Commonwealth Scientific and Industrial Research Organisation v Cem Corporation

[1999] APO 71

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          Nos. 635903 in the name of COMMONWEALTH SCIENTIFIC AND INDUSTRIAL RESEARCH ORGANISATION

Title:          Method and Apparatus for Continuous Chemical   Reactions

Action: Opposition under section 59 (Patents Act 1952) by CEM Corporation.

Decision:          Issued            

Abstract

Opposition ground of lack of novelty not established on a construction of "chemical reaction" which did not include prior art processes which mainly related to food processing.  The ground of obviousness was also not made out as it was not established that the most relevant prior publication was part of the common general knowledge (1952 Act case).  Section 40 ground previously dismissed, but no serious defects noted.  The opposition was wholly unsuccessful.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 635903 by COMMONWEALTH SCIENTIFIC AND INDUSTRIAL RESEARCH ORGANISATION and opposition thereto by CEM CORPORATION

BACKGROUND

Patent application 635903 (the application) was filed as 44040/89 on 9 October 1989 under the provisions of the PCT in the name of COMMONWEALTH SCIENTIFIC AND INDUSTRIAL RESEARCH ORGANISATION (CSIRO), claiming priority from two Australian provisional applications, the earliest of which was filed on 10 October 1988.  Acceptance was advertised on 8 April 1993.

As acceptance of the application was advertised after the commencement of the Patents Act 1990, the opposition falls under section 59 of the Patents Act 1952 and chapter 5 of the Patents Regulations 1991 (section 234(3) and regulation 22.3 of the 1990 Act).

On 8 July 1993 a notice of opposition was lodged by CEM CORPORATION (CEM), followed by a statement of grounds and particulars on 8 October 1993.  On 8 November1993 CSIRO applied for dismissal in part of the opposition, and also filed a request for directions.  In a decision dated 29 March 1994 the delegate dismissed the opposition insofar as it related to one ground (section 40), and directed that further and better particulars be filed in respect of certain other grounds and particulars, and that one particular not be available for argument at the substantive hearing.

CEM states that it has locus as it is a manufacturer of microwave apparatus which is used in chemical laboratories, and that it would be prejudiced by the grant of a patent on this application.

Consequential amendments to the statement of grounds and particulars were allowed on 16 November 1994; the grounds relied on are subsections 59(1)(e), (g) and (h), Patents Act 1952. All evidentiary stages were completed with the service of evidence in reply on 21 September 1995. Following this the casefile indicates some settlement negotiations in 1996, and then a hearing set for early 1997, which latter never eventuated.

Finally a hearing was held in Canberra on 12 October 1999.  CSIRO was represented by Mr D Carmichael, patent attorney of Phillips Ormonde & Fitzpatrick, Melbourne, and CEM by Mr A Mizzi, patent attorney of Griffith Hack, Perth, who appeared by telephone.

SPECIFICATION

The invention relates to a method and apparatus for carrying out continuous chemical reactions using microwave energy to heat the reactants.  The specification acknowledges known prior uses of microwave energy for cooking, blanching, pasteurisation, sterilisation and the like, but indicates that these processes do not constitute a "chemical reaction".  The specification also recognises known instances where microwave energy has been used to create chemical reactions, but this has been in sealed containers, often known as "batch processing".  This, it is said, has major disadvantages, particularly in relation to control and safety.  The invention is particularly useful for carrying out organic synthesis reactions, and a number are described by way of example.

The invention is not unduly complex and can be well enough understood from the claims, of which there are 38.  The three independent claims are reproduced below.

"1. A method of performing chemical reactions on a continuous basis comprising:-

i) providing a continuous and pressurised feed of liquid or slurry to and through a microwave heating zone, wherein a component of the liquid or slurry is a reactant or solvent capable of absorbing microwave radiation,

ii) subjecting the feed to microwave energy as it passes through the microwave zone whereby the microwave energy is absorbed directly by the reactant or solvent, so as to cause a chemical reaction to occur within the feed.

25. Apparatus for performing the method of claim 1 comprising:-

i) liquid transport and containment means having an inlet section, intermediate section and outlet effluent section and providing a single-pass fluid flow path through the apparatus,

ii) supply means to feed a liquid or slurry at a controllably variable rate through the liquid transport and containment means,

iii) a microwave generator to supply microwave energy to the intermediate section,

iv) temperature measurement means associated with the intermediate or effluent sections to measure the temperature of the product(s) of a chemical reaction, and

v) pressure control means,

vi) the supply means, temperature measurement means, pressure control means and microwave generator being operably interconnected such that at least one of the variables of flow rate or pressure of a feed liquid or slurry, the microwave energy or the temperature of a chemical reaction within the feed, is controllably varied in response to variations in another of the variables from a predetermined set value, to thereby maintain said another variable at the predetermined set value.

31. Apparatus for performing the method of claim 1 comprising:-

i) liquid transport and containment means having an inlet section, intermediate section and outlet effluent section and providing a single-pass fluid flow path through the apparatus,

ii) supply means to feed a liquid or slurry at a controllably variable rate through the liquid transport and containment means,

iii) a microwave generator to supply microwave energy to the intermediate section,

iv) temperature measurement means associated with the intermediate or effluent sections to measure the temperature of the product(s) of a chemical reaction,

v) pressure control means, and

vi) heat exchange means in the effluent section to cool the effluent feed and entrained reaction product(s) substantially immediately on exit from the intermediate section."

The dependent claims are directed at relatively minor details of the method or apparatus, or the performance of particular reactions.

EVIDENCE

From CEM

· Declaration by Geoffrey W Roberts dated 20 October 1994, with exhibits GWR1 - GWR29.  Roberts is a chemist and his declaration shows that he has many years of experience in the chemical industry, mainly chemical engineering, in Australia.  At the date of the declaration he was Director of his own consulting practice.  The exhibits are primarily extracts from texts, and patent specifications.

· Declaration by Lois B Jassie with exhibits LBJ1 - LBJ3.  Jassie has a doctorate in chemistry, and her CV (LBJ1) shows extensive experience in and a number of publications relating to the use of microwave energy in various processes such as sample analysis by digestion or dissolution.  She is a citizen and resident of the United States.  At the date of her declaration she was employed as Senior Scientist by CEM, the opponent in this matter.  The other two exhibits are from New Scientist magazine.

· Declaration by Anthony P Mizzi, patent attorney representing CEM, with exhibits APM1 - APM5.  The exhibits relate to the publication dates of some of the evidence in support.

· Second declaration by Roberts with exhibits GRW30 - GRW34, and second declaration by Jassie, replying to CSIRO's evidence in answer.

From CSIRO

· Declaration by Bryan C Loft, with exhibits BCL1 - BCL6.  Loft is a chemist, has held a number of positions in the chemical industry, and from 1976 has been employed by CSIRO.  At the date of his declaration he held the position of Intellectual Property Manager, Division of Chemicals and Polymers, CSIRO.  The exhibits comprise some articles, copies of correspondence, and a patent specification.

· Declaration by Donald W Cameron, with exhibits DWC1 - DWC5.  Cameron is Professor of Organic Chemistry at the University of Melbourne, which position he has held since 1968.  He has been involved in organic chemistry research for about 35 years.  The exhibits are a number of technical papers; DWC1 is the same as LBJ3 from Jassie.

SUBMISSIONS

In the following I summarise the main submissions made by the parties; I will refer to them again where necessary in my decision.

From CEM

·One of the documents principally relied on to establish want of novelty is US 3535482 ('482), which discloses the rapid heating of fluids, particularly for pasteurising, sterilising, and concentrating processes.  However this is within the scope of claim 1; CSIRO's declarants assume a definition of "chemical reaction" which is too narrow and is designed to exclude the prior art.  The correct definition is that adopted by CEM's Roberts and Jassie, ie it is a process which changes the nature of a substance.

· It was pointed out that one of the priority documents (PJ 5057 as GWR5 at page 23) contemplates that the invention could be applicable to the pasteurisation or sterilisation of fluids such as milk or fruit juice.

· In any case the "chemical reaction" feature is not essential, as the steps in the method or the integers in the apparatus are independent of the composition of the feed or the nature of the reaction.

· In claim 1 the pressurisation of the feed is not linked to achieving a chemical reaction, and is therefore not essential.

· Claim 25 last paragraph does not require that all components of power, pressure, flow, and frequency, be interconnected, and includes manual control.  In addition, this feature is not present in all independent claims and is therefore not essential.  Similarly for the heat exchanger in claim 31.

· Agreed that the test for novelty is the reverse infringement test.  A citation must also be given a purposive construction and should be read having regard to the common general knowledge (cgk) at the publication date.

· In addition to '482, also relied on to establish lack of novelty are US 4279722 ('722, GWR17), GB 2061728 ('728, GWR19), US 2992652 ('652, GWR20), and US 3494723 ('723, GWR21).

· On the issue of obviousness, it was submitted that the addressee in this case is a person (or team) having practical working knowledge and experience in performing chemical reactions, with an understanding of basic microwave and control theory, and knowledge and experience in the practical work of chemists such as the design, commissioning and operation of chemical plants.

· As non-inventive skilled workers in the relevant field, Roberts and Jassie both qualify as addressees.  The fact that someone is a researcher does not disqualify them from being an addressee.  Roberts and Jassie state that in their opinion there was no invention in going from batch to continuous processing, which was cgk in Australia at the priority date.

· On the other hand, Loft does not qualify as an addressee since he has not worked as a practical chemist since 1976, at which time he commenced working in intellectual property.  Neither does Cameron, whose declaration shows that he is a career academic.  Further, neither declarant shows any experience with or knowledge of microwaves.

· Regarding the corresponding US patent (5387397), it is noted that the apparatus claim there is much narrower than the present apparatus claims, and there is no method claim.

· Responding to a submission from CSIRO that the evidence in reply was primarily new evidence and therefore not admissible, it was said that the evidence simply answers points made by (especially) Cameron regarding inventive step, and is properly evidence in reply, except for paragraph 58 of Roberts.

· Although the section 40 ground of opposition (fair basis and lack of definition) has been removed following a previous proceeding, nonetheless it should be considered as the Commissioner has a duty not to grant a patent which is clearly invalid.

· CEM's concern in this matter is primarily that apparatus like that of claim 25, used to carry out a digestion process, would infringe a patent granted on the present application.

From CSIRO

· Claim 1 is a claim by result; the parameters must be such that a chemical reaction occurs otherwise it does not fall within the scope of the claim.

· The claims must be given a purposive construction.  In the context of the specification as a whole, "chemical reaction" means that the output product stream must contain different substances than the input stream.  Thus defined the prior art as shown in '782 does not disclose a chemical reaction.  It has been admitted that it is known to induce a chemical reaction using microwave energy, but only by batch processing, not the presently claimed continuous processing.

· It was submitted that the apparatus claims, while not limited to performing the method of claim 1, must be able to do so, and for similar reasons are not disclosed in the prior art.

· As for the submissions from CEM that certain features are not essential, in applying the reverse infringement test it is the invention as claimed that must be considered.  There are clear differences (it was said) between each of the independent claims and each of the citations, as detailed in Loft's declaration.

· Robert's declaration in reply is mostly new evidence and should not be admitted.  The main point of the evidence is to show that continuous processing is well known, and this should have been included in the evidence in support.

· This is a 1952 Act case.  In considering obviousness, it is first necessary to identify the addressee, and then determine what is that person's cgk.  Neither Roberts nor Jassie (it was said) were addressees; Roberts was not an ordinary worker in the field, and Jassie was a researcher.

· Loft is not put forward as an addressee, but rather as someone who is qualified to give an opinion as to who is the addressee, and what is their cgk, as he is in daily contact with technical personnel at all levels, within CSIRO and in industry.  It was submitted that the skilled addressee is a team of two people, namely a mid-level chemist and someone skilled in microwave applications.

· There is no evidence that any of the documents relied on were cgk in Australia at the relevant date.  Jassie is not resident in Australia and is therefore not competent to give an opinion on cgk in Australia, but any alleged equivalence of cgk between the USA and Australia which she asserts is at the research level, not the skilled addressee.

· In his declaration Roberts repeatedly combines items of public knowledge, not shown to be cgk, with items of cgk.  Even if it was cgk to move from batch to continuous processing, the evidence does not consider the question of, would an addressee, as a matter of routine, convert a microwave chemical process from batch to continuous?

· While Loft is admittedly an employee of CSIRO, Cameron is entirely independent.

· Both Loft and Cameron state that they consider the invention claimed to be non-obvious.  Then if it is inventive to them, both (or at least Cameron) a level above the ordinary worker, then it must surely be non-obvious to the addressee.

· Regarding the corresponding US patent, the narrower apparatus claim was not a response to prior art produced.

· Section 40 matters not argued at the hearing, but CSIRO wishes to rely on its written submissions.  Also, should CSIRO not be wholly successful in the matter, opportunity to amend is sought.

There was no particular reference at the hearing to the independent claims from either party.

DECISION

Evidence in Reply

It was submitted at the hearing that much of Roberts' second declaration was new evidence and consequently not admissible.  However I think that in substance Roberts' declaration is replying (admittedly at great length) to submissions by Cameron in the evidence in answer going to the inventiveness of the continuous processing aspect of the invention, and the meaning of "chemical reaction".  I consider it to be admissible and I will have regard to it, except for paragraph 58, which it was agreed was irrelevant.

Novelty

It was agreed the appropriate test for novelty was the reverse infringement test, in which, to establish want of novelty for a claim, each and every one of the essential features of the claim must be found in the allegedly infringing article.  See Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) CLR 228 and Rodi & Weinenberger AG v Henry Showell Ltd (1969) RPC 367.

Essential features

Considering claim1, it was submitted on behalf of CEM that, for reasons given above, neither the step of pressurising the feed nor the step of causing a chemical reaction to occur were essential, and therefore they could be ignored.  But I consider that prima facie all of the features of the broadest claim will be essential, unless on a proper construction of the whole of the specification the feature is found to be inessential, for example if the feature has no material affect on the way in which the invention works.  See Rodi & Weinenberger (supra) and Catnic Components v Hill & Smith Ltd (1982) RPC 183. It seems clear to me that each of these features has a significant influence on the nature of the process. Whether or not the pressurisation may also be involved with the chemical reaction, it is responsible at least for the continuous flow aspect of the invention, and if the parameters of the process were such that a chemical reaction (however defined) did not occur, the process would be in a different class of processes.

In my opinion all of the features of claim 1 are essential.  I will consider the apparatus claims 25 and 31 separately.  I turn now to the much-disputed scope of "chemical reaction".

What is a chemical reaction?

Not surprisingly, CEM proposes a definition of chemical reaction which tends to include the prior art, while CSIRO proposes one which tends to exclude it.  I note that some of the prior art uses microwaves in what are undoubtedly chemical reactions, but as I explain later, these disclosures have certain weaknesses in an attack on novelty.  The prior art evidence which appears to be of most relevance shows the use of microwaves to perform a variety of processes which, it seems to me, fall generally into two categories.

One, usually applicable to food substances, includes concentrating, pasteurising, sterilising, blanching, inactivating enzymes, and cooking.  Two, processes of digestion, often for the analysis of samples, eg of blood or ore.  CEM contends that all of these are, or at least can be, chemical reactions.  CSIRO on the other hand contends that they are only physical changes, and that the substance remains chemically the same.  A true chemical reaction, according to CSIRO, involves the "making and/or breaking of at least one chemical bond between or within one or more substances so as to produce one or more new substances" (Cameron, paragraph 4).  Cameron goes on to explain that by this definition the prior art processes, including the deactivation of enzymes and the killing of micro-organisms, do not constitute a chemical reaction.

Hawley's Condensed Chemical Dictionary, Eleventh Edition, revised by NI Sax and RJ Lewis, Van Nostrand Reinhold NY, ã 1987, defines chemical reaction (in part) as follows:

"A chemical change (my emphasis) that may occur in several ways, eg by combination, by replacement, by decomposition or by some modification of these.  Reactions are endothermic when heat is needed to maintain them….All chemical reactions are in balance, ie the number of atoms in the reacting substances is always equal to the number of atoms in the reaction products.  Common types of reactions are oxidation, reduction, ionization, combustion, polymerization, hydrolysis….Chemical reactions involve rupture of only the bonds which hold the molecules together, and should not be confused with nuclear reactions….."

Chemical change is defined as follows:

"Rearrangement of the atoms, ions, or radicals of one or more substances resulting in the formation of new substances often having entirely different properties.  Such a change is called a chemical reaction…..Chemical changes should be distinguished from physical changes in which only the state or condition of a substance is modified its chemical nature remaining the same.  A physicochemical change has some of the characteristics of both."

I note that the cooking of food is given as an example of a physicochemical change, not a chemical change.

Therefore, as so defined, which definition I accept, a chemical reaction necessarily results in a rearrangement of the atoms, ions, or radicals of a substance so as to form a new substance.  In my opinion the prior art processes mentioned above do not, or have not been shown to, constitute such a reaction.

But the expression should also be read in the context of the specification.  This includes more than 20 examples of organic synthesis using the method, and has about two pages of references to chemical texts and journals, mainly organic.  As accepted there is no suggestion in the specification that the invention is applicable to other than chemical reactions.  In my opinion claim 1 is limited to the performance of chemical reactions, as conventionally understood, eg as defined above.

I will now consider each of the citations.

US 3535482 (GWR3)

This document discloses an arrangement in which a continuous flow of a fluid is heated by microwave energy.  The fluid is typically, though not necessarily, a food product, and the heating could be for pasteurisation.  There is no chemical reaction as I have construed the term, and consequently this document does not anticipate claim 1.

US 4279722 (GWR17)

This discloses a method of operating a catalytic petroleum refinery, in which a mixture of liquid hydrocarbons and a catalyst are exposed to microwave radiation.  This clearly involves chemical reactions.  It is not entirely clear on the face of the specification whether the process is batch or continuous, though it is said that a part of the refinery operation could be carried out "batchwise or as a continuous process" (column 7 lines 63-64 regarding polymerization).  Also, while I am advised that at the publication date (1981) petroleum refineries normally operated continuously, it is not clear to me what this disclosure would signify to the present addressee, who is probably not a person knowledgeable in the operation of refineries.

However that may be, CSIRO submits that there is another difference, namely that '722 does not disclose the presently claimed "reactant or solvent capable of absorbing microwave radiation".  Loft at 10.1 states that while at the date of '722 it was thought that the hydrocarbons absorbed the microwave energy, later studies show that due to their low polarity petroleum hydrocarbons are microwave transparent, and in '722 the microwaves are in fact absorbed by the catalyst, which is neither a reactant nor a solvent, as is claimed.  There appears to be no rebuttal of this in the evidence in reply; I conclude that '722 does not anticipate claim 1.

GB 2061728 (GWR19)

Carrageenan is a hydrophilic colloid which is used as an emulsifying or stabilising agent in food and cosmetic products.  This document discloses a method for stabilising a cosmetic containing carrageenan (eg a toothpaste) in a continuous process which comprises microwave-heating the cosmetic to at least the gel-sol transition temperature of the carrageenan.  It states that the treated cosmetic has greater viscosity, and also notes that temperatures high enough to cause even small amounts of decomposition should be avoided.  Thus there is no disclosure of a chemical reaction.

GB 2994652 (GWR20)

This discloses a method for the preparation of diboron tetrachloride from boron trichloride vapour.  This is clearly a chemical reaction and the process is a continuous one.  The vapour is pumped from a cooled reservoir of boron trichloride through a cooled cavity resonator which is excited by a microwave generator and the product collected in a liquid nitrogen cold trap.  The pumping pressure is very low (about 4 mm of Hg) and the apparatus is evidently sealed.  However read in context I do not think that this is a "clear and unmistakeable direction" to provide a "pressurized feed of liquid or slurry" as claimed.  See General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1972) RPC 457. Also, in my opinion it cannot be said that there is a clear disclosure of a "reactant or solvent capable of absorbing microwave energy" as it passes through a "microwave heating zone", as is claimed. The prior specification states that the precise chemical mechanism by which the conversion occurs is not known, but surmises that it is similar to a known method in which boron trichloride is exposed to a mercury vapour electric discharge.

US 3494723 (GWR21)

This document discloses an arrangement for the continuous and pressurised treatment of substances for the destruction or control of micro-organisms and enzymes.  As I have said I do not consider such processes to be a chemical reaction.

The evidence in support also includes material additional to the above, which was not expressly referred to at the hearing.  I have considered it, but in my opinion it too fails to establish that claim 1 lacks novelty.

The apparatus claims

I now consider the apparatus claims 25 and 31.  These claims both commence "Apparatus for performing the method of claim1 comprising……", and go on to define integers, somewhat different in each case, additional to the minimum necessary to carry out the method of claim 1.

CSIRO concedes that the apparatus thus claimed is not limited to performing the method of   claim 1, but submits that to fall within the scope of the claims, the apparatus must be capable of performing the steps of the method of claim 1.  This much is not really in dispute.  However CEM submits that if cited apparatus, for example that used to treat foodstuffs as in '482 (ignoring for the moment the extra integers in the apparatus claims), had the parameters appropriately set and was fed a chemically active feed, then a chemical reaction would take place.  More simply, known apparatus could be used to carry out the method of claim 1, which thereby anticipates the apparatus claims.

This may be so, and it does not seem unlikely, but in my opinion it is for CEM to establish that it is.  As it stands it is really only an assertion by CEM's declarants; there is no actual evidence before me to show that any of the prior art apparatus could in fact be used to perform claim 1.  I acknowledge that the prior art cited consists only of paper anticipations, and evidence of the kind I am suggesting is needed would be difficult to obtain.  Nonetheless I do not consider that I should make a finding which would be to the direct and significant disadvantage of CSIRO, based only on unsubstantiated statements and a feeling of probabilities.  The onus is on the opponent to make its case; the benefit of doubt should go to the applicant.

Also, in my opinion no single document in the evidence in support clearly discloses the particular combination of integers defined in either of these claims.  Most relevantly, '482 does not disclose various integers being "operably interconnected" as in claim 25, nor a heat exchanger immediately downstream from the microwave treatment zone as in claim 31.  The other citations each have their own various inadequacies.

I conclude that the ground of lack of novelty has not been made out in respect of any of the independent claims.  Consequently it is not necessary to consider the dependent claims.

Obviousness

The test for obviousness under the Patents Act 1952 is whether the invention claimed would have been obvious to a skilled but non-inventive worker in the industry, equipped with the cgk in the industry, as at the priority date of the claim, and "without regard to documents in existence but not part of such common general knowledge"; see The Welcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd 148 CLR 262. The test must be made against what is proven to be cgk in the industry, being a "general body of knowledge" held and used by workers of ordinary skill in that industry; see Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Ltd 144 CLR 253.

First it is necessary to identify who is the addressee in this case (and I am assuming that the addressee and the person skilled in the art is the same), and then determine what is their cgk.  The combination of chemical and microwave technology which the invention involves makes it rather difficult to identify the addressee, and this led to considerable discussion by the parties, each of course attempting to portray their declarants as the most appropriate.  In my opinion none of the declarants are entirely convincing addressees.

CSIRO does not suggest that Loft is an addressee, but rather that his job contacts enables him to recite what is the relevant cgk.  This may be true, but it seems dubious to me.  He has worked in an intellectual property office since 1976, and at least prima facie it would seem that his contacts would mainly be with researchers and innovators.  How then would he know what was the cgk of the ordinary skilled worker?  CSIRO's other declarant, Cameron, has been an academic all his working life, and has held the position of Professor of Organic Chemistry at Melbourne University since 1968, about 20 years before the priority date.

CEM's principal declarant Roberts appears not to have worked in the chemical industry as employee (or employer) since 1970.  During that time he was responsible for directing a program investigating the use of microwave energy for the treatment of food products.  After that time he became Director of his own consulting practice.  As such his declaration shows that he has been involved in many activities, of which the following are representative - chemical analysis of products and waste discharges for compliance with regulations or to investigate manufacturing problems; written opinions and advice regarding process technology and legal disputes; retrieval of information by on-line searching; preparation of technical documentation; fire investigations; work related to safety and hazardous materials; evidence in court regarding scientific matters.  On the face of it, in my opinion this not the sort of work which would characterise the ordinary skilled worker, nor would it qualify him to say what the cgk of the ordinary skilled worker was in 1988.

CEM's second declarant, Jassie, has a PhD, the dissertation for which related to microwave dissolution sampling techniques.  From about 1982 to the date of her declaration she was employed in a research capacity by CEM, principally investigating the use of microwaves for dissolution and digestion in sample preparation.  Her CV shows 15 publications (usually with others), almost wholly to the same subject matter, and 19 presentations, also mainly on the same subject matter.  Dr Jassie is clearly an expert in this field but (or because of it) I doubt that she is the addressee in this case.  Also, she lives and works in the USA; the relevant cgk must be that in Australia.  In her declaration she refers to the equivalence of knowledge between these countries, however I accept the submission from CSIRO that, even if this is the case, it is only at the research level.

Therefore I find that I can give little weight to the declarant's various statements as to what is, or is not, cgk, and similarly for what is or is not obvious in view of it.  But of course the onus is on the opponent; the benefit of any doubt should be given to the applicant.

I accept that both batch and continuous processing were generally cgk in the chemical industry in 1988, and that one or the other would be used according to the particular circumstances.  I also accept that, on the weight of the evidence, it was probably cgk in the industry that microwave heating was or could be used in some processes, in particular, food processing.  However in my opinion the evidence does not show that any of the specific exhibits in this case were cgk.

CEM's declarants both refer to two papers by Gedye (et al), GWR27 and GWR27, both published in Australia before the priority date, and acknowledged in the specification.  These papers disclose the synthesis of organic compounds in sealed containers in a microwave oven.  The declarants say that, well, in view of these papers, all CSIRO has done is to change to a continuous process, which is itself cgk and an obvious thing to do, and the claims are therefore obvious.

However this is a 1952 Act case, and a finding of obviousness based on the Gedye paper(s) and cgk would require it to be established that these papers are themselves cgk.  As I have said, in my opinion this has not been done.  Consequently I must find that the opposition ground of obviousness has not been made out.  By way of comment I would add that, in my opinion, it cannot be said that just because batch and continuous processing per se were cgk, it then necessarily follows that it is non-inventive to convert a particular process from one to the other.

Section 40

This ground of opposition was dismissed in an earlier proceeding, however it was submitted at the hearing that I should consider the issues since the Commissioner has a duty not to grant a patent which is clearly invalid.  I have looked at this briefly, and in my opinion there are no serious section 40 defects.

CONCLUSION

I have decided that none of the grounds of opposition have been made out, and that there are no serious section 40 defects.  Consequently I direct that the opposition proceed to sealing, subject to there being no appeal.

COSTS

As costs normally follow the event, I award costs against the opponent CEM Corporation.

RG Tolhurst
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Phillips Ormonde & Fitzpatrick, Melbourne

Patent attorneys for the opponent   :  Griffith Hack, Perth