Centaur Nickel Pty Ltd v QNI LTD
[2000] APO 65
•31 October 2000
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Petty Patent : No. 701829 in the name of CENTAUR NICKEL PTY LIMITED
Title: Selective Precipitation of Nickel and Cobalt
Action: Application under Section 69 for an extension of term of the petty patent; notice by QNI LIMITED under Section 28
Decision: Issued .
Abstract
The informant QNI Limited was unable to establish that Petty Patent 701829 was invalid on
the grounds raised in the Section 28 notice. Grounds of invalidity on the basis of Section 40/
Fair Basis, Novelty, Inventive Step and Manner of Manufacture/Inventiveness not
established.
Extension of term of Petty Patent 701829 granted under Section 69 and regulation 6.6.
Costs awarded in favour of the patentee Centaur Nickel Pty Limited and against the
informant QNI Limited.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Petty Patent No. 701829 in the name of CENTAUR NICKEL PTY LIMITED, application under Section 69 for an extension of term of the petty patent and notice by QNI LIMITED under Section 28.
BACKGROUND
Petty Patent application 760951/98 was filed by Centaur Nickel Pty Limited (Centaur) on 10 July 1998 claiming priority from provisional application PO 8371 filed on 1 August 1997. The patent application was accepted on 21 December 1998 and accorded No. 701829. The petty patent was sealed on 4 February 1999. QNI Limited (QNI) filed a notice under Section 28 of the Patents Act 1990 on 23 December 1999 giving notice of matters affecting the validity of patent 701829. Centaur filed for an extension of term of its petty patent on 8 September 1999.
The matter was heard in Canberra on 6 July 2000. Mr Gary Nock, patent attorney of Freehills Carter Smith & Beadle, Sydney, represented the patentee accompanied by Mr David White, inventor and an employee of the patentee. Mr David Tadgell, patent attorney of Phillips Ormonde & Fitzpatrick, Melbourne, represented the informant QNI.
FURTHER EVIDENCE
At the hearing the informant sought to introduce further evidence. As the patentee had not seen the evidence and would require time to respond, I asked the informant to formally file a request to serve further evidence. The request was filed on 18 July 2000, and the evidence was filed on 28 July 2000. The request was allowed on 7 August 2000.
THE SPECIFICATION
The specification indicates that the described invention relates to a method for precipitating nickel and cobalt from acidic aqueous solutions and that this method is suitable for use in the recovery of nickel and cobalt from ores and concentrates, especially lateritic ores and concentrates obtained from lateritic ores. The specification proceeds to describe prior art processes and the defects of the prior art. The specification then states:
"The present invention provides a method for precipitating nickel and cobalt that overcomes or at least ameliorates one or more of the disadvantages of the prior art. According to the present invention, a method is provided for precipitating nickel and cobalt from an acid aqueous solution containing at least dissolved nickel, cobalt and manganese, the method including:
a) adding solid caustic calcined magnesium oxide or freshly slurried caustic calcined magnesium oxide to the solution, the magnesium oxide being added in an amount sufficient to precipitate a substantial proportion of the nickel and cobalt in solution and to precipitate a minor proportion of the manganese in solution;
b) maintaining the magnesium oxide in contact with the solution for a period of about 1 hour to about 9 hours to thereby achieve precipitation of a substantial proportion of the nickel and cobalt in solution and precipitation of a minor proportion of the manganese in solution; and
c) separating solids precipitated in step (b) above from the aqueous solution.
The specification describes a number of preferred features of the invention. The specification provides a brief description of accompanying drawings and then proceeds to describe various embodiments of the invention including six examples and three comparative examples. The specification concludes with three claims as follows:
1. A method for precipitating nickel and cobalt from an acid aqueous solution containing at least dissolved nickel, cobalt and manganese, the method including:
a) adding solid caustic calcined magnesium oxide or freshly slurried caustic calcined magnesium oxide to the solution, the magnesium oxide being added in an amount sufficient to precipitate a substantial proportion of the nickel and cobalt in solution and to precipitate a minor proportion of the manganese in solution;
b) maintaining the magnesium oxide in contact with the solution for a period of about 1 hour to about 9 hours to thereby achieve precipitation of a substantial proportion of the nickel and cobalt in solution and precipitation of a minor proportion of the manganese in solution; and
c) separating solids precipitated in step (b) above from the aqueous solution.
2. A method as claimed in claim 1 further including the steps of:
a) determining the amounts of nickel, cobalt and manganese in solution;
b) determining the amount of magnesium oxide required to effect precipitation of a substantial proportion of the nickel and cobalt in solution and a minor proportion of the manganese in solution; and
c) adding the determined amount of magnesium oxide to the solution.
3. A method as claimed in claim 1 or claim 2 wherein from 5% to 15%, by weight, of manganese in solution is precipitated.
NOTICE UNDER S.28
QNI asserted in their notice that:
"…Petty Patent Application 701829….is invalid on the following grounds:
(i) That the invention is not a patentable invention because it does not comply with paragraph 18(1)(a) or (b); and
(ii) That the specification does not comply with sub section 40(2) or (3)."
In support of the matters raised under (a) and (b) it attached the following declarations:
Malcolm John Price dated 20 December 1999 with exhibits MJP-1 to 8. He states that he is currently the Principal of Nicomet Consultancy, which provides consultancy services in the metallurgy industry, particularly to those concerned with the production of nickel and cobalt from lateritic ores.
Ngaire Pettit-Young dated 7 December 1999, being the Senior Librarian at the University of New South Wales. The declaration establishes the availability in Australia of certain documents/texts (referred to by Mr. Price) before the relevant priority date.
The informant has also attached a letter from IP Australia indicating that certain US Patents became open to public inspection in the Patent Office in Canberra before the relevant priority date. In their further evidence the informant filed the following declarations:
Malcolm John Price dated 27 July 2000 with exhibits MJP-9 and 10.
John Ernest Fittock dated 26 July 2000, being the Development Group Leader at QNI Limited's Yabulu Refinery. The declaration establishes the availability in Australia of the document attached as exhibit MJP-10 (referred to by Mr. Price) before the relevant priority date.
The patentee provided evidence in response consisting of declarations made by:
David Thomas White dated 30 March 2000 with Exhibits 1 to 4. He states that he is currently working as a Principal Process Engineer with Centaur Nickel Pty Limited.
James K.S. Probert dated 3 April 2000 with Exhibit 1. He states that he is currently the principal of J & P Probert Process Consultancy and his duties include the provision of consulting services in relation to the design and development of chemical and metallurgical flow sheets. He states that as of the relevant priority date he was well acquainted with the nickel industry and with the common general knowledge of persons skilled in the art.
In the matter of the further evidence I had informed both parties that I would seek a response from the patentee only if the further evidence had a substantial impact on the validity of the petty patent.
SUBMISSIONS
At the hearing QNI pursued the grounds of Section 40/Fair Basis, Novelty and Inventive Step. Both parties provided written summaries of their submissions prior to the hearing. I shall refer to submissions from both parties wherever necessary in my decision.
DECISION
The Commissioner must consider the material filed by the informant with the Section 28 notice. If the Commissioner is satisfied that a ground mentioned in subsection 28(1) is made out, the extension of the term of the petty patent may be refused. If not satisfied, the Commissioner must grant an extension of the term under Section 69 and regulation 6.6.
Section 40/Fair Basis
The informant made a number of submissions that I shall address on an individual basis. I have summarised these submissions and the first one is as follows:
1(a) Claim 1 does not provide any limitation to the manner in which the amount of magnesium oxide added to the solution is determined. Claim 1 is sufficiently broad to encompass any means of determining the amount of magnesium oxide (MgO) to be added to the solution. This is inclusive of determining the amount of magnesium oxide by reference to the pH of the solution or calculating the amount to be calculated by stoichiometric means, or by any other means. Claim 2 suffers from a similar problem.
1(b) Claims 1 and 2 lack clarity as the terms "substantial proportion" and "minor proportion" are not clearly defined in the description.
The informant contended that:
step (a) of claim 1 and to some extent step (b) merely define what is sought to be achieved (more of an object of the invention). There is no indication of how you calculate the amount of MgO to be added.
Claim 1 is broader than what is disclosed on a fair reading of the specification. The specification at pages 6 and 7 indicates use of stoichiometric requirements and an efficiency factor to determine the amount of MgO to be added to selectively precipitate nickel and cobalt. But claim 1 in its present form is not so restricted and could include any means for determining the amount of MgO to be added including the prior art methods of pH adjustment.
The patentee made the following submissions on the issue:
Claim 1 actually specifies that magnesium oxide is added to the acid aqueous solution in an amount sufficient to precipitate a substantial proportion of the nickel and cobalt and a minor proportion of the manganese. A person of skill in the art (PSA) would readily understand that there must be enough magnesium oxide to achieve the desired precipitation but not too much so as to cause precipitation of more than a minor proportion of manganese.
In this matter reference is made to the comments cited with approval by the High Court in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 0416A HCA 55 where it was stated:
"Lack of precise definition in claims is not fatal to their validity so long as they provide a workable standard suitable to the intended use."
The petty patent makes it clear that the purpose of the precipitation process described in the patent and defined in the claims of the patent is to achieve the selective precipitation of nickel (Ni) and cobalt (Co) from an acid solution containing a mixture of dissolved ions. The obtained precipitate should be low in magnesium (Mg) and manganese (Mn) and should settle and filter readily. This product in turn is ready releached into hydrochloric acid, sulphuric acid, ammonium sulphate or ammoniacal ammonium carbonate solutions (see Centaur patent, page 9, lines 13 to 18). It will be apparent from the introductory section of the Centaur patent and the aforementioned disclosure that the precipitated product arising from the method of the present invention is subject to further treatment to recover nickel and cobalt therefrom. Accordingly, the level of manganese present in the precipitate (which corresponds to the minor proportion of manganese in solution) must be set at a level that does not deleteriously affect downstream processing of the precipitate. A person skilled in the art (PSA) will readily appreciate what this level is for any particular plant installation. Similarly, the amounts of nickel and cobalt in the precipitate, which correspond to the major proportion of nickel and cobalt precipitated from the solution, can also be readily be determined and understood by a PSA. Therefore a PSA is clearly provided with a workable standard suitable to the intended use.
Initially I shall deal with clarity issues in claims 1 and 2 raised by the informant regarding the terms "substantial proportion" and "minor proportion". A resolution of this issue will enable me to deal with the first Section 40 issue raised by the informant.
Claim 1 states:
1. A method for precipitating nickel and cobalt from an acid aqueous solution containing at least dissolved nickel, cobalt and manganese, the method including:
a) adding solid caustic calcined magnesium oxide or freshly slurried caustic calcined magnesium oxide to the solution, the magnesium oxide being added in an amount sufficient to precipitate a substantial proportion of the nickel and cobalt in solution and to precipitate a minor proportion of the manganese in solution;
b) maintaining the magnesium oxide in contact with the solution for a period of about 1 hour to about 9 hours to thereby achieve precipitation of a substantial proportion of the nickel and cobalt in solution and precipitation of a minor proportion of the manganese in solution; and
c) separating solids precipitated in step (b) above from the aqueous solution.
The description makes the following related disclosures:
Page 7, lines 11 to 16: "It is preferred that the substantial proportion of nickel and cobalt in solution that is precipitated comprises from about 80% to about 100% of the nickel and cobalt in solution, respectively…. It is preferred that the minor proportion of manganese that is precipitated comprises from about 5% to about 15%…of the manganese in solution. (All percentages are given on a weight % basis)."
Page 9, lines 13 onwards: "The method of the present invention provides for the selective precipitation of nickel and and cobalt from acidic leach solutions…using magnesium oxide to produce a mixed nickel-cobalt precipitate which is low in magnesium and manganese and settles and filters readily. This product in turn is readily releached in hydrochloric acid, sulphuric acid, ammonium sulphate or ammoniacal ammonium carbonate solutions."
"…the settling and filtration properties of the precipitate are favourable and the precipitate settles readily, and in fact may be self draining. Vacuum filtration properties are extremely favourable with primary filtration rates in excess of 5000 kilograms per square metre per hour being measured."
In this matter I shall refer to the relevant Rules of Construction for Patent Specifications (see Décor Corp v Dart Industries 13 IPR 385 at 400). Rule 3 states "Nevertheless, in approaching the task of construction, one must read the specification as a whole."
However, it must be appreciated that the different parts of the specification have different functions, and so different weight can be given (for the purposes of construction) to information from different parts of the specification. (See Welch Perrin Co Pty Ltd v Worrel (1961-62) 106 CLR 588). There are several consequences of this rule. For instance if an expression in a claim is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim (See Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 479).
In this case the informant has contended that no definite limits can be placed on the meaning of the terms "substantial proportion" and "minor proportion". However the description has set out (at page 7, lines 11 to 16) a rough guide on the scope of these terms. Further information has also been provided (page 9, line 13 onwards) of the consequences/outcomes of precipitation of a substantial proportion of the nickel and cobalt and a minor proportion of the manganese in solution. I cannot see that the PSA would have any difficulty in determining the scope of the terms. Accordingly, I consider that claims 1 and 2 do not lack clarity due to use of the terms "substantial proportion" and "minor proportion".
I shall now consider issues relating to determination of the amount of magnesium oxide to be added to precipitate a substantial proportion of the nickel and cobalt and a minor proportion of the manganese in solution. The informant focussed on the issues of:
fair basis
not defining the invention described
claiming by result
I shall apply the so-called Mond Nickel Rules (in Mond Nickel Company Ltd.'s Application, (1956) RPC 189 at page 194). Although originally expressed in relation to fair basis with regard to provisional or basic documents (see the High Court decision in Hoffman-La Roche & Co. AG. v Commissioner, (1971) AOJP 819 at page 822, and (1973) RPC 34), they may be expressed as:
a) Is the alleged invention as claimed broadly described in the specification?
b) Is there anything in the specification which is inconsistent with the alleged invention as claimed?
c) Does the claim include as a characteristic of the invention a feature as to which the specification is wholly silent?
Regarding part a) of the test the informant conceded that there was a broad description of the invention in the specification but that the invention actually disclosed from the specification was not included in this broad disclosure. In particular the informant referred to the use of pH control for selective precipitation of nickel and cobalt, and determination of the amount of MgO to be added based on stoichiometric calculations coupled with the application of an efficiency factor.
I shall address the issue regarding the use of pH control for selective precipitation. The informant's declarant submitted that, based on the prior art in the field, the invention of the petty patent was based on pH control and the specification also showed that pH adjustments were carried out to precipitate iron prior to precipitating nickel and cobalt. The consistory statement and embodiments in the description do not indicate that pH control is an essential feature of the invention. The pH adjustment, prior to adding MgO (my emphasis), is clearly stated to be (in the description) a preferred feature and as not being critical to the invention. From a fair reading of the specification I cannot conclude that pH control is an essential feature of the invention.
Looking now, at the determination of the amount of MgO to be added, the specification discloses the following in the consistory statement and claim 1:
"…the magnesium oxide being added in an amount sufficient to precipitate a substantial proportion of the nickel and cobalt in solution and to precipitate a minor proportion of the manganese in solution;"
Clearly the amount of MgO to be added is dependent on the requirement to precipitate nickel, cobalt and manganese in the specified proportions. Thus the amount of MgO to be added is dependent on the result sought to be achieved. I have indicated that the skilled addressee can easily determine the ambit of the terms "substantial proportion" and "minor proportion". I have to decide if the PSA would be unable to determine the amount of MgO to be added from a fair reading of the specification and/or by simple experimentation of a non-inventive nature.
The specification at page 6 gives some guidance on the determination of the amount of MgO to be added. It refers to a preferred method of determination by calculating stoichiometric requirements and use of an efficiency factor (which is used to account for the residence time and reactivity of the magnesium oxide). The informant submits that this is an essential feature of the invention, and is the only disclosure of how the amount of MgO is determined, and hence should be included in the claims. The patentee submitted that the PSA was quite capable of determining this amount by simple trial and error using non-inventive experimentation. I am in agreement with the teaching of British Thomson-Houston Co Ltd v Corona Lamp Works Ltd (1922) 39 RPC 49 and Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59 at p 60 in this matter. Reference is made to the comments from those cases, cited with approval by the High Court in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 0416A HCA 55, where it was stated:
"Lack of precise definition in claims is not fatal to their validity so long as they provide a workable standard suitable to the intended use."
The informant's declarant, Mr Price, has not provided any evidence (for instance, experiments that required some inventiveness) to show that the PSA would be unable to practice the invention of claim 1. I do not see that the skilled addressee will face any difficulty in practicing the invention of claim 1. The informant has not shown in what way claim 1 is speculative in this regard. The skilled addressee may use any of the non-inventive methods available to the PSA, or simple non-inventive experiments (if required), or the method disclosed in the description, to determine the amount of magnesium oxide to be added.
I consider that claim 1 satisfies part a) of the Mond Nickel Test.
Looking at part b) of the test, I have to determine if there is anything in the specification that is inconsistent with the claimed invention. The informant has not shown any inconsistency between the claim and the description. The informant states that the claim is not limited to any particular method of calculating the level of magnesium oxide to be added but this is not an inconsistency. I have also dealt with the issue of pH control previously [part a) of the Mond Nickel test] where I stated that I did not consider it to be an essential feature of the invention. Accordingly I do not find anything in the specification which is inconsistent with the claimed invention.
Looking at part c) of the Mond Nickel Rules; I have to determine if the claim includes as a characteristic of the invention a feature as to which the specification is wholly silent. The informant identified that use of the term "amount sufficient" and its determination (claims 1 and 2) lacked support in the description. I have addressed this issue in part a) of the Mond Nickel Test. There I had indicated that there were specific disclosures in the description which provided support for the use of the term and also for determination of the "amount sufficient". I consider that the claims satisfy part c) of the Mond Nickel Rules.
Based on the outcome of the Mond Nickel test I consider that claims 1 to 3 of the petty patent are fairly based on the description with regard to the specific issue raised.
The second issue raised by the informant stated:
2. On the basis that there must be a "real and reasonably clear disclosure" of its subject matter in the specification:- Is there a clear disclosure that maintaining contact for 1 to 9 hours is important? Comparative Examples show this is not an essential feature and that the amount of Mn precipitated is determined by the amount of MgO. Comparative Examples fall within this scope. It (that is, claim 1) does not define the invention.
Looking at the specification, the consistory clause (page 6, lines 7 to 10) clearly states:
"…maintaining the magnesium oxide in contact with the solution for a period of about 1 hour to about 9 hours to thereby achieve precipitation of a substantial proportion of the nickel and cobalt in solution and precipitation of a minor proportion of the manganese in solution;"
Further, the description at page 8, lines 4 to 10 states:
"To allow the reaction to proceed substantially to completion, a reaction time of between one (1) and nine (9) hours is required, preferably from 1 to 6 hours, most preferably from 3 to 5 hours. If the residence time is less than 1 hour, incomplete dissolution of magnesium oxide occurs and the solid precipitate recovered is contaminated with magnesium oxide. If the residence time is greater than about 9 hours, selectivity in precipitation is diminished and the precipitate will contain higher levels of precipitated impurities."
The description has made it clear that a contact time of about 1 hour to about 9 hours is essential to the working of the invention. I consider that the specification has made a real and reasonably clear disclosure that maintaining contact for 1 to 9 hours is important to the working of the invention. The informant submitted that the comparative examples showed that contact time was not an essential feature of the claimed invention. On a reading of the specification I found that the comparative examples;
· do not use a fresh slurry and similar magnesium dosing (to the embodiments of the invention), and
· do not use contact times extending beyond the 9 hours.
Consequently, a true comparison based only on differing times of contact (with all other factors remaining the same) cannot be made between the examples and comparative examples. I cannot conclude that the comparative examples show that a contact time of 9 hours or less is inessential to the working of the invention. I consider that claim 1 is fairly based on the specification in the matter of defining contact times of about 1 hour to about 9 hours.
Novelty
The test for determining whether an invention lacks novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, (1977) CLR 228 at page 235 (see also 13 ALR 605 at page 611), where Aickin J stated:
"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."
It follows from the reverse infringement test that:
a) if a citation discloses all the features of a claim, the claim will lack novelty; however
b) if the citation does not disclose all the features of the claim, the claim will still lack novelty provided the citation discloses all the essential features of the claim; but
c) if an essential feature is not disclosed in the citation, the claim is novel.
See e.g. Nicaro Holdings v Martin Engineering, 16 IPR 545, Catnic Components Ltd v Hill and Smith Ltd, (1982) RPC 183.
I shall begin by assuming that all the features of claim 1 of the patent are essential (Catnic Components Ltd v Hill and Smith Ltd, (1982) RPC 183). Claim 1 has the following features:
1. A method for precipitating nickel and cobalt from an acid aqueous solution containing at least dissolved nickel, cobalt and manganese, the method including:
2. adding solid caustic calcined magnesium oxide or freshly slurried caustic calcined magnesium oxide to the solution;
3. the magnesium oxide being added in an amount sufficient to precipitate a substantial proportion of the nickel and cobalt in solution and to precipitate a minor proportion of the manganese in solution;
4. maintaining the magnesium oxide in contact with the solution for a period of about 1 hour to about 9 hours to thereby achieve precipitation of a substantial proportion of the nickel and cobalt in solution and precipitation of a minor proportion of the manganese in solution; and
5. separating solids precipitated in step 4 above from the aqueous solution.
The informant submitted that claims 1 to 3 were not novel in light of a number of citations. At the hearing the informant focussed on a single citation, which had been published prior to the earliest priority date of the petty patent. I have reviewed all the citations raised by the informant and I am of the opinion that, the citation focussed on by the informant (at the hearing) is the only one that strongly challenges the novelty of the petty patent.
US 2899300 - Exhibit MJP-5
The specification indicates that the invention relates to the treatment of nickel laterite ore containing small amounts of nickel, cobalt and manganese and substantially larger amounts of iron, silica and magnesia. Various embodiments of the invention reveal:
"Reactive magnesia then is added to the leach solution to bring its pH value to between about 3.5 to about 4.2 to precipitate ferric iron. After removing the precipitate, reactive magnesia is added to the remaining solution to bring its pH value up to about 8.2 to precipitate substantially all its nickel and cobalt contents.
"The principal liquor is essentially an aqueous solution of sulphates of nickel, cobalt, iron, manganese and magnesium. Reactive magnesia, either in powder or milk form, is added to this liquor to bring its pH value up to about 8.2 to precipitate a nickel concentrate. By extending this precipitation over about 1 hour and reducing the rate of addition of magnesia as the pH approaches 8.2, the nickel is practically completely precipitated (over 99.7 percent) in the form of hydroxide along with all the remaining iron and about 50 percent of the manganese with a minimum of unreacted magnesia (less than 5 percent of the dried precipitate)."
One embodiment discloses precipitation of about 100% of nickel, 100% of cobalt and about 34% of manganese from the leach solution. A specific contact time between the magnesia and leach liquor is not disclosed, though a settling time of 19 hours is disclosed before liquor is removed from the precipitate. The precipitate is washed five times before it is analysed for nickel, cobalt, manganese, iron, MgO and other materials.
Viewing the disclosures of the citation in light of the petty patent the following matters arise:
(a) Feature 3 of the petty patent refers to "addition of magnesium oxide in an amount sufficient to precipitate a substantial proportion of the nickel and cobalt in solution and to precipitate a minor proportion of the manganese in solution". The citation, however, discloses addition of magnesium oxide to achieve a certain pH resulting in the precipitation of substantially all the nickel and cobalt, and anything between 34% to 50% of the manganese in solution. The informant argued that the meaning of the term "minor proportion" in the claims of the petty patent had not been clearly spelt out and could include percentages up to 50% in its scope. I had dealt with this issue under Section 40/Fair Basis and my conclusion was that the description did provide guidance on the meaning of this term. The description had indicated that anything between 5% to 15% would fall within the ambit of minor proportion. Thus the citation has not disclosed feature 3 of claim 1 of the petty patent.
(b) Feature 4 refers to "maintaining the magnesium oxide in contact with the solution for a period of about 1 hour to about 9 hours to thereby achieve precipitation of a substantial proportion of the nickel and cobalt in solution and precipitation of a minor proportion of the manganese in solution". The citation has variously disclosed contact times of above an hour to about 19 hours though in the latter case settling of the precipitate is also taking place. There is no clear and unmistakable direction (See General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd, (1972) RPC 457 at page 486) that a contact time of about 1 hour to about 9 hours is used to obtain the desired precipitates. I conclude that the citation does not disclose feature 4 of claim 1 of the petty patent.
Hence US 2899300 does not render claim 1 of the petty patent as lacking in novelty. Consequently, I find that claims 2 and 3 do not lack novelty in light of US 2899300, as they are appended to claim 1.
Inventive Step/Obviousness
The informant raised the following with regard to inventive step.
1. Bristol-Myers Squibb Co v F H Faulding & Co Ltd [2000] FCA 316 has set out the threshold requirement for inventiveness. The following quote from para 30 of the judgement is applicable in this case:
"If a patent application, lodged in Australia, refers to information derived from a number of prior publications referred to in the specification or, generally, to matters which are known, in our view the Court - or the Commissioner - would ordinarily proceed upon the basis that the knowledge thus described, is in the language of s 7(2) of the 1990 Act, part of "the common general knowledge as it existed in the patent area". In other words, what is disclosed in such terms may be taken as an admission to that effect."
Reference was also made to NV Philips Gloeilampenfabrieken and Anor v Mirabella International Pty Ltd 32 IPR 449 in this regard.
We do not need to rely on the US patents referred to in the petty patent as the Price and Probert declarations show that the disclosures of these patents are part of the common general knowledge (CGK) and that this is the normal manner of separation (of Ni, Co and Mn) in solution.
What has been admitted by Centaur as known:
·That MgO may be used to separate Ni, Co and Mn from aqueous acid solutions (see US 2899300, 3466144, 3720749, page 3 lines 5 to 18).
·pH control is the normal method to separate materials (Probert paragraph 9).
·Contact time is unimportant:
a. Fig. 2 of Schiller articles shows that contact time does affect pH and pH will continue to rise over time.
b. Comparative examples show that overdoing (probably overdosing) can occur within the time frame.
2. Wellcome Foundation v VR Laboratories (1981) 148 CLR at 286.
· Would the hypothetical skilled addressee have taken steps that are claimed.
· The amount of MgO added would have been determined by pH means as conceded in declarations filed by Centaur.
The Patentee made the following submissions in reply:
1. The teaching of Bristol-Myers (supra) must be understood in light of the facts of the case. It related to the treatment of cancer with powerful drugs. The skilled addressee in that particular instance would find out the documents referred to in the specification. Further the conclusion of cited prior art constituting common general knowledge is a conclusion of the Full Bench of the Federal Court. This teaching goes against the teaching of the Full Bench of the High Court in Minnesota Mining & Manufacturing Co & Anor v Beiersdorf (Australia) Ltd (1980) 144 CLR 253. The teaching of the High Court has precedence in this matter.
2. The declarant of the informant is not a truly independent witness as he has previously worked for 20 years for the informant. He has no experience in the field of the invention having worked on downstream processing after the precipitation referred to in the patent. He has no expertise in the precipitation process. Further he is not the non-inventive person skilled in the art as he has claimed credit for several patents.
3. There is nothing in the evidence to show that the citations referred to in the petty patent would have been ascertained, understood and regarded as relevant by the person skilled in the art. There are some fields of endeavour where people study patents on a regular basis and these documents become part of the common general knowledge.
4. The evidence of a single declarant (Mr. Price) is not sufficient to determine common general knowledge. Most of his submissions in this regard have been directly contradicted by submissions of both declarants of the patentee.
The informant has raised issues of inventiveness and inventive step. I shall address, first, the issue of inventive step. I shall proceed to determine lack of inventive step (of claim 1 initially) based on relevant documentation and established common general knowledge (CGK).
Subsections 7(2) and 7(3) of the Patents Act 1990 indicate that a claimed invention will lack an inventive step if it is obvious to a person skilled in the relevant art (PSA) in the light of:
(a) common general knowledge in the art; or
(b) common general knowledge considered together with information publicly available in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
Assessment of inventive step may be carried out using any one of a variety of tests. Aickin J. set out the following tests in Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at page 270:
"It is as well to bear in mind that the question of obviousness involves asking the question whether the invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that particular field as at the priority date, without regard to documents in existence but not part of such common general knowledge."
and at page 286:
"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."
Application of these tests would require:
a determination of the non-inventive worker in the field (or the person skilled in the relevant art ) in Australia.
a determination of the common general knowledge in Australia at the priority date.
The common general knowledge relevant to the question of obviousness was described by Aickin J. in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Limited, (supra) at page 292 as:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
The state of common general knowledge in the art will generally be determined on the basis of evidence from persons with the appropriate background. Mr Price has provided evidence for the informant and Messrs Probert and White have provided evidence for the patentee in this matter.
Mr Price has experience in the relevant art prior to the priority date of the patent. Even though he ceased working for QNI in 1995 he can give some indication of what constituted CGK at that time. Mr Price has been co-inventor on a number of patented inventions. This does not prevent him from indicating the CGK in the art. However he cannot be considered to be the non-inventive skilled addressee for the purpose of stating whether or not it would have obvious for him to proceed in the direction of the invention in light of the CGK at the relevant time.
Messrs Probert and White have experience in the relevant field and can give an indication of what constituted the CGK in the art at the relevant time. They can also be considered to be non-inventive persons skilled in the relevant art.
Mr. Price has stated that the following documents/disclosures constituted the CGK in the art at/before the relevant priority date:
1. Magnesium Oxide for Improved Heavy Metals Removal; (pages 171 to 173) by Schiller and Khalafalla, published in Mining Engineering (February 1984).
2. Hydrometallurgical Extraction and Reclamation, pages 155 to 162, by E Jackson, published by Ellis Horwood Ltd.
3. US Patent 2,899,300.
4. US Patent 3,466,144.
The patentee did not dispute that documents 1 and 2 formed part of the CGK but had some disagreement with the informant as to the direct relevance/application of the disclosures. The patentee provided pages 145 to 203 (complete Chapter 4) of document 2 (only pages 155 to 165 had been provided by the informant) in order to deal with an issue raised by the informant. The patentee contended that the two US patents did not constitute CGK in the art and were only detected after extensive patent searching. In the matter of patent specifications acting as indicators of CGK the Courts have taught that:
As a general rule (see General Tire & Rubber Company v Firestone Tyre and Rubber Company Ltd, (1972) RPC 457 at page 482):
"...it is clear that individual patent specifications and their contents do not normally form part of the relevant common general knowledge…"
However, as was stated in 3M v Beiersdorf (Australia) Ltd, (supra) at page 294:
"There may be some fields of endeavour in which those who work therein study and make themselves familiar with all patent specifications as they become available for inspection in one or in many countries so that what was contained therein becomes common general knowledge in that particular trade or field of manufacture in the country in question. Examples are provided by Vidal Dyes Syndicate Ltd v Levinstein Ltd. (1912) 29 RPC 245 at pages 279-280 and British Celanese Ltd v Courtaulds Ltd. (1933) 50 RPC 259 at page 280".
The informant has not indicated whether they routinely studied and made themselves familiar with patents/patent abstracts in the field of acid leaching of nickel laterite ores and/or related fields. Neither has any supporting evidence been provided in this regard. The informant has merely asserted that the US patent documents formed part of the CGK in the art. Based on the teaching of the Courts in this regard and in the absence of any evidence, I consider that the US patent documents did not form part of the Common General Knowledge in the art in Australia.
A claimed invention will lack an inventive step if it is obvious to a person skilled in the relevant art in the light of common general knowledge in the art.
I have to now determine the teaching of the documents considered to be part of the CGK. Mr. Price has made assertions regarding what constituted CGK in the art. I shall consider the two documents both individually and in combination to see if they disclosed the invention of the petty patent as lacking an inventive step.
Magnesium Oxide for Improved Heavy Metals Removal; (pages 171 to 173) by Schiller and Khalafalla, published in Mining Engineering (February 1984)
This document (filed by both parties) discloses use of MgO to precipitate heavy metals (including Ni, Co and Mn) from mineral processing water. The metals are present in quantities of parts per million (ppm) and the requirement is to completely remove the metals from the process water. The process as summarised states:
"A three-fold to four-fold stoichiometric excess of solid reagent (MgO) is added. The mixture is reacted for five to 10 minutes. Polymer is added, and settling or filtration completes the process."
The document does not show precipitation of a substantial proportion of the Ni and Co and a minor proportion of the Mn in solution as specified in the petty patent. Thus the features of selective precipitation of Ni and Co over Mn has not been disclosed. Further the document discloses:
"Because of the greater cost of MgO compared with lime, large-scale practice of this technology will probably be limited to water containing 50 mg/L (3 gr per gal) or less of dissolved metals. For such dilute solutions, chemicals are not a large fraction of total treatment costs, so more desirable sludge properties might justify higher chemical expenses."
The petty patent discloses the presence of metals in the order of grams per litre. Thus the teachings of this document do not lead the skilled addressee to the use of MgO to selectively precipitate Ni and Co over Mn for the recovery of Ni and Co from laterite ores.
Hydrometallurgical Extraction and Reclamation, pages 145 to 203, by E Jackson, published by Ellis Horwood Ltd.
The publication date for this document was not provided, but both parties have access to the document and no doubts have been raised as to its publication prior to the priority date of the petty patent. The pages provided for the document constitute Chapter 4 of the publication. This chapter deals with precipitation processes for metal separation and recovery from solution. None of the processes described deal with selective precipitation of Ni and Co over Mn for the recovery of Ni and Co from laterite ores. Mr Price referred to a metal hydroxide precipitation diagram (Fig. 4.4 in the document) which in his opinion gave clear guidance on the use of pH to selectively precipitate Ni and Co over Mn. The relevant portion at page 158 states:
"Figure 4.4 demonstrates the considerable range of pH over which the different metals precipitate as hydroxides. As a consequence the selective precipitation of several metal hydroxides by appropriate control of the solution pH becomes theoretically feasible."
The invention refers to "the addition of magnesium oxide in an amount sufficient to precipitate a substantial proportion of the nickel and cobalt in solution and to precipitate a minor proportion of the manganese in solution." Mr Price contended that this was the same as adding MgO until a certain pH was achieved which would give the desired result. Mr Price also provided some calculations to support his arguments but he contended that a percentage of 34% and 50% of manganese fell within the term "a minor proportion". I have indicated under Section 40/Fair Basis that the term, "a minor proportion", refers to a proportion of 5 to 15%. Mr White disputed his submissions. He submitted that the diagram was theoretical in nature and had certain limitations. In support of this he provided a document listed in the bibliography of chapter 4 ("Precipitation diagrams for metal hydroxides, sulphides, arsenates and phosphates" A J Monhemius). The document he provided fully supported his argument. He also carried out calculations based on Mr Price's submissions and showed that the precipitation of the various amounts of Ni, Co and Mn specified by the patent would occur not at the same pH but at different pH. He further stated that the invention did not rely on pH precipitation but was based on the addition of a sufficient amount of MgO to precipitate the desired quantities of Ni, Co and Mn within a certain time frame. The disclosure of Chapter 4 did not disclose this particular feature of the invention. Thus the skilled addressee would be led to try selective precipitation in view of Fig 4.4 of the citation, but the practical results would not give the desired precipitation of Ni, Co and Mn. Further there is no indication that the skilled addressee should maintain contact times of between 1 to 9 hours between the leach solution and MgO. Having considered the submissions of declarants of both parties I am of the view that the disclosure of Chapter 4 of the document would not render the claimed invention as lacking an inventive step.
In view of the arguments I have set out regarding each citation I do not consider that a combination of the disclosure of the citations would render the invention of the petty patent as lacking an inventive step.
A claimed invention will lack an inventive step if it is obvious to a person skilled in the relevant art in the light of common general knowledge considered together with information publicly available in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
The publicly available information referred to above includes published patents in the relevant art. I consider that US Patents 2,899,300 and 3,466,144 are documents that could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art. Accordingly I shall consider each US Patent individually together with the established CGK in the art. From a reading of the petty patent specification the problems sought to be solved was to obtain a precipitate of nickel and cobalt that:
· settles and filters rapidly
· is low in magnesium
· is low in manganese
· is readily releached in hydrochloric acid, sulphuric acid, ammonium sulphate or ammoniacal ammonium carbonate solutions
The properties of the precipitate outlined above were identified as lacking in prior art processes.
US Patent 2,899,300 (Exhibit MJP-5)
The specification indicates that the invention relates to the treatment of nickel laterite ore containing small amounts of nickel, cobalt and manganese and substantially larger amounts of iron, silica and magnesia. Various embodiments of the invention reveal treatment of the leach solution (after precipitation of iron) with reactive magnesia to bring its pH value up to about 8.2 to precipitate substantially all its nickel and cobalt contents. Examples are given of precipitation of substantial proportions (97% to 100%) of Ni and Co and between 34% to 50% of Manganese. Further the unreacted magnesia makes up no more than 5% of the dried precipitate. A specific contact time between the magnesia and leach liquor is not disclosed (greater than 1 hour was mentioned in an embodiment), though a settling time of 19 hours is disclosed before liquor is removed from the precipitate. The precipitate is washed five times before it is analysed for nickel, cobalt, manganese, iron, MgO and other materials.
Viewing this disclosure in light of the acknowledged CGK in the art I have to decide if the skilled addressee would proceed in the direction of the invention of the petty patent when faced with the problem disclosed in the petty patent. The problem was to obtain a precipitate high in Ni and Co, low in Mn and having good filtration and releaching characteristics.
The informant submitted that the skilled addressee, using the hydroxide precipitation diagram of Fig. 4.4, would be led to adjusting the pH of the leach solution to 8.2 to achieve selective precipitation of Ni and Co in relation to Mn. The informant's declarant, Mr Price has consistently stated that the percentage of manganese in the citation, that is 34 to 50%, is within the ambit of the term "minor proportion", and hence has shown selective precipitation of nickel and cobalt. I had dealt with this issue under Section 40/Fair Basis and I had concluded that the ambit of "minor proportion from a fair reading of the specification encompassed 5 to 15%. Mr White showed that if one applied the theoretical calculations of the CGK to the citation, one would achieve about 99.7% Ni, 68.9% Co precipitation and nil Mn precipitation when using a pH of 8.2. This contradicts the actual percentages precipitated in the citation. No firm evidence has been provided to show that use of pH adjustment would give the outcome of the petty patent's invention. Further the invention requires the precipitate to have good filtration and releaching characteristics. This has not been established for this citation. I have to determine if the combination of CGK and the citation would lead in the direction of the invention. Would the use of pH control lead to the determination of an amount (of MgO) sufficient to obtain (with a contact time of 1 to 9 hours) a precipitate high in Ni and Co, low in Mn and having good filtration and releaching characteristics? The material provided by the informant has not established that the non-inventive PSA would be lead in that direction.
US Patent 3,466,144 (Exhibit MJP-6)
The specification indicates that the invention relates to:
"A sulphuric acid-leach hydrometallurgical process for recovering nickel, cobalt and/or nickel plus cobalt values from nickeliferous oxidic materials, which process involves special steps in a particular sequence all designed to produce a good quality product with high yields and which process minimizes losses of necessary reagents. The important reagents employed in substantial quantities are sulphuric acid and magnesia."
Specifically, once the acid leach has the iron removed it is treated with MgO (at temperatures between 50oC to 100oC) until the pH is at least 8 in order to precipitate the nickel, cobalt and manganese, if present, out of solution. Thus there is no selective precipitation of Ni and Co over Mn.
Viewing this disclosure in light of the acknowledged CGK in the art I have to decide if the skilled addressee would proceed in the direction of the invention of the petty patent when faced with the problem disclosed in the petty patent. The problem was to obtain a precipitate high in Ni and Co, low in Mn and having good filtration and releaching characteristics.
The informant submitted that the skilled addressee, using the hydroxide precipitation diagram of Fig. 4.4, would be led to adjusting the pH of the leach solution to 8.2 to achieve selective precipitation of Ni and Co in relation to Mn. The citation shows that with a pH of at least 8 precipitation of almost all the Ni, Co and Mn is achieved. No firm evidence has been provided to show that use of pH adjustment would give the outcome of the petty patent's invention. Based on the differences between the theoretical expectation and the actual practical results, I cannot conclude with certainty that the skilled addressee would be led in the direction of the invention. Further the invention requires the precipitate to have good filtration and releaching characteristics. This has not been established for this citation. I have to determine if the combination of CGK and the citation would lead in the direction of the invention. Would the use of pH control lead to the determination of an amount (of MgO) sufficient to obtain (with a contact time of 1 to 9 hours) a precipitate high in Ni and Co, low in Mn and having good filtration and releaching characteristics? The material provided by the informant has not established that the non-inventive PSA would be lead in that direction.
I have concluded that the combination of each of the citations on an individual basis with the CGK does not render claim 1 of the petty patent as lacking in inventive step. Accordingly claims 2 and 3 (which are appended to claim 1) cannot be considered to be lacking an inventive step.
Manner of Manufacture/Inventiveness
Regarding inventiveness the informant had stated "Bristol-Myers Squibb Co v F H Faulding & Co Ltd [2000] FCA 316 has set out the threshold requirement for inventiveness. Reference was also made to NV Philips Gloeilampenfabrieken and Anor v Mirabella International Pty Ltd 32 IPR 449 in this regard. I shall refer to paragraph 30 (in full) of the Bistol-Myers (supra) judgement, which addressed this issue:
"The majority of the High Court in Philips explicitly say that their observations about a case where want of the threshold requirement of inventiveness is not apparent on the face of the specification are not necessary to their decision. And, in discussing the commencement point (what is "known") of the inquiry about inventiveness, their Honours refer only to the Microcell principle. In our view, in light of the authorities to which we have referred, Philips stands for the proposition (as a matter of construction of the 1990 Act) that if, on the basis of what was known, as revealed on the face of the specification, the invention claimed was obvious or did not involve an inventive step - that is, would be obvious to the hypothetical non-inventive and unimaginative skilled worker in the field (Minnesota at 260 per Barwick CJ) - then the threshold requirement of inventiveness is not met. Some elaboration, however, is required in relation to what the specification reveals as "known". If a patent application, lodged in Australia, refers to information derived from a number of prior publications referred to in the specification or, generally, to matters which are known, in our view the Court - or the Commissioner - would ordinarily proceed upon the basis that the knowledge thus described, is in the language of s 7(2) of the 1990 Act, part of "the common general knowledge as it existed in the patent area". In other words, what is disclosed in such terms may be taken as an admission to that effect. In substance, we think, that is what happened, both in Microcell and Philips. If, however, the body of prior knowledge disclosed by the specification is insufficient to deprive what is claimed of the quality of inventiveness, then the only additional knowledge or information which will be taken into account is knowledge or information of a kind described in s 7(2) of the 1990 Act. That again, in our view, is consistent with the approach taken in Microcell. It is also, with respect, the only approach which does not, in practical terms, render s 18(1)(b)(ii) otiose. Of course, once that additional knowledge is taken into account, one is applying s 18(1)(b)(ii), not the opening words of s 18(1) - unless, perhaps, one might apply either, there being, in this respect, no difference between them."
The above teaching regarding matter in the specification which could ordinarily considered to be part of the CGK, refers to:
1. Information derived from a number of prior publications referred to in the specification.
2. Generally, to matters which are known.
The informant had indicated that the whole of the documents US Patents 2,899,300 and 3,466,144 constituted part of the CGK on a reading of the petty patent specification. I shall consider the specification to determine if the disclosures of the prior art therein satisfied the requirements of the teaching of Bristol-Myers (supra) as set out at 1 and 2 above.
The specification discusses the prior art on a general basis at pages 1 and 2. At pages 3 to 5 the specification discusses four different patents on an individual basis, but does not identify any common learning that can be drawn from the patents. Thus the specification does not disclose " information derived from a number of prior publications referred to in the specification". There is no statement in the specification that it was known to use magnesium oxide in the prior art "in an amount sufficient to precipitate a substantial proportion of the nickel and cobalt in solution and to precipitate a minor proportion of the manganese in solution." There is no reference to "the use of magnesium oxide, to selectively precipitate nickel and cobalt from a leach solution in preference to manganese," as a matter which was generally known. On the basis of the disclosures of the prior art in the specification, I cannot conclude that the claimed invention lacks inventiveness on the face of the specification. In this regard I may note that even if the disclosures of the two US patents did constitute part of the CGK, I have shown previously that these disclosures (either individually or when combined with the established CGK in the art) would not have rendered the invention as being obvious. I cannot conclude that these disclosures would render the invention as lacking inventiveness on the face of the specification.
CONCLUSION
The informant QNI Limited was unable to establish that Petty Patent 701829 was invalid on any one or more of the grounds raised in the Section 28 notice. Consequently, under Section 69 and regulation 6.6, I direct that Petty Patent 701829 be granted an extension of term.
COSTS
Section 210 and regulation 22.8 gives the Commissioner power to award costs against a party to proceedings before the Commissioner.
The informant submitted that they had offered a settlement of the opposition to the patentee on the basis of narrowing of the current claims. Accordingly if the decision established that the claims were not fairly based then costs should be awarded against the patentee.
The patentee submitted that costs should follow the event. They contended that the issue of a settlement offer four days before the hearing does not affect costs one way or another.
I do not see any reason to vary the practice of costs following the event. The informant has failed to establish any of its grounds of alleged invalidity of the petty patent. Accordingly I award costs in favour of the patentee Centaur Nickel Pty Limited and against the informant QNI Limited.
Jacob Elijah
Delegate of the Commissioner of Patents
Patent attorneys for the patentee : Freehills Carter Smith & Beadle, Sydney
Patent attorneys for the informant : Phillips Ormonde & Fitzpatrick, Melbourne
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