Christopher John Carter v Cristal Metals Inc
[2014] APO 35
•5 June 2014
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Christopher John Carter v Cristal Metals Inc. [2014] APO 35
Patent Application: 2006302273
Title:Titanium or Titanium Alloy with Titanium Boride Dispersion
Patent Applicant: Cristal Metals Inc.
Opponent: Christopher John Carter
Delegate: Matt Kraefft
Decision Date: 5 June 2014
Hearing Date: 19 March 2014, in Sydney
Catchwords: PATENTS – section 59 – opposition to grant of a patent – priority date deferred – claims take the filing date of the application as their priority date – opposition successful on the grounds of lack of fair basis, novelty and inventive step – applicant given an opportunity to amend.
Representation: Patent applicant: Ms Katrina Howard SC, instructed by Dr Ruth Clarkson and Ms Shahnaz Irani, patent attorneys of Spruson & Ferguson, Sydney.
Opponent:Dr Christopher Carter and Mr William Hird, patent attorneys of Davies Collison Cave, Sydney.
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2006302273
Title:Titanium or Titanium Alloy with Titanium Boride Dispersion
Patent Applicant: Cristal Metals Inc.
Date of Decision: 5 June 2014
DECISION
The present claims are not entitled to their claimed priority date. They take the filing date of the application, 6 October 2006, as their priority date.
Claim 1 is not fairly based on the description in respect to the claiming of a Ti metal powder with submicron Ti boride substantially uniformly dispersed therein.
Claims 1, 2, 5-13, 15 and 16 are not novel over US 2006/0102255 (“D2”). Similarly these claims do not have an inventive step over D2.
Claims 3, 4 and 14 also do not have an inventive step over D2.
The applicant is allowed two (2) months from the date of this decision in which to propose suitable amendments to overcome the above deficiencies.
REASONS FOR DECISION
BACKGROUND
International Titanium Powder, LLC filed patent application 2006302273 on 6 October 2006. The application claims priority from a US application, 60/724166, filed on 6 October 2005. There have been two changes of the applicant’s name associated with the application. The application is presently proceeding in the name of Cristal Metals Inc (“the applicant”). Application 2006302273 was advertised accepted on 19 August 2010.
Christopher John Carter (“the opponent”) filed a notice of opposition on 19 November 2010. A statement of grounds and particulars in support of the opposition followed on 21 February 2011. The opponent subsequently amended this statement under Patent Regulation 5.9 as it existed at the relevant time. This amendment was allowed on 16 March 2012.
The applicant filed a request on 31 January 2013 under Section 104 of the Patents Act to amend the complete specification. That request was allowed on 26 July 2013 and advertised allowed on 8 August 2013.
Both parties obtained numerous extensions of time to file evidence. The evidence-in-support, evidence-in-answer and evidence-in-reply stages were completed on 25 September 2013.
SPECIFICATION
The specification relates to titanium (“Ti”) boride. The specification states that relatively small boron additions to conventional titanium alloys provide important improvements in strength, stiffness and microstructural stability. Several current approaches are discussed to accomplish boron addition and produce metal alloys with titanium boride. Each of these approaches is stated to have a variety of shortcomings, not the least of which is the imperfect distribution of the boride as well as the size of the boride particles.
The alleged invention is stated to use a process known as the Armstrong process. The specification also incorporates by reference three US patents that disclose the Armstrong process. From at least one of the US patents, US 6409797, the Armstrong process uses titanium tetrachloride (“TiCl4”) gas injected through a nozzle into flowing molten sodium acting as a reducing agent. The process may be practiced with the use of any alkali or alkaline earth metal depending on the metal or non-metal to be reduced. Moreover, any halide or combination of halides may be used although in most circumstances chlorine is preferred. Alloys of a predetermined composition may be made by providing mixed metal halides at the beginning of the process in the required molecular ratio. For example metals like aluminium and vanadium can be mixed with the TiCl4, also as chlorides in gas phase, so that different types of titanium alloys can be produced such as Ti 6-4 which is the most commonly used Ti alloy with about 6% aluminium and about 4% vanadium.
The specification, as amended, ends with sixteen claims defining the claimed invention. Claim 1 is the only independent claim and reads as follows.
- A titanium metal powder having submicron titanium boride substantially uniformly dispersed therein, the titanium metal powder produced by the process comprising the steps of:
introducing a mixture of metal and non-metal halide vapors by submerged injection into a flowing stream of liquid alkali or alkaline earth metal or mixtures thereof to produce reaction products of a titanium metal powder having submicron titanium boride substantially uniformly dispersed therein and a halide of the alkali or alkaline earth metal or mixtures thereof, wherein the liquid alkali or alkaline earth metal or mixtures thereof are present in a sufficient amount to reduce the mixture of metal and non-metal halide vapors to the titanium metal powder having submicron titanium boride substantially dispersed therein and to maintain the reaction products below the sintering temperature of the titanium metal powder; and
recovering the titanium metal powder having submicron titanium boride substantially uniformly dispersed therein from the reaction products,
wherein the titanium metal powder having submicron titanium boride substantially uniformly dispersed therein is sized and shaped substantially as shown in Figures 1-4, and
wherein boron is present up to about 4% by weight of the titanium metal.Essentially the claimed invention is the use of the Armstrong process with the addition of boron in the claimed amount to provide substantially uniform dispersion and size of boride particles.
STATEMENT OF GROUNDS AND PARTICULARS
As a consequence of the Intellectual Property Legislation Amendment (Raising the Bar) Act 2012, there are substantial changes to the Patents Act 1990. In the case of the present application the grounds of opposition are governed by the Patents Act in force before 15 April 2013.
The opponent’s grounds of opposition were that the alleged invention was not a manner of manufacture, was not novel and did not involve an inventive step, and that the claims did not define an invention, and were not clear, succinct or fairly based. The opponent provided particulars against each of these grounds.
EVIDENCE-IN-SUPPORT
The opponent served evidence-in-support from Professor Graham Schaffer, Dr Andrew Philip Woodfield and Mr William Hird.
Professor Schaffer has worked in academia in various engineering schools and faculties at universities in Australia for about 25 years. At the time of his declaration, Dr Woodfield was a consulting engineer in the USA and also had about 25 years of expertise in titanium including alloy development, process development and powder metallurgy, amongst other things. Mr Hird is a patent attorney of the firm representing the opponent.
In his evidence, Professor Schaffer has described the state of the art of processing titanium and titanium alloys before the priority date, his understanding of the present application in the light of the art, and the relevance of prior art against the claimed invention. Dr Woodfield has explained some images of a titanium sample that formed part of a paper he co-presented at a conference in Florida in June 2005. Mr Hird has exhibited the documents that the present specification has incorporated by reference.
EVIDENCE-IN-ANSWER
The applicant served evidence-in-answer from Dr M. Kamal Akhtar and Associate Professor Trevor Roy Finlayson.
Dr Akhtar has some 20 years of experience as an engineer and scientist in chemical engineering, and as a manager and director of companies in this field, principally in the USA. Associate Professor Finlayson, now retired, had worked in academia principally at Monash University for about 35 years, researching and teaching in materials science.
In his evidence, Dr Akhtar has principally countered Professor Schaffer’s understanding of the claimed invention and the relevance of the prior art. Associate Professor Finlayson has commented similarly to Dr Akhtar although on fewer points.
EVIDENCE-IN-REPLY
The opponent served evidence-in-reply from Dr Eric Allen Ott and Professor Schaffer. Dr Ott has some 20 years of experience in metallurgical and materials science and engineering. He was the co-presenter of the paper mentioned above in relation to Dr Woodfield.
In his evidence Dr Ott has elaborated on that presentation, highlighted inconsistencies between the present application and the priority application, and challenged, on the basis of the data, assertions in the evidence-in-answer about the impact of boron on the resultant sodium content. In his evidence-in-reply Professor Schaffer has principally re-iterated, with further evidentiary support, the points from his earlier evidence as well as challenged the same assertions in the evidence-in-answer as Dr Ott.
PRIORITY DATE
Subsection 43(2) of the Patents Act, as in force before 15 April 2013, provided that the priority date of a claim is either the filing date of the specification or a date otherwise determined by the Patent Regulations. Regulation 3.12 provided that a claim of a Convention application, if fairly based on matter disclosed in a related basic application, would take the priority date that the claim would have had if it had been included in the basic application.
Subsection 40(3) of the Patents Act at the relevant time required that the claims of a specification must be fairly based on the matter described in the specification. The Lockwood Security Products Pty Ltd v Doric Products Pty Ltd decision, [2004] HCA 58, 217 CLR 274, at [69], put this as a requirement that there be a real and reasonably clear disclosure of what is claimed.
The Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth decision, [2011] FCAFC 132, at [65], stated the same principle applied to a determination of external fair basis. The claims must be fairly based on matter disclosed in a parent patent or a priority document.
The opponent challenged the entitlement of the applicant to claim the earliest priority date of 6 October 2005. This is on the basis that there is no real and reasonably clear disclosure in the priority document, US Application 60/724166, of the process steps of the claims of the present application.
Page 3 of the priority document mentions the use of the Armstrong process. The Armstrong process is not described in the priority document. Instead the priority document relies on the incorporation by reference of the three US patents as indicated above to state that Ti-Al-V-B alloys were produced. Page 10 of the document further merely mentions TiCl4 and boron trichloride (“BCl3”) reduction. However, for priority purposes, in the present case, matter relating to the process to produce the alleged invention should be present in relation to the priority application itself. Generally, that application, or a specification or other document filed in its support and at the same time, may be considered. This is in order that a definite date of disclosure is established, for example, the date of filing the priority application. In the present case, the priority document does not disclose the features of or any application of the Armstrong process to produce Ti boride. In this sense, the priority document has no disclosure that corresponds even loosely with the process described under the heading “Summary of the Invention” at page 2 lines 15 – 31 of the present application.
The opponent further referred to some inconsistency. In the US application, for the samples tested, it is stated that non-uniform distribution of boron was seen. Furthermore, the boron did not appear to be incorporated into the metal as discrete Ti boride particles or inclusions, but rather was inhomogenously distributed among the Ti particles, possibly as a coating. By contrast, the claimed invention claims substantially uniform dispersion of Ti boride in the Ti metal powder.
The applicant submitted that the tested samples in the priority document were obtained using processes other than those claimed in the present application, hence the non-uniform distribution of boron. If that is so, the priority document does not disclose what the other processes are. The priority document only mentions the use of the Armstrong process, the details of which come from the incorporated US patents.
The priority document appears to describe two aspects of an alleged invention. Pages 1-4 and Table 1 continuing on page 5 contain a solution and a description of an alleged invention loosely consistent with the present application. Figures 8, 4, 2 and 1 of the priority document are also analogous to Figures 1-4 of the present application. The description in the priority document then diverges, from the remainder of page 5 onwards, to discuss sample testing and analysis where boron was non-uniformly distributed and probably even coating the particles rather than being dispersed therein. Part of the summary on pages 9 and 10 then reverts back to discussing the first aspect with a statement that also disclosed are a Ti metal powder or a Ti base alloy powder having substantially uniformly dispersed Ti boride particles therein.
On the face of it, the text in the priority document is incompatible. This is supported by the applicant’s submissions that the tested samples discussed in the priority document were not the same as those in the present application. One may thus conclude there is no support in the priority document for a claim to a Ti metal powder having substantially uniformly dispersed Ti boride therein. Figures 8, 4, 2 and 1 do not show Ti boride.
The applicant equally would appear to have problems with the priority document if the samples were the same. The samples in the priority document have designations 86.02 and 91.01. There was some conjecture in the evidence as to whether these were the same as designations NR286 and NR291, and similar designations, in the priority document and the present application. Dr Akhtar stated that sample 86.02 was not the same as 286.02 of Figure 4 of the priority document. This figure also corresponds to Figure 2 of the present application. Professor Schaffer in his first declaration at [112] states that Figure 4’s designation NR286.02 in the priority document appears to correspond to sample 86.02. In evidence in reply, Dr Ott indicated that the equivalence of 86.02 with NR286.02 and 91.01 with NR291.01 was completely consistent with interactions he had with staff at the applicant’s predecessor company at the relevant time. Moreover Dr Ott pointed out an equivalence of the chemistries of sample 91.01 with the first entry under NR291.
Page 5 of the priority document describes sample 91.01 as Ti with 7% aluminium, 2.8% vanadium and 0.25% boron. This corresponds with the first Ti-Al-V-B alloy in Table 1 of the priority document and Table 2 of the present application. It also corresponds with the first entry under the NR291 designation in Table 1 of the present application. While the same specificity is not evident for sample 86.02 equating with NR286.02, the inference is strong. Page 5 of the priority document describes sample 86.02 as containing about 3% boron, the balance being Ti. This corresponds with at least three of the four entries under the NR286 designation in Table 1 of the present application. The second entry of the four under NR286, having 3.17% boron, specifically would qualify as “about 3% boron”.
In differentiating sample 86.02 from NR286.02 (assuming this means the second entry under NR286), Dr Akhtar further stated the image of compound 286.02 was taken on 14 October 2004, as per Figure 4 of the priority document, whereas sample 86.02 was tested on 3rd and 20th June 2005, as per Figures 12-15 of the priority document.
Figure 4 refers to “collection” and is a scanning electron microscope (“SEM”) image. Figures 12-15 contain transmission electron microscope (“TEM”) images. I consider the time frame between the collection of samples, the testing of samples, and the obtaining of various image types to have no bearing on whether samples designated 86.02 and NR286.02 are different.
On balancing the available evidence in this case, I conclude designations 86.02 and NR286.02 are to the same sample, as are 91.01 and NR291.01. Samples 86.02 and 91.01 were stated in the priority document to show non-uniform distribution of boron within Ti particles with the boron probably coating the particles. The claimed invention claims Ti boride substantially uniformly dispersed within a Ti metal powder.
I conclude the claims are not entitled to priority from US Application 60/724166. The claims take the filing date of the present application, 6 October 2006, as their priority date.
PERSON SKILLED IN THE ART
Both parties accepted the person skilled in the relevant art was one with a practical interest in metal alloys, and specifically in processes for producing Ti metal powders or Ti base alloy powders. Both parties also accepted that all the declarants in this case were appropriate experts in this field. There was some discussion about the independence of some of the declarants, the level of experience of some with the art in Australia and that some declarants were inventors with patents and so were over-qualified to be non-inventive persons skilled in the art. Accordingly the parties submitted the evidence of their opposing declarants be appropriately weighted. I will address these issues where necessary in this decision.
CLARITY AND FAIR BASIS OF CLAIMS
Subsection 40(3) of the Patents Act as in force before 15 April 2013 required claims to be clear, succinct and fairly based on the description.
The Subject of the Claims – Titanium Metal Powder
The subject of all the claims is a titanium (“Ti”) metal powder. The opponent indicated that this was inconsistent with terms in the description such that a clear meaning and scope could not be given to the subject of the claims. Page 2A lines 8 and 9 of the description refer to a titanium metal or a titanium alloy. Lines 11 and 13 refer to a Ti powder or a Ti base alloy powder. On pages 3 and 4, Figures 1-4 are stated to show a titanium powder while Figures 5-8 are stated to show a titanium base alloy. In this context, and further noting that claim 1 is restricted to defining powder size and shape with reference to Figures 1-4, the opponent suggested that the claims should thus not be read to include within their scope a Ti base alloy.
The difficulty with this approach then is the defining in the claims of the Ti metal powder having submicron Ti boride. That would suggest the subject of the claims includes an alloy. On the other hand, the specification appears to describe Ti alloys as containing Ti only with the addition of other metals, namely aluminium and vanadium, while there is no description that adding boron would result in a Ti alloy. After some deliberation on the point, the opponent’s Professor Schaffer though, at [31] for example, also came to the conclusion that reference in the claims to the Ti metal powder, with Ti boride, may have included a Ti alloy.
The law is replete on principles of construction. See for example Décor Corporation Pty Ltd v Dart Industries Inc, 13 IPR 385 at 400, a decision from which the principles of construction were cited with apparent approval in Pfizer Overseas Pharmaceuticals v Eli Lilly and Company, [2005] FCAFC 224. Citing some points from [249] of Pfizer, one must read the specification as a whole. The specification should be given a purposive construction rather than a purely literal one. In Nesbit Evans Group Australia Pty Ltd v Impro Ltd, [1997] FCA 1092, Lindgren J added the following to the propositions from Décor Corp. There is a danger in considering the integers of a claim individually and in isolation: the approach can easily yield a literal rather than a purposive construction. The court should avoid too technical or narrow a construction of claims. In Austal Ships Pty Ltd v Stena Rederi Aktiebolag, [2005] FCA 805, the court stated at [71] that the specification, including the claims, is not to be read in the abstract but construed with common sense in the light of the common general knowledge in the art at the priority date.
In the present case, the subject of the claims, a Ti metal powder, may be instructive to define what follows in the body of the claims. On the other hand, in following the above law, one must also have regard to what follows in each of the claims as a whole, and also across the whole claims set, with a view to giving the claims a purposive construction. The evidence in this case indicates it would have been reasonably clear to those skilled in this art that the body of the claims is defining an alloy. The distinction in the description between the terms, Ti powder and Ti base alloy and similar terms, is somewhat artificial in the context of the specification as a whole which is to a Ti boride. I conclude the subject of the claims is capable of reasonable determination and that reference to a Ti metal powder may include a Ti alloy.
The above interpretation also resolves points against several dependent claims made by the opponent as to their compatibility with claim 1, for example claim 15 which defines the Ti metal powder further comprising selected alloyed constituents.
Introducing a Mixture of Metal and Non-Metal Halide Vapors
The opponent submitted there was a lack of clarity and lack of fair basis in respect to this expression in claim 1. By example the opponent stated the claiming of any metal and any non-metal halide vapors was inconsistent with the claimed requirement for a Ti metal powder having submicron Ti boride. In respect to fair basis the opponent stated there was no real and reasonably clear support in the description for the claimed scope of any metal and any non-metal halide vapors which still result in a Ti metal powder having submicron Ti boride.
On the face of it initially, the opponent’s position has some support from Professor Schaffer at [35]. On the other hand he also quickly resolves the point by concluding the feature must include at least a Ti halide and a boron halide. Moreover Professor Schaffer has resolved the point by stating he read the whole of claim 1 and the whole patent specification, that is, exactly as the above-mentioned authorities, such as Pfizer, have discussed.
I conclude the reference to introducing a mixture of metal and non-metal halide vapors is clear and is fairly based.
Ti Metal Powder Having Submicron Ti Boride Substantially Uniformly Dispersed Therein is Sized and Shaped Substantially As Shown in Figures 1-4.
The opponent initially submitted through Professor Schaffer’s evidence at [43] that it was not clear whether claim 1 defined the Ti metal powder or the Ti boride being sized and shaped substantially as shown in Figures 1-4. On the other hand, page 3 of the specification describes Figures 1-4 as being SEM images of a Ti powder. Moreover it was noted that SEM images only show the surface of a material and not any Ti boride that may be uniformly dispersed therein. Professor Schaffer also stated, for example at [43], the figures themselves appeared to show the Ti metal powder. There appeared to be general acceptance of claim 1 defining the Ti metal powder, not the Ti boride, as sized and shaped substantially as shown in Figures 1-4.
The opponent further indicated that the reference to Figures 1-4 meant Figures 1, 2, 3 and 4. Professor Schaffer at [50] stated that Figure 1 had no meaning in the context of size and shape of the powder due to its insufficient clarity. He indicated the size and shape could only have meaning in respect to Figure 2. The opponent thus submitted that Figures 1, 3 and 4 offered no reasonable interpretation for size and shape of the Ti metal powder and thus claim 1 was unclear.
The above-mentioned authorities would again appear to resolve this. For example, from Nesbit (supra), a too technical or narrow construction of claims should be avoided. Also, from Henriksen v Tallon Ltd, [1965] RPC 434, where an omnibus claim referred generally to examples or drawings, any prior art examples or drawings in the specification were taken to be outside the scope of the omnibus claim as their inclusion within scope would have been an absurd result. In the present case, whilst claim 1 refers to size and shape as shown in all of Figures 1-4, if a reasonable interpretation can be drawn from at least one of the figures then I think that suffices. Professor Schaffer has indicated that Figure 2 suffices. Additionally the applicant submitted that Figures 1, 3 and 4 are images of the same powder, only at different magnifications. There are in fact two metal powders shown, designated NR285 and NR286, each of two different magnifications across the four figures. Nonetheless I conclude claim 1 is clear in respect to the reference to Figures 1-4.
The opponent further submitted the above expression was unclear because Professor Schaffer and Dr Akhtar described the illustrated shape of the metal powder differently. Professor Schaffer described the shape as generally spherical and equiaxed while Dr Akhtar at [18] described the powder as a dendritic, coral-like structure. In evidence in reply Professor Schaffer then suggested such a description was meaningless as there are many different types of coral shapes.
The declarants may have described the shape of the Ti powder in quite different terms. On the other hand the descriptions appear to be not too divergent. Professor Schaffer has described the shape as generally spherical (my emphasis). This clearly suggests some latitude from absolutely spherical and perhaps even towards the realm of coral-like. From the figures it appears that loosely spherical may also be an apt description. In any case, as the applicant has submitted, the different words used to describe the shape have no effect on the actual shape illustrated in the figures. The monopoly of claim 1 is determined in respect to what is shown in Figures 1-4. I conclude that claim 1 is capable of reasonable interpretation on this point.
In respect to uniform dispersion, the opponent submitted there was no real and reasonably clear disclosure in the description of uniformly dispersed submicron Ti boride. Figures 1-4 of the application are SEM images showing surface features. There is no Ti boride shown or evidenced as uniformly dispersed in the Ti powder.
The applicant submitted the basis for uniform dispersal is found in the third paragraph on page 6 and in the description of a frillier Ti powder with submicron Ti boride at the top of page 8. On the other hand, the former passage is merely an assertion of the object of uniform boride dispersion being achieved. The specification as a whole, together with the inconsistencies noted above in respect to the priority document, would suggest there is insufficient support for this assertion. It appears that other reaction parameters have contributed to this difference. The present application does not explore the difference, nor show any Ti boride in any diagram or image. The latter passage is in respect to the Ti powder, not Ti boride.
I conclude that claim 1 is not fairly based on the description in respect to the claiming of a Ti metal powder with submicron Ti boride substantially uniformly dispersed therein.
PATENTABLE INVENTION
Section 18 of the Patents Act relates to patentable inventions. Relevant parts of subsection (1) appear below.
(1)Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
(b) when compared with the prior art base as it existed before the priority date of that claim:
(i)is novel; and
(ii)involves an inventive step; and
(c) is useful; and …….
NOVELTY
In referring to several earlier decisions in respect to novelty, the Bristol-Myers Squibb Company v FH Faulding & Co Ltd decision, (2000) 46 IPR 553 at 576, states that what the authorities contemplate is that a prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention.
There may be circumstances where a document can deprive a claimed invention of novelty even though it does not expressly make that complete disclosure of all the integers of the claimed invention. One example is where the skilled reader would understand the disclosure of the prior publication to include a missing integer. Another is where the document contains a direction to use a process that inevitably or inexorably results in something within the claim (Danisco A/S v Novozymes A/S (No.2), [2011] FCA 282 at [248]).
In tracing a history on the subject of anticipation by inevitable outcome since the General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited decision, [1972] RPC 457, the Full Court on appeal in Novozymes A/S v Danisco A/S, [2013] FCAFC 6 at [145] – [147], did not appear to alter the above position put by the primary judge.
The opponent initially indicated in written submissions that three documents were relied upon. At the hearing this number was reduced to two.
D1 – US 6409797 – Armstrong
The opponent submitted the claimed invention lacked novelty in the light of D1. The opponent acknowledged that some claimed features were not explicitly disclosed. The opponent stated these features were an inevitable result of the process, or inherent or implicit or a matter of course to the skilled addressee equipped with the common general knowledge in the art.
The applicant submitted there were no clear and unmistakable directions to produce the claimed product. Specifically D1 does not describe or suggest mixing metal halides with non-metal halides.
Boron is often considered neither a metal nor a non-metal, sometimes called a metalloid. There was a general consensus at the hearing that boron is more non-metal than metal. For the purposes of this decision, I will regard boron as a non-metal.
D1 discloses the Armstrong process. As mentioned earlier, the Armstrong process used titanium tetrachloride (“TiCl4”) gas injected through a nozzle into flowing molten sodium acting as a reducing agent. D1 further discloses that the process may be practiced with the use of any alkali or alkaline earth metal depending on the metal or non-metal to be reduced. Moreover, D1 states that any halide or combination of halides may be used although in most circumstances chlorine is preferred. Alloys of a predetermined composition may be made by providing mixed metal halides at the beginning of the process in the required molecular ratio. For example metals like aluminium and vanadium can be mixed with the TiCl4, also as chlorides in gas phase, so that different types of titanium alloys can be produced such as Ti 6-4 which is the most commonly used Ti alloy with about 6% aluminium and about 4% vanadium. Table 1 of D1 lists some feedstock and includes AlCl3 and VCl4. Notably, boron trichloride (“BCl3”) is also listed.
There are some indications in D1 that metal halides are not combined with non-metal halides. The detailed description in column 3 opens with discussing the use of any alkali or alkaline earth metal depending upon the metal or non-metal to be reduced. Column 3 lines 34 and 35 mention the possibility of making alloys of predetermined composition by providing mixed metal halides only. Mixed non-metal halides are not mentioned, and specifically the mixing of metal halides together with non-metal halides is not mentioned here. On the other hand, D1 states at column 3 lines 23 and 24 that any halide or combination of halides may be used. Moreover, claim 1 of D1 defines a method of producing an elemental material, selected from several elements, or an alloy thereof from a halide vapor of the elemental material or mixtures thereof. Ti, aluminium, vanadium and boron, amongst others, are all part of the available selection in claim 1 of D1. It seems that D1 covers the mixing of metal and non-metal halide vapors.
Professor Schaffer, at [21] of his first declaration, mentions that, in the Armstrong process, other elements such as metals like aluminium and vanadium can be mixed with the TiCl4, also as chlorides in the gas phase, such that different types of Ti alloys can be produced such as Ti 6-4. The TiCl4, AlCl3 and VCl4 would be mixed as gases and injected into the molten sodium. It is noteworthy that Professor Schaffer mentions “other” elements and then mentions metals merely as an example. There would thus appear to be no restriction on mixing non-metal halides together and with TiCl4, or on mixing non-metal and other metal halides together with the TiCl4.
Professor Schaffer’s reference to Ti 6-4 clearly describes the mixing of TiCl4, AlCl3 and VCl4 from Table 1 of D1. Table 1 lists 14 feedstocks. BCl3 is also mentioned as a feedstock in Table 1 of D1. Moreover the present specification acknowledges the known properties of small boron additions to Ti alloys of important improvements in strength, stiffness and microstructural stability. I conclude that D1 sufficiently contains a direction to disclose the production of a Ti metal powder with Ti boride dispersed therein by the same process steps as claimed in at least claim 1 of the present application.
D1 discusses particle size in one procedure at column 7 lines 43-47. Particle size of the substantially pure titanium ranged between about 0.1 and about 10 microns with a mean of about 5.5 microns. The lower end of the range is submicron and any boride present would be even smaller. I regard the claimed feature of a Ti metal powder having submicron Ti boride as anticipated.
The specification at page 2 lines 32-35 announces that the Armstrong process as disclosed in D1, amongst other patents, appears very unexpectedly to give uniform distribution of very fine submicron Ti boride within the Ti or Ti alloy powder. On the other hand, the priority document states there was non-uniform distribution of boron within Ti particles. A passage from the General Tire (supra) case as quoted in the Full Court decision in Novozymes (supra) at [145] appears to be pertinent in this regard.
“… if carrying out the directions contained in the prior inventor’s publication will inevitably result in something being made or done which, if the patentee’s patent were valid, would constitute an infringement of the patentee’s claim, this circumstance demonstrates that the patentee’s claim has in fact been anticipated.
If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee’s claim, but would be at least as likely to be carried out in a way which would not do so, the patentee’s claim will not have been anticipated, although it may fail on the ground of obviousness.”
In the present case, different outcomes have been announced in respect to Ti boride distribution in the priority document compared to the present application even though the Armstrong process was used in each case. It appears that other parameters have contributed to this difference. As mentioned earlier, the present application does not explain this difference. D1 is wholly silent on the point. In following the directions of D1, it appears the claimed boride distribution feature is capable of being anticipated by D1, yet at least as likely to also not be anticipated. I conclude this claimed feature is not clearly an inevitable result of following D1.
Claim 1 concludes with the feature of boron being present up to about 4% by weight of the Ti metal. There is no disclosure of this feature in D1.
I conclude that claim 1 is novel over D1. Since the remaining claims are all directly or ultimately appended back to claim 1, then I find those claims are also novel over D1.
D2 – US 2006/0102255 – Woodfield et al
This document was published on 18 May 2006. Since the present claims take the filing date of the application, 6 October 2006, as their priority date, D2 is available prior art.
D2 relates to a Ti-base composition containing boron. At [0008], it is stated that the intra-granular Ti boride particles distributed in the Ti matrix are typically well below 1 micrometer in their largest dimensions. Moreover, at [0020], D2 mentions the boride dispersion being substantially uniformly distributed. D2 at [0054] also discusses one preferred reduction approach, termed vapour-phase reduction, of mixing TiCl4, a boron chloride and the halides of other metallic alloying elements as gases and contacting the mixture with molten sodium to reduce the halides. D2 at [0054] further mentions the approach being described in two US patents and a US application. The patents are US 5779761 and US 5958106, and D2 states to incorporate them by reference. These patents also make up two of the three above-mentioned US patents that the present specification incorporates by reference although an accepted error is present in the numbering of one of the patents in the present specification. They disclose the Armstrong process, including BCl3 in Table 1 of those two patents as for D1 above. Through adoption of the approach and the incorporation of these patents into D2 by reference, I would conclude the Armstrong process is disclosed and applied in D2. Consequently, for the same reasons as for D1, I conclude that D2 also sufficiently contains a direction to disclose the production of a Ti metal powder with Ti boride dispersed therein by the same process steps as claimed in at least claim 1 of the present application.
In respect to the claimed size and shape of the Ti metal powder with respect to Figures 1-4, the opponent submitted through Professor Schaffer’s first declaration at [125] and [134] that the size and shape substantially as shown in Figures 1-4 would have been an inherent size and shape that would be produced by use of the Armstrong process. At [125], Professor Schaffer indicated that the size and shape of the Ti powder shown in Figures 1-4 were characteristic of a porous and low apparent density powder and referred to the Armstrong powder having such characteristics. Professor Schaffer particularly stated at [134] that in his opinion there is nothing particularly unique or different about the size and shape of the Ti metal powder shown in Figures 1-4 that would not have been expected from a Ti metal powder produced by the Armstrong process prior to the application.
The applicant submitted the application stated at page 8 that the SEMs of Figures 1-8 show that the 6-4 powder and/or the Ti powder is frillier than the previously made 6-4 powder. However frills normally define decorative or ornamental edging, or endings perhaps, for example of woven material, such as of curls in hair. See for example the online Oxford English Dictionary The term appears to be a vague term in the context of Ti powders. Even if a proper meaning could be ascribed to define the shape of a Ti powder in this way, the term is merely a relative term. It is open for the term to mean the claimed powder may be significantly frillier or only marginally frillier or anywhere in between when compared to the prior powder. I think the term is of little, if any assistance, to differentiate the claimed Ti metal powder by shape.
The applicant further submitted that speculation as to whether the Armstrong process would inevitably lead to a powder having the claimed size and shape cannot satisfy inherency.
Speculation would not appear to be an issue in this case. As noted above, D2 sufficiently contains a direction to disclose the production of a Ti metal powder with submicron Ti boride by the same process steps as claimed in the present application. That is, the claimed process steps per se and the Armstrong process as incorporated by reference in D2 are the same.
D2 contains figures stated to show idealized microstructures of the metallic article. Ti boride particles are shown within a polycrystalline Ti matrix. There are no SEM images in D2 of a Ti powder as there are in the present application. Consequently there is nothing to contradict Figures 1-4 of the present application. The Armstrong process is applied in D2 in at least one embodiment. Professor Schaffer has stated at [134] of his first declaration that there is nothing particularly unique or different about the size and shape of the Ti metal powder shown in Figures 1-4 that would not have been expected from a Ti metal powder produced by the Armstrong process prior to the application. I conclude, on the available evidence in this case, that a Ti metal powder sized and shaped substantially as shown in Figures 1-4 would be an inherent result of following the directions in D2.
The applicant submitted the presence of boron up to 4% by weight was not disclosed in D2. Rather the applicant contended D2 disclosed a boron weight percentage up to 17%. On the other hand, paragraph [0012] of D2 mentions that the amount of boron present in the material may be considered in two ranges, the first being a hypoeutectic range which for the Ti-boron binary system is from about 0.05 to about 1.5% by weight boron. The same paragraph further describes the present approach permitting the preparation of materials having the same boron content as may be achieved with other techniques, typically up to about 5% by weight of boron. I am satisfied the presence of boron up to about 4% by weight of the Ti metal is adequately disclosed in D2.
I conclude that claim 1 of the present application is not novel over D2.
In respect to the dependent claims, the applicant’s novelty table in its submissions acknowledged the additional features in many of these claims were disclosed in D2. The applicant noted though that, for several of the remaining claims, D2 needed to be combined with at least one of the above-mentioned US patents incorporated by reference in order to disclose the claimed features. As D2 is available prior art, and the incorporation of the US patents therein is explicit, there is no barrier to constituting these documents as a single source of information in this case; Nicaro Holdings Pty Ltd v Martin Engineering Co., [1990] FCA 40, 16 IPR 545.
I conclude claims 2, 5-13, 15 and 16 are also not novel over D2.
INVENTIVE STEP
In respect to inventive step, the Wellcome Foundation Ltd v VR Laboratories (Aust.) Pty Ltd decision, (1981) 148 CLR 262 at 280, states the question is whether the invention would have been obvious to a hypothetical skilled addressee armed with the common general knowledge at the priority date. Also from that decision at page 286, an appropriate test is whether a person skilled in the relevant field, and 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.
The High Court in Aktiebolaget Hassle v Alphapharm Pty Limited, (2002) 56 IPR 129 at [50] – [53], appeared to approve of the Wellcome (supra) test. In discussing what was meant by a matter of routine the High Court noted and accepted an affinity with the approach in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd, (1970) 87 RPC 157, of whether the person skilled in the art would directly be led as a matter of course to try what was claimed in the expectation that it might well produce a useful alternative. In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd[No. 2], [2007] HCA 21, (2007) 235 ALR 202, general principles regarded to be of continuing relevance, at [50] – [52], were that “obvious” means “very plain”, a scintilla of invention remains sufficient to support the validity of a patent, there must be some difficulty overcome, some barrier to be crossed, and an invention must be beyond the skill of the calling.
Common General Knowledge
The opponent submitted that several items were common general knowledge before the priority date. The crucial items were the Armstrong process and that boron was generally known to be used in Ti alloys to form Ti boride to provide improvements in strength, stiffness and microstructural stability.
The opponent further relied on Professor Schaffer’s evidence, for example at [21], to submit the following aspects of the Armstrong process were common general knowledge. TiCl4 was injected through a nozzle into flowing molten sodium acting as a reducing agent. A low apparent density Ti-based powder was produced. Other elements such as metals like aluminium and vanadium could be mixed with the TiCl4, also as chlorides in gas phase, so that different types of alloys could be produced, such as Ti 6-4. Ti 6-4 was the most commonly used Ti alloy. TiCl4, aluminium chloride and vanadium chloride would be mixed as gases and injected into the molten sodium. Molten magnesium could also be used as a reducing agent.
The applicant accepted the above aspects were common general knowledge. On the other hand the applicant submitted the use of non-metal chloride vapours in the Armstrong process was not common general knowledge. Professor Schaffer indicated, for example at [91], that he was not aware of boron halide vapours being used in the Armstrong process. I agree with the applicant’s position on this point.
Whether There is an Inventive Step
Common General Knowledge Alone
In terms of whether the common general knowledge alone provides a basis to find lack of inventive step, the following features of claim 1 seem to be pertinent. Claim 1 defines submicron Ti boride and the uniform dispersal thereof in a Ti metal powder. The Ti metal powder is also claimed as sized and shaped substantially as shown in Figures 1-4. Furthermore, boron is present up to about 4% by weight of the Ti metal.
The opponent submitted through Professor Schaffer’s evidence that the first three points were not unexpected. Rather the points were the results of following the Armstrong process which itself was common general knowledge.
It may be that the claimed Ti boride size, uniform dispersal thereof, and Ti metal powder size and shape were the results of the Armstrong process. Equally though, this would appear not necessarily to be guaranteed in all cases. As mentioned under the novelty discussion above, other parameters of the reduction process would appear to, and further be expected to, contribute to the outcome. I am not prepared to state these features were inevitably common general knowledge, even where the Armstrong process itself was common general knowledge.
In respect to the claimed amount of boron, Professor Schaffer’s comments are noteworthy. He is arguably the principal Australian declarant in these proceedings with the most comprehensive statements about the state of the Ti metal field prior to the priority date. Professor Schaffer has stated at [91] of his first declaration that he was not generally aware of a boron halide vapor being used in the Armstrong process. I would therefore conclude the inclusion of boron up to about 4% by weight of the Ti metal was not common general knowledge at the relevant time.
Overall I conclude the claimed invention has an inventive step in the light of the common general knowledge taken alone.
Inventive Step In Light of Prior Art Documents
At the relevant time, subsection 7(3) restricted prior art information used to support lack of inventive step to that which the person skilled in the art could be reasonably expected to have ascertained, understood and regarded as relevant.
In Rohm and Haas Company v Nippon Kayaku Kabushiki Kaisha and Sankyo Company, Limited, [1997] APO 40, it was stated:-
“A document would be ascertained if it was published in such a manner or form that it could reasonably have been expected to be found by a person skilled in the art. A patent document dealing with the same technical issues would prima facie have been ascertained by a person skilled in the art. The requirements of understood and regarded as relevant are not likely to be an issue where a document relates to the same art as the problem.”
Professor Schaffer at [16] of his first declaration stated that he routinely used and periodically searched patent literature, amongst other literature, as a source of information before the priority date. At [128] Professor Schaffer also stated that he would have investigated details of the Armstrong process by searching journal articles and patent databases. In answer, Dr Akhtar indicated some inconsistency in Professor Schaffer’s evidence. Dr Akhtar at [9] noted that Professor Schaffer stated at [14] that he was not aware of the present application. In evidence in reply, Professor Schaffer stated that keeping abreast of developments by searching patent databases yet not being aware of a specific patent is not an inconsistency.
The applicant further submitted it was impermissible to start with the problem of producing Ti boride using the Armstrong process to determine whether the person skilled in the art would have ascertained a particular document. I would agree with this. The problem stated in the specification is a more generic one. That is the imperfect distribution and size of the boride particles in Ti powders with previous approaches for accomplishing boron addition.
D1 by title and abstract relates to the making of metals and other elements from halides or mixtures thereof. A particular applicability to Ti is also mentioned. D2, also with reference to title and abstract, relates to an article having a dispersion of ultrafine Ti boride particles in a Ti-base matrix. In respect to the opening subject matter of D1 and of D2, and in the context of the generic problem outlined above, and Professor Schaffer’s indications of referring to patent databases, I am satisfied a person skilled in this art could be reasonably expected to have ascertained D1 and D2.
D2 – US 2006/0102255 – Woodfield et al
From the novelty discussion above, claims 1, 2, 5-13, 15 and 16 were not novel over D2. I would similarly find that these claims do not have an inventive step over D2.
Claim 3 additionally defines Ti boride dispersed within most of the particles forming the powder. Claim 4 additionally defines Ti boride dispersed within substantially all of the powder. Claim 14 claims Ti boride in at least half of the particles.
Professor Schaffer discusses the dependent claims at [135] of his first declaration. In respect to claims 3, 4 and 14, amongst others, Professor Schaffer indicates that these features would have been expected or achieved by routine variation of reaction parameters or be promoted by the Armstrong process. I concur with these views. These claims also add minimally, if anything, to the substantially uniform dispersion of Ti boride as defined in claim 1.
I conclude that claims 3, 4 and 14 do not have an inventive step over D2.
D1 – US 6409797 – Armstrong
In respect to D1, the key differences of the claimed invention, as in claim 1, over D1 are the substantially uniform dispersal of Ti boride and the presence of boron up to about 4% by weight of the Ti metal.
100. In respect to the dispersal of boride I found earlier that in following the directions of D1, the claimed boride distribution feature is capable of being anticipated by D1, yet at least as likely to also not be anticipated. Other reaction parameters beyond the disclosures of D1 would appear to be determinative of the outcome. It is arguable whether the uniform dispersion of Ti boride could have been achieved at the relevant time without further inventive faculty being applied or further testing beyond routine testing. The specification states the Armstrong process unexpectedly produces this result. Professor Schaffer stated there was no evidence to allow a determination of the presence of such a feature to be made. I conclude the parameters required to produce this result in following the directions of D1 are not obvious. Therefore I find the claimed feature of uniform dispersion of Ti boride in a Ti metal powder is not obvious when compared to D1.
101. At [29] – [33] of his second declaration, Professor Schaffer stated that he would have considered the presence of boron up to 4% by weight as a routine percentage to try. He stated that D1 informs him to add boron as an option. As a matter of routine, Professor Schaffer would start at 1% boron by weight, then try 2%, 3%, 4%, 5%, etc, until the process stopped working. Professor Schaffer further mentioned that the presence of boron would be expected, before the priority date to improve mechanical properties such as strength. The specification itself acknowledges in its opening background statement that relatively small boron additions to conventional Ti alloys provide improvements in strength, stiffness and microstructural stability.
102. For the applicant, both Dr Akhtar and Associate Professor Finlayson noted that the supposed unexpected advantages of boron addition were not discussed by Professor Schaffer or in D1. Both of the applicant’s declarants stated the addition of boron reduced the sodium content of the resulting Ti product. Professor Schaffer and Dr Ott challenged this. Professor Schaffer at [37] of his second declaration referred to Table 2 of the application to state that the addition of aluminium and vanadium had a bigger impact on reducing sodium content than the addition of boron. Dr Ott presented statistical analysis at [10] on the data in Table 2 to conclude that other variables have a more significant effect on the mean sodium level of the resulting material than boron.
103. The relevance of the impact on sodium content is not immediately apparent. The problem stated in the specification is the imperfect distribution and size of boride under previous approaches of boron addition to Ti alloys. The Armstrong process was a known process principally using TiCl4 injected into a reducing agent to produce Ti. Professor Schaffer has stated that D1 informs him to add boron as an option and that he would as a matter of routine have added boron incrementally. I am satisfied a person skilled in the art would directly have been led as a matter of course to try the incremental addition of boron in the expectation that it might well have produced a useful alternative. Thus, I conclude the feature of the presence of boron up to 4% by weight is obvious.
104. In respect to D1, the claimed feature in the present application of uniform dispersion of Ti boride in a Ti metal powder is not obvious. I conclude that claim 1 has an inventive step over D1. Since the remaining claims are all directly or ultimately appended back to claim 1, then I find those claims also have an inventive step over D1.
MANNER OF MANUFACTURE
105. The opponent submitted the alleged invention, as described in the specification, concerns the use of a boron halide vapour in the known Armstrong process to produce submicron Ti boride dispersed uniformly within the produced Ti powder. The opponent asserted that nothing on the face of the specification demonstrates anything other than the known Armstrong process. The specification indicates the Armstrong process was known as was the boron addition to Ti alloys.
106. The NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd case, [1995] HCA 15, 183 CLR 655, considered whether there was a general threshold requirement of newness or inventiveness in S18(1)(a) of the Patents Act. The decision states that the threshold requirement of an alleged invention means that, if it is apparent on the face of the specification that the quality of inventiveness necessary for there to be a proper subject of letters patent is absent, one need go no further.
107. In the present case, the specification admits prior knowledge of relatively small boron additions to conventional Ti alloys. The specification also admits the existence of the Armstrong process. The applicant submitted though that the invention lay in realising that the problems of imperfect distribution of boride and size when boron was added to Ti could be solved through use of the Armstrong process. This is clear from the specification. For example the foot of page 2 describes the Armstrong process as very unexpectedly giving uniform distribution of submicron Ti boride. Also, page 4 describes equipment for the alleged invention as similar to that for the Armstrong process with the exception of additional boilers to the TiCl4 boiler, with the additional boilers including a boiler for BCl3. Essentially the alleged invention, as described on the face of the specification, may be deemed to be a new combination of known features.
108. I conclude the application relates to a manner of manufacture.
CONCLUSION
109. I have found the present claims are not entitled to their claimed priority date. They take the filing date of the application, 6 October 2006, as their priority date. Furthermore I have found that claim 1 is not fairly based on the description in respect to the claiming of a Ti metal powder with submicron Ti boride substantially uniformly dispersed therein.
110. I have concluded that claims 1, 2, 5-13, 15 and 16 are not novel over D2, that being US 2006/0102255. Similarly I have concluded that these claims do not have an inventive step over D2.
111. Furthermore I have concluded that claims 3, 4 and 14 do not have an inventive step over D2.
112. There may be suitable amendments that could be made to the claims to overcome the above deficiencies. I allow the applicant two (2) months from the date of this decision in which to propose suitable amendments.
COSTS
113. The opponent generally submitted that costs should follow the event. If the opponent were unsuccessful then the opponent submitted the applicant’s amendment made during the opposition should be taken into account in apportioning costs. The applicant submitted that costs should follow the event.
114. The opponent has been successful in this opposition. I see no reason to vary the normal practice that costs follow the event. I award costs in accordance with Schedule 8 against the applicant, Cristal Metals Inc.
M G Kraefft
Delegate of the Commissioner of Patents
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