Commonwealth Scientific and Industrial Research Organisation v Asterol International

[1994] APO 76

official notice

decision of a delegate of the commissioner of patents

Application        :  No.630446 in the name of COMMONWEALTH SCIENTIFIC AND INDUSTRIAL RESEARCH ORGANISATION.

Title:  CHOLESTEROL REMOVAL FROM EGGS, DAIRY PRODUCTS AND OTHER AQUEOUS EMULSIONS.

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

Decision:  Issued            .

Abstract:  Opposition successful on non compliance with S.40; opportunity to amend and to respond to comments on fair basis; invention not obvious; regulation 5.11 invoked to apply procedural fairness to both parties; decision reserved in relation to prior claiming and anticipation by documents to which regulation 5.11 applies.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No.630446 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.630446 was filed by the Commonwealth Scientific and Industrial Research Organisation (CSIRO) on 17 May 1990 and it was advertised accepted on 29 October 1992.  A notice of opposition was filed by Asterol International (Asterol) on 29 January 1993.

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

Service of the evidence was completed by 18 January 1994 and the opposition was set down for hearing in Canberra on 26 August 1994.  The hearing was held in conjunction with a hearing on CSIRO's application no.633084 which is also opposed by Asterol.

Asterol's attorneys requested the hearing be deferred to after the hearing of CSIRO's section 59 opposition to Asterol's earlier application no.627708. I note Asterol is relying on the disclosures in application no.627708 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 that on the basis of the decisions in Genetic Systems v Johnson & Johnson (27 IPR 277) and W R Grace & Co v Vikase Corporation (unreported decision on patent application 606573 dated 15 July 1994) there was no reason to defer the hearing.

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

At the hearing of the opposition, CSIRO was represented by Mr M Royal, patent attorney of Phillips Ormonde & Fitzpatrick, Melbourne, assisted by Mr M Bell, also from Phillips Ormonde & Fitzpatrick.  Dr D Oakenfull, one of the actual inventors 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 specification as accepted begins by stating the invention concerns a method for removing cholesterol from aqueous emulsions, especially from milk, dairy products and eggs.  It then 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 describes the invention as a method for removing cholesterol from aqueous emulsions which comprises:

i)   contacting such an emulsion with a
     cyclodextrin to form a cyclodextrin
     -cholesterol complex;
ii)  causing the complex to precipitate by
     cooling;
iii) separating the complex-precipitate.

The description which follows defines the term "emulsion" and then describes a typical process.

The specification suggests it is surprising cyclodextrin worked effectively at lower temperatures because conventional thinking suggested higher temperatures would be required to obtain a satisfactory degree of complex formation.

The specification describes preferred aspects of the invention which include complexing being carried out below 18oC.  If low temperatures are used it is preferable the fats in the emulsion be of sufficiently small size to ensure at least 30% of the cholesterol is complexed within 20 minutes of being mixed with the cyclodextrin.

The specification then describes examples of the removal of cholesterol from an oil-in-water emulsion, milk, cream, egg yolk plasma, whole yolk, liquid whole egg and butter.

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

"A method for removing cholesterol from aqueous emulsions comprising contacting the emulsion with a cyclodextrin to form a cyclodextrin-cholesterol complex, precipitating the complex from the emulsion by cooling, and separating the precipitate from the emulsion."

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

STATEMENT OF GROUND AND PARTICULARS

The grounds of opposition set out in the statement of grounds and particulars are those specified in paragraphs (c), (e), (g), (h) and (i) of subsection 59(1) of the Patents Act 1952, namely prior claiming, prior publication, obviousness, lack of novelty, and non-compliance with section 40.

THE EVIDENCE

The evidence-in-support consists of statutory declarations made by Dr Ernst with 6 exhibits attached, Dr McDonald with 2 exhibits attached and Professor Roberts with 10 exhibits attached.

The evidence-in-answer consists of statutory declarations made by Dr Oakenfull with 2 exhibits attached.  A signed but undated declaration made by Ms Crothers was also served in the time allowed.  Some time after this time had expired CSIRO filed a signed and dated declaration made by Ms Crothers and forwarded a copy to Asterol's attorneys.  I suggested at the hearing only the signed but undated copy of Ms Crothers' declaration formed part of the evidence-in-answer.  Mr Royal filed a letter after the hearing which makes submissions about Ms Crothers' declaration.  If necessary I will consider the situation of Ms Crothers' declaration later in my decision.

The evidence in reply consists of statutory declarations made by Professor Roberts with 14 exhibits attached, by Mr Courregelongue and by Ms Wilcox.

I will refer to the above declarations and exhibits 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 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.

Part V of the 1952 Act applies to the present opposition according to subsection 234(3) of the 1990 Act.  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.

In my view the notice on file does not state CSIRO'S entitlement to application no.630446 as the notice refers to a PCT application with an unspecified number.  Application no.630446 is based on application nos.PJ4302 and PJ8308 which were accompanied by provisional specifications.

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 nos.PJ4302 and PJ8308.

A complete specification was lodged in respect of application nos.PJ4302 and PJ8308 before the 1990 Act commenced.  After acceptance under the 1990 Act these became application no.630446.  In my view this means application nos.PJ4302 and PJ8308 and the complete specification are a single application.  I have to consider whether the 1990 Act applies to application no.630446 as if it were a single complete application made under this Act.

Paragraph (a) of subsection 234(2) refers to "an application" which has been lodged under the 1952 Act. According to subsection 23(b) of the Acts Interpretation Act 1901 words in the singular number include the plural unless a contrary intention appears in an Act. I consider there is no such contrary intention in the Patents Act 1990 with regard to subsection 234(2). Therefore I consider paragraph (a) of subsection 234(2) may refer to more than one application. For similar reasons I consider paragraphs (b), (c) and (d) of subsection 234(2) also may refer to more than one application.

I consider this means the 1990 Act applies to application no.630446 as if it were a single complete application made under this Act.  In this situation I think the notice of entitlement need not refer to application nos.PJ4302 and PJ8308.

I think a new notice of entitlement which does not refer to a PCT application with an unspecified number does not suggest the claims of application no.630446 may have an earlier priority date than suggested by the present notice.  Consequently I consider CSIRO must replace the notice of entitlement presently on file.

Section 40 Matters

Particular 1(A) concerns the cooling step of the process.  It points out the description gives several different temperatures from which the mixture must be cooled to precipitate the cyclodextrin-cholesterol complex.  It then argues the nature of the invention and the scope of the phrase "precipitating the complex by cooling" is unclear.

Dr Ernst in his submission interprets "cooling" to mean the preceding step occurs at an elevated temperature.  He points out examples 4, 5, 6 and 10 do not mention cooling to below contact temperature.  Dr Ernst also argues it is not clear how precipitation can occur in an aqueous emulsion when contacting occurs at 0oC and the mixture is subsequently cooled.  In Dr Ernst's opinion the emulsion would freeze.

Mr Royal submits none of Asterol's declarants has difficulty understanding what was meant by cooling.  He directed my attention to Professor Roberts declaration-in-reply which reads as follows:

"I understand Dr Oakenfull at paras 9 and 9.1 to state Claim 1 merely requires a reduction in temperature from the contact temperature to a lower temperature during the precipitation phase "by cooling" and includes by "allowing to cool" and I agree with that interpretation."

I agree with Dr Oakenfull's and Professor Roberts' interpretation of the meaning of "cooling".  Thus I do not consider the contacting step takes place at an elevated temperature.  Rather precipitation of the complex takes place when the temperature of the mixture from the contacting step is lowered.

If I apply this interpretation I consider the skilled person would choose a temperature for the contacting step which is appropriate for the emulsion concerned.  And the choice of this temperature will allow the mixture to be cooled to precipitate the cyclodextrin-cholesterol complex.  Thus I think the different temperatures described in the specification are those appropriate for different emulsions.  Also I think the skilled person would only conduct the contacting step at 0oC if the mixture could be cooled to precipitate the cyclodextrin-cholesterol complex and separate it.

The specification states all the specific examples describe the invention.  Examples 4 to 6 describe several experiments in which the contacting step takes place in the range of 10 to 50oC and the complex is removed using a low speed centrifuge.  Example 10 does not specify any temperature for the contacting step or describe how the complex is removed.

Dr Oakenfull considers the consequence of the examples not referring to a cooling step is that the skilled person:

"would understand the term cooling to mean that the temperature is sufficiently low that an efficient rate of precipitation will occur."

If this is so then these examples do not include a cooling step and, in my opinion, are not examples which describe the invention.

Dr McDonald considers when no temperature is given for any step in a reaction it is generally assumed ambient temperature is chosen for that particular step.  He also states:

"... from my experience if centrifuging is used, it is mostly carried out at ambient temperatures."

I conclude it is not necessary for the experiments in examples 4 to 6 and 10 to specify the mixture has to be cooled before the complex is separated if the contacting temperature is above ambient.
Professor Roberts in his declaration-in-reply argues the specification does not indicate to him that a reduction in temperature from the contact temperature is to be implied in examples 4 to 6 and 10.  Thus if the contacting temperature is ambient or below then I think the skilled person will not necessarily cool the mixture further before separating the complex.

Therefore those experiments in examples 4 to 6 and 10 in which the contacting temperature is ambient temperature or below do not necessarily involve a cooling step.  If this is so then these experiments do not describe the invention.  Consequently I consider the specification does not fully describe the invention as it implies all the examples describe the invention.

Particular 1(B) states that:

"Claims 1 to 18 of the opposed application are unclear insofar as they refer to "aqueous emulsions" and insofar as the definition of "emulsion" on page 2 line 5 is unclear.  As defined "emulsion" includes a micellar solution or cholesterol containing fat."

Professor Roberts in his declaration-in-support states the "definition of "emulsion" is an unusually broad definition".  Dr McDonald states egg products are of a very different nature from dairy products.  In his opinion they are more in the nature of micelle or solutions of cholesterol containing fat in a highly stabilised colloidal systems.

Mr Royal submits the opponent's declarants merely consider the definition of the term "emulsion" is too broad.  He says this does not make the claims unclear and he notes Professor Roberts in his declaration-in-reply states:

"In the absence of the definition inserted in the specification at Page 2, Para 2 I would not understand a "micelle" or "micellar solution" to be included within the general term "aqueous emulsion".

In my opinion the definition at Page 2, Para 2 is necessary to stretch the term "emulsion" to include "micellar solutions" within that term.  In Claim 1 of the specification as accepted, "micellar solutions" are only included in "emulsion" because of the definition at Page 2."

The 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."

Dr Oakenfull in his declaration says milk, cream and eggs are examples of food emulsions.  He points out that broadly speaking an emulsion consists of a mixture of two immiscible liquids, one being continuous and the other being dispersed in it in small discrete quantities.
Dr Oakenfull says a micelle is an aggregate of surfactants such as phospholipids which forms when the concentration of the surfactant reaches a critical value.  Professor Roberts in his declaration-in-reply explains a micellar solution is similar to an emulsion but it has a different structure.  He considers a micellar solution is a distinct state of matter and not a sub-class of the emulsion state.

I conclude the definition of the term "emulsion" is broader than that used in some technical areas, for example physical chemistry.  But I am satisfied this definition is clear in so far as it includes micellar solutions.

The definition also 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 because it allows the cholesterol to congregate on the surface of the fat droplet and thereby be accessible for complexing by cyclodextrin".  I consider the definition of this term should be clear and unambiguous 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 as in lipoprotein 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 am satisfied the invention is not fully described because the definition of "emulsion" on page 2 of the specification is ambiguous.

Dr Ernst argues claim 1 is not fairly based on the description, an issue which is not raised in the statement of grounds and particulars. Therefore I will not consider the arguments on fair basis which Dr Ernst raises. But according to section 60(2) of the Patents Act 1952 I can consider the fair basis of claim 1.

Claim 1 refers to "emulsion(s)" which are aqueous and according to Dr Oakenfull these include emulsions in which water can be either in the disperse or continuous phases. He also says

"In the context of food emulsions such as milk, cream and egg yolk in particular, the emulsions are of the fat(oil) in water type where the water is the continuous phase."

I note that when Dr Oakenfull refers to the invention in his declaration he uses the words "fat droplet".  I also note the only emulsions disclosed in the present specification have water as the continuous phase.  But in my view the emulsions defined by the claims may have water as the disperse phase or the continuous phase.

I consider I will apply procedural fairness (Kioa v West supra) to CSIRO if I give it an opportunity to respond to my comments about the fair basis of claim 1.  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 about the fair basis of claim 1.

Particular 1(H) states that:

"Claim 18 is unclear insofar as examples 4,5, and 6 are not in accordance with claim 1 and lack the step of cooling."

Mr Royal points out claim 18 is appended to claim 1 and therefore includes all of the limitations of claim 1.  I agree with Mr Royal's interpretation of claim 18.

Earlier in this decision I found some of the experiments described in examples 4 to 6 and 10 did not include a cooling step.  But I think those experiments described in examples 4 to 6 and 10 which do not include a cooling step are excluded from claim 18 because the method according to claim 1 includes a cooling step.  Therefore I consider claim 18 is clear.

Asterol did not serve any evidence nor make any submissions on particulars 1(C) to 1(G) and particular 1(I).  Mr Royal made submissions on these particulars but I am satisfied the issues raised in these particulars do not apply to the present specification.

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 to the ground of prior claiming in a bar-to-sealing action.

The specification of application no.627708 is an exhibit attached to the declarations of Dr Ernst, Dr McDonald and Professor Roberts.  In each case 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 the category B document of application no.627708 attached to Professor Roberts' declaration the application is based on FR application no.8800730.

I note Asterol has 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 of 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.

In paragraph 6 of his declaration Dr Ernst states:

"attached hereto and marked as Exhibit ITE-5 is a copy (of) French Application No. 8,800,730 in the name of Monserbio which is the priority document for Exhibit ITE-4."

Exhibit ITE-4 is a copy of the category B document of application no.627708.  However exhibit ITE-5 which is on file is actually a copy of EP application no.326469.  This application is the European application which corresponds to application no.627708.

Professor Roberts alleges application no.627708 prior claims some of the present claims.  Dr Oakenfull answers the substance of the allegations of prior claiming and he 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.
I note at no time has CSIRO mentioned the conflict between Dr Ernst referring to FR application no.8800730 and attaching EP application no.326469 to his declaration.  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 referred 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.

I know the specification of application no.627708 as filed and the translation of FR application no.8800730 (regulation 22.15(1)) are readily available in the file of application no.627708.  I consider the disclosures in these documents are of critical importance to my determination on the central issue of the prior claiming of the claims of application no.630446.  I consider Asterol will be able to argue my decision is unreasonably made if I decide the issue of prior claiming without obtaining the specification of application no.627708 as filed and the translation of FR application no.8800730.  Therefore I am satisfied I should obtain and consider these documents.

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 as follows:

"As a general proposition 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 specification of application no.627708 as filed and the translation of French application no.8800730 in relation to the ground of prior claiming.  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.630446 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.

Anticipation

Particular 3(A) involves paragraph (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.

Mr Royal argues the specification of application no.627708 which was served is the category B document (ie the second publication level).  He submits the category B document is not relevant to the prior publication of application no.630446 because it was published after the latest possible priority date of the claims.  Mr Royal says the Commissioner may consider the category A document (ie the first publication level) in a bar-to-sealing action.

The category B document is the specification of application no.627708 in the form it was advertised accepted on 3 September 1992.  This date is after the filing date of application no.630446.  I think the latest possible priority date of the claims of application no.630446 is the filing date of the application.

Asterol's statement of grounds and particulars refers to the publication date of the category A document.  Professor Roberts refers to the publication date of the category A document and not the category B document.  He alleges the disclosures in this document prior publish the claims of application no.630446.

Dr Oakenfull refutes the substance of Professor Roberts' allegations.  But he does not say the document is not relevant to the claims of application no.630446 because it was published after the latest possible priority date of the claims.  I note CSIRO at no stage mentioned the conflict between the service of the category B document and the facts in Asterol's statement of grounds and particulars and those in Professor Roberts' declaration.

Therefore I consider Mr Royal's arguments on the ground of prior publication have a different basis to the answer set out in CSIRO's evidence-in-answer.  Consequently for reasons similar to those I outlined above I invoke the requirements of regulation 5.11 with respect to the category A document of application no.627708 in relation to the ground of prior publication.  I note the category A document of application no.627708 is identical to the specification of this application as filed.

I think both parties should be familiar with the disclosures in this document.  Asterol because it is its own document.  CSIRO because it would have considered this document as part of 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.630446 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.

Particular 3(B) states the subject matter of each and every claim of application no.630446 is anticipated by application no.627708.  I understand from the title of particular (3) this refers to the invention as claimed being otherwise not novel.  Mr Royal argues this issue is not open for discussion because the category B document is published too late to be relevant for anticipation.

Neither Professor Roberts or Dr Oakenfull specifically refer to the substance of whether the claims of application no.630446 are otherwise not novel.  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 have invoked regulation 5.11 in respect of the category A document of application no.627708 in relation to the ground of prior publication.  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 this document render the present claims otherwise not novel (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 render the present claims otherwise not novel in its evidence-in-support.

Therefore I consider 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 render the present claims otherwise not novel.  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.630446 are otherwise not novel in the light of the disclosures in application no.627708 until the above two month period has elapsed.  I will consider this issue in a subsequent decision.

Particular 3(C) states the claims of application no.630446 do not differ from the prior art in any respect which confers novelty.  Mr Royal argues I should not consider this particular as it does not refer to any documents.  I agree with Mr Royal's argument.

Obviousness

Particular 4(i) relies on paragraph (g) of subsection 59(1) of the 1952 Act, namely the invention as claimed is obvious. The particular refers to EP patent no.256911 and application no.28449/89. The latter number is the "five figure" number for application no.627708. The particular states the contents of these documents are part of the common general knowledge in the art.

Mr Royal argues there is no evidence EP patent no.256911 and application no.28449/89 are part of the common general knowledge in the art.  In neither of his declarations does Professor Roberts state these documents are part of the common general knowledge in the art.  Therefore I consider EP patent no.256911 and application no.28449/89 are 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).

Professor Roberts makes several statements about what was known in the art but I am unable to conclude from his declarations that the invention as claimed is obvious.  Consequently I am satisfied there is insufficient evidence to show the invention claimed in the claims of application no.630446 is obvious.

Costs

Both CSIRO and Asterol submit they should be awarded costs.  I found Asterol succeeded in showing the specification of application no.630446 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 fairly indicated the nature of its answer in its evidence-in-answer.  This has prolonged the opposition proceedings by delaying my decision on prior claiming and anticipation.  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.630446 does not comply with the requirements of section 40.  I consider it is possible to amend the specification to overcome the 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 claim 1.

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 as filed of application no.627708 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 allowed 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 render the present claims otherwise not novel.

I reserved my decision on whether application no.627708 prior claims, prior publishes or renders otherwise not novel 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