Borden Inc v Elkem A/S - [1995] APO 11

official notice

decision of a delegate of the commissioner of patents

Application : No.615288 in the name of BORDEN INC.

Title: Manufacture of a Soderberg Electrode Incorporating a High Carbon-Contributing Phenolic Sacrificial Binder

Action: Opposition under Section 59 (Patents Act 1952) by ELKEM A/S

Decision: Issued .
Abstract: Novelty and obviousness considered.
Grounds of opposition not established.
Opposition dismissed.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 615288 by BORDEN INC. and opposition thereto under Section 59 of the Patents Act 1952 by ELKEM A/S.

background

Patent Application No 615288 by BORDEN INC. (BORDEN) was lodged on 17 April 1989 as a convention application based on a U.S. basic application 252122 filed in the U.S. on 3 October 1988.

Acceptance of the application was advertised on 26 September 1991. ELKEM A/S (ELKEM) filed a notice of opposition on 19 December 1991 and served a statement of grounds and particulars on 10 January 1992. Evidence-in-Support was completed on 23 October 1992, Evidence-in-Answer on 2 March 1993 and Evidence-in-Reply on 31 May 1993.

The opposition came to hearing in Canberra on 19 September 1994. Mrs. A. Bennett of Counsel and Mr. John O'Connor, Patent attorney of Spruson & Ferguson, Sydney represented the applicant. Mr. Alun W. Thomas, Patent attorney of Collison & Co., Adelaide represented the opponent.

As the application was lodged prior to but advertised accepted after commencement of the Patents Act 1990, the opposition is in substance determined, in accordance with the provisions of section 234(3) of the 1990 Act, under Part V of the Patents Act 1952 but with the procedures of the opposition governed by Chapter 5 of the Patents Regulations 1991.

The grounds of opposition were based on non-compliance with paragraphs 18(1), (b), (i) and (ii) of the 1990 Act, which relate to novelty and obviousness.

SPECIFICATION

The specification commences by stating that:

"This invention relates to a novel composition for use in the manufacture of a Soderberg electrode and to the improved electrode produced thereby. This composition includes a high carbon-contributing phenolic sacrificial binder."

It then sets out the background of the invention as follows:

"The Soderberg process produces a self-baking electrode that is formed continuously from a soft carbon mixture that is baked in the same furnace in which it is used. The Soderberg process is continuous, involving the addition of a paste to the upper end of the electrode-manufacturing apparatus. This paste is a mixture of a carbonaceous aggregate and a pitch binder. The paste has sufficient mobility to travel through the temperature gradient. The temperature increases as the paste approaches the electrolyte cell area. During this travel, the paste typically begins to harden into something akin to a jelly formation with loss of volatiles - the paste retaining thermoplasticity while not being too fluid to cause excessive overflow of the paste. The moving paste then approaches the use zone where it hardens and attains electrode integrity through densification and binder graphitization…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Borden Inc v Elkem A/S

Details

AGLC: Borden Inc v Elkem A/S [1995] APO 11
Case: [1995] APO 11
Decision Date: 16 February 1995

CaseChat Overview and Summary

The dispute in Borden Inc v Elkem A/S revolves around Patent Application No. 615288 by Borden Inc, which was opposed by Elkem A/S on the grounds of lack of novelty and obviousness. The case was heard in the Australian court by Jacob Elijah, a delegate of the Commissioner of Patents. The primary legal issues in this case were whether the invention claimed in Borden Inc's patent application was novel and non-obvious under the Patents Act 1990.

The court found that the invention in question, a feedstock composition for the production of a Soderberg continuous carbon electrode, was indeed novel as it had not been disclosed in the prior art cited by Elkem A/S. The court held that a direct comparison could be made between the composition of the invention and the prior art, and found that there were differences in the amounts of hexamethylenetetramine (hexa) and the presence of a curing agent. The invention disclosed the use of hexa in an amount insufficient to effect curing at temperatures below Soderberg temperatures, whereas the prior art disclosed hexa in an amount sufficient to effect curing at lower temperatures. The court concluded that the citation had not disclosed each and every one of the essential integers of the claims of the invention and therefore the opponent had not proven a lack of novelty.

Regarding the issue of obviousness, the court found that Elkem A/S had not established that the invention under attack was obvious. The court noted that there was no evidence before it regarding the state of the relevant art in Australia, and therefore could not determine the obviousness of the applicant's invention. As a result, the court found that the opponent had not proven its case against the applicant on the grounds of novelty and obviousness.

In conclusion, the opposition brought by Elkem A/S was dismissed, and the patent application by Borden Inc was allowed to proceed to sealing, subject to any appeal being filed. The court also awarded costs against the opponent, Elkem A/S.

Orders