FTIR-ATR crystal with an automated carousel, and a mobile sample delivery and cleaning system.  Dr Grocott states (Grocott-2 at [62]) that these claims simply meant “adding an off-the-shelf autosampler to the front end of an FTIR/FTNIR spectrometer” and (Grocott-2 at [63]) the use of “standard FTIR/FTNIR accessories which were available for a range of commercially available FTIR instruments in the 1990’s”.  Dr Power  (Power-3 at [102]) does not dispute this but, instead, states that he does not consider “that an IR method for quantitative measurement of concentrations of chemical species present in caustic aluminate solutions formed common general knowledge before [the priority date]”.  I have dealt with this submission above and remain of the view that this is not relevant to my considerations here.  I am of the opinion that claims 24-26 define well known arrangements that the person skilled in the art would consider as a matter of routine and, as such, they lack an inventive step.

20. From the above considerations, it follows that claims 1-28 lack an inventive step in light of the common general knowledge taken on its own.

    In Light of Documents + Common General Knowledge

21. BHP submitted that if I did not accept their contention that the invention was obvious in light of common general knowledge alone, then they submitted that the invention was obvious in light of the common general knowledge when considered with each of the following documents on its own:

    D1 – as noted above

    D2 – Gong Wenqi, “Bayer Liquors in Alumina Refineries Studied by Fourier Transform Infrared Spectroscopy”, Journal of Wuhan University of Technology, 1994, pp 1–7

    D8 – Hind, A.R. et al, “At the solid/liquid interface: FTIR/ATR – the tool of choice”, Advances in Colloid and Interface Science, 93 (2001), pp 91–114

    D10 – US 5378320 A (LECLERC et al) 3 January 1995

    D11 – WO 00/68664 A1 (KVAERNER CANADA INC) 16 November 2000

22. As I have found that the claimed invention lacks an inventive step in light of the common general knowledge, it is not entirely clear to me whether I should make findings on obviousness with respect to these documents, since BHP’s submissions under this ground were conditional.

23. Moreover, I have concluded that any inventive step finding I may make with respect to these documents would rise no higher than what I have already decided regarding inventive step with respect to common general knowledge.  To put it another way, there is no claim which would lack an inventive step in light of any one of the documents (+ common general knowledge) but which is inventive in light of the common general knowledge.

24. In the circumstances, I think it best if I restrict myself to addressing the main point of contention between the parties with respect to these documents and express no definite conclusion on obviousness one way or the other.

25. In any event, further consideration of D1 is not required.  Moreover, with respect to D8, BHP only pressed this document if I accepted CCC’s characterisation of the invention that there was invention in selecting IR spectroscopy for quantitative measurement of Bayer liquors, and there was considerable work needed to apply IR spectroscopy once selected which involved overcoming significant difficulties.  As it is clear I do not accept this, I will refrain from considering D8 any further and concentrate solely on D2, D10 and D11.

26. The main point of contention was whether D2, D10 and D11 were documents that the person skilled in the art would have ascertained, understood and regarded as relevant. 

    D2

27. Dr Grocott declares (Grocott-2 at [23]) that he was aware of D2 prior to March 2006.  He erroneously states that it was published in Applied Spectroscopy.  He corrects this (Grocott-3 exhibit SCG-8) noting it was published in the Journal of Wuhan University of Technology and maintained that he was aware of D2 prior to March 2006.

28. Dr Power, on the other hand, declares (Power-3 at [75] and [107]) that, in his opinion, the Journal of Wuhan University of Technology was an extremely obscure journal.  While he does dispute that Dr Grocott was aware of the article, he states that he would not expect a Western technologist to be aware of it.

29. However, assuming for argument’s sake that D2 would have been ascertained, I am of the opinion that it would not have been regarded as relevant.  This is because, as noted by both Dr Grocott (Grocott-2 at [67] and Grocott-3 exhibit SCG-11) and Dr Power (Power-3 at [107]), D2 discloses a qualitative analysis of Bayer liquors and not a quantitative analysis.

30. Dr Grocott states (Grocott-3 exhibit SCG-11) that D2 confirms that spectral peaks of chemical species in Bayer liquors can be resolved.  He then states that moving from qualitative to quantitative analysis would be simple since D2 “confirms that the application of the methodology set out in Document D1 to go from qualitative to quantitative analysis probably will work”.  However, to my mind, the focus of D2 was on recognising the species of a Bayer liquor not their amounts.  I note that conclusion 2 on page 6 of D2 indicates that “assignments of the absorption peaks ... provided that basis for further study of Bayer liquors by the FTIR techniques” and that conclusion 3 announces that “One of the liquors ... contained sulphate ions as well.  That was a discovery which had not been reported before” (my emphasis).  I believe that D2 was encouraging further study of what was in Bayer liquors using FTIR rather than how much was in Bayer liquors.  I am of the opinion that the person skilled in the art would not consider D2 relevant.

    D10 and D11

31. The dispute over these two documents was argued along the same lines.  Specifically, both D10 and D11 are directed to quantitative analysis by FTIR spectrometry of what is known as a Kraft liquor.  Kraft liquors are caustic solutions, but they are not caustic aluminate solutions.  The dispute was whether a person skilled in the art when looking to solve a problem in the Bayer liquor art, would consider solutions in the Kraft liquor art.

32. Dr Power states (Power-3 at [123]) that he:

    “would not have expected those skilled in alumina processing to have other than a general knowledge of the Kraft process, would not expect them to remain up-to-date on the literature related to the Kraft process ... The focus of those skilled in alumina processing was on improving the established analytical methods” (my emphasis).

33. Dr Grocott states (Grocott-3 at [40]) that Kraft liquors were widely regarded by alumina refinery personnel (with the exception of Dr Power) as being the closest industrial analogues to Bayer liquors.  He notes (Grocott-3 at [41] and [42]) that he, and other Bayer process chemists, monitored the Kraft process liquor literature and visits to Kraft industry plants had been undertaken.  He notes that Alcoa had a subscription to the Technical Association of the Pulp and Paper Industry Journal.

34. In my opinion, this is an area in which Dr Power’s more narrow focus on who the person skilled in the art is has led him astray.  By focussing solely on those skilled in alumina processing, I believe that he has missed the point I made earlier about the flow of information between the “real world” of refinery analysis and the “research world”.  Dr Grocott seems much better placed to provide opinion on what areas Bayer process chemists would consider when addressing problems.  I am prepared to accept that the person skilled in the art would have considered literature regarding Kraft process liquors and that D10 and D11 could have been ascertained. 

35. I find some support for this from the fact that D10 is mentioned in the present specification.  While CCC was at pains to point out that this was not an admission of common general knowledge, I do not take it to be such.  Rather, along the lines of CCC’s submissions, I take it to be evidence of what the inventors were familiar with.  If, as Dr Power asserts, those skilled in alumina processing (which the inventors undoubtedly are) were focussed on Bayer liquors, why were they aware of D10? This suggests to me that there is some acknowledgment that work in the Kraft liquor field was known to those in the Bayer liquor field.

36. I am also of the opinion that the person skilled in the art would have understood and regarded D10 and D11 as relevant.  Both recognise, in an analogous manner to the present invention, that measurement of the relevant chemical species present in the liquor is important to controlling the Kraft process.

    PRIOR SECRET USE

37. Under this heading BHP submitted that the invention was not a patentable invention because it had been secretly used in the patent area before the priority date.  The focus of this ground of opposition was a report prepared by CCC for the fee of approximately $3000.  The report, entitled “An examination of Worsley Alumina solids by zeta potential, particle size and FTIR-ATR”, was prepared in October 2005 and, as the title suggests, dealt with the determination of characteristics of a Bayer liquor.  Of particular focus was the section of the report where FTIR-ATR measurements were taken of a “Worsley spent Bayer liquor”.  The report displays a figure labelled as showing the FTIR spectrum of the spent liquor.  The figure shows peaks and troughs which can be assignable to the presence, or otherwise, of various ions within the liquor.  BHP pointed out that this figure was identical to figure 8 of the present application which is labelled as showing “FTIR-ATR spectrum of a Bayer liquor (liquor courtesy of Worsley Alumina)”.  BHP also submitted that other figures on pages 9-11 of the report were replicated as figures 1-4 of the present application.

1. Given these similarities, BHP submitted that this showed that CCC was in possession of the invention prior to the priority date and had benefited commercially from that possession.  It should be noted that this submission is based upon BHP’s characterisation of the invention as the decision to use FTIR for conducting qualitative measurements of, for example, Bayer liquors.  BHP’s contention was that, as soon as that decision was made, all other steps of the claims are ones that would routinely follow in creating the necessary FTIR analysis system.

2. CCC submitted that there was no prior secret use since the invention was the whole combination of features recited in the claims and that those defined methods or systems were not used in preparation of the report.

3. In my opinion, BHP has not established its case.  While a large extent of the evidence on this point was directed to what CCC was tasked to do for the $3000 fee it is largely irrelevant.  What is important is CCC’s point that what has to be secretly used has to be the claimed invention.  I believe that this follows from the relevant case law.

4. In Azuko Pty Ltd v Old Digger Pty Ltd [2001] FCA 1079, which BHP relied upon, Heerey J stated:

   111The terms "use", "secret use", and "secretly used" are not defined in the Act.  The rights conferred by a patent are the exclusive rights, during the term of the patent, "to exploit the invention and to authorise another person to exploit the invention": s 13(1).  "Exploit" is defined in sch 1 in these terms:

   "exploit, in relation to an invention, includes:

   (a)    where the invention is a product - make, hire, sell or otherwise dispose of the product, offer to make, sell, hire or otherwise dispose of it, use or import it, or keep it for the purpose of doing any of those things; or

   (b)   where the invention is a method or process - use the method or process or do any act mentioned in paragraph (a) in respect of a product resulting from such use."

   112In previous Australian legislation a patent conferred the rights "to make, use, exercise, and vend the invention" (Patents Act 1903 (Cth) s 62, Patents Act 1952 (Cth) s 69).

   113In my opinion "not ... used" in s 18(1)(d) is referring compendiously to the exercise of any of the rights which would be conferred by a patent for the invention in question.  True it is the drafters of s 18(1)(d) might have used the new term "exploit", but since English is a language rich in synonyms (being historically a combination of two languages) the fact that one word is chosen instead of another often will carry little weight if the intended meaning is otherwise clear.”

5. Gyles J, while he came to a different conclusion to Heerey J with respect to whether there was prior secret use, nevertheless indicated:

   “180The trial judge drew attention to the relevant historical basis for the secret use ground of revocation, namely, to prevent a patentee from gaining a longer monopoly than the statutory period by enjoying a period of de facto monopoly through the secret use before the priority date, without meeting the corresponding obligation attaching to such a monopoly, namely, the public disclosure of the invention.  This can be traced back (at least) to the informative case of Morgan v Seaward [1837] EngR 176; (1837) 2 M & W 544, 150 ER 874 ("Seaward"), where Parke B said (at 559):

   "... if the inventor could sell his invention, keeping the secret to himself, and, when it was likely to be discovered by another, take out a patent, he might have, practically, a monopoly for a much longer period than fourteen years."

   181In Bristol-Myers Co v Beecham Group Ltd [1974] AC 646 ("Bristol-Myers") Lord Diplock said (at 680-681):

   "... For the other mischief against which that statute was directed was that even monopolies of new manufactures should not extend beyond 14 years.  If the inventor had already reaped commercial benefit from a de facto monopoly in his discovery owing to his concealment from all other traders of the way in which the new substance could be made, he was not to be permitted to prolong his monopoly for an additional 14 years.  So "public use" in the sense of commercial dealing in a product claimed as an invention, by any trader even though it were by the inventor himself, rendered invalid any patent for the product claimed.

   In the case of use by traders, at any rate, the expression "public use" was not employed to mark the contrast between public and secret use but to distinguish commercial from experimental use in the course of discovering, perfecting and trying out the invention so as to test its suitability for commercial use.  As the expression "manufactures" in the Statute of Monopolies indicates, it was the commercial usefulness of the new inventions that provided the reason for encouraging them by grants of temporary monopolies to their inventors, and this object of the statute would be defeated if mere experimental uses of this kind either by the applicant for the patent or by others who had worked privily on the same discovery were to be a bar to the grant of a patent to him who first publicly disclosed the way in which the invention could be carried out." (emphasis added)

   This passage suggests a practical test: has what occurred amounted to a de facto extension of the patent term? The answer to this will usually depend upon whether the patentee reaped commercial benefit from what was done before the priority date.”

6. And later:

   “183      The test of illegitimate extension of the patent term yields satisfactory results in differing circumstances.  If the invention is a process or method, to secretly use the process or method to make goods for sale can readily be seen as a secret commercial use of the invention which would extend the patent if done prior to the priority date.  Another example of secret commercial use of that character is if the product which is manufactured according to a product claim is then secretly used as part of a manufacturing process to make other goods before the priority date.  Another example would be the use of a device made according to the SDS patent as part of a drill rig engaged in commercial drilling, but in conditions of secrecy, prior to the priority date.  To make an article for ultimate sale has, no doubt, a commercial aspect, but it does not amount to use of the product made and does not involve any de facto extension of the term of a patent claiming the product.”

7. It seems clear to me from these passages that what has to have happened, secretly and for some commercial benefit (whatever that may mean), is use of the claimed invention.  It is that invention which is “exploited” when a patent is granted.  Hence, during the term of the patent, it is the claimed invention which is protected.  If a de facto extension occurs, it occurs for the claimed invention.  The above passages do not indicate to me that carrying out one step in a method that is otherwise composed of entirely obvious steps to take is use of the “invention”, which is the method.  However, that is what BHP’s submission essentially amount to.

8. The best that can be said from the evidence supplied by BHP is that CCC gained commercial benefit from carrying out step (c) of claim 1 (which would indicate that they had a means for carrying out that step as defined in (c) of claim 27).  This cannot be use of the method.  I note that the result of the claimed method is a calculated concentration of at least one chemical species in a caustic aluminate solution.  That is not the result of the process which led to the spectrum plot shown in figure 8 of the present application.  While that figure may show the presence of chemical species, it does not show the concentration.

   This ground is not made out.

   MANNER OF MANUFACTURE

100. BHP raised the ground that the invention as claimed in all the claims was not a Manner of Manufacture because it did not involve any invention.  BHP submitted that the claimed invention was merely the analogous use of a known analytical method (being FTIR spectroscopy) without any ingenuity in overcoming any difficulties or challenges.  Essentially, BHP’s position was that, having decided to apply FTIR to Bayer liquors, CCC simply followed the methodology set out in D1.  BHP referred to their submissions with respect to inventive step in this regard.

101. I take it from BHP’s submissions that they are of the opinion that the claimed invention does pass the necessary “threshold of inventiveness” test as set out in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15; 32 IPR 449, and confirmed by Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19; (1998) 152 ALR 604, (1998) AIPC 91-401.

102. The High Court in NV Philips Gloeilampenfabrieken v Mirabella International Ltd (supra) stated that manner of manufacture can be a threshold question: 

“if it is apparent on the face of the specification that the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent, one need go no further”

103. In Bristol-Myers Squibb Co v FH Faulding & Co Ltd [2000] FCA 316; (2000) 46 IPR 553, the majority summarised the effect of the Philips case as follows: 

“Philips stands for the proposition (as a matter of construction of the 1990 Act) that if, on the basis of what was known, as revealed on the face of the specification, the invention claimed was obvious or did not involve an inventive step - that is, would be obvious to the hypothetical non-inventive and unimaginative skilled worker in the field (Minnesota at CLR 260 per Barwick CJ) - then the threshold requirement of inventiveness is not met.”

I do not believe that this ground has been made out.

104. As noted above, in Bristol-Myers an invention does not pass the “threshold of inventiveness” test if, in light of what was known in the art “as revealed on the face of the specification”, the invention is obvious.

105. The court in Bristol-Meyers continued on from the above passage to say:

“Some elaboration, however, is required in relation to what the specification reveals as “known”.  If a patent application, lodged in Australia, refers to information derived from a number of prior publications referred to in the specification or, generally, to matters which are known, in our view the Court - or the Commissioner - would ordinarily proceed upon the basis that the knowledge thus described is, in the language of s 7(2) of the 1990 Act, part of “the common general knowledge as it existed in the patent area”.  In other words, what is disclosed in such terms may be taken as an admission to that effect.  In substance, we think, that is what happened, both in Microcell and in Philips.”

106. As I understand this statement, the assessment of whether the invention passes the threshold of inventiveness is done in light of the prior knowledge as revealed by the specification.

107. Taking only what is described in the application as “known” I cannot find any lack of inventiveness.  The common general knowledge as set out in D1 is not mentioned.  The application thus passes this “threshold of inventiveness” test as developed in the above cases.  Therefore, it is directed to a manner of manufacture.

SECTION 40

108. BHP raised two contentions under section 40 to consider if I accepted CCC’s characterisation of the invention.  These were:

(a)Lack of fair basing; and

(b)Failure to describe the invention fully and failure to disclose the best method

109. Once again, given my conclusions above, it seems that BHP is content for me not make findings under section 40.  Nevertheless, I will consider the ground.

Fair basis

110. BHP contended that the claims failed the test for fair basis in two instances:

(i)Claims 1 to 10 and 27 lacked fair basis as they did not limit the method (and system) to using FTIR but instead were simply directed to measuring IR transmission or absorption intensities; and

(ii)Claims 19 to 22 were not fairly based for reasons associated with their further section 40 ground on failure to fully describe the on-line application.

111. Under Section 40(3), fair basis is “concerned purely with the relationship between the body and claims of the one specification.” (Lockwood Security v Doric Products [2004] HCA 58; 217 CLR 274; 212 ALR 1; 79 ALJR 260). As was noted in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; 207 CLR 1; 177 ALR 460; 75 ALJR 518 “a comparison between the matter described in the specification and the claim which defines the scope of the monopoly”, following the reasoning of Barwick CJ in Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23; (1994) 180 CLR 236 when he said:

“The question whether the claim is fairly based is not to be resolved ... by considering whether a monopoly in the product would be an undue reward for the disclosure.  Rather, the question is a narrow one, namely whether the claim to the product being new, useful, and inventive, that is to say, the claim as expressed, travels beyond the matter disclosed in the specification.”

112. As was noted in Lockwood (supra):

“the statutory test as expounded by Barwick CJ does not call for any evaluation of whether the breadth of the claims exceeds "the technical contribution to the art embodied in the invention", merely for an evaluation of whether the claims travel beyond the matter described in the specification”

It follows from these tests that BHP’s fair basis contentions must fail.

113. Considering (i), while it is true that FTIR is given as the preferred embodiment, I cannot find where in the specification there could be said to be a “real and reasonably clear” disclosure (as required by Lockwood) that no other known IR measurement methods or systems are to be used.  I cannot see, and BHP did not point to, any part of the description which is inconsistent with the claims.

114. With respect to (ii), even if it were true that the specification does not fully describe the invention (see later considerations), the test for fair basis, as noted above, is whether the claims “travel beyond the matter described in the specification”.  Even if the description was silent on how the invention overcomes problems associated with implementation of an on-line environment, claims which are just as silent do not travel any further.

In my opinion, the claims are fairly based.

Fully described

115. BHP submitted that this ground was only being pressed in the event that I found that the invention had an inventive step.  Its position was that, if there had been true invention, then the specification did not contain enough information to allow the person skilled in the art to practice the invention.  I have found that the claims lack an inventive step and, hence, it may not be necessary that I decide this point.  However, given the public interest, I will give it consideration.

116. BHP pointed to Kimberly Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; 207 CLR 1; 177 ALR 460; 75 ALJR 518 as standing for the proposition that the invention was “the embodiment which is described and around which the claims are drawn”. However, CCC noted that the test laid out by Kimberly Clark was given in [25]:

“Section 25(2)(h) of the Patents and Designs Act 1907 (UK) ("the 1907 Act"), as amended by s 3 of the Patents and Designs Act 1932 (UK), made it a ground of revocation that the complete specification did not "sufficiently and fairly describe and ascertain the nature of the invention and the manner in which the invention [was] to be performed".  The resemblance to s 40(2)(a) of the 1990 Act will be apparent.  Speaking of the 1907 Act in No-Fume Ltd v Frank Pitchford & Co Ltd[43], Romer LJ repeated par (h) of s 25(2) and continued:

"[I]n other words, [it is essential] that the patentee should disclose his invention sufficiently to enable those who are skilled in the relevant art to utilise the invention after the patentee's monopoly has come to an end.  Such disclosure is, indeed, the consideration that the patentee gives for the grant to him of a monopoly during the period that the patent would run. ...

It is not necessary that he should describe in his specification the manner in which the invention is to be performed, with that wealth of detail with which the specification of the manufacturer of something is usually put before the workman who is engaged to manufacture it."

The question is, will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?” (my emphasis)

117. BHP submitted that the specification did not describe the best method known to CCC with respect to the mathematical model that correlated measured intensities with the concentrations of the chemical species.  BHP submitted that the specification described the mathematical model in general terms, while the evidence from CCC was along the lines that the mathematical model was a particular model developed after a period of time of testing and development.  BHP noted that, at the priority date, CCC had developed over this period of time a “robust and useful” model referred to as “FastBayer8.py” written in the Python software language (see Karakyriakos-1 exhibit EK-5) which was further optimised to “FastBayer8b.py” (Patrick-2 at [60]).  BHP’s submission was that, if CCC maintained that development of the model was part of the inventive process, then the model that was the result of that inventive process was an essential element of the invention that had to be included.  It is clear from the listing of “FastBayer8.py” in the evidence that it bears little resemblance to the model given on pages 12–15 of the description.

118. However, as noted from Kimberly Clark, the question to be asked is whether the disclosure allows the person skilled in the art to produce something which falls within each claim without new invention.  The answer to this question is undoubtedly “Yes”.  As CCC submitted an embodied model is given in the specification and it apparently gives satisfactory results.  I do not see any evidence from BHP which calls the results given in the specification into question.  I also cannot see anything that shows the results from the “FastBayer8” model.  As such, I cannot find that the best method has not been disclosed.

119. In any event, the point is moot as I have found that the invention claimed is not inventive.  If there is invention in the model, then the only model that CCC can protect with this application is the one disclosed on pages 12–15 of the description.

120. A similar result is reached with respect to BHP’s submissions that the invention was not fully described because (i) the description did not give guidance as to how to overcome the “significant difficulties” encountered by CCC in the development of the invention, or (ii) the results of the invention were not accurate.  For (i), as CCC submitted, giving guidance on how difficulties were overcome confuses the claimed invention and the invention’s development pathway.  The specification must describe the invention so that others are able to practice it.  It does not have to describe how the invention was developed.  With respect to (ii), CCC is correct that BHP’s position relies upon information outside the specification.  There is nothing in the specification to support BHP’s point.  Moreover, the claims are directed to “measurement”, with a broadly defined method and system, and not to specific, commercial-ready, models that give perfect results.

121. BHP also submitted that the specification did not fully describe how the method was applied to an on-line environment.  As noted above the point is moot as I have found that such an application would have involved routine consideration.  That being the case, the level of disclosure in the specification is adequate.

CONCLUSION

122. The opposition is successful as I have found that the claims lack an inventive step in light of the common general knowledge on its own.  The remaining grounds have not been established.

123. It is difficult to see what material CCC could add to the claims to avoid this finding.  It may well be that it would not be obvious to the person skilled in the art to use the correlation model disclosed on pages 12–15 of the description.  However, the evidence from BHP is that it is simply a matter of trial and error to produce such models and this is supported by the description as well (see page 14, lines 3–6).  Nevertheless, I will allow CCC 60 days from the date of this decision to file amendments if they wish to do so in an attempt to overcome my finding.

COSTS

124. It is usual for costs to follow the event and I see no reason to depart from this practice in this case.  BHP has been successful on a major ground.  I award cost according to Schedule 8 against the applicant, CCC.

Greg Powell
Delegate of the Commissioner of Patents