Cargill Incorporated v J-Oil Mills, Inc
[2017] APO 54
•27 October 2017
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Cargill Incorporated v J-Oil Mills, Inc. [2017] APO 54
Patent Application: 2014202176
Title:Method for production of rapeseed meal
Patent Applicant: J-Oil Mills, Inc.
Opponent: Cargill Incorporated
Delegate: Dr M-A. Fam
Decision Date: 27 October 2017
Hearing Date: 23 August 2017, in Canberra
Catchwords: PATENTS – section 59 – opposition to the grant of a patent – grounds of novelty, inventive step, manner of manufacture, clarity, clear enough and complete enough disclosure, support and utility considered – novelty – citations do not disclose all the features of the claims – inventive step – lack of inventive step not established – claims define a manner of manufacture – claims are clear – specification meets the requirements for clear enough and complete enough disclosure – claim 3 lacks support – lack of utility not established – opposition succeeds – costs awarded
Representation: Counsel for the applicant: Mr Tom Cordiner QC and Mr Craig Smith
Patent attorney for the applicant: Dr Andy Mukherji of Michael Buck IP
Patent attorneys for the opponent: Ms Katrina Crooks and Dr Jacinta Flattery-O’Brien of Shelston IP
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2014202176
Title:Method for production of rapeseed meal
Patent Applicant: J-Oil Mills, Inc.
Date of Decision: 27 October 2017
DECISION
Claim 3 lacks support.
I allow J-Oil Mills, Inc. a period of two months from the date of this decision to file amendments.
Costs according to Schedule 8 are awarded against J-Oil Mills, Inc.
REASONS FOR DECISION
1. Background
The present application was filed by J-Oil Mills, Inc. (J-Oil) on 21 April 2014. It is a divisional application of 2007344794 and claims priority from JP 2007-013358 which was filed on 24 January 2007. Following examination, the application was advertised accepted on 17 September 2015. A notice of opposition was filed by Cargill Incorporated (Cargill) on 27 November 2015. J-Oil subsequently filed section 104 amendments and these were advertised allowed on 8 December 2016. A hearing was held in Canberra on 23 August 2017.
The request for examination in relation to the application was filed on 4 June 2014. Consequently, substantive amendments of the Patents Act 1990 (the Act) brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act) apply to the present application.
2. Grounds of opposition
The statement of grounds and particulars (SG&P) was filed on 26 February 2016. Cargill filed an amended SG&P on 2 August 2017 and the amendment was subsequently allowed.
The grounds pressed at the hearing were novelty, inventive step, manner of manufacture, clear enough and complete enough disclosure, support, clarity and utility.
3. Standard of proof
The present application was filed after the commencement of the Raising the Bar Act. The standard of proof that applies in this opposition proceeding is therefore the balance of probabilities, as a consequence of subsection 60 (3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists.
J-Oil submitted that the standard of proof should be higher than the balance of probabilities, based on the reasons set out in the article “Has the Bar been Raised? Standard of Proof in Patent Opposition Proceedings”.[1] The authors of the article state that the traditional authorities that established the “practically certain” standard were based on the seriousness of the outcome of refusal of an application. This outcome remains the same after raising the bar, so the strength of evidence needed to establish any fact on the balance of probabilities should be high. The authors conclude that “it appears unlikely that s.60(3A) has had the effect of introducing a lower standard by which grounds of opposition are to be determined”.[2]
[1] Cochrane, C. and Bembrick, C., Has the Bar been Raised? Standard of Proof in Patent Opposition Proceedings, IP Forum, December 2016, 67 – 72.
[2] ibid., page 71.
However, I consider that the words of subsection 60(3A) are clear. This is supported by the Explanatory Memorandum which states:
“The policy background and intention of the amendments is the same as the related changes to require a higher standard of proof at acceptance of a patent application (see item 14 above, and related items 18, 19, 21, 26 and 28). The intention is to give the Commissioner the ability to refuse applications where the Commissioner is satisfied, on the balance of probabilities, that a granted patent would be invalid, rather than only permitting the Commissioner to refuse the patent application if she is practically certain the granted patent would be invalid.”[3]
[3] Explanatory Memorandum, Intellectual Property Law Amendment (Raising the Bar) Bill 2011 (Cth), 54 – 55.
I am therefore satisfied that the standard of proof that applies to the present opposition is the balance of probabilities and it is the opponent who carries the onus of proof.
4. Evidence
The evidence is summarised in the table below.
Evidence Declarant Exhibits Date Reference In Support
Geoffrey Black
GB-1 26 May 2016 Black Rodney Mailer
RM-1 to RM-11 26 May 2016 Mailer-1 In Answer
Sanshiroh Saitoh
SS-1 to SS-18
18 August 2016
Saitoh
In Reply
Rodney Mailer
RM-12 to RM-19
1 November 2016
Mailer-2
5. The subject matter of the specification
5.1 Background of the invention
The invention relates to methods for the production of rapeseed (canola)[4] meal. The specification states that rapeseed meal, which is the material remaining following the removal of oil from rapeseeds, is used for animal feed and fertilisers.[5] However, compared with soybean meal, rapeseed meal is inferior due to factors including its low protein content, low nutritional value and poor palatability to animals.[6] This is attributed to the high fibre content, presence of bitter substances and the relatively low protein content of rapeseed meal.[7]
[4] Canola is a particular cultivar of rapeseed; see, for example, Mailer-1 [12]; specification at [0021].
[5] Specification at [0002].
[6] ibid.
[7] ibid.
Nitrogen and minerals found in rapeseed meal provide sources of nutrients in both feed and fertilisers.[8] The amounts of these substances are affected by the composition of the rapeseeds and will vary depending upon on the variety and harvesting period.[9] Thus, there is a risk that rapeseed meal derived from rapeseeds that are low in nutrients will fall below product specifications, whereas if the rapeseeds are nutritious, the nutrients may exceed the amounts that are effective for feed and fertilisers resulting in increased discharge of material that is harmful to the environment.[10]
[8] ibid., [0003].
[9] ibid.
[10] ibid.
The specification indicates that whilst the prior art describes methods for controlling the amount of nutrients or adjusting the protein content in rapeseed meal, these are expensive or cumbersome and industrially unsuitable.[11]
[11] ibid., [0004] – [0009].
5.2 Nature of the invention
The specification indicates that an object of the invention is to provide a method for producing rapeseed meal with adjusted nutritional values, including protein, from rapeseed meal in a simple manner and at a low cost.[12] Moreover, the method produces little to no waste.[13]
[12] ibid., [0010].
[13] ibid.
The method involves sifting rapeseed meal after oil is extracted.[14] In particular, rapeseed meal is sifted through any of 32 to 60 mesh sieves and thereby separated into a coarse rapeseed meal that remains on the sieve and a fine rapeseed meal that passes through the sieve.[15] The fine rapeseed meal has increased protein content[16] and the coarse rapeseed meal has improved palatability (particularly reduced bitterness), whilst maintaining nutritional value.[17] The improved palatability is considered to be as a result of bitter substances being removed and remaining bitter substances being masked by granulation during oil extraction.[18] The specification indicates that such rapeseed meal cannot be obtained by a conventional method in which oil is extracted after the hulls are separated from the cotyledons and hypocotyls.[19] Thus, both the fine and coarse rapeseed meal are industrially useful.[20]
[14] ibid., [0016].
[15] ibid., [0011].
[16] Protein content may be determined by multiplying the nitrogen content by a factor of 6.25; see specification at [0033]; Mailer-1 [49], [90].
[17] Specification at [0012] – [0014], [0017] – [0018].
[18] ibid., [0018].
[19] ibid.
[20] ibid.
5.3 The claims of the specification
The specification contains 5 independent claims and these are reproduced in Annex A. Claims 1 and 5 are directed to a method for producing rapeseed meal. Claim 2 defines fine rapeseed meal and claims 3 and 4 are directed to coarse rapeseed meal.
6. The person skilled in the art
The person skilled in the art is the hypothetical addressee:
“He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious. …
In Catnic Lord Diplock said (at 242) that skilled addressees are ‘those likely to have a practical interest in the subject matter of [the] invention’. A variety of people may have that interest. There are those who might wish to make or construct the invention, those who may wish to compound the invention and those who may wish to use the invention. The skilled addressee seems to me to be a relative expression which does not identify any specific person.”[21]
[21] Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; 49 IPR 225 at [70] – [71].
In this opposition evidence was filed by the following declarants:[22]
·Dr Mailer has experience in the edible fats and oil industry, including the study of rapeseed and canola oil and meal.
·Dr Saitoh has experience in the research and development of oilseeds for food and feed. He is also one of the inventors of the present application.
I consider that both declarants would have a practical interest in the invention.
[22] The statements below provide a brief summary of knowledge and experience up until 24 January 2007 (the claimed priority date of the present application).
Cargill submitted that Dr Saitoh, as an inventor, lacks independence, and cannot give evidence from the perspective of a non-inventive worker. Notwithstanding this, I am satisfied that I can give regard to the evidence of both declarants. Where there is conflicting evidence, I will use the normal practice of evaluating and weighing that evidence in order to resolve any conflict.
7. Claims construction
The principles of construction have been considered by the courts. These were summarised by the Full Court of the Federal Court:
“When determining the nature and extent of the monopoly claimed, the specification must be read as a whole. But as a whole it is made up of several parts which have different functions. The claims mark out the legal limits of the monopoly granted. The specification describes how to carry out the process claimed and the best method known to the patentee of doing that. Although the claims are construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim, by adding to those words glosses drawn from other parts of the specification. If a claim is clear and unambiguous, it is not to be varied, qualified or made obscure by statements found in other parts of the document. It is legitimate, however, to refer to the rest of the specification to explain the background of the claims, to ascertain the meaning of technical terms and resolve ambiguities in the construction of the claims. See Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331 at [73] – [75] (Hely J).
Other more specific principles of construction collected in Flexible Steel at [81] are:
·a specification should be given a purposive construction rather than a purely literal one;
·the hypothetical addressee of the specification is the non-inventive person skilled in the art before the priority date;
·the words used in a specification are to be given the meaning the hypothetical addressee would attach to them, both in the light of the addressee’s own general knowledge and in the light of what is disclosed in the body of the specification;
·as a general rule, the terms of the specification should be according their ordinary English meaning;
·evidence can be given by experts on the meaning those skilled in the art would give to technical or scientific terms and phrases, and on unusual or special meanings given by such persons to words which might otherwise bear their ordinary meaning;
·however, the construction of the specification is for the court, not for the expert. In so far as a view expressed by an expert depends upon a reading of the patent, it cannot carry the day unless the court reads the patent in the same way.”[23]
[23] Kinabalu Investments Pty Ltd v Barron Rawson Pty Ltd [2008] FCAFC 178 at [44] – [45].
As stated by Middleton J:
“It is well settled that the court should, from the outset, approach the task of patent construction with a generous measure of common sense. The court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”[24]
[24] Eli Lilly & Co Ltd v Apotex Pty Ltd [2013] FCA 214; 100 IPR 451 at [139].
In construing the claims, I will firstly consider claims 1 – 5 in general, before discussing specific terms used in those claims.
7.1 Claims 1 – 5
Claim 1 is directed to a method for producing rapeseed meal, whilst claim 5 defines a method for producing rapeseed meal adjusted in nitrogen (N) content. In each case the steps used to produce the meal are the same.
Claim 2 defines a fine rapeseed meal that is “obtained by” sifting a rapeseed meal raw material through a mesh sieve in a size of from 48 to 60 mesh, wherein the rapeseed meal raw material is in turn “obtained after” an oil extraction process. Thus the claim is a “product by process” claim and is directed to fine rapeseed meal only when obtained or produced by the defined sifting process.[25] Similarly, the rapeseed meal raw material is limited to that obtained after the defined oil extraction process.
[25] Kirin-Amgen Inc. v Roche Diagnostics GmbH [2002] RPC 1 at [286].
Claim 4 defines a coarse rapeseed meal that is “obtained by” sifting rapeseed meal raw material through any of 35 to 48 mesh sieves, wherein the rapeseed meal raw material is in turn “obtained after” an oil extraction process. The conclusions I have drawn above with respect to claim 2 apply equally to claim 4.
Claim 3 defines a coarse rapeseed meal that is reduced in bitterness in comparison with rapeseed meal raw material, wherein the rapeseed meal raw material is “obtained after” an oil extraction process. Thus the rapeseed meal raw material, with which the coarse rapeseed meal is compared, is limited to that obtained after the defined oil extraction process. However, it is important to note that the coarse rapeseed meal itself is not a “product by process”.
7.2 Construction of specific terms
I will now consider the construction of specific terms used throughout the claims, and in particular claim 1. The conclusions that I draw with respect to claim 1 apply equally to claims 2 ‑ 5 wherever the same terms are used, unless otherwise indicated.
(a) Consisting and comprising
Claim 1 defines a method for producing rapeseed meal, “consisting of” the steps of performing an oil extraction process, obtaining a rapeseed meal raw material and sifting that material. The oil extraction process in turn comprises certain steps. At the hearing there was some discussion as to whether consisting and comprising should be interpreted exclusively or inclusively.
The plain meaning of the term “consist of” is “to be made up or composed of” and the plain meaning of the term “comprise” or “comprising” is “to include; contain”, “to consist of; be composed of” (Macquarie Dictionary).
The courts have given some consideration to both terms.[26] In view of these court decisions, it appears that the natural meaning of “consists of” is “consists only of”, i.e. the term is used in an exhaustive sense, and I see no reason to depart from this meaning in the present case. In relation to “comprising”, the courts have considered the term to be used in either an exhaustive sense or an inclusive sense, depending on the context.
[26] See Asahi Kasei Kogyo Kabushiki Kaisha v W R Grace & Co (1991) 22 IPR 491 at 514 – 515; General Clutch Corporation v Sbriggs Pty Ltd (1997) 38 IPR 359 at 376; Fresenius Medical Care Australia Pty Limited v Gambro Pty Limited [2005] FCAFC 220; (2006) 67 IPR 230 at [56] – [64].
As indicated above, claim 1 uses both “consisting” and “comprising”. The general presumption is that where different words are used within a claim, then those words are intended to have a different meaning. As I consider “consisting” is used in an exhaustive sense, it therefore follows that “comprising” is to be interpreted inclusively. Such an interpretation is not inconsistent with the specification, which states that:
“Oil extraction from the rapeseeds is usually divided into two processes. First, the oil is extracted from the rapeseeds by a press. Next, the oil remaining in the pomace is extracted using an organic solvent, such as n-hexane.”[27] (emphasis added)
[27] Specification at [0022].
Claim 1 is therefore considered to define a method for producing rapeseed meal that involves only three steps, namely oil extraction, obtaining a rapeseed meal raw material and sifting the rapeseed meal raw material. The oil extraction process may include steps in addition to those specifically stated in the claim.
(b) Does the method of claim 1 include other steps, such as milling?
Cargill raised the issue of whether the method defined by claim 1 includes other steps, such as milling. Such a step could be either part of the oil extraction process, or alternately the rapeseed meal raw material could be milled after the extraction step. I have already determined that the method of claim 1 involves only the steps of oil extraction, obtaining a rapeseed meal raw material and sifting that raw material, and that the oil extraction process may include additional steps. Therefore the question to consider is whether milling forms part of the oil extraction process.
The specification does not indicate that milling forms part of the oil extraction and there is no discussion of milling in the context of performing the invention. In order to determine what is understood in the art by the term “oil extraction” it is useful to consider the evidence on this point.
In his first declaration, Dr Mailer discusses the common general knowledge in the art. He states that solvent extraction is the most widely used method of extracting oil from rapeseed and canola seed and the main steps in the process are:
·seed handling and conditioning
·flaking
·physical extraction
·solvent extraction
·desolventising-toasting
·additive addition.[28]
[28] Mailer-1 [18].
A similar procedure is described in Exhibits RM-14 and RM-15. Neither document mentions a milling step. Dr Mailer also refers to the fact that meal will be made finer if it is milled after oil extraction[29] (emphasis added).
[29] ibid., [79].
However when discussing the claims, Dr Mailer comments that “Because flaking, desolventising-toasting and additive addition are routinely performed during solvent extraction, I would assume that the claims include these, and other steps such as milling.”[30] (emphasis added) In his second declaration, Dr Mailer states that “In industry, milling may or may not be part of the oil extraction process and, if it were critical that it be excluded from a method, I would expect that to be made clear to the reader.”[31]
[30] Mailer-1 [112]; see also Mailer-2 [6].
[31] Mailer-2 [58].
In view of the evidence before me, it appears that although a milling step is not routinely performed during the oil extraction process, such a step may nevertheless form part of the process. I therefore conclude that milling may be part of the oil extraction process.
At the hearing Cargill stated that milling could be included in the “obtaining” or “sifting” steps defined by the claim. The plain meaning of the term “obtaining” is “to come into possession of; get or acquire” (Macquarie Dictionary). In construing claim 1, I consider that the rapeseed meal raw material “obtained” is that derived from the oil extraction process. This is consistent with the specification which indicates that “Rapeseed meal used as the raw material in the process of the invention refers to residue remaining after oil is extracted from rapeseeds.”[32] The plain meaning of the term “sift” is “to separate the coarse parts of (flour, ashes etc.) with a sieve; to separate by or as by a sieve; to use a sieve” (Macquarie Dictionary). Clearly milling does not form part of “sifting” and there is no evidence before me to suggest otherwise.
[32] Specification at [0021].
I therefore conclude that the method of claim 1 may include a milling step, but only when that step forms part of the oil extraction process.
(c) Hulled rapeseeds
The plain meaning of the term “hull” is “the husk, shell, or outer covering of a seed or fruit” (noun) or “to remove the hull of” (verb) (Macquarie Dictionary). Therefore the reference in claim 1 to extracting oil from hulled rapeseeds could be interpreted to mean that the hull has been removed from the seeds. However, this would be inconsistent with the later statement in the claim that “a portion of the rapeseed meal raw material is granulated by hull and kernel”, which indicates that the hull is still present (this phrase is considered in further detail below).
Turning to the specification, it uses the term “dehulled” to indicate that the hulls have been removed from the seeds.[33] I also note that Dr Mailer uses the same terminology when discussing the process of separating the hull from rapeseed or canola seed.[34] Thus, in the context of the specification, “hulled” means the seed with the hull included.
[33] ibid., [0005], [0007].
[34] Mailer-1 [20].
Claim 1 is construed to define a process wherein oil is extracted from rapeseeds wherein the hull is present.
(d) Content of from 38.8 to 55.6% under a 32 mesh sieve
Adopting the plain meaning, the claim is construed to define a process wherein the rapeseed meal raw material obtained from the oil extraction process is such that 38.8 to 55.6% of that material passes through a 32 mesh sieve. The specification indicates that Tyler Standard Sieves are used.[35] A 32 mesh sieve has 500 µm openings, a 35 mesh sieve has 425 µm openings, a 48 mesh sieve has 300 µm openings and a 60 mesh sieve has 250 µm openings.[36]
[35] Specification at [0011].
[36] ibid., page 10, Example 1.
(e) Portion of the rapeseed meal raw material is granulated by hull and kernel
As previously indicated, the hull is the shell or outer covering of the rapeseed. The kernel is the inner part of the seed and contains the cotyledons, endosperm and hypocotyl.[37] The plain meaning of the term “granulate” is “to form into granules or grains” (Macquarie Dictionary). Claim 1 is therefore considered to define a process wherein some of the rapeseed meal raw material obtained after oil extraction is in the form of granules made up of the hull and kernel of the seed. This is consistent with the specification which states that granulation occurs during the oil extraction process.[38]
[37] Mailer-1 [13].
[38] Specification at [0018], [0022], [0043].
(f) Sifting through a sieve in a size of from 32 to 48 mesh
Cargill submitted that it is not clear whether the sifting is required to be carried out using a cascade of sieves or whether the sifting can be carried out with a single sieve within the specified sieve range.
As previously indicated, the plain meaning of the term “sift” is “to separate the coarse parts of (flour, ashes etc.) with a sieve; to separate by or as by a sieve; to use a sieve” (Macquarie Dictionary, emphasis added).
The sieve type and opening sizes are discussed above. The specification states that:
“In the invention, as long as the above-described sieves are included [e.g. 32 to 48 mesh] use of a plurality of sieves is not prohibited.”[39]
[39] ibid., [0023].
In Examples 1 – 3, a stack of sieves ranging in size from 12 mesh to 60 mesh is used.[40] The coarse rapeseed meal produced is a combination of the rapeseed meal remaining on the 12 to 35 mesh sieves and the fine rapeseed meal is a combination of the rapeseed meal remaining on the 48 mesh to below the 60 mesh sieves.[41] In Example 4, a single sieve of 32, 35, 48 or 60 mesh is used to sift 23 different samples of rapeseed meal. Thus the specification exemplifies both the use of a single sieve and also a series of sieves during the sifting process.[42]
[40] ibid., Example 1, Table 1; Example 2, Table 8; Example 3, Table 9.
[41] ibid., [0035].
[42] At the hearing, J-Oil confirmed the use of a series of sieves in Examples 1 – 3 and a single sieve in Example 4. Dr Saitoh also refers to the use of a plurality of sieves in Tables 1, 8 and 9, which correspond to Examples 1, 2 and 3 respectively; see Saitoh [55]. I note that Dr Saitoh does not refer to Table 10, which corresponds to Example 4.
Claim 1 defines sifting the rapeseed meal raw material through a sieve in a size of from 32 to 48 mesh to separate into a coarse rapeseed meal in which the grains remain on the mesh sieve and a fine rapeseed meal in which the grains pass through the mesh sieve (emphasis added). Although the specification indicates that a series or stack of sieves can be used in the sifting process, claim 1 defines the use of “a” sieve and refers to meal remaining or passing through “the” sieve. Therefore the plain meaning of the words suggests that only a single sieve is used.
Dr Mailer states that sifting simply divides meal into two fractions,[43] which is consistent with the use of a single sieve. In discussing the claims, Dr Mailer comments that the sieve that is used to estimate the particle size distribution is not necessarily the same size as the sieve used to obtain the coarse and fine meal fractions[44] (emphasis added), and states that claims 1 to 5 all require the rapeseed meal raw material to be sifted through a sieve having a particular opening size[45] (emphasis added). Dr Mailer further states:
“it is my understanding that the claims of the Opposed Application describe the use of a single sieve to produce two fractions of rapeseed meal. However, all of the examples in the Opposed Application describe the use of a series of sieves. It is not clear to me whether the claims of the Opposed Application also include the use of a series of sieves.”[46]
Regarding Dr Mailer’s comment on the examples, I note that (as previously indicated) Example 4 describes the use of a single sieve.
[43] Mailer-1 [72]; Mailer-2 [12].
[44] Mailer-1 [115]; Mailer-2 [63].
[45] Mailer-1 [117].
[46] Mailer-2 [127].
Dr Saitoh similarly states that the sieve specifying the rapeseed meal raw material and the sieve used for actual sifting do not have to be the same[47] (emphasis added).
[47] Saitoh [94].
I therefore consider it appropriate to adopt the plain meaning of the words. Claim 1 is construed to define a process wherein the rapeseed meal raw material is sifted through a single sieve in a size range of from 32 to 48 mesh to produce a coarse rapeseed meal which remains on the sieve and a fine rapeseed meal that passes through the sieve.
Similarly, claim 2 is construed to define a fine rapeseed meal that is produced by a process wherein rapeseed meal raw material is sifted through a single sieve in a size range of from 48 to 60 mesh. The fine rapeseed meal is that fraction which passes through the sieve.
In relation to claim 3, the claim indicates that the coarse rapeseed meal does not include fractions passing through any of 35 to 48 mesh sieves, whereas the rapeseed meal raw material includes such fractions. The plural terms “fractions” and “sieves” could suggest that more than one sieve is used to determine the matter excluded from the coarse rapeseed meal (and included in the rapeseed meal raw material). However, in practice the matter that is excluded from the coarse rapeseed meal is determined by the sieve with the largest openings. For example, if the coarse rapeseed meal does not pass through a 35 mesh sieve, then logically it will not pass through a 48 mesh sieve. This interpretation is consistent with the specification, wherein either a 35 mesh sieve or a 48 mesh sieve is used to demarcate the coarse rapeseed meal.[48] I therefore consider that the coarse rapeseed meal defined by claim 3 does not include material that passes through any one of a 35 to 48 mesh sieve.
[48] Specification at [0044].
Claim 4 similarly refers to sifting through any of 35 to 48 mesh sieves. The plural term “sieves” could suggest that more than one sieve is used in the sifting process. However, this would result in multiple products, whereas the claim is directed to a single product. Further, the claim states that the coarse rapeseed meal has a grain size that remains on the 35 to 48 mesh sieve (emphasis added). I therefore consider that the rapeseed meal raw material defined by claim 4 is sifted through any one of a 35 to 48 mesh sieve.
Cargill further stated that the term “sifting” is unclear as the duration for which the rapeseed meal raw material is to be sieved is not specified. Dr Mailer comments that:
“The efficiency with which meal particles pass through the sieve will be influenced by how the sifting is performed including the dimensions of the sieve, the amount of meal to be sifted, the shape of the openings in the sieve, whether sifting is performed with a brush or by shaking and, if sifting is performed by shaking, whether a machine is used.”[49]
[49] Mailer-1 [117].
Cargill also made reference to Appendix 1 of Exhibit RM-4. This document indicates that when sifting canola meal through a 425 µm sieve using a Ro-Tap shaker, the amount of material passing through the sieve is 23.93% after 5 minutes, compared with a mean value of 58.07% after 10 minutes.
I acknowledge that the amount of material that passes through the sieve will depend upon the duration of sifting. Claim 1 does not specify a time period and therefore it is reasonable to assume that sifting is carried out until no more material passes through the sieve. I consider this constitutes a “workable standard suited to the intended use”.[50] I also note that Dr Mailer[51] and Dr Saitoh[52] both state that sifting is a known technology in the art.
[50] Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890; 49 IPR 331 at [81].
[51] Mailer-2 [28].
[52] Saitoh [96].
(g) Nitrogen content – “as is” or “dry matter” basis
As discussed previously, multiplying the nitrogen (N) content by a factor of 6.25 gives an indication of protein content. The protein (and N) content may be expressed on a “dry matter” (“dry weight”) basis.[53] If the content is expressed at ambient moisture content, this is said to be on an “as is” basis.[54]
[53] Mailer-1 [34].
[54] ibid.
At the hearing there was some discussion as to whether the claims define the N content on an as is or dry matter basis. Dr Mailer states that it is unclear whether the N contents in the specification are given on a dry matter basis,[55] however he assumes that they are shown on a dry matter basis since this would make the numbers directly comparable.[56] Dr Saitoh indicates that the N contents are reported on an as is basis.[57]
[55] ibid., [72].
[56] ibid., [92].
[57] Saitoh [102], [103], [224].
Turning to the specification, Example 1, Table 1, shows the moisture content, N content and protein content for sifted and unsifted rapeseed meal fractions. The N content ranges from 5.34% to 7.27%. In discussing the various fractions, it is stated that:
“Through this method, a rapeseed meal of which the N-content was arbitrarily adjusted between 5.34% and 7.27%, about 0.8 times to 1.2 times the N-content of the rapeseed meal serving as the raw material, can be obtained with minimal changes in the moisture content of the rapeseed meal.”[58] (emphasis added)
[58] Specification at [0035].
Thus, the N content can be varied without significant impact on the moisture levels. This indicates that moisture is still present when the N content is measured, i.e. the N content is determined on an as is basis.
Claim 1 is construed to define the N content on an “as is” basis.
(h) Nitrogen content – 0.95 to 0.986 times and 1.199 to 1.125 times the nitrogen content of the rapeseed meal raw material
Claim 1 defines a method for producing a coarse rapeseed meal which has a N content 0.95 to 0.986 times that of the raw material and a fine rapeseed meal which has a N content 1.199 to 1.125 times that of the raw material.
These ranges are taken from Example 4, Table 10 of the specification. In this example, 23 samples of rapeseed meal raw material were sifted and the increase and decrease in N content compared to the unsifted material determined. The claimed range of 0.95 to 0.986 corresponds to the mean values obtained for the coarse fraction when separated using a 32 mesh sieve and a 48 mesh sieve respectively, when compared with the mean N content of the unsifted material. Similarly, the claimed range of 1.125 to 1.199 corresponds to the mean values obtained for the fine fraction using the same sieves, when compared with the mean N content of the unsifted material. I note that the ranges in Table 10 are reported as plus or minus a standard deviation.
As the ranges in claim 1 are not associated with any standard deviation (or the use of any other qualifier such as “about”), they are construed to define the numerical range as stated. Further, construing in the context of the specification, the claimed N content range is the mean or average value. I note that such an interpretation is consistent with Dr Mailer’s comments regarding the protein content[59] for stacks of canola meal:
“Protein content can vary within a single stack. To account for this variability, a special device known as a ‘spear’ may be used to take samples from different sections of a stack. Each sample is analysed separately and the protein content is usually expressed as an average having a particular variability.”[60]
[59] Protein content equates to the N content multiplied by 6.25.
[60] Mailer-1 [39].
Claim 1 is construed to define a process for producing a coarse rapeseed meal wherein the mean N content of that meal is 0.95 to 0.986 times the mean N content of the rapeseed meal raw material, and a fine rapeseed meal wherein the mean N content is 1.125 to 1.199 times the mean N content of the rapeseed meal raw material.
I will now consider the N content defined by claims 2 and 4. In discussing the N content of the coarse fraction defined by claim 4, Dr Saitoh states that the claimed values are based on the upper and lower limits from Examples 1 – 3 of the specification.[61] Following the same reasoning for claim 2, I conclude that the lower limit of 6.64% is derived from Example 3[62] and the upper limit of 7.27% is derived from Example 1.[63]
[61] Saitoh [103] – [104].
[62] Using the same approach as Dr Saitoh at [103], N content below the 48 mesh sieve = (6.53 x 0.102 + 6.73 x 0.116) ÷ (0.102 + 0.116) = 6.64%.
[63] Specification at Table 1, N content for “Below 60M” fraction.
As discussed previously, the N content for claim 1 is a mean value. To adopt the same approach for claims 2 and 4 is not unreasonable and again consistent with Dr Mailer’s comments that the protein content for stacks of canola meal is usually expressed as an average.
Claim 2 is therefore construed to define a fine rapeseed meal wherein the mean N content of the fraction passing through a sieve in a size of from 48 to 60 mesh is from 6.64% to 7.27%. Claim 4 is construed to define a coarse rapeseed meal wherein the mean N content of the fraction that remains on a sieve in a size of from 35 to 48 mesh is from 4.90% to 5.80%.
(i) Reduced in bitterness
Claim 1 indicates that the coarse rapeseed meal produced during the process is reduced in bitterness in comparison with the rapeseed meal raw material. Adopting the plain meaning of the words, the coarse rapeseed meal produced is less bitter than the starting raw material.
Cargill submitted that the concept of bitterness is not easily defined and will vary depending on the rapeseed cultivar. It was further submitted that in the canola industry bitterness is usually measured with reference to the sinapine content, whereas the specification does not mention this substance.[64] Cargill also stated that the data obtained from the human taste tests conducted in the specification were of limited value, due to the small number of panellists and the fact that rapeseed meal is fed to animals, not humans.
[64] In discussing bitterness, the specification refers to “bitter substances, such as tannic acid”([0028]) and analyses the amount of tannin present in the unsifted rapeseed meal, coarse rapeseed meal and fine rapeseed meal (see, for example, [0037] – [0039]).
However, I note that the reduction in bitterness in the coarse rapeseed meal is relative to the raw material from which it is derived. Furthermore, provided this requirement is met, the exact nature of the bitter substances is not a consideration.
8. Clarity
Subsection 40(3) requires that the claims must be clear. A claim will lack clarity if a third party could not ascertain whether a proposed action would fall within the ambit of the claim.[65]
[65] Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59.
Cargill submitted that the claims are unclear in a number of respects.
8.1 Inclusion of milling step
Cargill submitted that it is unclear whether or not the claims encompass processes which include steps other than those explicitly recited, and in particular a milling step.
As discussed above, I have determined that claim 1 defines a method for producing rapeseed meal that involves only three steps, namely oil extraction, obtaining a rapeseed meal raw material and sifting the rapeseed meal raw material. The oil extraction process itself may include steps in addition to those specifically stated in the claim, such as milling. Thus claim 1 may include a milling step, but only when that step forms part of the oil extraction process. Furthermore, milling is not included in the obtaining and sifting steps. Similar reasoning applies to method claim 5, and product claims 2 – 4 in so far as these claims make reference to the oil extraction process, obtaining and sifting steps. Therefore the claims are clear in this regard.
8.2 Granulated by hull and kernel
Dr Mailer states that “the phrase ‘granulated by hull and kernel’ is not one which is commonly used by oilseed companies to describe their meal” and that he “would not know what to look for if I were asked to identify whether the meal was ‘granulated by hull and kernel’.”[66]
[66] Mailer-1 [116].
I have previously determined that some of the rapeseed meal raw material obtained after oil extraction is in the form of granules made up of the hull and kernel of the seed. I therefore consider that the claims are clear in this regard.
8.3 Reduced in bitterness
Cargill’s submissions on this point are stated above in part 7.2(i). As discussed there, I have found that the reduction in bitterness in the coarse rapeseed meal is relative to the rapeseed meal raw material. Furthermore, provided this requirement is satisfied, the exact nature of the substances contributing to the bitterness is not relevant.
I therefore conclude that the phrase “reduced in bitterness” is clear.
8.4 Dry weight (“dry matter”) or wet weight (“as is”) basis
I have considered the issue of whether the N content measurements in the claims are on a “dry matter” or an “as is’ basis in part 7.2(g). I concluded that the N content is expressed on an as is basis and there is no clarity issue in this regard.
8.5 Sieve, sifting and cascade of sieves
Cargill submitted that it is unclear whether the term “sieve” encompasses only sieves with a size defined according to the Tyler system or whether it can encompass other sieve sizes. However, as discussed previously, paragraph [0011] of the description states “The present specification adopts Tyler Standard Sieves.” I also note that Dr Mailer understands the mesh and opening size used in the Tyler system.[67]
[67] ibid., [57].
Cargill further submitted that it is not clear whether the sifting is required to be carried out using a cascade of sieves. However, I have determined that the claims use a single sieve for the reasons stated above.
Cargill also stated that the term “sifting” is unclear as the duration for which the rapeseed meal raw material is to be sieved is not specified. However, as discussed previously, sifting is performed until no further material passes through the sieve.
I therefore conclude that the claims are clear with respect to “sieve” and the sifting process.
8.6 Conclusion on clarity
It has not been established that the claims lack clarity.
9. Novelty
Under subsection 7(1), an invention is taken to be novel unless it is not novel in the light of the prior art base. Information in a document forms part of the prior art base for the purposes of novelty if it was published before the priority date of a claim.
It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aicken J:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”.[68]
[68] Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; 137 CLR 228 at 235.
This test is satisfied if the alleged anticipation discloses all the essential features of the invention claimed.[69] In order to meet this requirement, the prior art “must contain clear and unmistakeable directions to do what the patentee claims to have invented”.[70]
[69] Nicaro Holdings Pty Limited v Martin Engineering Company [1990] FCA 40; 16 IPR 545 at 549.
[70] The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486.
Cargill submitted that claims 1 – 5 are not novel in view of the Davin paper[71] (D1), the Mwachireya Thesis[72] (D2), the Mustafa paper[73] (D4) and the Kaminska paper[74] (D5). Cargill further stated that certain features of the claims are arbitrary parameters, i.e. it is a case of parameteritis. I will first consider this issue.
[71] Davin A., Plant Foods for Human Nutrition, 1983, 33, 153 – 160.
[72] Mwachireya, S. A. K., Effect of Processing and Microbial Enzyme Treatment on the Nutritive Value of Canola Meal for Rainbow Trout (Onchorynchus mykiss), The University of British Columbia, 1995.
[73] Mustafa, A. F. et al., Canadian Journal of Animal Science, 1997, 77, 133 – 140.
[74] Kaminska, B. Z. et al., Journal of Animal and Feed Sciences, 2000, 9, 123 – 136.
9.1 Parameteritis
Cargill submitted that the claimed features of:
·particle size of the rapeseed meal raw material, in that 38.8 to 55.6% of the material passes through a 32 mesh sieve; and
·nitrogen levels, either absolute or relative to the starting material of both the fine and coarse rapeseed meals;
are arbitrary parameters. It was submitted that the claims can be found to lack novelty even where the prior art does not disclose these features.
A parametric claim is one that defines a product in terms of its parameters. “Parameteritis” or “parametritis” was considered by Laddie J in Raychem Corp.’s Patents (Raychem):
“This is the practice of seeking to repatent the prior art by limiting claims by reference to a series of parameters which were not mentioned in the prior art. Sometimes it includes reference to parameters measured on test equipment which did not exist at the time of the prior art. The attraction of this to a patentee is that it may be impossible to prove now that the prior art inevitably exhibited the parameters and therefore it is impossible for an opponent to prove anticipation. Even if that is what has happened here, it does not alter the task of the court. It must decide whether the opponent has proved anticipation or some other statutory ground of invalidity. Parametritis may make the court’s task more difficult, but at the end of the day the test of invalidity must be the same, whatever the form of the claims.”[75]
[75] [1998] RPC 31 at [37].
In this case the parameter S/D volume ratio was considered essentially arbitrary and of little technical significance.[76]
[76] Raychem at [46].
As stated in Euroceltique S.A. v Sandoz Pty Ltd,[77] the critical question is whether the parameter chosen achieves a technical effect, or whether it is an arbitrary convenience.
[77] [2009] APO 21 at [112].
Dr Saitoh indicates that the limitation of the rapeseed meal that passes below the 32 mesh sieve to 38.8 to 55.6% is based on the upper and lower limits obtained in Examples 1 and 3.[78] Thus, I consider it clear that the range defined in the claims is based on experimental results and not some arbitrary value. Further, the claims refer to mesh openings based on the Tyler Standard Sieves and, as discussed previously, these are known in the art. In terms of the particle size, I note that this is of technical significance. Dr Mailer states that the Australian Oilseeds Federation (AOF) sets trading standards which recommend a maximum particle size for meal which is measured as the percentage of meal that is retained on a sieve having a particular opening size.[79] He comments that in general animals digest finer meal more efficiently than coarser meal and so buyers of canola meal will usually prefer meal having a small particle size.[80]
[78] Saitoh [92].
[79] Mailer-1 [37].
[80] ibid.
In terms of the N content, the claimed values and ranges are again based on experimental results.[81] As discussed previously, N content may be measured on an as is or dry matter basis using procedures that are standard in the art.[82] The N content is also of technical significance as it gives an indication of protein content and meal with a high protein content is desirable.[83]
[81] Saitoh [100], [103] – [104].
[82] Mailer-1 [33] – [34], [49].
[83] ibid., [27], [31].
I conclude that the particle size of the rapeseed meal raw material, i.e. 38.8 to 55.6% of the material passes through a 32 mesh sieve, and the N content, are of technical significance and not arbitrary choices. This is not a case of parameteritis. It therefore follows that the prior art must disclose both of these features in order for the claims to lack novelty.
9.2 Davin paper (D1)
D1 describes the milling and sieving of rapeseed meal. Samples (1) to (5) of D1 are industrial products that are supplied for animal feed. These samples are milled prior to sifting. As I have found that the claims only include a milling step when it forms part of the oil extraction process, Samples (1) to (5) are not relevant for novelty considerations. However, D1 also describes a non‑milled sample, Sample (0). In assessing whether Sample (0) is relevant for novelty, I will first consider the method claims and then the product claims.
(a) Claims 1 and 5
As indicated above, the rapeseed meal in D1 is “the same industrial product that manufacturers supply for animal feeding.”[84] On this point Dr Mailer comments that:
“As I have already stated, the vast majority of commercially produced rapeseed meal is produced by solvent extraction. Accordingly, it is my understanding that the rapeseed meal described in RM-3 [D1] was produced by this method. If the method was other than solvent extraction I would have expected the method to be mentioned in RM-3.”[85]
[84] D1, Materials and methods, page 153.
[85] Mailer-1 [46].
However, whilst this may be the case, I do not consider that D1 provides clear and unmistakeable directions in this regard. I further note that Dr Mailer:
·indicates that the examples in RM-3 (D1) describe rapeseed meal which is sifted through a series of sieves to obtain multiple fractions of meal.[86] In contrast, claims 1 and 5 define the use of a single sieve to produce a coarse and a fine fraction.
·states that the fraction of Sample (0) that would pass through a 32 mesh sieve would be approximately 15.2%, which is “well outside the size range set out in the claims”.[87]
·comments that in order to determine the relative N contents of the sifted fractions from Sample (0), it is necessary to know the N content of the unsifted starting material. However, RM-3 (D1) does not specify the N content of the unsifted meal.[88]
[86] Mailer-2 [81].
[87] Mailer-1 [114]
[88] Mailer-2 [83].
Claim 1 also requires that the coarse fraction is reduced in bitterness in comparison with the rapeseed meal raw material. Cargill submitted that this is an inevitable consequence of the sifting process, as the bitter substance sinapine is more abundant in the kernel than the hull, and the coarse fraction of sifted rapeseed meal will contain a higher content of hull and a lower content of kernel compared to the unsifted meal.[89]
[89] Mailer-1 [97].
D1 does not provide any indication of the bitterness of the sifted rapeseed meal fractions or the unsifted material. Further, I note that Dr Mailer states:
“The sinapine content of the sifted meal fractions described in RM-3 [D1] would depend on a number of factors including the extent to which the meal was milled, if at all, and the type of sieve through which the meal was sifted.”[90]
[90] Mailer-2 [89].
Consequently, I am not satisfied that D1 provides clear and unmistakeable directions to produce a coarse rapeseed meal with reduced bitterness.
I therefore conclude that D1 does not anticipate claims 1 and 5.
(b) Claims 2 – 4
Claims 2 – 4 similarly define the use of an oil extraction process, a rapeseed meal raw material with a content of from 38.8 to 55.6% under a 32 mesh sieve and the use of a single sieve to obtain either a coarse rapeseed meal or a fine rapeseed meal. These features are not disclosed in D1 for the reasons outlined above.
In regard to the specific N contents defined by claims 2 and 4, Cargill submitted that these are arbitrary parameters. However, I have previously determined that this is not the case. I note that Figure 2 in D1 depicts the protein content of various meal fractions (reproduced below).
Dr Mailer states that:
“Figure 2 of RM-3 [D1] generally shows that smaller particle sizes have a higher protein content and a lower fibre content than larger particle sizes.”[91]
[91] Mailer-1 [50].
However, he does not comment on whether the N content disclosed in D1 corresponds to that defined by claims 2 and 4. From Figure 2 it is not readily apparent to me that this is the case, and Cargill did not provide any evidence to suggest otherwise.
Claims 3 and 4 also require that the coarse fraction is reduced in bitterness in comparison with the rapeseed meal raw material. However, this feature is not disclosed in D1 for the reasons outlined above.
I therefore conclude that D1 does not anticipate claims 2 – 4.
(c) Conclusion on D1
It has not been established that the claims lack novelty in view of D1.
9.3 Mwachireya Thesis (D2), Mustafa paper (D4) and Kaminska paper (D5)
D2 relates to the processing of canola meal and the use of that meal as feed for rainbow trout. Commercial canola meal is reduced by milling in a hammer mill and then sieved manually through a 0.425 mm (35 mesh) sieve.[92] The sieved canola meal has a protein content of 37.1% compared with 36.3% for the unsifted meal (dry matter basis).[93]
[92] D2, page 55.
[93] ibid., page 63.
D4 describes the effects of feeding a high fibre canola meal to ruminants. Commercial canola meal is milled and then sieved manually through a 35 mesh sieve.[94] This produces a high fibre low protein fraction (HFCM, corresponding to the coarse rapeseed meal retained on the sieve) and a low fibre high protein fraction (LFCM, corresponding to the fine rapeseed meal that passes through the sieve).[95]
[94] D4, Materials and Methods, Feed Preparation, page 134.
[95] Mailer-1 [59].
D5 discloses sieving commercial rapeseed meal (“regular rapeseed meal”) through a sieve with 0.5 mm openings (32 mesh). The fraction that passes through the sieve (corresponding to the fine rapeseed meal of the present claims) is higher in protein and constitutes about 35% of the regular rapeseed meal.[96] I note that this percentage is less than that required by claims 1 – 5, namely 38.8 to 55.6%.
[96] D5, Abstract; Materials and Methods, first paragraph.
Relevantly for claims 1 – 5, the prior art does not indicate whether the commercial canola (rapeseed) meal was produced by a solvent extraction process and, in the case of D2 and D4, no indication that 38.8 to 55.6% of the meal passes through a 32 mesh sieve. Dr Mailer states that the meal “was most likely prepared by a solvent extraction method, since this is the most common way of preparing canola meal commercially.”[97] However, I am not satisfied that D2, D4 and D5 provide clear and unmistakeable directions in this regard. I also note that the meal in D2 and D4 is milled prior to sifting (and not as part of the oil extraction process), whereas the present claims do not include such a step.
[97] Mailer-1 [55]; note that RM-4 is equivalent to D2. See also Mailer-1 [62]; note that RM-7 is equivalent to D5.
Furthermore, the N content of the various meal fractions disclosed in prior art does not meet the claimed requirements. Thus, the N content of the sifted meal in D2 (fine rapeseed meal) is only 1.022 times that of the unsifted meal on a dry matter basis.[98] (A similar increase is obtained on an “as is” basis).[99] This is outside the range defined by claims 1 and 5. Furthermore, D2 does not state the N content of the coarse rapeseed meal that remains on the sieve, as required by claims 1, 4 and 5.
[98] N content equates to protein content divided by 6.25.
[99] Dr Saitoh states that the protein content of 37.1 on a dry matter basis is equal to a protein content of 33.2% on an as is basis; see Saitoh [167]. Following a similar conversion, I calculate that the protein content of 36.3% on a dry matter basis is equal to a protein content of 32.4% on an as is basis.
In relation to D4, although the chemical composition of the coarse rapeseed meal is stated in Table 1, the document is silent as to the composition of the fine rapeseed meal. The protein content of the coarse rapeseed meal and the “regular canola meal” (rapeseed meal raw material) in Table 1 is on a dry matter basis, whereas the claims define N content on an as is basis. There is no evidence before me to suggest that the meal fractions of D4 have the N content required by claims 1, 4 and 5.
Table 1 of D5 states the protein content of the regular rapeseed meal and the high protein (fine rapeseed meal) fraction for two experiments. Dr Saitoh states that the N content of the high protein fraction is 1.163 times (Experiment 1) and 1.134 times (Experiment 2) that of the regular material.[100] However, the N content of the coarse rapeseed meal (i.e. the fraction remaining on the sieve) is not stated. Dr Saitoh estimates that the coarse fraction N content is 0.912 or 0.928 times that of the regular material,[101] which is outside the range defined by claims 1 and 5.
[100] Saitoh [173].
[101] ibid., [179] – [181].
The prior art is also silent as to whether the coarse rapeseed meal that remains on the sieve is reduced in bitterness compared with the unsifted meal. Cargill submitted that this is an inevitable consequence of the sifting process, as the bitter substance sinapine is more abundant in the kernel than the hull, and the coarse fraction of sifted rapeseed meal will contain a higher content of hull and a lower content of kernel compared to the unsifted meal. However, Dr Mailer does not comment on the bitterness of the fractions produced in D2, D4 and D5. I am therefore not satisfied that the prior art provides clear and unmistakeable directions to produce a coarse rapeseed meal having reduced bitterness.
In regard to claim 2, D2, D4 and D5 do not disclose any rapeseed meal fractions prepared by sifting the commercial meal through a sieve having a size of from 48 to 60 mesh. Notwithstanding this, Dr Saitoh states that the N content of the fine rapeseed meal fraction of D2 is 5.3% on an as is basis,[102] which is outside the scope of the claim. In regard to claim 4, I further note that D5 only describes the sifting of rapeseed meal through a 32 mesh sieve.
[102] ibid., [167].
I therefore conclude that D2, D4 and D5 do not anticipate claims 1 – 5.
9.4 Conclusion on novelty
It has not been established that the claims lack novelty in view of the prior art.
10. Inventive step
Under subsections 7(2) and 7(3), an invention is taken to involve an inventive step unless it would have been obvious to the person skilled in the art in the light of the common general knowledge, either considered alone or together with the prior art.
The test for whether an invention is obvious 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.”[103]
[103] Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; 148 CLR 262 at 286.
In Aktiebolaget Hassle v Alphapharm Pty Ltd [104], the High Court accepted the approach taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [105] where Graham J 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 combination] in the expectation that it might well produce a [useful or better result]?” (emphasis in original)
[104] [2002] HCA 59; 212 CLR 411 at [53].
[105] [1970] RPC 157 at [187].
In AstraZeneca AB v Apotex Pty Ltd [106], the court held that in formulating the problem it is not permissible to incorporate information that is not available to the person skilled in the art either as common general knowledge or information available under subsection 7(3).
[106] [2014] FCAFC 99; 107 IPR 177.
10.1 Determining the problem
The parties agreed that the problem to be overcome was to produce a higher protein rapeseed (canola) meal. This is consistent with the common general knowledge in the art that meal with a high protein content is desirable.[107]
[107] Mailer-1 [27], [31].
10.2 Common general knowledge
The common general knowledge was considered by Emmett J:
“The common general knowledge is the technical background to the hypothetical skilled worker in the relevant art. It is not limited to material which might be memorised and retained at the front of the skilled workers mind but also includes material in the field in which he is working which he knows exists and to which he would refer as a matter of course. It might, for example, include:
·standard texts and handbooks;
·standard English dictionaries;
·technical dictionaries relevant to the field;
·magazines and other publications specific to the field.”[108]
[108] ICI Chemicals & Polymers Ltd v Lubrizol Corporation Inc [1999] FCA 345; 45 IPR 577 at [112].
The evidence indicates that the following matters are part of the common general knowledge:
·There are three commercial methods used to extract oil from rapeseed (canola seed): cold‑press extraction, expeller extraction and solvent extraction.[109] Of these, solvent extraction is the most widely used.[110]
·The hull (outer coat) of rapeseed is made up mostly of fibre and contains almost no protein.[111] Hulls are difficult to crush and tend to be quite light, and are therefore less likely to settle to the bottom of a sample of meal and pass through a sieve.[112]
·The kernel is the inner part of the rapeseed and is protein rich.[113] It is more easily crushed and will exist as a fine flour-like substance in canola or rapeseed meal.[114]
·Finer meal is easier for animals to digest.[115]
·Meal with a bitter taste is generally less palatable to animals.[116] Phenolic compounds that contribute to the bitter taste include sinapine and tannins.[117] Sinapine is more abundant in the kernel than the hull of the canola seed.[118]
[109] Mailer-1 [15].
[110] ibid., [18].
[111] ibid., [13], [50].
[112] ibid., [50].
[113] ibid., [13], [50].
[114] ibid., [50].
[115] ibid., [37].
[116] ibid., [29].
[117] Mailer-1 [29]; Exhibit RM-10.
[118] Mailer-1 [97].
10.3 Matters of routine
In order for claims 1 – 5 to lack an inventive step, it must be demonstrated that certain features of the claims would be arrived at as a matter of routine by the person skilled in the art seeking to solve the problem. Key features include:
·The use of solvent extraction to obtain the rapeseed meal raw material. As stated above, this extraction process is common general knowledge in the art. I am therefore satisfied that the use of this process would be a matter of routine for the skilled addressee.
·The use of a rapeseed meal raw material having a content of from 38.8 to 55.6% under a 32 mesh sieve.
·Obtaining coarse rapeseed meal and fine rapeseed meal fractions having the N contents defined by the claims.
10.4 Consideration of inventive step and the common general knowledge
Cargill submitted that claims 1 – 5 are not inventive in view of the common general knowledge. In summary, Cargill stated that:
·Solvent extraction is the most widely used oil extraction technique for extracting canola oil and the person skilled in the art would carry out this process to obtain a raw material.
·It is known that kernel particles of rapeseed meal are finer and contain more protein than the hull. Thus sifting of the raw material would at least partially separate the kernel and hull and produce a finer, higher protein meal below the sieve.
·It is known that the bitterness of rapeseed meal is primarily the result of the sinapine content, which is more predominant in the kernel. Therefore it would be apparent that the coarse fraction above the sieve would have reduced bitterness compared to the raw material, as well as lower protein content.
I consider that these statements by Cargill are consistent with the common general knowledge in the art. However, key to Cargill’s submissions on this ground is its reliance on the argument that the proportion of rapeseed meal raw material that passes through a 32 mesh sieve, and the particular N levels defined by claims 1 – 5, are arbitrary parameters that cannot contribute to an inventive step.
I have already established that these features are not arbitrary parameters and are of technical significance. There is no evidence that suggests that a rapeseed meal raw material with a content of from 38.8 to 55.6% under a 32 mesh sieve, and coarse rapeseed meal and fine rapeseed meal fractions having the N contents defined by the claims, were part of the common general knowledge.
Cargill have not established that the claims lack an inventive step on the basis of the common general knowledge alone.
10.5 Consideration of inventive step and prior art
Cargill submitted that claims 1 – 5 are not inventive in view of the Davin paper (D1), the Mwachireya Thesis (D2), the Keshavarz Thesis[119] (D3), the Mustafa paper (D4), the Kaminska paper (D5) and the Chibowska paper[120] (D8).
[119] Keshavarz, E., Preparation, Decolorization and Functional Properties of the Protein Isolates Extracted From Rapeseed Meal, The University of British Columbia, 1974.
[120] Chibowska, M. et al., Journal of Animal and Feed Sciences, 2000, 9, 371 – 378.
10.5.1 Davin paper (D1)
The disclosure of D1 is discussed in part 9.2. As previously indicated, the document does not clearly disclose the use of a solvent extraction process to obtain the rapeseed meal raw material. However, I have already established that the use of such a procedure is a matter of routine for the person skilled in the art.
Sample (0) of D1 is the only one which is non-milled. As discussed previously, the fraction of this sample that would pass through a 32 mesh (500 µm) sieve is approximately 15.2%. Dr Mailer states that:
“Whatever solvent extraction conditions were used to obtain the rapeseed meal referred to as Sample (0) in RM-3 [D1] would need to be substantially altered in order to produce meal that falls within the range set out in the claims of the Opposed Application.”[121]
[121] Mailer-1 [114].
Dr Saitoh states that the particle size distribution of Sample (0) is significantly biased towards larger particle sizes (3 – 4 mm).[122]
[122] Saitoh [129] – [130].
The evidence indicates that it would not be a matter of routine for the skilled addressee to obtain a non-milled rapeseed meal raw material having a content of 38.8 to 55.6% under a 32 mesh sieve.
I further note that Sample (0) is obtained by sifting through a series of sieves, in contrast to the present claims which define the use of a single sieve. Dr Mailer acknowledges this,[123] but does not indicate whether it would be a matter of routine to replace the series of sieves with a single sieve.
[123] Mailer-2 [81].
In relation to the protein content, Dr Mailer comments that:
“it is immediately apparent from RM-3 [D1] that fine rapeseed meal obtained by sifting generally has a higher protein content than coarse rapeseed meal.”[124]
[124] ibid.
However, he does not indicate whether it would be a matter of routine to obtain coarse rapeseed meal and fine rapeseed meal having a N content as defined in claims 1, 2, 4 and 5.
In relation to claim 3, the coarse rapeseed meal defined by the claim does not include fractions that pass through any one of a 35 to 48 mesh sieve and has reduced bitterness. The reduction in bitterness is determined by comparison with a rapeseed meal raw material obtained in a particular manner. Provided this requirement is satisfied, the exact nature of the substances contributing to the bitterness is not relevant.
There is no discussion of bitterness in D1. Dr Mailer states that in the canola seed industry, bitterness is generally measured by reference to the sinapine content.[125] Thus, a coarse fraction of rapeseed meal will, in most cases, have a reduced bitter flavour compared to the unsifted meal, as the coarse fraction generally contains a lower sinapine content compared to the unsifted meal.[126]
[125] Mailer-1 [123].
[126] ibid.
The question to consider is whether the person skilled in the art would, as a matter of routine, produce a coarse rapeseed meal having reduced bitterness, wherein the coarse meal does not include fractions passing through any one of a 35 to 48 mesh sieve.
As stated above, D1 describes the use of a series of sieves to sift the rapeseed meal, whereas claim 3 defines the use of a single sieve. Dr Mailer states that:
“The sinapine content of the sifted meal fractions described in RM-3 [D1] would depend on a number of factors including the extent to which the meal was milled, if at all, and the type of sieve through which the meal was sifted.”[127]
[127] Mailer-2 [89].
I further note that when discussing sinapine levels generally, Dr Mailer comments:
“Of course, the difference in sinapine levels in coarse rapeseed meal compared to unsifted meal will depend on a number of factors including the particle size distribution of the rapeseed meal raw material as well as the sifting conditions.”[128]
[128] Mailer-1 [123].
Given that Sample (0) has a different particle size distribution (i.e. 15.2% under a 32 mesh sieve), and this material is sieved using a different procedure, I am not satisfied that the skilled addressee would, as a matter of routine, produce a coarse rapeseed meal defined by claim 3.
It has not been established that there is a lack of inventive step in view of D1.
10.5.2 Mwachireya Thesis (D2), Mustafa paper (D4) and Kaminska paper (D5)
D2, D4 and D5 are discussed above in part 9.3. The documents do not clearly disclose the use of a solvent extraction process to obtain the rapeseed meal raw material. However, I have already established that the use of such a procedure is a matter of routine for the person skilled in the art.
The rapeseed meal raw material in D2 and D4 is milled prior to sifting. There is no evidence that the skilled addressee would as a matter of routine omit the milling step. D2 and D4 do not state the content of meal that passes through a 32 mesh sieve, whilst the rapeseed meal raw material in D5 has a content of about 35% under a 32 mesh sieve, which is less than that defined by claims 1 – 5. Dr Mailer does not indicate whether, based on the teachings of the prior art, it would be a matter of routine to obtain a rapeseed meal raw material having the content under a 32 mesh sieve in the range defined by the claims.
In relation to D2 and D4, there is no evidence before me to suggest that, based on the teachings of these documents, it would be a matter of routine to obtain coarse rapeseed meal and fine rapeseed meal having a N content as defined in claims 1, 2, 4 and 5. Similarly, there is no evidence to indicate that based on the disclosure of D5, it would be a matter of routine to obtain a fine rapeseed meal having a N content as defined in claim 2, or a coarse rapeseed meal having a N content as defined in claims 1, 4 and 5.
As discussed previously in part 9.3, D2, D4 and D5 do not discuss the bitterness of either the rapeseed meal raw material or the coarse rapeseed meal that remains on the sieve. As outlined in part 10.5.1 above, Dr Mailer states that the sinapine content of sifted meal fractions will depend on a number of factors including the extent to which the meal is milled, and that the difference in sinapine levels in the coarse rapeseed meal compared to unsifted meal will depend on a number of factors including the particle size distribution of the rapeseed meal raw material.
Given that there is no evidence that the rapeseed meal raw material in D2 and D4 has the required particle size distribution (i.e. 38.8 to 55.6% under a 32 mesh sieve), and this material is milled prior to sieving, I am not satisfied that the skilled addressee would, as a matter of routine, produce a coarse rapeseed meal defined by claim 3. Similarly, as the rapeseed meal raw material in D5 has a different particle size distribution, namely a content of about 35% under a 32 mesh sieve, I am not satisfied that the skilled addressee would, as a matter of routine, produce a coarse rapeseed meal defined by claim 3.
It has not been established that there is a lack of inventive step in view of D2, D4 or D5.
10.5.3 Keshavarz Thesis (D3)
D3 describes the sifting of rapeseed meal through a 60 mesh sieve to remove the seed coat.[129] Dr Mailer confirms that the hull has been removed,[130]whereas the present claims require that the hull be intact. I also note that the use of a 60 mesh sieve is only relevant in respect of claim 2. In this regard, D3 states that the sieving process increased the protein content of the starting material to 50%.[131] Dr Saitoh equates this to a N content of 8%, which is outside the scope of claim 2.[132]
[129] D3, page 18.
[130] Mailer-1 [57]; note that RM-5 is equivalent to D3.
[131] D3, page 18.
[132] Saitoh [168].
Other than this disclosure, D3 is silent with respect to the other features defined by claims 1 – 5. In particular, there is no disclosure of whether the starting rapeseed meal has a content of from 38.8 to 55.6% under a 32 mesh sieve, the N content of the coarse fraction remaining on the sieve, the relative N content of the coarse rapeseed meal and the fine rapeseed meal compared with the starting rapeseed meal, and the bitterness of the coarse fraction and the starting rapeseed meal. There is no evidence before me to suggest that the person skilled in the art would, as a matter of routine, arrive at the claimed invention based on the teachings of D3. In particular, I note that the evidence in relation to this document is somewhat scant.
It has not been established that the claims lack an inventive step in view of D3.
10.5.4 Chibowska paper (D8)
D8 relates to the use of rapeseed meal as feed for chickens. Commercial solvent extracted rapeseed meal is milled and then sifted through sieves of 150, 270 and 450 µm diameter to produce 3 fractions – flour, bran and hull.[133] This is in contrast to the present claims which do not include a milling step after the extraction process and use only a single sieve. I further note that the content of the rapeseed meal under a 32 mesh sieve is not stated.
[133] D8, page 372, Material and Methods, first paragraph.
The protein content of the various fractions is given in Table 1. Dr Saitoh states that the N content of the flour fraction is 1.16 times that of the raw material.[134] However, I note that the values in Table 1 are reported on a dry matter basis, whereas the present claims define N content on an as is basis. A further complication in determining the N content is the fact that D8 produces 3 fractions, as opposed to the 2 fractions of the present claims.
[134] Saitoh [198].
Dr Mailer does not indicate whether, based on the teachings of D8, it would be a matter of routine to obtain a rapeseed meal raw material having a content under a 32 mesh sieve in the range defined by the claims. Furthermore, there is no evidence before me to suggest that it would be a matter of routine to obtain coarse rapeseed meal and fine rapeseed meal having a N content as defined in claims 1, 2, 4 and 5.
Although D8 reports the tannin content of the various fractions,[135] there is no discussion of the bitterness of either the fractions or the starting rapeseed meal. I have previously considered the factors that affect bitterness. Given that there is no evidence that the rapeseed meal raw material in D8 has the required particle size distribution (i.e. 38.8 to 55.6% under a 32 mesh sieve), and this material is milled prior to sieving through multiple sieves, I am not satisfied that the skilled addressee would, as a matter of routine, produce a coarse rapeseed meal defined by claim 3.
[135] D8, Table 1. Tannin is another bitter substance found in rapeseed meal; see Exhibit RM-10.
It has not been established that the claims lack an inventive step in view of D8.
10.6 Conclusion on inventive step
It has not been demonstrated that the claims lack an inventive step in view of the prior art.
11. Manner of manufacture
Paragraph 18(1)(a) requires that an invention must be a manner of manufacture within the meaning of section 6 of the Statute of Monopolies. In D’Arcy v Myriad Genetics Inc,[136] it was stated:
“The legislative history of the requirement for patentability imposed by s 18(1)(a) of the Act has been set out in previous decisions of this Court [40]. The question posed by the application of s 18(1)(a) may be framed as in NRDC [41]:
‘Is this a proper subject of letters patent according to the principles which have been developed for the application of s 6 of the Statute of Monopolies?’
That question is to be answered according to a common law methodology under the rubric of ‘manner of manufacture’ as developed through the cases, but consistently with ‘a widening conception of the notion [which] has been a characteristic of the growth of patent law.’ [42] That widening conception is a necessary feature of the development of patent law in the 20th and 21st centuries as scientific discoveries inspire new technologies which may fall on or outside the boundaries of patentability set by the case law which predated their emergence.”
[136] [2015] HCA 35; 115 IPR 1 at [18].
As indicated in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd,[137] the manner of manufacture requirement will not be met if, on the face of the specification, the claimed subject matter is not new, or lacks the necessary quality of inventiveness.
[137] [1995] HCA 15; (1995) 183 CLR 655 at 663 – 664.
Cargill’s submissions on manner of manufacture initially discuss “use of a known material” and “new use of a known substance”.[138] However, the crux of their argument is that the claims relate to no more than the application of a known process (sifting) to a known material (rapeseed meal raw material) to produce an expected result (a higher protein fine rapeseed meal and a lower protein coarse rapeseed meal).[139]
[138] Cargill submissions at [126] – [128].
[139] ibid., [132], [139].
I firstly note that this argument is not in the category of “new use of known substance”. The present claims are directed to methods for producing particular coarse rapeseed meal and fine rapeseed meal fractions and the fractions per se. I acknowledge that rapeseed meal is known and the process of sifting to produce fractions is known. However, the rapeseed meal raw material and the coarse and fine rapeseed meal fractions, having the distinct properties as defined by the claims, are not known.
It has not been established that the claimed invention is not a manner of manufacture.
12. Support
Subsection 40(3) states that the claims must be supported by matter disclosed in the specification. As discussed in CSR Building Products Limited v United States Gypsum Company[140] (CSR), with reference to Fuel Oils/Exxon T 0409/91 (Exxon), this requires that the scope of the claims “should correspond to the technical contribution to the art”.[141] As stated in Exxon:
“in other words it is the definition of the invention in the claims that needs support. In the Board’s judgement, this requirement reflects the general legal principle that the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported, or justified. This means that the definitions in the claims should essentially correspond to the scope of the invention as disclosed in the description. In other words, as was stated in Decision T 26/81, the claims should not extend to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art. Consequently, a technical feature which is described and highlighted in the description as being an essential feature of the invention, must also be a part of the independent claim or claims defining this invention”.[142] (emphasis in original, citations omitted)
[140] [2015] APO 72.
[141] CSR at [109].
[142] Exxon at [3.3].
The steps for determining whether the claims are supported were summarised in CSR as:
“i) construe the claims to determine the scope of the invention as claimed,
ii)construe the description to determine the technical contribution to the art, and
iii)decide whether the claims are supported by the technical contribution to the art.”[143]
[143] CSR at [115].
Cargill submitted that for several reasons there is a lack of support. In particular, there is no support for:
·claims which do not specify the nature of the rapeseed meal raw material, including the specific solvent extraction conditions;
·claims which do not clearly exclude milling;
·claims which cover the range of 38.8 to 55.6% with regard to the proportion of raw material passing through a 32 mesh sieve;
·claims which cover the specified range of N levels for the fine and coarse rapeseed meals; and
·claims which include the use of sieves having opening sizes outside of the Tyler mesh classification.
I note that in relation to milling and the use of sieves outside the Tyler mesh classification, I have already construed the claims such that a milling step may be included, but only when that step forms part of the oil extraction process, and that the claims define only the use of Tyler sieves.
(a) Determine the scope of the invention as claimed
The scope of claims 1 – 5 was considered in detail in part 7. As stated previously, claims 1 and 5 are directed to a method for producing rapeseed meal via the steps of:
·extracting oil from hulled rapeseeds;
·obtaining a rapeseed meal raw material with a content of from 38.8 to 55.6% under a 32 mesh sieve, a portion of which is granulated by hull and kernel;
·sifting the raw material through a single sieve in a size of from 32 to 48 mesh to obtain:
oa coarse fraction having reduced bitterness and a defined N content; and
oa fine fraction having a defined N content.
Claims 2 and 4 define a fine rapeseed meal and a coarse rapeseed meal having reduced bitterness respectively. The meal is obtained via a particular process and has a defined N content. Claim 3 defines a coarse rapeseed meal that has reduced bitterness and does not include certain fractions that pass through a particular sieve.
(b) Determine the technical contribution to the art
J-Oil submitted that the technical contribution to the art is obtaining two useful fractions from the rapeseed meal raw material. Thus, the method produces a fine rapeseed meal fraction and a coarse rapeseed meal fraction, each of which has advantageous properties when compared with the raw material.
The specification states that the rapeseed meal that is used as the raw material in the process is the residue remaining after oil is extracted from rapeseeds.[144] The specification indicates that rapeseed meal obtained after the oil extraction process has unique granularity distribution.[145] Sifting of the rapeseed meal raw material produces a fine rapeseed meal and a coarse rapeseed meal, both of which are industrial useful and have improved properties over the raw material.[146]
[144] Specification at [0021].
[145] ibid., [0022].
[146] ibid., [0016] – [0019.]
The specification contains examples of the rapeseed meal raw material, and the fine and coarse rapeseed meal fractions derived therefrom. Annex B provides a summary of the examples as they relate to the features defined by the claims.
In relation to the rapeseed meal raw material, Examples 1 and 3 have a content of 38.8 and 55.6% under a 32 mesh sieve respectively, with an intermediary value obtained in Example 2. I note that the content under a 32 mesh sieve is not stated for Example 4, which reports the mean N content based on 23 samples. However, in view of the values obtained for Examples 1 – 3, and the fact that the rapeseed meal of Example 4 is produced by an operation similar to that in Example 1,[147] I consider it more reasonable than not that the samples in Example 4 would have a comparable content under a 32 mesh sieve. In relation to the N content, Examples 1 – 3 describe fine and coarse rapeseed meal fractions having N contents within the range of 6.64% to 7.27% and 4.90% to 5.80% respectively. Example 4 gives the mean N content based on 23 samples and also the increase and decrease in N content relative to the rapeseed meal raw material.
[147] ibid., [0052].
I therefore consider that the technical contribution to the art is that certain rapeseed meal raw materials when sifted will produce a fine rapeseed meal and a coarse rapeseed meal, each of which has useful properties.
(c) Are the claims supported?
The question to consider is whether the scope of the claims corresponds to the technical contribution to the art.
With respect to the rapeseed meal raw material, the claimed range of 38.8 to 55.6% content under a 32 mesh sieve reflects the values obtained for Examples 1 and 3 respectively. In relation to the N contents defined by the claims, those defined in claims 1 and 5 reflect the mean values obtained in Example 4, whilst those defined in claims 2 and 4 are also derived from the examples.
In the case of claims 1, 2, 4 and 5, the rapeseed meal raw material is obtained after extracting oil from hulled rapeseeds, and a portion of the raw material is granulated by hull and kernel. That raw material is then sifted to produce a coarse rapeseed meal and a fine rapeseed meal (claims 1 and 5), a fine rapeseed meal (claim 2) or a coarse rapeseed meal (claim 4).
I consider that the scope of the features discussed above with respect to claims 1, 2, 4 and 5 corresponds to the technical contribution to the art, namely that sifting of the rapeseed meal raw material produces a coarse rapeseed meal and a fine rapeseed meal, each of which has useful properties.
Claim 3 is directed to a coarse rapeseed meal having reduced bitterness when compared with rapeseed meal raw material including certain fractions. The raw material, which functions as the “standard” against which bitterness is measured, is obtained after extracting oil from hulled rapeseeds, has a content of 38.8 to 55.6% under a 32 mesh sieve and a portion is granulated by hull and kernel. However, the coarse rapeseed meal defined by the claim is not necessarily derived by sifting this rapeseed meal raw material.
The technical contribution to the art is that certain rapeseed meal raw materials when sifted will produce a fine rapeseed meal and a coarse rapeseed meal, each of which has useful properties. However, the scope of claim 3 is broader than this and does not correspond to the technical contribution to the art, in that the raw material from which the coarse rapeseed meal is derived is not specified.
(d) Conclusion on support
The scope of claim 3 is not supported by the technical contribution to the art.
13. Clear enough and complete enough disclosure
Paragraph 40(2)(a) requires that a complete specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art. The principles for determining whether a specification provides the requisite disclosure are provided in CSR. The Delegate stated:
“In order to decide whether a specification provides a disclosure as required by section 40(2), it is necessary to:
i)construe the claims to determine the scope of the invention as claimed,
ii)construe the description to determine what it discloses to the person skilled in the art, and
iii)decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.”[148]
[148] CSR [95].
The Delegate in CSR made reference to Eli Lilly and Co v Human Genome Sciences, Inc[149] and the approach approved by Kitchin J:
“The sub-section, by using the words, clearly enough and completely enough, contemplates that patent specifications need not set out every detail necessary for performance, but can leave the skilled man to use his skill to perform the invention. In so doing he must seek success. He should not be required to carry out any prolonged research, enquiry or experiment. He may need to carry out the ordinary methods of trial and error, which involve no inventive step and generally are necessary in applying the particular discovery to produce a practical result. In each case, it is a question of fact, depending on the nature of the invention, as to whether the steps needed to perform the invention are ordinary steps of trial and error which a skilled man would realise would be necessary and normal to produce a practical result.”[150]
and
“Even though a reasonable amount of trial and error is permissible, when it comes to sufficiency of disclosure, for example in an unexplored field or where there are many technical difficulties, the skilled person has to have at his disposal, either in the specification or on the basis of his common general knowledge, adequate information leading necessarily and directly towards success through the evaluation of initial failures.”[151]
[149] [2008] EWHC 1903; [2008] RPC 29.
[150] ibid., [241].
[151] ibid., [243].
Cargill submitted that:
·the specification does not disclose how rapeseed meal raw material is to be obtained with a content of from 38.8 to 55.6% under a 32 mesh sieve;
·the specification does not provide information as to how to obtain the N concentrations of the fine and coarse rapeseed meals of claims 1 and 5;
·the examples do not appear to make mathematical sense with respect to the total N content (when comparing the N content of the rapeseed meal raw material with that of the coarse rapeseed meal and fine rapeseed meal fractions); and
·no information is given about the preparation of the rapeseed meal raw material, including conditions of the solvent extraction process, or whether a particular starting material can be used to produce the invention.
(a) Determine the scope of the invention as claimed
As stated above, claims 1 and 5 are directed to a method for producing rapeseed meal via the steps of:
·extracting oil from hulled rapeseeds;
·obtaining a rapeseed meal raw material with a content of from 38.8 to 55.6% under a 32 mesh sieve, a portion of which is granulated by hull and kernel;
·sifting the raw material through a single sieve in a size of from 32 to 48 mesh to obtain:
oa coarse fraction having reduced bitterness and a defined N content; and
oa fine fraction having a defined N content.
Claims 2 and 4 define a fine rapeseed meal and a coarse rapeseed meal having reduced bitterness respectively. The meal is obtained via a particular process and has a defined N content. Claim 3 defines a coarse rapeseed meal that has reduced bitterness and does not include certain fractions that pass through a particular sieve.
(b) Determine what the description discloses
The description provides information on sifting rapeseed meal raw material to produce fine rapeseed meal and coarse rapeseed meal fractions having particular properties. As stated previously, a summary of the examples is provided in Annex B.
(c) Does the specification provide an enabling disclosure of all the things that fall within the scope of the claims?
The specification indicates that the rapeseed meal that is used as the raw material in the process is the residue remaining after oil is extracted from rapeseeds.[152] The oil is extracted from the rapeseeds via a press and the oil remaining in the pomace is then extracted using an organic solvent.[153] In terms of the rapeseed itself, the specification states that the variety is not particularly limited, and any rapeseed can be used.[154] I consider that these parts of the specification provide an enabling disclosure for the extraction process defined by the claims.
[152] Specification at [0021].
[153] ibid., [0022].
[154] ibid., [0021].
In Examples 1 – 3, the rapeseed meal raw material obtained after the extraction process has a content of from 38.8 to 55.6% under a 32 mesh sieve. This range of values reflects that defined by the claims. As discussed previously, on balance I consider it more reasonable than not that the rapeseed meal samples of Example 4 would have a similar content.
Dr Mailer states that:
“The particle size distribution of rapeseed meal would be influenced by a number of factors, in particular, the growing conditions of the rapeseed, the clearance of the flanking rollers and the conditions at the screw pressing stage. However, the Opposed Application does not specify any of these factors. As such, based on the information provided in the Opposed Application, I would not be able to produce a rapeseed raw material having a content from 38.8 to 55.6% under a 32 mesh sieve unless I carried out extensive testing of different cultivars and/or processing conditions. The time and costs involved in performing such testing would be excessive and not commercially viable, and it would therefore be unreasonable for an oilseed company to conduct such testing.”[155]
and
“it would present an excessive burden for that person [those skilled in the art] to test different pressing and oil extraction conditions in an attempt to produce meal having a certain particle size distribution.”[156]
[155] Mailer-1 [113].
[156] Mailer-2 [61].
Dr Mailer makes reference to Sample (0) of D1 (RM-3), which has a content under a 32 mesh sieve of 15.2%, and states that the solvent extraction conditions used to obtain the sample would “need to be substantially altered in order to produce meal that falls within the range set out in the claims”.[157]
[157] Mailer-1 [114].
Dr Saitoh states that “it is only necessary to measure the content below the sieve by using the 32 mesh sieve, and this is not an excessive burden to those skilled in the art.”[158] He further comments that:
“To check the distribution of the rapeseed meal raw material below the 32 mesh sieve would be a routine step for a worker in the field of oil-seed processing.”[159]
[158] Saitoh [92].
[159] ibid., [94].
I acknowledge that the prior art discloses one example of rapeseed meal that does not have the required content under a 32 mesh sieve, however the specification provides several examples where this requirement is satisfied. I also consider that whilst there may be some work involved in establishing whether a particular rapeseed meal has a content of from 38.8 to 55.6% under a 32 mesh sieve, the process of sifting is well known and commonly used in the art. As such, I do not consider that this represents an undue burden for the skilled addressee.
In relation to the N content of the sifted meal, Dr Mailer states that this would be dependent on the variety of rapeseed used and the conditions under which it is grown.[160] He comments:
“I agree that a sieve can be used to divide meal into two fractions, each having different nitrogen contents. … However, the nitrogen content of the sifted meal will ultimately be dictated by the nitrogen content of the starting material as well as many other variables including the particle size of the unsifted meal, which itself would be determined by the oil extraction conditions, and the choice of sieve and sifting conditions.”[161]
[160] Mailer-1 [77].
[161] ibid., [83].
Dr Mailer comments that only the sifted fractions obtained using a 48 mesh sieve from Example 1 have the relative N content set out in claims 1 and 5[162] and, depending on the nitrogen content of the unsifted meal, “it might not be possible to produce sifted rapeseed meal having the nitrogen content set out in claims 2 and 4”.[163]
[162] ibid., [120].
[163] Mailer-2 [126].
Dr Saitoh acknowledges that the N content of the rapeseed meal varies depending on the rapeseeds, harvesting period and the like.[164] However, he states that:
“Since Example 4 was conducted with 23 samples which were different lots from each other, it fully covers many different factors.”[165] (emphasis in original)
[164] Saitoh [57].
[165] ibid., [60].
He confirms that the N contents defined in claims 1 and 5 are based on “the mean values of the sifting results of the 23 samples of rapeseed meal raw material different in production area and manufacturing plant” of Example 4.[166]
[166] ibid., [100].
As discussed above, the N contents defined in claims 1 and 5 reflect the mean values obtained in Example 4, whilst those defined in claims 2 and 4 are also derived from the examples. I further note that the results for Example 4 are obtained from a range of samples and consequently take into consideration any variability in the rapeseed meal raw material. As the claimed N content merely reflects the results obtained for the preparative examples, I consider that the specification necessarily provides an enabling disclosure of all the things that fall within the scope of the claims.
Dr Mailer further comments that as sifting does not add or remove N to rapeseed meal, the relative N contents of the coarse and fine meal fractions specified in claims 1 and 5, when factored by their proportion in the rapeseed meal raw material, must add to 1.[167] Based on 8 different scenarios which cover the range of parameters set out in claims 1 and 5, Dr Mailer calculates that the sum of the relative N contents is greater than 1.[168]
[167] Mailer-2 [63].
[168] ibid., [107].
I note that Dr Mailer’s hypothetical calculations are based on the lower and upper limits defined in claims 1 and 5, namely 0.95 and 0.986 for the coarse rapeseed meal and 1.125 and 1.199 for the fine rapeseed meal. As discussed previously, these limits are based on the mean results obtained in Example 4. Within this range of values, one would expect that the sum of the relative N contents would equate to 1 depending on the proportion of the coarse and fine rapeseed meal fractions.
In relation to claims 3 and 4, Dr Mailer states that:
“It is unclear to me how ‘reduced in bitterness’ should be measured in order to determine whether a particular sample of meal fell within the bounds of this claim. In the canola seed industry, ‘bitterness’ is generally measured by reference to sinapine content since this chemical largely contributes to the bitter taste of the meal. However, sinapine levels are not provided in the Opposed Application.”[169]
[169] Mailer-1 [123].
As I have discussed previously, the claims require that there is a reduction in bitterness relative to a particular rapeseed meal raw material. I note that Example 1 describes a coarse rapeseed meal that does not include fractions passing through a 35 or 48 mesh sieve, and which has reduced bitterness as evaluated by taste tests.[170]
[170] Specification at [0038] – [0045].
However, as I have found that claim 3 lacks support, the question arises as to whether the specification provides an enabling disclosure for this claim. Claim 3 defines a coarse rapeseed meal having reduced bitterness in comparison with a rapeseed meal raw material. It could be argued that it would be an undue burden for the skilled addressee to obtain a coarse rapeseed meal fraction from an unspecified raw material, and then test that fraction in order to determine whether it has reduced bitterness. However, there is no evidence before me on this point. Consequently, I am not satisfied that it has been established that the specification does not provide an enabling disclosure for claim 3.
I therefore conclude that the specification provides an enabling disclosure of all the things that fall within the scope of the claims.
(d) Conclusion on clear enough and complete enough disclosure
It has not been established that the specification does not provide a clear enough and complete enough disclosure.
14. Utility
Paragraph 18(1)(c) requires that the claimed invention be useful. The requirements for utility were considered by the Full Court of the Federal Court in H Lundbeck A/S v Alphapharm Pty Ltd:
“A claim is bad if it covers means that will not produce the desired result, even if a skilled person would know which means to avoid. That is to say, everything that is within the scope of a claim must be useful, otherwise the claim will fail for inutility”.[171]
[171] [2009] FCAFC 70; 81 IPR 228 at [81].
As discussed in Ronneby Road Pty Ltd v ESCO Corporation[172], everything that is within the scope of a claim must attain the result promised for the invention by the patentee.
[172] [2016] FCA 588 at [65] – [66].
Cargill submitted that one of the promises made in the specification is that the method produces little to no waste. Dr Mailer states that:
“Moreover, simply dividing a batch of meal into a coarse fraction and a fine fraction would not reduce ‘waste’ based on my understanding of this term in the context of the Opposed Application. On the contrary, if the term ‘waste’ refers to meal having a particularly low protein content, the sifting methods might generate more ‘waste’. For example, if a batch of meal had a protein content that was already sitting just above the lower limit of the AOF’s [Australian Oilseeds Federation] trading standards, sifting that meal would simply produce a coarse fraction having a lower protein content falling outside those standards. This would significantly devalue a fraction of the meal.”[173]
[173] Mailer-1 [71].
I consider the fact that a fraction of meal is “devalued” does not automatically mean that the meal would be discarded as “waste”. As stated in the specification, the coarse rapeseed meal has improved palatability and can also be used as a fertiliser.[174] The specification further indicates that the high fibre content of the coarse fraction makes it favourable for use as feed for cows and soil conditioners requiring fibre.[175]
[174] Specification at [0018].
[175] ibid., [0029].
Dr Saitoh also comments that:
“the decrease in the nitrogen content of the coarse rapeseed meal is merely 0.95 times to 0.986 times relative to that of the rapeseed meal raw material, which is almost comparable to the nitrogen content of the rapeseed meal raw material. That is, even though the nutritional value of the fine rapeseed meal increases, the nutritional value of the coarse rapeseed meal is maintained at a level somewhat lower than that of the rapeseed meal raw material. This small decrease in nitrogen content can create an effect of reducing nitrogen-containing substances to be discharged when used as feed for animals that like fibrous diets and is therefore beneficial. In addition, the coarse rapeseed meal will have reduced bitterness while maintaining the nutritional value as described in Para [0028] and Table 6 of the J-Oil Application. The small decrease in nitrogen content in combination with reduced bitterness makes the coarse rapeseed meal preferable as feed for livestock that dislike bitter tastes.”[176]
[176] Saitoh [18].
Cargill further submitted that following the instructions in the specification does not always produce a coarse and fine fraction having the characteristics indicated in claims 1 and 5. Hence the claims do not fulfil the promise of providing coarse and fine fractions having the described characteristics.
As I discussed previously, Example 1 and Example 4 described coarse and fine rapeseed meal fractions having the N contents defined in claims 1 and 5. Further, coarse and fine rapeseed meal fractions that do not have the defined characteristics do not fall within the scope of the claims.
It has not been demonstrated that there is a lack of utility.
15. Conclusion
Claim 3 lacks support. This deficiency could be addressed by amendment. It is therefore appropriate to allow J-Oil a period of two months from the date of this decision to file amendments.
16. Costs
Both parties submitted that costs should follow the event. Cargill have succeeded in the opposition on the ground of support. I see no reason to depart from the normal approach that costs follow the event. I award costs in accordance with Schedule 8 against J-Oil.
Dr M-A. Fam
Delegate of the Commissioner of PatentsAnnex A – Claims of the specification
- A method for producing rapeseed meal, consisting of the steps of:
performing oil extraction process comprising the steps of:
extracting oil from hulled rapeseeds by a press and obtaining a pomace; and
extracting the oil remaining in the pomace using an organic solvent;
obtaining a rapeseed meal raw material that has a content of from 38.8 to 55.6% under a 32 mesh sieve and having a nitrogen content, and wherein a portion of the rapeseed meal raw material is granulated by hull and kernel; and
sifting the rapeseed meal raw material through a sieve in a size of from 32 to 48 mesh to separate into:
a coarse rapeseed meal which has a grain size in which grains remain on the mesh sieve, has a coarse rapeseed meal nitrogen content 0.95 to 0.986 times the nitrogen content of said rapeseed meal raw material, and is reduced in bitterness in comparison with the rapeseed meal raw material; and
a fine rapeseed meal which has a grain size in which grains pass through the mesh sieve, and has a fine rapeseed meal nitrogen content 1.199 to 1.125 times the nitrogen content of the rapeseed meal raw material.- A fine rapeseed meal wherein the fine rapeseed meal is obtained by sifting a rapeseed meal raw material through a mesh sieve in a size of from 48 to 60 mesh, and has a grain size that passes through the 48 to 60 mesh sieve and a nitrogen content of from 6.64% to 7.27%, and
wherein said rapeseed meal raw material is obtained after oil extraction process comprising the steps of:
extracting oil from hulled rapeseeds by a press thereby producing a pomace, and
extracting the oil remaining in the pomace by an organic solvent, and
has a content of from 38.8 to 55.6% under a 32 mesh sieve; and
wherein a portion of the rapeseed meal raw material is granulated by hull and kernel.- A coarse rapeseed meal reduced in bitterness in comparison with rapeseed meal raw material including fractions passing through any of 35 to 48 mesh sieves,
wherein the coarse rapeseed meal does not include fractions passing through any of 35 to 48 mesh sieves, and
wherein the rapeseed meal raw material is obtained after oil extraction process comprising the steps of:
extracting oil from hulled rapeseeds by a press thereby producing a pomace, and
extracting the oil remaining in the pomace by an organic solvent; and
has a content of from 38.8 to 55.6% under a 32 mesh sieve; and
wherein a portion of the rapeseed meal raw material is granulated by hull and kernel.- A coarse rapeseed meal reduced in bitterness in comparison with rapeseed meal raw material, wherein the coarse rapeseed meal is obtained by sifting the rapeseed meal raw material through any of 35 to 48 mesh sieves, has a grain size that remains on the 35 to 48 mesh sieve, and has nitrogen content from 4.90% to 5.80%,
wherein said rapeseed meal raw material is obtained after oil extraction process comprising the steps of:
extracting oil from hulled rapeseeds by a press thereby producing a pomace, and
extracting the oil remaining in the pomace by an organic solvent; and
has a content of from 38.8 to 55.6% under a 32 mesh sieve; and
wherein a portion of the rapeseed meal raw material is granulated by hull and kernel.- A method for producing rapeseed meal adjusted in nitrogen content consisting of the steps of:
performing oil extraction process comprising the steps of:
extracting oil from hulled rapeseeds by a press and obtaining a pomace; and
extracting the oil remaining in the pomace using an organic solvent;
obtaining a rapeseed meal raw material that has a content of from 38.8 to 55.6% under a 32 mesh sieve and having a nitrogen content, and wherein a portion of the rapeseed meal raw material is granulated by hull and kernel;
sifting rapeseed meal raw material through a sieve in a size of from 32 to 48 mesh to separate into
a coarse rapeseed meal which has a grain size in which grains remain on the mesh sieve, and has a coarse rapeseed meal nitrogen content 0.95 to 0.986 times the nitrogen content of said rapeseed meal raw material, and
a fine rapeseed meal which has a grain size in which grains pass through the mesh sieve, and has a fine rapeseed meal nitrogen content 1.125 to 1.199 times the nitrogen content of the rapeseed meal raw material.Annex B – Examples
Example 1 Example 2 Example 3 Example 4 Claim 1
- 38.8 to 55.6% under 32 mesh sieve
- raw meal sifted through 32 to 48 mesh sieve[177]
- coarse meal N content 0.95 to 0.986
- coarse meal reduced bitterness
- fine meal N content 1.125 to 1.199
P (38.8)
O (series)
P (48M)[178]
P
P (48M)[179]P (42.6)
O (series)
O
N/S
OP (55.6)
O (series)
O
N/S
ON/S
P
P
N/S
PClaim 2
- 38.8 to 55.6% under 32 mesh sieve
- raw meal sifted through 48 to 60 mesh sieve
- fine meal N content 6.64% to 7.27%
P (38.8)
O (series)
P[180]P (42.6)
O (series)
P[181]P (55.6)
O (series)
P[182]N/S
P
P[183]Claim 3
- 38.8 to 55.6% under 32 mesh sieve
- coarse meal reduced bitterness
- coarse meal does not include fractions passing through any one of 35 to 48 mesh sieve
P (38.8)
PP
P (42.6)
N/SP
P (55.6)
N/SP
N/S
N/SP
Claim 4
- 38.8 to 55.6% under 32 mesh sieve
- raw meal sifted through 35 to 48 mesh sieve
- coarse meal reduced bitterness
- coarse meal N content 4.90% to 5.80%
P (38.8)
O (series)
P
P[184]P (42.6)
O (series)
N/S
P[185]P (55.6)
O (series)
N/S
P[186]N/S
P
N/S
PClaim 5
- 38.8 to 55.6% under 32 mesh sieve
- raw meal sifted through 32 to 48 mesh sieve
- coarse meal N content 0.95 to 0.986
- fine meal N content 1.125 to 1.199
P (38.8)
O (series)
P (48M)[187]
P (48M)[188]P (42.6)
O (series)
O
OP (55.6)
O (series)
O
ON/S
P
P
P[177] At the hearing J-Oil confirmed the use of a series of sieves in Examples 1 – 3 and a single sieve in Example 4.
[178] Mailer-1 [120].
[179] ibid.
[180] 7.27% (below 60 M).
[181] 7.16% (below 60M).
[182] 6.73% (below 60M).
[183] 7.129% (lower fraction 60M).
[184] Saitoh [103].
[185] ibid.
[186] ibid.
[187] Mailer-1 [120].
[188] ibid.
N/S = Not stated
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