Commonwealth Scientific and Industrial Research Organisation v Asterol International

[1994] APO 77

official notice

decision of a delegate of the commissioner of patents

Application        :  No.633084 in the name ofCOMMONWEALTH SCIENTIFIC AND INDUSTRIAL RESEARCH ORGANISATION

Title:  CHOLESTEROL REMOVAL.

Action: Opposition under section 59 of the Patents Act 1952 by ASTEROL INTERNATIONAL.

Decision:  Issued            .

Abstract:  Opposition successful as specification does not comply with S40; opportunity to amend and respond to comments; regulation 5.11 invoked to apply procedural fairness to the parties; decision reserved in relation to documents to which regulation 5.11 applies.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No.633084 by COMMONWEALTH SCIENTIFIC AND INDUSTRIAL RESEARCH ORGANISATION, and an opposition under section 59 of the Patents Act 1952 by ASTEROL INTERNATIONAL.

BACKGROUND

Patent application no.633084 was filed by the Commonwealth Scientific and Industrial Research Organisation (CSIRO) on 8 May 1990 and it was advertised accepted on 21 January 1993.  A notice of opposition was filed by Asterol International (Asterol) on 21 April 1993.

As the application was filed before but accepted after the commencement of the Patents Act 1990, section 59 of the Patents Act 1952 and Chapter 5 of the Patent Regulations 1991 apply in relation to the opposition.

Service of the evidence was completed on 18 March 1994.  The opposition was set down for hearing in Canberra on 26 August 1994 in conjunction with a hearing on CSIRO's application no.630446 which is also opposed by Asterol.

Asterol's attorneys requested the hearing be deferred to after the hearing of CSIRO's opposition to Asterol's application no.627708.  I note Asterol is relying on application no.627708 as a citation in the present opposition.

CSIRO argued the hearing should not be deferred because an extensive period would be required to finalise the opposition to application no.627708.  It submitted the public interest would be best served by a quick resolution of the present opposition.

A delegate of the Commissioner informed CSIRO and Asterol there is no reason for deferral of the hearing.  This decision is based on the decisions in Genetic Systems v Johnson & Johnson (27 IPR 277) and W R Grace & Co v Vikase Corporation (unreported decision on patent application no.606573 dated 15 July 1994).

In a letter dated 25 August 1994 Dr I Ernst, patent attorney of Shelston Waters, Sydney, representing Asterol stated the opponent would not be attending the hearing.  Instead Dr Ernst filed written submissions.  In these submissions he argues the hearing of the opposition to application no.630446 should precede the hearing of the opposition to application no.633084.

At the hearing CSIRO was represented by Mr M Royal, patent attorney of Phillips Ormonde & Fitzpatrick, Melbourne, assisted by Mr M Bell, also of Phillips Ormonde & Fitzpatrick.  Dr D Oakenfull, who is named as one of the inventors of application no.633084, was also present.  Mr Royal agreed the hearing of the opposition to application no.630446 should precede the hearing of the opposition to application no.633084.

THE SPECIFICATION

The accepted specification begins by stating the invention concerns a method for removing cholesterol from organic or biological materials, such as lipid containing foodstuffs of animal origin, especially milk and dairy products.  It describes the health risks attached to high plasma cholesterol levels and states there is considerable international interest in reducing the cholesterol level of dairy products.

The specification states the invention is:

"a method for removing cholesterol from organic or biological substances of animal origin wherein such substances are contacted, in emulsion form, with a cholesterol adsorbent comprising a steroid, a triterpene or a cyclodextrin and/or mixtures thereof chemically bonded to a support."

The description describes typical examples of steroids, triterpenes and cyclodextrins and support materials.  The specification lists the characteristics of suitable support materials and gives typical examples.  The description notes the adsorbent itself may be the support if it can be presented in the form of relatively insoluble particles.

According to the description it is surprising the adsorbents work effectively at lower temperatures.  Conventional thinking suggested higher temperatures would be required to obtain a satisfactory degree and ratio of adsorption.

The specification ends with 18 claims and claim 1 reads as follows:

1.     A method for removing cholesterol from organic or biological substances wherein such substances are contacted in emulsion form, with a cholesterol adsorbent comprising a steroid, a triterpene or a cyclodextrin or a cyclodextrin, and/or mixtures thereof, chemically bonded to a support.

The other claims are all directly or indirectly dependant on claim 1.

STATEMENT OF GROUND AND PARTICULARS

The grounds of opposition which were pursued at the hearing are those specified in paragraphs (c), (e), (g), (h) and (i) of subsection 59(1) of the Patents Act 1952, viz. prior claiming, prior publication, obviousness, lack of novelty, and non-compliance with section 40.

THE EVIDENCE

The evidence in support consists of a statutory declaration made by Professor Roberts which has 11 exhibits attached.  Two statutory declarations made by Ms Pettit-Young give the publication dates of some of the exhibits attached to Professor Roberts declaration.

The evidence-in-answer consists of a statutory declaration made by Dr Oakenfull, which has 2 exhibits attached.  A statutory declaration made by Ms Crothers gives the publication dates of the exhibits attached to Dr Oakenfull's declaration.

The evidence in reply consists of a statutory declaration made by Professor Roberts which has 23 exhibits attached.  These exhibits include a statutory declaration made by Jossette Dangain which has 3 exhibits attached.

I will refer to this evidence at appropriate places in the decision.

THE SUBMISSIONS

Mr Royal points out the regulations to the Patents Act 1990 provide for the lodgement of a statement of grounds and particulars. Therefore he submits any issue that is not raised by the particulars should be ignored for the purpose of this opposition.

Mr Royal notes there are many points in Asterol's evidence, especially about section 40 matters, which are not described in the statement of grounds and particulars.  Accordingly Mr Royal said he would only address the points in the evidence which refer to those grounds and particulars described in the statement.

Mr Royal also notes a practice had developed during oppositions under the Patents Act 1952 whereby the Commissioner or his delegate could raise grounds of opposition, especially issues under section 40, during the hearing. But he submits the requirement for a statement of grounds and particulars made this practice inappropriate except in the most clear cases. Mr Royal argues the applicant does not know the case it has to meet if issues not in the statement of grounds and particulars are raised.

According to subsection 234(3) of the 1990 Act Part V of the 1952 Act applies to the present opposition.  This part of the 1952 Act includes subsection 60(2) which empowers the Commissioner to decide the case by taking into account a ground of opposition whether relied upon by the opponent or not.  I note this power to decide the case is not restricted by any other section of the Act.  I also note subsection 228(1) only allows regulations to be made which are "not inconsistent with this Act".

In my view Mr Royal's interpretation of the effect of the statement of grounds and particulars means the relevant regulation would be restricting my power to decide the case under subsection 60(2) of the 1952 Act.  I do not agree with Mr Royal's interpretation as this means the regulation would be inconsistent with the Act.  Therefore I consider I may take into account a ground of opposition not relied on by Asterol as long as I apply procedural fairness to CSIRO (Kioa v West 159 CLR 550).

Dr Ernst filed written submissions on behalf of Asterol before the date of the hearing.  I will consider these submissions at appropriate places in the decision.

DECISION

Notice of entitlement

Subsequent to the hearing I wrote to both parties about the notice of entitlement and allowed them 14 days to file written submissions.  Both parties filed written submissions within the time I allowed.

Asterol's submission argues it is not inherent in the notice of entitlement on file that priority is to be claimed from the provisional application filed.  It also argues the notice implies there is no claim for priority.  Therefore Asterol submits an amendment to include these priority details would materially alter the meaning or scope of the notice of entitlement.  In Asterol's view such an amendment should be advertised under regulation 10(2)(b)(ii) to allow other parties to oppose the amendment before it is allowed.

I think replacement of the notice of entitlement on file will materially alter the meaning or scope of the notice presently on file if it suggests the claims may have an earlier priority date than suggested by the present notice.

There are two notices of entitlement on file, one lists the names of the actual inventors but claims priority from a PCT application with an unspecified number.  The other does not list the names of the actual inventors but claims priority from an associated provisional application with an unspecified number.  Application no.633084 is based on application no. which was accopmanied by a provisionalspecification.  In my view neither of these notices states CSIRO's entitlement to application no.633084.

Mr Royal points out under the 1952 Act an application accompanied by a provisional specification followed by a complete after provisional specification is a single application.  He also points out subsection 234(2) of the 1990 Act means this Act applies to application no.630446 as if the application is a complete application under the 1990 Act.  Therefore Mr Royal submits the notice of entitlement does not need to refer to application no.PJ4097.  I agree with this submission.

I think a new notice of entitlement which does not refer to a PCT application with an unspecified number or an associated provisional application with an unspecified number will not suggest the claims of application no.633084 may have an earlier priority date than suggested by the present notices.  Consequently I consider CSIRO must replace the notice of entitlement presently on file.

Section 40 Matters

Particular 1(A) states the claims are not fairly based on the description because of the wide scope of the phrase "organic or biological substances".  In Dr Ernst's opinion claim 1 is speculative.  He argues the claimed method uses any organic or biological substance when milk and butterfat are the only substances used in the methods described.

Mr Royal submits the claimed method does not apply to any organic or biological substance.  He argues the method only applies to those substances which are emulsions or can be converted into emulsions.  Mr Royal also argues the specificcation does not have to describe a specific example for each substance that falls within the scope of the claims.  He says it is impossible to do this even in the simplest cases.

Dr Oakenfull considers the formation of an emulsion is a central aspect of the present method.  I note claim 1 claims a method which uses a substance in emulsion form.  I also note page 1a of the specification states the biological material should be dispersed in a suitable liquid to form an emulsion if it is not in emulsion form.

I think the requirement for the substance to be in emulsion form means the claimed method does not use any organic or biological substance.  Rather the method only applies to those substances which are emulsions or can be converted into emulsions.

I think there is a real and reasonably clear disclosure in the description of what is claimed in claim 1.  This means what is claimed is described in a general sense in the description (Rehm Pty Ltd v Webster Security Systems (International) Pty Ltd 11 IPR 289 at page 304). Therefore I am satisfied claim 1 is fairly based on what is described in the specification.

Particular 1(B) states claims 5 and 6 are not fairly based on the specification because they define reaction temperatures which are not described in any of the examples.  Mr Royal submits the temperatures defined in claims 5 and 6 are consistent with those disclosed in the description.  Dr Oakenfull considers the temperatures defined in claims 5 and 6 are preferred for substances where problems of spoiling may arise.

I consider what is claimed in claims 5 and 6 is described in a general sense in the description (Rehm Pty Ltd v Webster Security Systems (International) Pty Ltd supra).  Therefore I am satisfied claims 5 and 6 are fairly based on what is described in the specification

Particular 1(C) states claims 1 to 14 are unclear and speculative insofar as they refer to "chemically bonded to a support".  Professor Roberts in his declaration-in-support argues the specification fails to indicate which support materials would be useful with which adsorbent.  Therefore he believes the reference to "chemically bonded to a support" is broad and speculative.

The general description in the specification describes a range of suitable supports and the methods described in the specific examples use silica and polymethylmethacrylate as supports.  Dr Oakenfull points out page 2 of the specification lists the requirements for suitable support materials

I consider the list of requirements on page 2 of the specification provides sufficient guidance to enable the skilled person to choose a combination of adsorbent and solid support to use in the claimed method.  Consequently I am satisfied claim 1 and dependant claims are not speculative insofar as they claim the adsorbent is "chemically bonded to a support".

Particular 1(D) states claims 1 to 14 are not fairly based on the specification because suitable triterpenes are described in the specification but none are used in the methods described in the specfic examples.

Professor Roberts' declaration-in-support points out the method specifically described for attaching cyclodextrin to a support is different to that described for a particular steroid.  In his opinion the method for attaching a triterpene to a support will also be different.  He believes finding out how to attach a triterpene to a support will need extensive experimentation.

Dr Oakenfull asserts there is nothing peculiar about attaching triterpenes to a support which requires different techniques to those used for steroids.  Professor Roberts' declaration-in-reply does not dispute Dr Oakenfull's assertion.  I conclude the skilled person could adapt the methods described for attaching cyclodextrins and steroids to supports and apply them to triterpenes.

Dr Ernst's written submissions include arguments about issues which are not raised in Asterol's statement of grounds and particulars.  I will not consider these arguments.

Claim 1 claims the substances are contacted with the adsorbent in "emulsion form".  Dr Oakenfull considers the creation of an emulsion is a central aspect to the method.  He states it is unlikely in biological systems in emulsion form for the other phase to be anything other than water.  Dr Oakenfull also states it is not important which of the water or oil/fat is the continuous phase.

I note the only emulsions disclosed in the present description are aqueous emulsions which have water as the continuous phase.  In my view the emulsions defined by the claims are not necessarily aqueous emulsions which have water as the continuous phase.  Therefore the claims may not be fairly based on the description as they do not restrict the emulsion to aqueous emulsions which have water as the continuous phase.

A definition at page 2 of the specification reads as follows:

"The term "emulsion" as used herein is intended to include micellar solutions or cholesterol-containing fat associated with protein as in lipoproteins."

The definition includes the phrase "cholesterol-containing fat associated with protein as in lipoprotein".  Dr Oakenfull considers this phrase clarifies the definition of "emulsion" as it applies to foods such as eggs, cream and milk in so far as the stabilized fat droplets may have attached protein as in the case of a lipoprotein.  He says:

"...a lipoprotein can be understood as a particle having both protein and fat components, as in the case of a fat droplet with protein associated at the fat/water interface."

I note Dr Oakenfull interprets the phrase to mean a dispersion of a cholesterol-containing fat associated with protein.  I also note he considers the creation of an emulsion is central to the invention.  I consider the definition of this term should not be ambiguous if the creation of an emulsion is central to the present invention.

I think the skilled reader of the specification may interpret the phrase "a cholesterol-containing fat associated with protein" in a similar way to Dr Oakenfull.  But, in my view, the skilled person may give the phrase its plain meaning of a cholesterol containing fat associated with protein per se.  Consequently I think the invention may not be fully described because the definition of "emulsion" on page 2 of the specification is ambiguous.

The broadest description of the invention on page 1a in the specification describes a method which uses adsorbents chemically bonded to a support.  According to page 2 suitable support materials will be essentially inert to cholesterol.  It seems to me this is an essential feature of the support.

Page 2a of the specification explains the adsorbent may itself be the support if it can be presented in the form of relatively insoluble particles.  In my view the "support" in this case will not meet the requirement that it is essentially inert to cholesterol.

Page 2a then states as follows:

"This may be achieved by bonding the adsorbent to itself in such a way as to have active groups on the suface of the particles.  The adsorbent may be cross linked to promote insolubility."

I note this paragraph does not necessarily mean the adsorbent is chemically bonded to itself or the adsorbent is insoluble if there is no other support.

The specification states the examples describe the invention.  The method described in example 6 uses cross linked adsorbents without any other support.  It is not clear to me if the active groups in example 6 are on the suface of the particles.  But I think it is clear the "support" is not essentially inert to cholesterol.

The method described in example 7 uses the adsorbent cyclodextrin chemically bonded to an adsorbent steroid without any other support.  I think it is clear the "support" in this case is not essentially inert to cholesterol.

According to the specification mixtures of adsorbents chemically bonded to a support may be used.  The only specific disclosure of a mixture is in example 7 which describes two adsorbents chemically bonded together.  I note the paragraph on page 2a which I quoted above describes an adsorbent being bonded to itself but does not refer to two adsorbents being chemically bonded to each other.

I conclude the invention may not be fully described because it is not clear from the specification if it is essential for all supports to be inert to cholesterol.  I also think the specification does not make it clear what is required if there is no "support" other than an adsorbent.

I consider I will apply procedural fairness (Kioa v West,supra) to CSIRO if I give it an opportunity to respond to the comments above.  CSIRO may respond by filing submissions or by filing appropriate amendments.  Consequently I allow CSIRO two months from the date of this decision to respond to my comments above on the fair basis of the claims and the deficiencies in the description.

Prior Claiming

Particular 2 refers to paragraph (c) of subsection 59(1) of the 1952 Act, namely prior claiming. Mr Royal argues the correct way to consider this ground of opposition is to use an approach similar to that used by the Federal Court in the Phillips v Mirabella case (NV Phillips Gloeilampenfabriken v Mirabella International Pty Ltd 26 IPR 513).

The Phillips v Mirabella case involves a patent which was filed under the 1952 Act and for which revocation was sought under the 1990 Act.  The 1990 Act repeals the grounds of revocation which were available under the 1952 Act and replaces them with those available under the 1990 Act (subsection 233(1)).  According to subsection 233(4) objection could not be taken and a patent was not invalid on any ground that would not have been available against the patent under the 1952 Act.

Using the approach in the Phillips v Mirabella case Mr Royal argues subsection 234(5) means the ground of prior claiming only exists if there is a ground in the 1990 Act which in substance replicates the ground in the 1952 Act.  In Mr Royal's opinion there is no ground under the 1990 Act which replicates the ground of prior claiming.  Thus Mr Royal submits subsection 234(5) overrides subsection 234(3) and the 1990 Act abolishes the opposition ground of prior claiming.

I note the text of subsection 233(4) which was interpreted in the Phillips v Mirabella case is similar to the text of subsection 234(5).  But the grounds of opposition under the 1952 Act were not repealed by the 1990 Act.  Therefore I consider the grounds of opposition under the 1952 Act are specifically maintained by subsection 234(3) and in the present case are the grounds of opposition under the 1990 Act.  Consequently I do not agree the approach in the Phillips v Mirabella case is relevant to the ground of prior claiming in opposition proceedings.

Mr Royal argues I should not consider the ground of prior claiming because Asterol has not served the relevant documents.  For example it has not served the specification of application no.627708 as filed, rather it has filed the category B document (ie the second publication level).  Mr Royal says the Commissioner may consider the documents which are relevant for prior claiming in a bar-to-sealing action.

The specification of application no.627708 is an exhibit attached to the declaration of Professor Roberts and it is the category B document which is exhibited.  The category B document is the specification of application no.627708 in the form it was advertised accepted.  According to this category B document application no.627707 is based on FR application no.8800730.

I note Asterol filed a request to amend the specification of application no.627708 under section 104.  This request has not been allowed as it has been opposed by CSIRO.  Therefore the claims in the category B document are those which are presently in force.  Consequently I consider the text of the claims in the category B document are those I should consider for the ground prior claiming.

The subject matter claimed in the claims of the category B document may be fairly based on FR application no.8800730 and the specification of application no.627708 as filed.  Therefore I consider I cannot determine the priority date of the claims in the category B document without looking at the disclosures in the translation of FR application no.8800730 and the specification of application no.627708 as filed.

Dr Oakenfull says he understands the priority date of the claims of application no.627708 is under attack in an opposition.  Therefore he considers he is not able to address the substance of the alleged prior claim in any detail but I note he does comment on the substance of the alleged prior claim.
I note Dr Oakenfull does not argue Asterol has not served the relevant documents.  Nor does he argue the priority date of the claims of application no.627708 cannot be determined from the documents served by Asterol.  Therefore I consider Mr Royal's arguments on the ground of prior claiming have a different basis to the answer set out in CSIRO's evidence-in-answer.

According to the Kent-Moore decision (Kent-Moore Corporation v Environmental Products Amalgamated Pty Ltd 25 IPR 233 at page 239) Asterol must set out the basis of its opposition in the statement of grounds and particulars. Mr Royal argues it is not CSIRO's responsibility to find documents which Asterol should have served as part of the evidence-in-support.

I consider the evidence stages which follow the statement of grounds and particulars should define the issues which are in dispute between the parties.  I consider the issues in dispute should form the basis of the hearing.  If CSIRO does not set out the basis of its answer to the opposition in its evidence-in-answer Asterol will not know which issues are in dispute until the opposition is heard.  In this situation I have to ensure that procedural fairness (Kioa v West supra) is applied to Asterol.

I could proceed by considering the ground of prior claiming on the basis of the documents presently before me.  I think Asterol did not have an adequate opportunity to consider the issues in dispute on prior claiming until the opposition was heard and it was not represented at the hearing.  Therefore I consider I would not apply procedural fairness to Asterol if I followed this course of action.

In an earlier decision (Coal Corporation of Victoria v David William Hinkley and Brian Alan Nugent, Patent Office decision, 17 September 1993 on application no.621944, unreported) the opponents failed to serve evidence-in-support.  The hearing officer commented it is inconsistent for the Commissioner to take on the role of the opponent whilst acting as an arbiter in inter parte oppositions

The Federal Court considers, in general, it is not for the decision-maker to make out a case for someone seeking the exercise of a discretion in their favour (Teoh v Minister of State for Immigration, Local Government and Ethnic Affairs 32 ALD 420 and judgements quoted therein). But the Court recognises there are occasions when the adequate consideration of a relevant matter necessarily involves the making of some inquiry as to the facts. In one of the judgements in this case Lee, J states (at page 426):

".. a failure by a decision-maker to obtain readily available factual material likely to be of critical importance in relation to a central issue may lead to the conclusion that a decision has been unreasonably made".

I note the decision-makers in the case of Teoh v Minister of State for Immigration, Local Government and Ethnic Affairs (supra) and the judgements of the Federal Court refered to in that case were involved in ex parte decisions.  But even in such cases the Federal Court considers the decision-maker's role is that of an arbiter (Vangedal-Nielsen and Others v Smith (Commissioner of Patents) and Another 33 ALR 144 at page 150).

I conclude there are occasions when the adequate consideration of a section 59 opposition necessarily involves the hearing officer making some inquiry as to the facts to avoid the conclusion that a decision has been unreasonably made.

Mr Royal made very brief submissions at the hearing about the disclosures in the specification of application no.627708 as filed and the translation of French application no.8800730.  I consider I may not apply procedural fairness to CSIRO if I obtain and consider these documents without giving CSIRO an opportunity to make submissions about their relevance.  I consider I will only be able to apply procedural fairness to both Asterol and CSIRO if I invoke the provisions of regulation 5.11.

In Kennametal Inc. v Sandvik Aktiebolag (Patent Office decision, 7 May 1992, patent application no.587141, unreported), Coal Corporation of Victoria v David William Hinkley and Brian Alan Nugent (supra) and Leonardis v StAlban (24 IPR 351) the hearing officer decided not to invoke regulation 5.11. In the Leonardis v StAlban decision the hearing officer stateS a general proposition as follows:

"....the Commissioner ought not invoke reg.5.11 in respect of material filed by a party to an opposition which ought to have been filed as part of their evidence in the opposition."

The hearing officer in deciding not to invoke regulation 5.11 and in formulating the general proposition did not discuss any situations other than those before him in the above decisions.  Therefore I consider there may be exceptions to this general proposition.

I note in each of the above decisions the hearing officer did not have to invoke regulation 5.11 to apply procedural fairness to the parties.  In the present situation it seems to me I have to invoke regulation 5.11 to apply procedural fairness to both Asterol and CSIRO.  Therefore I am satisfied the present situation is an example of an exception to the general proposition in the Leonardis v StAlban decision.

Consequently I invoke the requirements of regulation 5.11 with respect to the the specification of application no.627708 as filed and the translation of FR application no.8800730.  I think both parties should be familiar with the disclosures in these documents.  Asterol because they are its own documents; CSIRO because it would have considered these documents as part of both its oppositions involving application no.627708.  Therefore I think it is appropriate to allow a period of two months from the date of this decision for both parties to give evidence or make representations about these documents.

I reserve my decision on whether the claims of application no.633084 are prior claimed by the claims of application no.627708 until the above two month period has elapsed.  I will consider this issue in a subsequent decision.

Prior Publication

Particular 3(A) involves paragraphs (e) of subsection 59(1) of the 1952 Act, namely the invention as claimed is prior published. This particular is based on application no.627708 and EP patent no.256911.

Mr Royal argues the specification of application no.627708 which was served is the specification as it was accepted.  He says this specification is the category B document (ie the second publication level) which was published after the latest possible priority date of the claims of application no.633084.  Therefore Mr Royal submits "..we cannot look at it.  We do not know what to look at...".

Asterol's statement of grounds and particulars refers to the citation by its "five figure" number (28449/89).  It also refers to the publication date of the category A document (ie the first publication level).

The category B document of application no.627708 is an exhibit attached to Professor Roberts' declaration-in-support.  In this declaration he does not argue the disclosures in this document prior publish the claims of application no.633084.  Dr Oakenfull does not discuss the substance of whether the category B document prior publishes the present claims.  He does not mention the conflict between the service of the category B document and the statement of grounds and particulars refering to the category A document.  Therefore I consider Mr Royal's arguments on the ground of prior publication do not have a different basis to the answer set out in CSIRO's evidence-in-answer.

I note the category A document of application no.627708 is identical to the specification of this application as filed.  And I have invoked regulation 5.11 in respect of the specification of application no.627708 as filed in relation to the ground of prior claiming.  It seems to me Asterol may be able to argue my decision is unreasonably made if I do not also consider whether the disclosures in the category A document prior publish the present claims (Teoh v Minister of State for Immigration, Local Government and Ethnic Affairs supra).  I also note subsection 60(2) of the 1952 Act means I can consider this ground of opposition.

Common law does not impose on me the task of ensuring Asterol or CSIRO take best advantage of any opportunity to which they are entitled provided each is given a reasonable opportunity to present its case (Sullivan v Department of Transport 20 ALR 322 at page 343). Asterol failed to take advantage of the opportunity to argue the substance of whether the disclosures in the category A document of application no.627708 prior publish the present claims in its evidence-in-support.

Therefore I conside I will apply procedural fairness to both parties if I give only CSIRO an opportunity to make submissions on whether the disclosures in the category A document of application no.627708 prior publish the present claims.   Consequently I allow CSIRO two months from the date of this decision to file such submissions.

I reserve my decision on whether the claims of application no.633084 are prior published by the disclosures in application no.627708 until the above two month period has elapsed.  I will consider this issue in a subsequent decision.

Dr Ernst argues the disclosures in EP patent no.256911 prior publish the claims of application no.633084.  The specification of EU patent no.25691, which is an exhibit attached to Professor Roberts' declaration-in- support, is not in English.  According to regulation 22.15 to the 1990 Act a filed document must be in English.

An exhibit attached to Professor Roberts' declaration-in-reply is a declaration made by Josette Dangain.  EP patent no.256911 and US patent no.4880573 are attached as exhibits to the latter declaration.  Josette Dangain states the text of this US patent is a true translation of the description of EP patent no.256911.  Therefore I will consider the text of this US patent and the translated claims of EP patent no.256911.

I note Dr Oakenfull considers the creation of an emulsion is a central aspect of the present method.  Professor Roberts in his declaration-in-reply does not argue the creation of an emulsion is not an essential feature of the present claims.

I consider US patent no.4880573 and the translated claims of EP patent no.256911 do not disclose the creation of an emulsion is an essential feature of the method.  Therefore, after applying the reverse infringement test (Meyers Taylor Pty Ltd v Vicarr Industries Ltd 13 ALR 605), I am satisfied the claims of application no.633084 are not prior published by these documents.

Particular 3(B) also involves paragraphs (e) of subsection 59(1) of the 1952 Act, namely the invention as claimed is prior published. This particular is based on 15 documents none of which were served or mentioned in Asterol's evidence-in-support. Therefore I consider these documents are not part of the present opposition.

I think it is in the public interest for these 15 documents to be considered in a bar-to-sealing action before a patent is sealed on application no.633084.

Obviousness

Particular 4(i) relies on paragraph (g) of subsection 59(1) of the 1952 Act, namely the invention as claimed is obvious. This particular is based on EP patent no.256911 and states the content of this document was part of the common general knowledge in the art.

Mr Royal argues there is no evidence EP patent no.256911 is part of the common general knowledge in the art.  Professor Roberts does not argue EP patent no.256911 is part of the common general knowledge in the art.  Therefore I consider EP patent no.256911 is not relevant to the ground of obviousness (Minnesota Mining & Manufacturing Company and 3M Australia Pty Ltd. v Bieirsdorf Ltd. 29 ALR 29 at pages 57 and 58).

The particular states the prior art teaches the use of cyclodextrin for the removal of cholesterol.  It also states chemical bonding of complexing agents to a support is a very common and widely used technique.  Thus the particular argues the step of chemically bonding cyclodextrin to a support for the removal of cholesterol is obvious.

Professor Roberts states he is well aware cyclodextrins have been extensively used bound to a support in chromatographic separations and purification methods.  In support of this he refers to exhibits DCKR-10 and DCKR-11 and states he was aware of these documents in view of the importance and wide use of cyclodextrins in food processing.  Professor Roberts believes DCKR-10 shows the use of cyclodextrin bound to solid support material was common general knowledge to persons of ordinary skill in the art.

Dr Oakenfull agrees cyclodextrins bonded to a support are known in the context of chromatographic separations and purifictions.  He argues the formation of an emulsion would normally be inappropriate to liquid chromatography as emulsified fats would tend to clog and render the columns useless.

In my view neither Professor Roberts or Dr Oakenfull specifically states that exhibits DCKR-10 and DCKR-11 are part of the common general knowledge in the art.  Therefore I consider these documents are not relevant to the ground of obviousness (Minnesota Mining & Manufacturing Company and 3M Australia Pty Ltd. v Bieirsdorf Ltd supra).

Particular 4(ii) argues the claims are obvious in the light of any one of the documents referred to in particular 3.  The only documents in particular 3 which were served on CSIRO are EP patent no.256911 and the category B document of application no.627708.  I consider there is no evidence any of these documents formed part of the common general knowledge in the art.  Therefore I am satisfied none of the documents referred to in particular 3 are relevant to the ground of obviousness (Minnesota Mining & Manuacturing Company and 3M Australia Pty Ltd v Bieirsdorf Ltd supra).

Professor Roberts does not state it is not common general knowledge in the art that cholesterol can be removed from an emulsion of organic or biological material by contacting it with cyclodextrin chemically bonded to a support.  Consequently from all of the above I am satisfied there is insufficient evidence to show the invention as claimed in the claims of application no.633084 is obvious.

Novelty

Particular 5 is based on paragraph (h) of subsection 59(1) of the 1952 Act, namely the claimed invention is otherwise not novel. The particular states the difference between the invention as claimed and what was known or used is unsubstantial or a mere workshop variant.

Mr Royal says the particular does not specify the documents or use on which it relies.  Therefore he submits Asterol cannot argue this issue as there is no basis to it.  I agree with Mr Royal's submission.

Costs

Both CSIRO and Asterol submit they should be awarded costs.  I found Asterol succeeded in showing the specification of application no.633084 did not comply with section 40 of the 1952 Act.  But I consider I would not have had to invoke regulation 5.11 if Asterol had taken more care with its evidence and if CSIRO had indicated the nature of its answer in its evidence-in-answer.  This has prolonged the opposition proceedings by delaying my decision on prior claiming, prior publication and novelty.  In this situation I consider each party should bear its own costs up to the date of this decision.

Summary

I found Asterol's opposition successful on the ground that the specification of application no.633084 does not comply with the requirements of section 40.  I consider it is possible to amend the specification to overcome these defects.  Consequently I allow CSIRO two months from the date of this decision to propose amendments to overcome these defects.  I also allowed CSIRO two months from the date of this decision to respond to my comments on the fair basis of the claims and deficiencies in the description.

I found there is insufficient evidence to show the invention as claimed is obvious.

I invoked regulation 5.11 in respect of the category A document of application no.627708, the specification of this application as filed and FR application no.8800730.  I allowed Asterol and CSIRO two months from the date of this decision to give evidence and file representations about these documents.

I gave CSIRO two months from the date of this decision to make submissions on whether the disclosures in the category A document of application no.627708 prior publish the present claims.

I reserved my decision on whether application no.627708 prior claims or prior publishes the present claims.  I decided to consider these issues in a subsequent decision.

I made no award of costs up to the date of this decision.

M.Kendall
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Phillips Ormonde & Fitzpatrick

Patent attorneys for the opponent   :  Shelston Waters