BHP Billiton SSM Development Pty Ltd v Cominco Engineering Services
[2009] APO 10
•11 June 2009
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 740712 in the name of Cominco Engineering Services Ltd
Title: Chloride assisted hydrometallugical extraction of nickel and cobalt from sulphide or laterite ores
Action: Objection to an amendment under section 104 by BHP Billiton SSM Development Pty Ltd
Decision: Issued 11 June 2009
Abstract
The amendment to claim 1 would be allowable as a correction of a clerical error. The amendments to introduce new claims would not be allowable. Consequently the amendments as a whole are not allowable.
Clerical error: It is clear that an error was made in the process of drafting the specification. Mr de Kock was instructed to prepare a claim 1 covering both sulphide and laterite ores, referring only to acid leaching and not oxidation leaching. Due to inadvertence, he did not give effect to the instruction because he failed to amend a portion of the template document that he was using. Clerical error was established.
R v Commissioner of Patents; Ex parte Martin (1953) 89 CLR 381 applied.
Section 102(2): Claim 1 as accepted is clear on its face. The acid leaching of the ore is carried out oxidatively. The amendment would remove the oxidation requirement, so it would not in substance fall within the scope of the claims before amendment.
Obvious mistake: The correction of an obvious mistake must itself be obvious. Where the alleged correction introduces new deficiencies into the claim, e.g. a new inconsistency, that is an indication that the correction is not obvious. Also, the presence of alternative corrections indicates that the correction is not obvious.
The correction suggested would lead to the claim including the leaching of sulphide ores under non-oxidative conditions. This is inconsistent with the teaching of the art, and the specification. It seems equally possible that the correction of claim could be the exclusion of laterite ores from the claim. Obvious mistake was not established.
General Tire and Rubber Co (Frost’s) Patent [1972] RPC 259 applied.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 740712 by Cominco Engineering Services Ltd and an opposition to amendments under section 104 by BHP Billiton SSM Development Pty Ltd
BACKGROUND
Patent application 740712 in the name of Cominco Engineering Services Ltd was accepted on 25 September 2001. The grant of the patent was opposed under section 59 by QNI Limited. The evidence stages in that opposition have not been completed, and time for serving evidence in reply has been postponed.
While the opposition was proceeding, the applicant filed three sets of amendments. The first two sets of amendments have been considered by the Commissioner, and have been opposed by BHP Billiton SSM Development Pty Ltd. The third set of amendments has not yet been considered by the Commissioner.
This decision relates to the oppositions to the two sets of amendments. The hearing took place in Canberra on 13 May 2009. Cominco were represented by Ruth Clarkson, patent attorney of Spruson & Ferguson. BHP were represented by David Tadgell, patent attorney of Phillips Ormonde Fitzpatrick. Ms Clarkson appeared in person, and Mr Tadgell appeared by telephone.
The specification
The specification relates to the extraction of nickel, cobalt and other metals from sulphide ores and laterite ores. In general terms, the process involves leaching with acid, followed by precipitation of non- nickel and non-cobalt metals, then a second precipitation of nickel and/or cobalt.
The nature of the amendments
Before amendment, the specification has 37 claims. The first set of amendments alter the text of claims 1 and 11, and insert new claims 38 to 90. The second set of amendments alter the text of claims 14, 26, 33, 52, 68, and insert new claims 91 and 92. Both sets of amendments also make some changes to the text of the description.
Allowability of the amendments
The allowability of amendments is governed by section 102. Section 102(1) specifies that
An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.
When considering an amendment after the complete specification has been accepted, subsection 102(2) is also relevant:
An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a)a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b)the specification would not comply with subsection 40(2) or (3).
However, it must be noted that there is an exception provided by subsection 102(3):
This section does not apply to an amendment for the purpose of correcting a clerical error or an obvious mistake made in, or in relation to, a complete specification.
DECISION
The amendments fall into two groups.
A) There is an amendment to claim 1. The amended claim makes no reference to oxidation leaching. The objection to claim 1 is that it would not fall within the scope of the claim before amendment (section 102(2)(a)). The argument centres on whether the claim before amendment was restricted to oxidation leaching. There is also an objection that the claim would not be fairly based (section 102(2)(b)).
B) New claims 38 to 92 have been added. These claims all relate to the treatment of laterite ores without the use of oxidation leaching. The objection to these claims is that they would not fall within the scope of claim 1 before amendment (section 102(2)(a)) and would not be fairly based (section 102(2)(b) at least in relation to some claims).
The first set of amendments contains group A, and some of the claims in group B. The second set of amendments falls entirely into group B. I have considered the allowability of the amendments from two different points of view. First, I have considered whether the amendments are allowable under the terms of subsections 102(1) and 102(2). Second, I have considered whether the amendments correct a clerical error or an obvious mistake.
The amendment to claim 1 would be allowable as the correction of a clerical error. The insertion of claims 38 – 92 is not allowable as these claims would not in substance fall within the scope of the claims before amendment.
The first set of amendments and the second set of amendments both contain amendments that are not allowable. I refuse the amendments. My reasons for that decision follow.
STATEMENT OF REASONS
Before turning to the claims in detail, it is worth clarifying a technical point relating to the way in which ores of the type covered by the present application are processed. The ores are ground to reduce the particle size, and a slurry formed. The slurry is acidified in order to extract a range of metal ions into solution. In some cases the slurry is allowed to oxidise during the leaching stage (for instance by the use of pressurised oxygen gas).
In the case of sulphide ores, it is normal to include oxidation, which results in formation of sulphate ions (Jansen declaration at paragraph 46). Laterite ores are already highly oxidised, and it is not necessary to carry out an oxidation (Jones declaration at paragraphs 9, 26; Jansen declaration at paragraph 7). However, oxidation leaching of laterites is the subject of occasional references in patent specifications (Jones declaration at paragraphs 33 – 50, Jansen declaration at paragraphs 29 – 34), although it is probably not in commercial use (Jones declaration at paragraphs 9, 26). The purpose of the oxidation is to oxidise species such as hydrocarbons, vegetable matter, and chromium ions.
The subsequent processing steps involve selective precipitation of metals by controlling the pH of the solution. The precipitated metals can be further refined by known processes.
Clerical error
At the time that the first amendment was filed, there was no suggestion that it was the correction of a clerical error. This issue only became apparent from the evidence in answer. The leading authority on clerical error is R v Commissioner of Patents; Ex parte Martin (1953) 89 CLR 381. Fullagar J at 406 stated that
the characteristic of a clerical error is not that it is in itself trivial or unimportant, but that it arises in the mechanical process of writing or transcribing
Williams ACJ at 395 put it slightly differently:
A clerical error, I would think, occurs where a person either of his own volition or under the instructions of another intends to write something and by inadvertence either omits to write it or writes something different.
In the present case, the drafting of the specification as filed was the responsibility of Elbie R de Kock, a registered South African and Canadian patent attorney with over 30 years of experience. He declared as follows:
[5] I was the draftsman who originally drafted US patent application No. 08/911,797 the priority document of Australian Patent Application No. 740712 and the corresponding PCT application PCT/CA98/00782 under instructions from Cominco Engineering Services Ltd.
[6] When I was preparing claim 1 of the PCT application PCT/CA98/00782, I used an earlier claim which was limited to pressure oxidation as a template and when modifying “pressure oxidation” in the claim to read “acid leaching under pressure”, I accidentally overlooked the term “resultant pressure oxidation slurry” which I should have changed to “resultant acid leaching slurry” to be consistent with the changes made to the rest of the claim. Attached as Exhibit ERD-1 is a copy of my original workpiece showing my changes in longhand which show that I overlooked changing the “resultant pressure oxidation slurry” to “resultant acid leaching slurry”.
[7] It was always my intention and that of Cominco Engineering Services Ltd, that claim 1 would refer to “resultant acid leaching slurry” so as to cover both the treatment of laterite ores as well as sulphide ores and concentrate as described in the patent specification of PCT/CA98/00782.
It is clear that an error was made in the process of drafting the PCT specification. Mr de Kock was instructed to prepare a claim 1 covering both sulphide and laterite ores, referring only to acid leaching and not oxidation leaching. Due to inadvertence, he did not give effect to the instruction because he failed to amend a portion of the template document that he was using. This appears to sit comfortably within the definition of clerical error used by Williams ACJ in Ex parte Martin.
Surprisingly, there is evidence against this conclusion presented by another of Cominco’s declarants. Malcolm Lindsay Jansen provided a declaration under the Statutory Declarations Act 1959. Mr Jansen declared at paragraph 15:
I consider that the inclusion of the term “oxidation” in claim 1 with respect to the resultant slurry was in error and that reference to “oxidation” was done presumably carelessly and in error. Note that I do not consider the error as being a clerical error. I consider that the error is obvious and that its correction is also obvious.
[emphasis added]This view is repeated at paragraph 39:
I consider that the term “resultant pressure oxidation slurry” is an obvious mistake and not a clerical error. The error is a careless drafting error.
While it is surprising that Mr Jansen would be in a position to give this evidence, I will not lightly disregard evidence provided in the form of a Statutory Declaration. At the hearing it was suggested that Mr Jansen may have based his comment on the information available to him, which did not include the de Kock declaration. It is not apparent that this was Mr Jansen’s intention. To the extent that Mr Jansen’s evidence is in conflict with that of Mr de Kock, the evidence of Mr de Kock is to be preferred. Mr de Kock had first hand knowledge of the facts, and has provided those facts rather than merely stating an unsupported opinion. Mr Jansen appears to have been too eager to support what he thought to be the case of Cominco.
I am satisfied that the amendment to claim 1 is for the purpose of correcting a clerical error.
There is no suggestion that the amendments to claims 38 to 92 are for the purpose of correcting a clerical error.
Section 102(2)
Given my finding on clerical error, it is not necessary to consider whether the amendment to claim 1 is allowable under section 102(2). However, if the amendment to claim 1 would be allowable under section 102(2), then the amendment to introduce claims 38 to 92 would also be allowable. Conversely, if the amendment to claim 1 is not allowable, then claims 38 to 92 are also in peril. Consequently it is useful to approach the claims afresh.
Claim 1
Claim 1 is amended by replacing the expression “the resultant pressure oxidation slurry” with “the resultant acid leaching slurry”. To place the amendment in context, I will quote the first portion of the claim, showing the deleted text as struck through, and the inserted text as underlined.
A process for the extraction of metal from an ore or concentrate, containing nickel and/or cobalt values and other metals, comprising the steps of:
subjecting the ore or concentrate to acid leaching under pressure, at pH < 2, to obtain a liquor at pH < 2 containing nickel and/or cobalt values in addition to non-nickel and non-cobalt metals from the resultant
pressure oxidationacid leaching slurry; …This amendment was made by the first set of amendments. At the time that the amendment was proposed the applicant stated:
This is to correct an obvious error as there is no antecedent for ‘pressure oxidation’ in the claim. In lines 8 and 9 of claim 1, reference is only made to subjecting the ore or concentrate to acid leaching under pressure. The limitation that the acid leaching is a pressure oxidation step is only introduced in claim 2 where, specifically, it is a sulphide ore or concentrate which is being treated.
BHP alleges that as a result of this amendment claim 1 would not in substance fall within the scope of the claims before amendment, and is not fairly based.
The first step is to determine the scope of the claim before amendment. The words used in the claim specify that the ore is subjected to acid leaching under pressure, in order to obtain a liquid containing nickel and/or cobalt (and other metals). This liquid is said to be obtained “from the resultant pressure oxidation slurry” (emphasis added). Oxidation leaching is known in the art, and differs from this by the presence of oxygen during the acid leaching.
The parties argued two different ways to construe the claim. BHP argued that in the light of the slurry being a “pressure oxidation slurry”, it necessarily follows that the pressure leaching is an oxidation leaching. Consequently, the claim is clear on its face. Cominco argue that the reference to a “pressure oxidation slurry” is inconsistent with the rest of the claim, as there is no reference to the use of oxygen. Consequently, there is either an obvious mistake that is readily corrected, or there is an ambiguity in the claim.
The starting point for claim construction is the plain meaning of the words that are used. The words of Lord Russell in Electric and Musical Industries Ld v Lissen Ld (1939) 56 RPC 23 at 41 are particularly appropriate in the present case:
I know of no canon or principle which will justify one in departing from the unamabiguous and grammatical meaning of a claim and narrowing or extending its scope by reading into it words which are not in it; or which will justify one in using stray phrases in the body of a Specification for the purpose of narrowing or widening the boundaries of the monopoly fixed by the plain words of a claim.
The situations in which it is legitimate to depart from the words of the claim are necessarily limited. A number of arguments were advanced by Cominco to indicate why the reference to oxidation in the claim is an error that should be ignored. One argument states that the claim includes treatment of laterite ores, which do not require oxidation leaching. To be precise, the claim is directed to the treatment of “an ore or concentrate, containing nickel and/or cobalt”, which clearly encompasses both laterite and sulphide ores. It is a general principle of construction that “where there is a choice between two meanings, one should if possible reject that meaning which leads to an absurd result” (Henriksen v Tallon Ltd [1965] RPC 434 at 443). While oxidation leaching is not necessary in the case of laterite ores, the evidence establishes that in some situations oxidation of laterites could be considered appropriate. Insofar as the claim would include oxidation leaching of laterite ores, this is not so unusual as to be an absurd construction.
The second argument is that the claim is ambiguous, as there is no antecedent for “the” resultant pressure oxidation slurry. Clearly a slurry is formed by mixing the ore with an acid solution. I understand Cominco’s argument to be that there is no antecedence for the “pressure oxidation” aspect of the slurry. Clearly there is an inconsistency in the language used in the claim. The inconsistency is easily resolved by reading the “pressure oxidation” as a limitation that applies to the acid leaching. Any ambiguity is based on an excessively technical reading of the claim. The clear meaning of claim 1 is that the acid leaching is also a pressure oxidation step, i.e. it is carried out in the presence of oxygen as well as acid. There is no ambiguity in the claim.
I accept that this construction may not be what the applicant intended, nor does it match the full scope of what they have described. However, claim 1 is clear on its face, and the applicant must live with their claim.
There is no disagreement that claim 1 as proposed to be amended does not require an oxidation leaching. It follows that the amendment changes the scope of the claim, such that it does not in substance fall within the scope of claim 1 before amendment.
I have also considered whether any other claim is directed to acid leaching rather than oxidative leaching. If there is such a claim, then the amended claim 1 might fall within the scope of that claim.
Claim 36 is an omnibus claim, that refers the reader to “the examples and/or any one of the accompanying drawings”. I cannot find any examples in the specification. The drawings all show a pressure oxidation step, except for Figure 5 which is said to show “detail of the process of Figure 1 for the treatment of laterite ores” (page 4). Figure 5 shows a modification of later processing steps, and does not relate to the initial leaching step.
At page 20 the specification states
In the case of a laterite ore, the pressure oxidation 12 is replaced by an acid (H2SO4) leach under pressure at a pH of 1 or less and at a temperature of from about 250°C to about 280°C.
I consider that Figure 5 discloses the process of Figure 1 as modified by Figure 5, and also as modified by the text on page 20. This process involves an acid leach of laterite ores with sulphuric acid under pressure at a pH < 1 and a temperature of about 250°C to about 280°C. This process is encompassed by the omnibus claim. Clearly the amended claim 1 is far broader than this process, and it does not in substance fall within the scope of claim 36.
I am satisfied that claim 1 as proposed to be amended does not in substance fall within the scope of the claims of the specification before amendment.
The particulars also raise an issue of fair basis. Claim 1 as proposed to be amended would claim the processing of sulphide ores in a non-oxidative manner. The specification does not suggest such a process. It follows that claim 1 as amended would not be fairly based in so far as it relates to sulphide ores.
Claim 38 – 92
Claims 38 to 90 were introduced by the first set of amendments. Claims 91 and 92 were introduced by the second set of amendments. Claim 38 and 55 are independent claims. Claim 38 relates to extraction of laterite ores, and involves acid leaching rather than oxidation leaching. Claims 39 to 54 are appended to claim 38. Claim 55 relates to extraction of an ore containing nickel and/or cobalt, and involves acid leaching rather than oxidation leaching. Such ores include laterite ores. Claims 56 to 89 are appended to claim 55. Claim 90 is directed to the ore produced by any of claims 38 to 89. Claims 91 and 92 are directed to extraction process as defined in any of claims 1, 38 and 55. It is not necessary to quote these claims in full.
It follows from my analysis of claim 1 that claims 38 and 55 as proposed to be amended, insofar as they relate to non-oxidation extraction of laterite ores, would not in substance fall within the scope of the claims before amendment. The appended claims also suffer from the same deficiency.
The particulars also raise an issue of fair basis of these claims. It is not necessary to decide this point, and I express no opinion on whether these claims would be fairly based.
Obvious mistake
The key features of an obvious mistake are that the mistake must be obvious, and the correction must also be obvious (General Tire and Rubber Co (Frost’s) Patent [1972] RPC 259 at 279):
the instructed public can, from an examination of the specification, appreciate the existence of the mistake and the proper answer by way of correction
The declarants Jones and Jansen have no doubt that claim 1 contains an obvious mistake. A typical statement by Mr Jones is:
I categorically state that the reference to “resultant pressure oxidation slurry” in claim 1 in the Opposed Patent Application as filed and as accepted was an obvious error.
[Jones declaration at paragraph 17]The argument presented by Cominco is that it is obvious that the use of oxidation leaching is an error because the claim includes laterite ores, which do not require oxidation:
it does not make sense to apply a pressure oxidation leach to a laterite ore because the ore is already oxidised
[Jansen declaration at paragraph 25]The fact that the art makes occasional references to oxidation leaching of laterite ores suggests to me that this cannot be correct. It is recognised in the art that there are situations where oxidation leaching of laterites could be considered.
The identification of a mistake can have regard to more than just the claim. In Tee-Pak Inc’s Application [1958] RPC 396, Lloyd-Jacob J found that it was obvious that a mistake had been made because there was a divergence in scope between the description and claims. However, in the General Tire case at 281, Graham J noted that a difference in scope between the description and the claim does not always indicate a mistake, as there can be numerous good reasons for such a difference. In the present case it can be argued that there is an inconsistency between the description and the claims, as the claims include a treatment of laterite ores by oxidative leaching which is not taught by the description. This could be seen as a mistake.
Even if it was accepted that the presence of a mistake was obvious, I am not satisfied that the correction is obvious. It is argued that the obvious correction is to delete the requirement of oxidation. If this were done, then the claim would include the leaching of sulphide ores under non-oxidative conditions. This is inconsistent with the teaching of the art, and the specification. I note that Jones and Jansen consider that the removal of the oxidation requirement is the only possible correction, and do not acknowledge any inconsistency this would produce in the case of sulphide ores. In this regard, their evidence is fixated on the laterites, and seems to lack objectivity. Finally, I note that it seems equally possible that the correction of claim could be the exclusion of laterite ores from the claim.
The correction of an obvious mistake must itself be obvious. Where the alleged correction introduces new deficiencies into the claim, e.g. a new inconsistency, that is an indication that the correction is not obvious. Also, the presence of alternative corrections (as distinct from different ways to express the same correction) indicates that the correction is not obvious. In the present case, I am not satisfied that the amendment represents the obvious correction of the error.
It was also argued that claim 1 is obviously in error as it is internally inconsistent. This point is conveniently summarised by Mr Jansen at paragraph 14 of his declaration:
Claim 1 as accepted made no reference to an oxidation leach and accordingly the resultant slurry could not have been a “pressure oxidation slurry”.
My construction of claim 1 led me to the conclusion that there is no ambiguity or obvious error in the claim.
I am not satisfied that the amendment to claim 1 corrects an obvious mistake.
Conclusion
I have come to the conclusion that
· the amendment to claim 1 would be allowable as the correction of a clerical error. However, it would not be allowable under section 102(2)(a), and is not a correction of an obvious mistake; and
· the amendment to claims 38 – 92 would not be allowable under section 102(2)(a), or section 102(3).
The first set of amendments and the second set of amendments both contain amendments that are not allowable. Consequently the amendments must be refused.
COSTS
BHP have been successful in opposing both sets of amendments. There are no circumstances that warrant departing from the normal approach that costs follow the event. It is appropriate to award costs against Cominco.
Ms Clarkson made the submission that the schedule of costs should be altered due to the late filing of the summary of submissions by BHP. I stated that I understood this to be a request to vary Schedule 8 in relation to item 11 (Preparation of case for hearing). It is appropriate to place on record a few comments in relation to the summary of submissions.
It is the practice of the Commissioner to include the following note in the hearing notice that is sent to the parties:
If appearing in person or by phone, you are invited to provide the Hearing Officer, at least twenty four (24) hours before the commencement of the hearing, with a written summary of the submissions you intend to make. A copy should also be provided to the other parties. Such a summary should be no longer than ten (10) pages of typescript.
In Sunbeam Corporation Ltd v Breville Pty Ltd [2008] APO 28, the delegate noted that this scheme is an administrative arrangement rather than a statutory requirement, and that she could have regard to submissions that were filed less than 24 hours prior to the hearing. As the note clearly states, the primary purpose of the written summary of submissions is to assist the hearing officer. A copy is also provided to the other party, as a courtesy. The summary of submissions is of assistance in preparing for the hearing, and also in writing the decision. Even a late filed summary of submissions is of some assistance. While it is preferable for each party to file a summary of submissions at least 24 hours prior to the commencement of the hearing, it would be undesirable to penalise a party for filing their summary late, as this could lead to the summary being withheld entirely to avoid an adverse decision on costs.
I will not vary the Schedule solely on the basis that the summary of submissions was not filed in the manner laid down in the hearing notice. I award costs according to Schedule 8 against Cominco Engineering Services Ltd.
Dr S.D.Barker
Delegate of the Commissioner of Patents11 June 2009
Patent attorneys for the applicant : Spruson & Ferguson
Patent attorneys for the opponent : Phillips Ormonde Fitzpatrick
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