Calgon Carbon Corporation v. Csr Limited

[1988] APO 22

In the Matter of the Patents Act 1952 - and - In the Matter of Patent Application No. 528907 in the Name of CALGON CARBON CORPORATION - and In the Matter of Opposition thereto under Section 59 by CSR LIMITED.

 

DECISION OF A SUPERVISING EXAMINER OF PATENTS:

Background

Application No. 64555/80 was lodged on 20 November, 1980 by Calgon Corporation, for a patent for an invention relating to an adsorbent for refining sugar liquors. The application was advertised as accepted on 19 May, 1983 and given the serial No. 528907. The applicant's name was amended to Calgon Carbon Corporation pursuant to a request under regulation 76 lodged on 11 February, 1985.

A notice of opposition was lodged on 18 November, 1983 by CSR Limited; the grounds of opposition being those specified in paragraphs (c) to (i) of sub-section 59(1), although only matters of prior publication, novelty and section 40 were pursued by the oppponent. The matter came to hearing in Canberra on 21 April, 1988; Mr. D. Catterns of Counsel, instructed by Dr. J. McCann of Spruson & Ferguson, appeared for Calgon and Dr. A. Bennett, instructed by Mr. J. Siely patent attorney of A.S. Cave & Co. and Dr. M. Player from CSR, appeared for the opponent.

The Specification

The specification begins:

"This invention relates to admixtures of granular activated carbon and bone char which may be utilised for decolourising and deashing cane sugar liquors. More particularly, this invention pertains to a new adsorption media and an improved process for decolourising cane sugar liquors and a new process for thermally regenerating the spent admixture."

It discloses that traditionally the adsorbent medium utilised for removing dissolved impurities in the liquor has been bone char, being the first material-available in bulk quantities. The bone char was regenerated by washing with water followed by heating at temperatures of 900OF to 1200OF in a controlled atmosphere to maintain its carbon content. To improve the colour removal capacity of the adsorbent, the invention uses activated carbon, and in this regard the specification comments on the state of the art:

"Heretofore, bone char and activated carbon were not directly combined as such for use in a single bed. It was generally believed that conditions necessary for the regeneration of bone char were insufficient to regenerate the activated carbon and that conditions that were sufficient to regenerate the activated carbon would destroy the bone char. Thus, it was not thought that a spent admixture of bone char and activated carbon could be regenerated concomitantly as a composite without first separating them into their component parts."

Specifically, U.S. Patent No. 2,209,069 to Bodenheim & Heath is referred to as prior art. In this patent "a charred form of a spent bone char was combined with powdered activated carbon and after exhaustion, the activated carbon was separated by a hydraulic mechanism from the bone char". In contrast, Calgon's adsorbent "does not require separation during the regeneration cycle". The specification lists the benefits to be gained by such a modification in the refinery process. The invention is described in the following terms:

"Through this invention, the deashing capacity of the admixture and its decolourising capacity can be balanced so that both parameters become more or less simultaneously exhausted. To this end, a plausible substitute for conventional bone char in the usual refinery bed is an admixture of bone char and granular activated carbon in which greater than 10 percent by weight of activated carbon is employed, but the mixture may be comprised of activated carbon composition from 10 percent to 50 percent by weight. The most preferred compositions include from 10 percent to 30 percent by weight activated carbon."

The claims defining the invention are as follows:

"1. A system of decolourising and deashing cane sugar liquor wherein the cane sugar liquor is passed through a carbon-containing filter to remove ash and colour, wherein said filter is a bed comprising an admixture of from 10 percent to 50 percent by weight granular activated carbon and from 50 percent to 90 percent by weight granular bone char.

2. A system according to claim 1 wherein the bed contains from 10 percent to 30 percent by weight granular activated carbon.

3. A system according to claim 1 or claim 2 wherein the granular size of the bone char and activated carbon is 8 x 50 mesh.

4. A process for deashing and decolourising cane sugar liquor wherein the sugar liquor is passed through a bed comprising an admixture of from 10 percent to 50 percent by weight granular activated carbon and from 50 to 90 percent by weight of granular bone char.

5. A process according to claim 4 wherein the bed contains from 10 percent to 30 percent by weight granular activated carbon.

6. A process according to claim 4 or claim 5 wherein the granular size of the bone char and activated carbon is at least 8 x 50 mesh.

7. An admixture of bone char and activated carbon for removal of colour bodies and ash from cane sugar liquor comprising from 10 percent to 50 percent by weight of a granular activated carbon and from 50 percent to 90 percent by weight of a granular bone char.

8. An admixture according to claim 7 comprising from 10 percent to 30 percent by weight granular activated carbon.

9. An admixture according to claim 7 or claim 8 where the granular bone char and activated carbon is 8 x 50 mesh."

The Evidence

Evidence-in-support comprises a statutory declaration by Dr. Player in which he alleges that the Calgon invention was known in Australia "long before the application ... was lodged". He refers to six publications which I will discuss below. An accompanying declaration by a solicitor provides evidence that these publications were published before the priority date of 20 November, 1980.

Exhibit A. Copies of two pages of a book entitled "Purification with Activated Carbon : Industrial Commercial Environmental" by I.W. Hassler. These refer to the purification of sugar syrup, and after a discussion of use of bone char, activated carbon is dealt with:

"Powdered Activated Carbon

Compared to bone-char, powdered activated carbon is a more powerful decolouriser; consequently smaller quantities are employed for refining. Because of the powdered form it cannot be applied in bone-char refineries. Instead, refining with activated carbon is by the batch-contact process conducted as a two-stage counter-current operation.

Granular Activated Carbon

Granular activated carbon has been used for a number of years for refining both cane and beet sugar. Some early applications involved replacement of bone-char in traditional refineries. In an operation in Europe complete replacement of bone-char extended the use of the char filters to over 26 days as compared to 4 to 6 days with bone-char. The char was satisfactorily reactivated in the char retorts. The granular char was less effective for ash removal from the syrup. The best overall operation was provided by the addition of 30 to 40% granular char to the bone char."

Exhibit B. Copy of an article entitled "Granulated charcoals for the sugar-refining industry" by D.T. Shvets, published in the journal "Sakharaya Promyshlennost", with an English translation thereof. Results of investigations of a sugar research institute on the use of granulated activated charcoals are disclosed; for example:

"Taking into consideration that at the present time limited amounts of bone black are available to the sugar refineries, we suggest for the improvement of clarification of syrups the addition to the bone char of 30-40% granulated charcoal. No reconstruction of equipment is necessary for this clarification by filtration. The filtration through a mixture of bone char and granulated charcoal would effect the clarification of the syrups at the same rate and with the same percentage content of dry substances in the syrup as customarily received at the refinery.

On regeneration of the mixture of bone char and granulated charcoal the elimination of particles and fines will be less than on regeneration of the filter when using only granulated charcoal."

Exhibit C. Copy of abstract No. 132 from Sugar Industry Abstracts, Vol. 25 1963, being an abstract of the article referred to in exhibit B. Part of the abstract reads: "The admixture of 30-40% of granular carbon to bone char is recommended to combine the advantages of both".

Exhibit D. Copy of Netherlands Patent No. 70234 to N.V.

Algemeene Norit Maatschappij, with an English translation thereof.

Part of the patent specification reads:

"The invention is relevant to a method for the purification and decolourisation of liquids, in particular sugar solutions in which one filters these solutions through a column of granular bone char which contains at the same time powdered activated carbon divided over the bone char.

In tests it seems that, notwithstanding the smooth surface of the bone-char and the relatively large pieces of which the bone char consists, the fine particles of the activated carbon adhere to the surface of the bone char, thus preventing the washing off of the activated carbon with the filtering solution and causing problems in the filtrate.

It seems that one can use, for example, 2-6% active carbon, reckoned on the weight of bone char with good consequences. The chosen amount depends on circumstances in practice such as size of the grains of the bone char, the desired flow velocity of the clear liquor, etc."

Exhibit E. Copy of abstract No. 516 from Sugar Industry Abstracts, Vol. 14 1952, being an abstract of the patent referred to in exhibit D.

Exhibit F. Copy of U.S. Patent No. 2,209,069 to Bodenheim & Heath, previously referred to. Pertinent parts of the patent specification are:

"In accordance with one embodiment of our invention, spent bone char is denuded of carbon as for example by a controlled process of combustion, leaving what may be called an incinerated bone char or ash which may be referred to as bone char "skeleton". This is then mechanically mixed with a small proportion of an activated carbon and it is found that this mixture possesses certain remarkable properties. First, it has a very high decolourising capacity. Secondly, while in contact with sugar syrup, i.e. when sugar syrup is percolated through the mixture, the carbon remains in union with the skeleton to such an extent that the filtrate is clear. Thirdly, when the spent mixture is agitated with water the carbon with adsorbed impurities from the sugar solution readily separates. The washing also removed impurities adsorbed by the said skeleton.

Then the residual skeleton from which the carbon has separated, can be mixed with a fresh charge of carbon. Thus the process of regeneration comprises a separation, e.g. a "washing out" of the spent carbon and replacement therof by fresh carbon ...

Around two per cent of activated carbon is a desirable maximum."

Evidence-in-answer consists of a statutory declaration by N.J. Wagner, an employee of Calgon. He points out that a patent equivalent to the present Australian application has been granted in the United States and that some of the documents referred to by Dr. Player were brought to the attention of the U.S. examiner. He suggested that the present invention can be distinguished from the Hassler extract and the Shvets article, since in those documents the granular activated carbon or char is used only as a supplemental decolourising agent and there is no disclosure of the bone char and granular activated carbon being intimately admixed in a single adsorption vessel. He suggested that references' to "admixture" ill the translation of the Shvets article were due to poor translation and that the relevant parts should instead refer to "mixture". Finally, he suggested that Player exhibits D, E and F can be distinguished by the percentages of activated carbon therein being less than claimed in the applicant's specification.

Documents accompanying Mr. Wagner's declaration give some insight into the processing of the U.S. application equivalent to the present application. Exhibit NJW-2A is a copy of the U.S. attorney's "Statement of Prior Art" which clearly refers to Player exhibits A, B, E and F. Exhibit NJW-2C is a copy of the U.S. examiner's report which cites Player exhibits E and F as part of an objection. Player exhibits A and B are referred to merely as "other references" ... "cited as of interest". Other documents relate to further processing of the U.S. application including overcoming the examiner's objections. I deduce that the applicant was able to prove to the examiner's satisfaction that there was some merit in the relatively higher percentages of activated carbon claimed in the applicant's specification. For example, exhibit NJW-2E is an affidavit by J.R. Lutchko an employee of Calgon where details of tests are given; he deposes, inter alia

"THAT, the results of these tests clearly demonstrate that the compositions claimed in U.S. Serial No. 096,719, filed November 21, 1979 (a physical blend ranging from 10 percent granular activated carbon and 90 percent granular bone char up to a 50 percent granular activated carbon and 50 percent granular bone char) is vastly superior to the physical blend of decarbonised bone char and 2 percent granular activated carbon, which is representative of the adsorbent disclosed in U.S. Patent No. 2,209,069, and the mixture of granular bone char and 4 percent Norit, which is representative of the adsorbent disclosed in Sugar Industry Abstracts, Volume 14, Abstract No. 516, as well as the adsorbents composed of 100 percent decarbonised bone char and 100 percent bone char."

Evidence-in-reply comprises a second declaration by Dr. Player in which he comments on Mr. Wagner's submissions. In referring to the last sentence herein cited of the Hassler extract, he submits:

"the above emphasised sentence makes positive reference to the addition of the granular char to the bone char (i.e. to the bone char itself). There is absolutely nothing in this sentence, or in those that precede or follow it, to suggest that the granular char is to be used as a separate, supplemental decolourising agent. The emphasised sentence follows logically from the previous sentences which refer to the advantages and disadvantages of granular char alone. The following passage merely provides a brief description of a particular installation using granular char and in no way supports a suggestion of separate, supplemental decolourisation."

And

"the addition of granular char to bone char, as stated in the emphasised sentence, would result in an admixture of the two constituents. I direct attention to the specification of Calgon Carbon Corporation at page 5 lines 22-25 where the admixture is obtained by adding granular activated carbon to bone char. In both the Hassler publication and the Calgon specification, the granular char is added to the bone char. If an admixture is thereby obtained in accordance with the Calgon specification, an admixture is likewise thereby obtained in accordance with the Hassler publication."

With regard to Player exhibits D, E and F and Mr. Wagner's comments thereon, Dr. Player argues in his second declaration that the results of the tests set forth in the Lutchko affidavit do not demonstrate any unexpected superiority of the admixture of the Calgon specification. He believes that it is well known in the art of sugar refining that granular activated carbon and powdered activated carbon are superior decolourising agents when compared with granular bone char. He is thus of the opinion that it would have been expected that adding either granular activated carbon or powdered activated carbon to granular bone char would give a product with performance superior to granular bone char on its own. In his declaration Dr. Player analyses Lutchko's test results and provides his own interpretation of those results.

Other evidence-in-reply comprises a declaration by D.B. Bagger, an Associate Professor of Chemical Engineering at the University of Sydney who has had experience in the sugar industry. Prof. Bagger indicates that he was aware of the use of bone char and granular activated carbon for decolourising sugar liquors prior to 1980, that granular activated carbon is also known as granular char, and that in his opinion the Hassler extract discloses an admixture of granular char and bone char. Further evidence comprises a declaration by B.E. Lewis including a second translation of a portion of the Shvets article, and three declarations further relating to publication dates in Australia of the Player exhibits.

Interpretation of the Specification

Dr. Bennett submitted that the claims of the Calgon specification were prior published by the Shvets article, and not novel in the light of the Hassler extract and the Algemeene Norit and Bodenhein & Heath patents. Mr. Catterns submitted that the applicant's claims were distinguished by several features, namely (i) the admixture, (ii) granular bone char, (iii) similarity of grain size and (iv) specified percentage ranges. I will now deal with the first three of these features in more detail.

Mr. Catterns suggested that the claims be interpreted such that "admixture" be construed as meaning a "composite admixture", which is something more "intimate" than a mere mixture. Dr. Bennett argued firstly that there is no difference in meaning between the words "admixture" and "mixture" according to dictionary definitions, and in the Calgon specification the words are used interchangeably. Secondly, she submitted there was no more intimacy in the composite admixture of the invention, than that disclosed in the prior art. For example, the Bodenheim & Heath patent refers to mechanical mixing of the adsorbent materials and the Calgon specification itself refers to the components being "combined" in the Bodenheim & Heath patent. Also the abstract of the Schvets article, Player Exhibit C, specifically refers to an "admixture".

In this matter I am inclined to agree with Dr. Bennett. I do not think that the word "admixture" as used in the claims of the Calgon specification should be given any meaning other than its usual dictionary meaning. If the forming of the admixture is a significant feature of the invention as propounded by the applicant then one might expect the specification to give some detail of the method of mixing the components of the adsorbent, but there is no reference to such detail in the specification. Dr. Player's comments supra are significant; in both the Calgon specification and the prior art an admixture is produced by merely adding one component of the adsorbent to another component of the adsorbent.

Mr. Catterns submitted that the "granular bone char" referred to in the applicant's claims was a characterising feature of the invention. He referred to the Lutchko affidavit wherein the Calgon adsorbent was compared to firstly the Bodenheim & Heath adsorbent and secondly the Algemeene Norit adsorbent. Mr. Lutchko describes the first as being "a decarbonised bone char which has a small amount of activated carbon", and the second as being "a granular bone char containing powdered activated carbon". Mr. Catterns suggested that "the definition of bone char is that it has run out of carbon"; i.e. the expression "bone char" is an abbreviated form of "decarbonised bone char", and is thus not the same thing as "granulated bone char". Using this definition, Mr. Catterns then argued that the prior art, when referring to bone char, was therefore not disclosing granular bone char.

Dr. Bennett had a contrary opinion; she suggested that "bone char" would normally be taken to mean "granular bone char", her reasons were as follows.

Firstly she referred to the Calgon specification where the expression "granular bone char" is infrequently used; more frequently "bone char" is used, and she submitted that it is clearly meant to be an abbreviation of "granular bone char". To counter this argument, Mr. Catterns suggested that where "bone char" was referred to in the phrase "granular activated carbon and bone char", that the phrase should be interpreted as meaning "granular activated carbon and granular bone char"; as one would interpret the phrase "elderly men and women" as "elderly men and elderly women". I cannot accept this argument though, because the specification is not consistent: on pages 4 and 7 an alternative phrase is used, namely "bone char and granular activated carbon" in which clearly "granular" only relates to the activated carbon.

Secondly, Dr. Bennett pointed out that the Calgon specification, at page 9 lines 29 and 30, reads: "Those skilled in the art have been using granular bone char routinely for sugar liquor filtration thus indicating that the granular form of bone char is well known. Thirdly she indicated that Mr. Wagner made no mention of this supposed feature of the granular bone char in his declaration; a surprising omission if the feature is supposed to have some merit.

Further to Dr. Bennett's submissions, I note that some of the prior art documents refer to granular bone char. In deciding this matter I think that "bone char" could be interpreted to mean "decarbonised bone char" by a skilled addressee in some circumstances, but the evidence before me suggests that "bone char" is more usually used for "granular bone char"; I deduce that bone char is generally in a granular form, and furthermore, I have nothing before me to show that decarbonised bone char is not also in granular form. I consider Mr. Catterns' definition of bone char to be inaccurate, and I am not convinced that the claims of the Calgon specification are distinguished, by the feature of granulated bone char, from prior art which refers to bone char per se.

An additional submission made by Mr. Catterns relating to the granular bone char feature, specifically had regard to the meaning of "granulated". He submitted that this meant the bone char was in the form of "granules or little grains" as opposed to "grains" per se. This he submitted was significant because page 3 of the Schvets article indicates that the "granules of carbon are less solid than the grains of bone char"; thus not disclosing granules of bone char. This distinction I consider to be artificial; the expression "granular bone char" as used in the claims may be construed as meaning either bone char in the form of granules or bone char in the form of grains. (In this regard Dr. Bennett pointed out that there is no such word as "grainated").

Mr. Catterns also suggested that the applicant's invention was characterised by the granular activated carbon and the granular bone char comprising particles of similar size. There is some indication on pages 8 and 9 of the specification that this is a desirable feature, but there is no disclosure of any merit or advantage associated with this feature. Furthermore I do not consider that such a feature is implied in the independent claims merely because both components of the adsorbent are referred to as "granular". Grains or granules generally may have a range of sizes, and the independent claims are clearly broad enough to include embodiments where the granular sizes of the components of the adsorbent are different.

Prior Publication, Novelty

I consider claims 1, 4 and 7 to be prior published by the Hassler extract and the Schvets article. These publications refer to the "addition" of granular activated carbon or granular char to bone char, which I deduce would produce an "admixture". A skilful addressee would construe "bone char" in the publications as including "granular bone char", as discussed above. A range of 30 to 40% granular activated carbon is disclosed in the publications, which is within the range of 10 to 50% claimed in the independent claims. Thus all the features of these claims are taught in these publications.

Claims 2, 5 and 8 refer to 10 to 30% granular activated carbon which is outside the range specified in the Hassler extract and the Schvets article. However I cannot construe this difference as a novelty-conferring feature. For example, there is nothing in the specification to inform the addressee why say 20% would be any better than say 35%. In the description of the invention, pages 7 and 8 refer to experimental results and performance of the invention but there is no reference therein to the percentages of the components used in the adsorbent. Thus I find claims 2, 5and 8 not novel.

Claims 3 and 9 specify a mesh size range for the granular bone char and activated carbon, but I cannot see any novelty conferred in this feature. The specification on page 9 states that:

"Generally, any granular size is satisfactory, as long as it is not so small as to become suspended in the filtrate and carried from the bed, nor so large as to seriously limit the surface area exposed."

There is no disclosure of any special advantage associated with the range of mesh size claimed.

In the light of the above comments, I do not think it is necessary for me to consider in detail the novelty aspects of the applicant's claims in the light of the Algemeene Norit and Bodenheim & Heath patents. I am sympathetic to Dr. Bennett's submission that the Hassler extract and the Schvets article were the stronger citations; she commented: "the U.S. examiner relegated Schvets and Hassler somehow to a back burner; for whatever reason we don't know". Generally though, relating to the matter of the percentages of the components claimed in the Calgon specification not being disclosed in the cited Netherlands and U.S. patents, I reiterate that in the description of the performance of the Calgon invention there has been no attention given to the percentages of the adsorbent components or to any advantages associated therewith.

Section 40

Dr. Bennett submitted that the claims of the Calgon specification were not fairly based because, firstly, no explanation has been given as to why the percentage ranges of the activated carbon were chosen to be higher than those disclosed in the Bodenheim & Heath patent, to which a comparison was made in the Calgon specification; and secondly, that the inventive concept of the invention as described relates to the method of regeneration but such a method has not been claimed.

Admittedly both these matters are significant in the determination of novelty, however I do not consider that the claims are not fairly based or do not define the invention. The applicant has seen fit to include a feature in its claims for which there is minimal detail given in the description, i.e. the percentage ranges, but significantly there is some disclosure of this feature, on page 4. This is all that is required, the applicant is not required to show why every feature of his invention is different from the prior art. Also, the description places some significance on the regeneration feature, most of the advantages over the prior art appear to be associated with this feature for example, but again the applicant is not required by section 40 to claim such a feature if the specification indicates that other features are the essential features of the invention. The scope of the monopoly sought is based on the applicant's choice of features described in the body of the specification, and if it can subsequently be shown that the choice is a poor one and the claims are found to be not novel, then the applicant shall bear the consequences of making that choice. But these are not matters to be dealt with under section 40.

There was some discussion at the hearing of the scope of independent claims 1 and 4, and the parties generally agreed that the "system" of claim 1 was a method system rather than an apparatus system; I agree with this construction of the claim. However, given this construction, I do not think that claim 4 is redundant in the light of claim 1, since the "filter" referred to in line 3 of claim 1 may or may not be a "bed" as referred to in claim 4, the two claims thus having a slightly different scope, Claim 6 in referring to "at least 8 x 50 mesh" is not clear; there is some doubt as to which part of the range specified may be varied by the phrase "at least".

Conclusion

I find that the opposition succeeds on the grounds of prior publication, novelty and non-compliance with section 40. I cannot say for certain that there is no patentable subject matter disclosed in the specification and consequently I allow Calgon 60 days from the date of this decision to propose amendments with a view to causing the specification to claim that matter.

I award costs against the applicant.

(J.I. WELSH) Supervising Examiner of Patents

4 JUL 1988

Patent attorneys for the applicant: Spruson & Ferguson

Patent attorneys for the opponent A.S. Cave Co