Commonwealth Scientific and Industrial Research Organisation v Technological Resources Pty. Limited - [2018] APO 23

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Commonwealth Scientific and Industrial Research Organisation v Technological Resources Pty. Limited [2018] APO 23
Patent Application: 2011261171

Title:Separating mined material

Patent Applicant:                   Technological Resources Pty. Limited
Opponent:  Commonwealth Scientific and Industrial Research Organisation
Delegate:  Isaac Tan
Decision Date:  27 March 2018
Hearing Date:  26 July 2017 in Canberra, ACT

Catchwords: PATENTS - bulk assessment and bulk sorting of mined material - opposition to the grant of a patent under section 59 – consideration of material filed in corresponding opposition under regulation 5.23 - ground of novelty and inventive step under section 7 - ground of manner of manufacture under section 18(1)(a) - substance of the invention relates to an arrangement of mineral processing concepts – claims directed towards mere working direction – lack of manner of manufacture established – lack of novelty and inventive step established – lack of inventive step in light of common general knowledge alone established – confidentiality obligations of an organisation is not an indication common general knowledge - opposition successful - costs awarded against the applicant – application refused

Representation:
Applicant:
Greg Munt, Patent Attorney of Griffith Hack

Opponent:
Ian Horak, Counsel
Tracey Webb, Patent Attorney of Allens Patent & Trade Mark Attorneys (previously of FB Rice)

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2011261171

Title:Separating mined material

Patent Applicant: Technological Resources Pty. Limited
Date of Decision: 27 March 2018
DECISION
The Opposition is successful on all grounds.
Lack of manner of manufacture, novelty and inventive step established.
Costs according to Schedule 8 are awarded against Technological Resources Pty. Limited
I do not consider it appropriate to provide an opportunity to amend as, in the circumstances of the case, it will serve no useful purpose. The application is refused.
REASONS FOR DECISION
Background

Australian patent application 2011261171 was filed on 2 June 2011 in the name of Technological Resources Pty. Limited (the “Applicant”) as international application PCT/AU2011/000691 filed under the Patent Cooperation Treaty (“PCT”) with an international filing date of 2 June 2011 and claiming a priority date of 2 June 2010. I note that Technological Resources Pty. Limited is part of the Rio Tinto Group of companies.
On 18 June 2014, a first patent examination report was issued. The application was subsequently accepted on 7 September 2015, and advertised in Supplement to the Australian Official Journal of Patents on 24 September 2015.
On 24 December 2015, Notices of Opposition were filed by Raymond Ludwig John Tettman (the “Tettman Opposition”) and Commonwealth Scientific Industrial Research Organisation (the “Opponent”). Matters which concern the Tettman Opposition will be dealt with in a separate decision.
On 23 September 2016, the Applicant proposed amendments to the accepted claims. Leave was granted to amend and subsequently allowed. Details of the leave to amend and allowance were respectively advertised in the Supplement to the Australian Official Journal of Patents dated 3 November 2016 and 19 January 2017.
A hearing was held in Canberra, ACT on the 26 July 2017. The Applicant responded by written submissions only.
On 20 October 2017, the Opponent changed representation from FB Rice to Allens Patent & Trade Mark Attorneys.
Applicable Law
As a consequence of the Intellectual Property Legislation Amendment (Raising the Bar) Act 2012 (the “Raising the Bar Act”), there are substantial changes to the Patents Act 1990. The date of effect of those changes was 15 April 2013. The application of the Amendment Act in the present case depends on the date of the request for examination. The applicant filed its request for examination on 3 April 2013. Consequently the Patents Act as in force immediately before 15 April 2013 applies in the present case.
This means that the former standard for opposition proceedings applies and the opponent bears the onus of establishing that it is clear or practically certain that a valid patent could not be granted[1].
[1] F Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1992] 92 FCR 106 at [17]
Evidence and Submissions
Evidence in Support consists of:
·A first declaration by Dr Ralph Holmes (“Holmes #1”) dated 21 June 2016 with Exhibits RXH-01 – RXH-06
·A first declaration by Dr David Miljak (“Miljak #1”) dated 21 June 2016 with Exhibits DM-01 – DM-19
Evidence in Answer consists of:
·A declaration by Eugene Chin dated 8 November 2016 (“Chin”) with exhibits EC-1 to EC3.
·A declaration by Carly Louise Painter (“Painter”) dated 21 November 2016 with exhibits CLP-1 to CLP-2
Evidence in Reply consists of:
·A second declaration by Dr Ralph Holmes (“Holmes #2”) dated 13 February 2017 with Exhibits RXH-07 – RXH-16
·A second declaration by Dr David Miljak (“Miljak #2”) dated 10 February 2017 with Exhibit DM-20
The Opponent and Applicant both filed submissions respectively on 12 July 2017 and 19 July 2017. The Applicant’s summary of submissions was filed on 21 July 2017.
The Grounds of the Opposition
The Statement of Grounds and Particulars identifies the following:
·Lack of Entitlement under section 59(a)
·Not a manner of manufacture within the meaning of section 6 of the Statute of Monopolies under Section 18(1)(a);
·Lack of novelty under Section 18(1)(b)(i);
·Lack of inventive step under Section 18(1)(b)(ii);
At the hearing, only the grounds of manner of manufacture, novelty and inventive step were pressed.
The Tettman Opposition
On 23 May 2017, The Opponent filed the following request:
“We hereby request a direction from the delegate of the Commissioner that the evidence in the Tettman Opposition also be considered as evidence in filed in the CSIRO Opposition and vice versa. Such a direction can be made under Regulation 5.23 of the Patent Regulations 1990 (cth) (as amended).
Alternatively, if the delegate would prefer not to give a blanket direction then we hereby make a request under Regulation 5.23 that the declarations filed in the Tettman Opposition be taken into account in this proceeding.”
The delegate disagreed and on 6 June 2017, informed the parties that submissions on how the evidence filed in the Tettman Opposition is likely to change the outcome of the CSIRO opposition could be made at the substantive hearing.
On 21 July 2017, the Opponent requested an amendment of the Statement of Grounds and Particulars to include references to document D26 - Nienhaus et al., “Dilution control of Run-of-mine ore with an innovative on-line technique – Application of laser-induced fluorescence (LIF) in the mining industry”, Aachen University, Germany, 2004 (“Nienhaus”).
During the hearing, the Opponent submit that regulation 5.23 should be invoked in light of the following material[2]:
[2] The Opponent’s Submission at [301]-[307]
1.Document D26
2.The evidence of Dr Bearman on common general knowledge and associated discussion on obviousness.
3.Dr Bearman’s evidence on document D9 of this opposition (referred to by Dr Bearman as D5).
4.Dr Bearman’s response to that of Ms Painter and Mr Chin.
Dr Bearman is a declarant in the Tettman Opposition.
Regulation 5.23 sets out that:
(1)For the purpose of deciding an opposition, the Commissioner may consult a document that
(a)   is relevant to the opposition; and
(b)   has not been filed under this chapter; and
(c)   is available to the Patent Office.
(2)If the Commissioner proposes to rely on the document, the Commissioner must give the parties:
(a)   A notice of the Commissioner’s intention to do so; and
(b)   A copy of, or access to, the document; and
(c)   An opportunity to give evidence or make representations about the document.
In Merial Limited v Bayer Intellectual Property GmbH [2015] APO 16, the delegate considered whether to rely on information under regulation 5.23. In this decision, the delegate noted that[3]:
[3] Merial Limited v Bayer Intellectual Property GmbH [2015] APO 16 at [22]
“Guidance as to the interpretation of this regulation can be drawn from both the Explanatory Statement and the context of the Patents Act and the Regulations. Regulation 5.23 is not the only provision dealing with information brought to the attention of the Commissioner. Under section 97, the Commissioner can carry out re-examination on her own initiative. Reexamination is available either before or after grant, whereas regulation 5.23 can only operate while an opposition is proceeding. It is in the public interest for highly significant information to be considered within an existing opposition and not wait for re-examination after the opposition is concluded. Less significant information should be allowed to wait until after the opposition has been concluded (considering that amendments resulting from the opposition may overcome the deficiency).”
In Reflex Instruments Asia Pacific Pty Ltd v Minnovare Limited [2017] APO 8, the following matters were considered to determine if regulation 5.23 should be invoked:
·The circumstances leading up to the evidence not being filed earlier
·What the evidence shows
·Is the information likely to be crucial to the delegate’s decision
·The public interest in having the information considered
·The balance of convenience of the parties if the information is considered
On 28 July 2017, I wrote to the parties stating:
“CSIRO’s request under regulation 5.23 is set out in paragraph 301 – 307 and Appendix D of their hearing submissions. It appears that CSIRO’s existing evidence is deficient in that it does not address the analysis of copper.
Accordingly, I am satisfied that regulation 5.23 should be invoked only to the extent that the evidence in the Tettman Opposition refers to the analysis of Copper. For example, this is set out in paragraphs 98, 102, 106, 161, 165 of the declaration by Dr. Richard Anthony Bearman dated 28 Jan 2017.
I do not agree that D26 meets the requirements of regulation 5.23 and should be brought into the CSIRO opposition.”
In relation to the amendment request under regulation 5.16, I stated:
“It follows that I am not satisfied that the amendment to the Statement of Grounds and Particulars to the extent that it refers to D26 should be made.”
The Applicant was allowed two weeks to provide submissions addressing the regulation 5.23 material. On 11 August 2017, the Applicant disagreed with the above by submitting that the Opponent already had the opportunity to file evidence and that Dr Bearman’s declaration will be considered as evidence in the Tettman Opposition.
However as matters concerning the Tettman Opposition is to be dealt with as a separate opposition, I am inclined to disagree with the Applicant.
Therefore as set out above, I am satisfied that paragraphs 98, 102, 106, 161, 165 of the declaration by Dr Richard Anthony Bearman dated 28 Jan 2017 will be brought into the present opposition under regulation 5.23.
The confidentiality obligations
On 14 August 2017 following the hearing, the Applicant filed the following submission:
“One of the submissions of the applicant is that the declarants for the opponents, namely Drs Bearman, Holmes and Miljak, have significant confidential information and it is not possible to separate their confidential knowledge from public knowledge when assessing common general knowledge. The confidential information of these declarants is due to their long experience in the mining industry. It is also due to the employment of Drs Holmes and Miljak by CSIRO and the business model of CSIRO relying on contract research that carries with it confidentiality obligations.
In order to illustrate the above, we attach the following documents, which are a small selection of a much larger set of Agreements that include confidentiality obligations.
1.CSIRO Visitor Agreement binding Mark Paine of Rio Tinto to confidentiality.
2.CSIRO Visitor Agreement binding Danielle Robinson of Rio Tinto to confidentiality
3.CSIRO-TRPL Confidentiality Agreement.
4.TRPL-CSIRO Confidentiality Agreement.
5.Confidentiality Agreement between TRPL and Dr Bearman and his consultancy company Bear Rock Solutions Pty Limited.”
On 16 August 2017, I wrote back to the parties and indicated that if I decided that regulation 5.23 should be invoked in relation to these agreements, the Opponents would be provided an opportunity to provide submissions in accordance with regulation 5.23(2)(c).
It appears that these documents confirm at a general level that where work is undertaken between Rio Tinto and external contractors, it is common practice to set up a confidentiality agreement. However the applicant has not established whether these documents are relevant to some of the evidence, all of the evidence or none of the evidence. Therefore it is not apparent whether the documents are likely or unlikely to be crucial to the outcome of the decision.
Consequently, I am unable to be satisfied that regulation 5.23 should be invoked.
The specification
The invention of the present opposition relates to a method and apparatus for identifying and separating mined material on a bulk basis and then sorting selected segments of mined material on a particle basis. The mined material may be metalliferous materials such as iron-containing and copper-containing ores, or non-metalliferous material such as coal.
According to the specification[4]:
[4] Specification as amended on 23 Sept 2016 on Page 1 Line 35 – Page 2 Line 9
“It is known to mine iron ore in large blocks of ore from benches. In this conventional mining operation, typically, the blocks of ore are substantial, for example 40 m long and by 20 m deep by 10 m high and contain 8000 tonnes of ore. Typically, a section of a bench is assayed by chemically analysing samples of ore taken from a series of drilled holes in the section to determine whether the ore is (a) high grade, (b) low grade or (c) waste material on a mass average basis. The cut-offs between high and low grade and between low grade and waste material are dependent on a range of factors and may vary from mine to mine and in different sections of mines.”
The specification then states that[5]:
[5] Ibid at Page 2 Line 34 – Page 3 Line 2
“A significant proportion of low grade ore can remain as stockpiled ore. As a consequence, there are large stockpiles of mined ore that have been classified as low grade ore that have potentially significant economic value notwithstanding the low grade of the ore.”
However the ore can be processed in order to upgrade the quality of the ore. The specification defines the term “upgradable” as meaning that economic or potential economic value of the ore is increased, or that to produce a product of a required customer specification. For example[6]:
[6] Ibid at Page 2 Line 28 – Page 2 Line 32
“…processing of high grade ore ranges from simple crushing and screening to a standard size range through to processes that beneficiate or upgrade the iron ore to produce a product of a required customer specification. The processing may be wet or dry.”
and[7]:
[7] Ibid at Page 3 Line 26 – Page 3 Line 28
“Low grade iron ore resources, including ore to be mined and stockpiled ore, can be upgraded using wet concentration and dry sorting plant flowsheets.”
The specification end with 5 Figures. Figure 1 is reproduced below:
As shown in figure 1[8]:
[8] Ibid at Page 17 Line 25 – Line 37
“…mined or stockpiled iron ore is crushed in a high grade primary crusher (HGPC) circuit 3. The primary crusher circuit 3 may be an in-pit circuit or a circuit that is outside the pit.
The crushed ore is transferred from the primary crusher circuit 3 as a feed material to a grade assessment assembly 5. The grade assessment assembly 5 comprises a transfer conveyor belt that transport a bed of the iron ore along the belt to a discharge end and a grade detection system positioned to assess the grade of the iron ore at a location along the length of the belt. “
A range of grade detection systems may be used and falls into two categories[9]:
[9] Ibid at Page 18 Lines 21 - 29
·Those which analyse the entire bed depth of the ore.
·Those which analyse the surface of the iron bed only.
One grade detection option provided is Prompt Gamma Neutron Activation Analysis (“PGNAA”)[10]. Once the ore has been graded[11]:
[10] Ibid at Page 18 Lines 34 - 36
[11] Ibid at Page 18 Lines 15 - 30
“The iron ore that is discharged from the transfer conveyer belt of the grade assessment assembly 5 is transferred to a sorter 7 in the form of a splitter system that directs segments of iron ore that are at or above the first grade threshold into a first chute (not shown) and segments of iron ore that are below the grade threshold into a second chute (not shown).
The material in the first chute is shown in Figure 1 as an “Accepts” feed. This material may be a product specification or a feed for a downstream processing plant such as a beneficiation plant, such as a wet processing plant or a dry processing plant, to produce a product. The material in the second chute is shown in Figure 1 as a “Rejects” material that is transported away from the sorter 7 and stockpiled or used as landfill.
One suitable analytical technique for the dry sorting step is dual energy x-ray analysis. The specification defines this as[12]:
[12] Ibid at Page 11 lines 11 - 21
“The term “dual energy x-ray analysis” is understood herein to mean analysis that is based on processing data of detected transmitted x-rays through the full thickness of each particle obtained at different proton energies. Such processing makes it possible to minimise the effects of non-compositional factors on the detected data so that the data provides clearer information on the composition, type, or form of the material.”
Alternatively, dry sorting could also be performed via x-ray fluorescence, radiometric, electromagnetic, optical, and photometric techniques[13].
[13] Ibid at Page 11 lines 23 - 26
The Claims
The specification contains 6 independent claims and 63 dependent claims. Independent claim 1, 19, 23, 51, 59 and 63 are reproduced below:
Claim 1
A method of separating a mined material as described herein that comprises:
(a)assessing the grade of successive segments of the mined material as the mined material is transported along a pathway, and
(b)separating each segment on the basis of grade into a category that is at or above a first grade threshold or a category that is below the first grade threshold by dry sorting the segments; and
(c)dry sorting particles from at least one segment and producing upgraded material.
Claim 19
An apparatus for separating a mined material as described herein that comprises:
(a)a grade assessment system for assessing the grade of successive segments of the mined material as the mined material is being transported along a pathway, and
(b)a separation system for separating each segment on the basis of grade into a category that is at or above a first grade threshold or a category that is below the first grade threshold, the separation system including a dry sorter, and
(c)a dry sorter for dry sorting particles from at least one segment that is above the first grade threshold and producing upgraded material.
Claim 23
A method of separating a mined material as described herein that comprises:
(a)assessing the grade of successive segments of the mined material, and
(b)separating each segment on the basis of grade into a category that is at or above a first grade threshold or a category that is below the first grade threshold; and
(c)processing at least one separated segment in a downstream processing plant and producing upgraded material.
Claim 51
An apparatus for separating a mined material as described herein that comprises:
(a)a grade assessment system for assessing the grade of successive segments of the mined material, and
(b)a separation system for separating each segment on the basis of grade into a category that is at or above a first grade threshold or a category that is below the first grade threshold; and
(c)a processing plant for processing at least one separated segment that is above the first grade threshold and producing upgraded material.
Claim 59
A method of separating a mined material in the form of copper-containing ore as described herein that comprises:
(a)a size reduction step of the mined material;
(b)assessing the grade of successive segments of the mined material as the mined material is transported along a pathway, and
(c)separating each segment on the basis of grade into a category that is at or above a first grade threshold or a category that is below the first grade threshold.
Claim 63
An apparatus for separation a mined material in the form of copper-containing ore as described herein that comprises:
(a)an apparatus for reducing the size of the mined material,
(b)a grade assessment system for assessing the grade of successive segments of the size-reduced mined material as the mined material is transported along a pathway, and
(c)a separation system for separating each segment on the basis of grade into a category that is at or above a first grade threshold or a category that is below the first grade threshold.

The claims can be separated into three sets.
·Set 1: independent claim 1 and 19, and dependent claims 2 to 18 and 20 to 23.
·Set 2: independent claim 23 and 51, and dependent claims 24 to 50 and 52 to 58.
·Set 3: independent claim 59 and 63, and dependent claims 60 to 62 and 64 to 69.
The Applicant has summarised the three sets as follows[14]:
[14] Painter at [9] – [9.4]
Set 1
Set 2
Set 3
Person skilled in the art
In KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd (2007) FCA 481; 71 IPR 615 Kiefel J identified the skilled addressee as[15]:
[15] KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd (2007) FCA 481;71 IPR 615 at [16]
“...a person acquainted with the surrounding circumstances of the state of the art and manufacture at the relevant time ... They are likely to have a practical interest in the subject matter of the invention ... and may often work in the art with which the invention is connected.”
In Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; 9 IPR 225, Finkelstein J stated[16]:
[16] Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; 49 IPR 225 at [70]
“He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious.”
However in AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30, the High Court noted that[17]:
[17] AstraZeneca AB v Apotex Pty Ltd [2015] FCA 30 at [23]
“The notional person is not an avatar for expert witnesses whose testimony is accepted by the court. It is a pale shadow of a real person – a tool of analysis which guides the court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step.”
There was some dispute between the parties as to the appropriateness of each declarant’s suitability to give evidence as the person skilled in the art.
The Applicant submits, in agreeance with the Opponent, that[18] “…the person skilled in the art is someone with a tertiary science or engineering qualification who, as at June 2010, worked in that section of the mining industry that is involved in mining and downstream processing of ores containing valuable metals to produce products that are suitable for supply to the market.”
[18] The Applicant’s summary of submissions at [38]-[39]
Having a similar view, the Opponent agrees that “…the person skilled in the art would be a person involved in mining and the downstream processing of ores and other valuable material, and that such persons include those in the mining industry and the CSIRO.”
The Opponent relies on the evidence of Dr Miljak and Dr Holmes and provides the following summary[19]:
[19] The Opponent’s Submission at [72]-[74]
“Dr Miljak is a Principal Research Scientist in the Mineral Resources Division of the CSIRO. He leads strategic CSIRO projects focusing on bulk ore sorting and selective mining in the mineral industry. He has over 17 years’ experience in the minerals industry and is ideally placed to give information about the state of knowledge in the field through his research and interaction with companies in the mining industry[20].
[20] Miljak #1 at [1]-[12]; DM-1
Dr Homes is a Chief Research Scientist and Portfolio Leader for Carbon Steel at the CSIRO. He has over 44 years’ experience in the minerals industry including in ore sorting and selective mining[21]. He has conducted research into nuclear techniques for on-stream and bulk analysis of mineral commodities and is on various Australian standards Committees relating to the analysis and sampling of iron ore.”
[21] Holmes #1 at [1]-[16]; RXH-1
The Applicant relies on the evidence of Ms Painter and Dr Chin and provides the following summary in relation to Ms Painter[22]:
[22] The Applicant’s summary of submissions at [40]
“…at the priority date of 2 June 2010, Ms Painter was a person skilled in the art. She has relevant academic qualifications. Ms Painter is one of the inventors. She commenced work in the field of processing iron ore at Rio Tinto Iron Ore Technology in March 2008, 2 years and 3 months before the priority date of 2 June 2010. She moved to another role in the iron ore business of Rio Tinto in February 2010. In the period February 2002-March 2008, Ms Painter worked in a number of roles in the iron ore and alumina businesses of Rio Tinto.”
Although the Applicant did not provide any comments in relation to the evidence of Mr Chin, I believe his evidence is worth a brief consideration.
Eugene Chin (“Mr Chin”) graduated in 2001 with a Bachelor of Engineering with Honours in Mechanical Engineering from the University of Canterbury, New Zealand. After graduation, Mr Chin spent several years working as a Design Manager for Fisher and Paykel Healthcare in New Zealand. In 2009, Mr Chin joined MRX Technologies, a company in the JRB Engineering Group. MRX has expertise in the areas of: design, installation and commissioning of test, monitoring and inspection systems in the railway industry. During this period of employment, Mr Chin was involved in two projects involving rail technologies in relation to transporting iron ore from mines to port operation. One project was for BHP Billiton and the other for Rio Tinto. In 2012, Mr Chin joined the Bulk Sorting Project Team at Rio Tinto where Mr Chin gained skills and knowledge about the sorting of mined material, particularly iron ore.
I have some concerns regarding Mr Chin’s experience. Mr Chin did not commence working in mineral sorting and processing until 2012, after the relevant priority date. Mr Chin also states in his declaration that[23]:
[23] Chin #1 at [7(h)]
…Prior to joining the Bulk Sorting Project Team, I had the basic knowledge of a technically qualified but not highly experienced Mechanical Engineer working in the mining industry. After joining the Bulk Sorting Project Team I acquired considerable knowledge about sorting of mined material, particularly iron ore. I believe it is fair to say that I am now very experienced in the sorting of mined material, particularly iron ore, as a consequence of my time working in the Bulk Sorting Project Team.”
While Mr Chin could have obtained knowledge and experience representative of the art at June 2010, his experience appears less than that of the other declarants. Consequently where there is conflicting evidence, I will have regard to Mr Chin’s experience in order to evaluate and weight the evidence to resolve any conflict.
Addressing the question of the person skilled in the art should be, the Opponent position is that[24]:
[24] The Opponent’s Submission at [76]-[80]
·Ms Painter (and Mr Chin) are both the Applicant’s employees and are able to provide only limited, if any, useful evidence as a proxy to the person skilled in the art.
·Significant portions of Mr Chin and Ms Painter’s declarations are identical.
·The Applicant’s deponents have had relatively limited relevant experience at the priority date.
·Ms Painter has had a limited technical role in the mineral sorting field prior to the priority date.
The Opponent submits that Dr Holmes and Dr Miljak are[25] “the type of persons who would, in the ordinary routine course, be consulted if there was a desire to solve a problem relating to the separation of mined minerals” and have extensive knowledge in comparison to that of the Applicant’s deponents[26].
[25] Ibid at [75]
[26] Ibid at [83]
In contrast, the Applicant submits that[27] “Drs Holmes and Miljak are long-standing CSIRO researchers. Both are highly qualified academically. They are clearly at the highly qualified end of the spectrum of technical experts in the technical field of the invention.
[27] The Applicant’s summary of submissions at [41]
However upon reviewing the evidence, it is clear that the evidence provided is not at a highly specialised level. Consequently I am satisfied that Dr Holmes, Dr Miljak and Ms Painter all possess relevant experience and can provide evidence of what was known in the art.
Furthermore, I have reviewed Dr Bearman’s background and am satisfied that he can also provide evidence of what was known in the art. However in this opposition, Dr Bearman’s expertise is relied upon only to the extent that his evidence relates to the analysis of copper.
Construction of the claims
The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228[28]:
[28] H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 at [118] – [120]
"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification".
In Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214; 100 IPR 451, Middleton J stated[29]:
[29] Eli Lilly and Company Limited v Apotex Pty Ltd [2016] FCA 214, 100 IPR 451 at [139]
“It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”
As shown above, all 3 sets of claims involve separating a mined material via a bulk assessment step and a bulk separation step. Set 1 defines that further processing or upgrading of the mined material is done via dry sorting. In set 2, the processing or upgrading is done in a processing plant.
Set 3 does not require a processing or upgrading step. Instead, the size of the mined material is first reduced prior to bulk assessment and bulk separation.
Interestingly, all of the independent claims refer to a method or apparatus of separating mined material “as described” within the specification, the method or apparatus comprising a number of integers. Typically where the phase “as described within” is used in an omnibus claims, the scope of the claim extends to the broadest possible interpretation of the integers which follow this term, but must be contained within the confines of the specification[30].
[30] GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Ltd [2016] FCAFC 90
On this basis, it is clear that the phase “as described herein comprising” indicates that the scope of the claim does not extend to any manner in which the integers following this phase can be construed, but only to the extent allowable by the specification. It is also permissible that the scope of the claim may include additional integers which are not claimed, but are present in the specification.
In relation to the term “comprising”, the meaning of this term is determined according to the context in which it is used. In Asahi Kasei Kabushiki Kaisha v WR Grace and Co [1991] FCA 530; 22 IPR 491, it was held[31] that in the context of the case the term “comprise” was used in an exhaustive sense rather than an inclusive sense. In General Clutch Corporation v Sbriggs Pty Ltd [1997] FCA 499; (1997) 38 IPR 359, it was concluded[32] that the normal linguistic meaning is that comprising means “made up of, composed of, or constituted by” the integers listed. In Frensnius Medical Care Australia Pty Limited [2005] FCAFC 220; (206) 67 IPR 230[33], this term was given a non-exhaustive meaning.
[31] Asahi Kasei Kabushiki Kaisha v WR Grace and Co [1991] FCA 530; 22 IPR 491 at [514] – [515]
[32] General Clutch Corporation v Sbriggs Pty Ltd [1997] FCA 499; (1997) 38 IPR 359 at [376]
[33] Frensnius Medical Care Australia Pty Limited [2005] FCAFC 220; (206) 67 IPR 230 at [56] – [64]
Moving on to set 1 which consists of independent claim 1 and 19, it is clear on the face of the claim that bulk assessment is performed while the mined material is transported along a pathway and bulk separation is performed by dry sorting.
In set 2, which consists of independent claim 23 and 51, it is clear on the face of the claims that the bulk assessment and bulk sorting steps are not directed to any particular method. In this regard, set 2 is broader than set 1.
With set 3, which consists of independent claim 59 and 63, bulk assessment is performed while the mined material is transported along a pathway as defined in set 1. Claim 63 defines that size reduction of the mined material is performed using an apparatus. However unlike set 1 and set 2, set 3 defines that the mined material is in the form of copper-containing ore.
While the parties did not express any great difficulty in construing the claims, the specification provides the following definitions which may be useful in understand the claimed invention:
·Particle[34]: “The term “particle” is understood in a broad sense to include, by way of example, any one or more of large and small rocks, large and small stones, and particles that can be described as dust. The particles may be any size that can be processed by the method and the apparatus.”
[34] Specification as amended on 23 Sept 2016 at page 5 lines 8 - 13
·Dry sorting[35]: “The term “dry sorting” is understood herein to any upgrading process that does not require added moisture for the purpose of effecting separation.”
[35] Ibid at Page 5 lines 32 - 34
·Grade[36]: “The term “grade” is understood to herein to mean the concentration of an element of interest in an ore resource.”
[36] Ibid at Page 6 lines 1 - 3
It is also worth noting that the grade of the mined material is used in conjunction with a grade threshold. The grade threshold is determined according to[37]:
[37] Ibid at Page 7 Lines 19 - 31
“Mineralogy of the mined material, mining costs, separation (such as dry sorting) costs, and downstream costs, including processing costs to produce a marketable product from the mined material that meets customer specifications in terms of grade and other characteristics such as particle size, and also including costs to transport that product to customers.
The first threshold grade may be a grade that meets a customer specification in terms of grade.”
The grade assessment[38] “may be a direct assessment of grade or an indirect grade assessment based on detected information that provides an indication of grade”.
[38] Ibid at Page 8 Lines 2 - 5
Common general knowledge
To provide some context to common general knowledge, the Applicant relies on Ms Painter’s observation that confidentiality is particularly important in the mining industry. Ms Painter states[39]:
[39] Painter at [14]-[15]
“Mining companies such as the Rio Tinto group of companies take particular care to protect technical and non-technical information about the activities of the companies as confidential information. At and prior to 2 June 2010, and now, this emphasis on confidentiality extended to: (a) access to operating mines, (b) details of operations in the mines, and (c) research and development projects being undertaken by research groups within the Rio Tinto group of companies and by external researchers contracted to carry out research and development work on instructions by the Rio Tinto group of companies, including control over the release of any information of the Rio Tinto group of companies. “
Ms Painter explains that while there is publicly available information available, her own knowledge was more detailed as Rio Tinto would retain external contractors to provide technical input on a confidential basis. As a result, Ms Painter has no knowledge of development activities of other mining companies outside Rio Tinto and the operations of these companies beyond the limited information in the public literature[40].
[40] Ibid at [17]
Another consequence of confidentiality is that external contractors were confined by confidentiality requirements and would therefore need to compartmentalise what parts of their knowledge are via public available sources, and what parts are subjected to a confidentiality agreement[41].
[41] Ibid at [18]-[21]
In this regard, the Applicant submits that exposure to confidential information is inevitable due to the CSIRO business model[42]:
[42] The Applicant’s summary of submissions at [64]-[66]
“The very nature of the CSIRO business model means that CSIRO researchers need external industry funding to carry out research work. Invariably, confidentiality requirements are attached to this funding.
It is extraordinarily difficult to expect a person to compartmentalise confidential and non-confidential information. Inevitably, the “knowledge” of the person is a mixture of those two types of information. This would be particularly the case with long-standing researchers such as the CSIRO experts.
Therefore, the inevitable confidential information held by the CSIRO experts compromises any assessment of common general knowledge.”
However Ms Painter’s states that her position is unique compared to the other declarants because[43]:
[43] Painter at [26]
“…I worked in the Project Team that made the invention of the opposed application and am one of the inventors. Reviewing publicly available information was part of the work of the Project Team. I was aware of what was publicly known as the Project Team continued work on the project. As a consequence, I am able to discuss was known by Project Team members at 2 June 2010 and in the period leading to this date.”
Ms Painter then explains that the objective of the Project was to consider the extent to which value could be extracted from low grade ore and waste ore produced in iron ore mines[44], and that her knowledge at the time of working on projects leading up to 2 June 2010 includes the following[45]:
[44] Ibid at [27]
[45] Ibid at [28]-[29]
(a)Bulk sorting and particle sorting were presented as alternative sorting options; and
(b)Particle sorting of iron ore particles was in its infancy.
At June 2010, I was:
(a)Not aware of any commercially-available bulk sorters based on iron ore grade;
(b)Not aware of any commercially-available particle sorting technologies for iron ore – there were perceived equipment and scale-up limitations of known proposals;
(c)Not aware of any commercially-available sorting technologies comprising bulk sorters based on iron ore grade and particle sorters
(d)Not aware of any proposals for bulk sorters based on grade and downstream processing (wet or dry) of selected segments;
(e)Not aware of any proposals for size reduction of copper-containing ores, particularly primary crushed material, and then bulk sorting based on grade.
Mr Chin provides substantially the same statement[46] but adds[47]:
[46] Chin #1 at [10]-[31]
[47] Ibid at [32]
“…I observe that if it was the case that [sic] Rio Tinto was aware of items (a) to (e) above, Rio Tinto would have deployed such systems in mining operations, reaping the benefits of the systems and not spending significant money and effort to research, develop and test the system in a commercially viable throughput.”
I accept that research and development work conducted by mining companies would be subjected to some degree of confidentiality. I also accept that this confidentiality extends to external contractors who would be retained by mining companies to provide technical input and therefore, the knowledge provided by these contractors would be more detailed. In this regard, I agree with the Applicant that exposure to confidential information as a requirement of external funding would be commonplace due to the nature of CSIRO business model.

However it does not follow that all information, even that of a more general nature, would be confidential. At best, confidentiality would typically apply to information of a more specialised level.
Ms Painter does not elaborate or point out the type of information that would be considered common general knowledge as opposed to information that would be considered confidential. Similarly Ms Painter’s statement of what she is not aware of as listed under items (a) to (e) is restricted to commercially available sorters and proposals for iron or copper ore. To my mind, this list is merely an indication of what Ms Painter, a member of the project team, or an employee of Rio Tinto, could be personally aware or not aware of and could not be said to be a fair representative of publicly available information.
In contrast, Dr Miljak and Dr Holmes have provided overviews of broad approaches used in the bulk separation of mined material.
Dr Miljak begins with an overall general comment that common general knowledge in the area of separating mined material is vast[48]:
[48] Miljak #1 at [18]
“The basic reason for this is that there has always been a strong driver for miners, throughout the ages, to reduce the amount of work required to produce a certain amount of metal. For example, one of the first historical texts in the field of metallurgy, De Re Metallica (1556), describes the (manual) stepwise sorting of ores as an optimization towards metal production, and it is likely that the separation of mined material (within the primitive technology of the time) was considered well before then. The optimization driver is so strong that I would regard the method and apparatus involved in separating mined material as a fundamental theme in mining.”
Dr Miljak considers that there are three broad separation approaches involved in the separation of mined material includes selective mining, ore sorting and plant scale beneficiation. However at a basic level[49] “a stepwise procedure occurs where a grade assessment of a volume of mined material is made, and then a specific separation of that volume of mined material occurs, based on the grade assessment. Each approach involves the concept of a threshold, either as a mine cutoff grade or a “sorting” threshold”.
[49] Ibid at [19]
In relation to selective mining, the Opponent submits[50]:
[50] The Opponent’s Submission at [84]; Miljak #1 at [18]-[20]
“Selective mining or grade control is a widely used practice where samples are taken of mining deposits and, after blasting, different parcels of mined minerals are handled differently in accordance with the assessed grade of the parcel. Very low grade material might be transported to the waste stockpile while intermediate or high grade material might be sent to the stockpile or processing.”
Dr Holmes provides a similar explanation[51]:
[51] Holmes #1 at [23]
“Because the in-situ grade of iron ore varies considerably, the blast hole analyses are used to create maps of the grade distribution within the mining bench with the bench mapped out prior to mining in terms of (i) high grade ore, (ii) low grade ore and (iii) waste depending on the processing facilities available at the mine site and their feed grade requirements. Selective mining is then used as required to direct the high grade ore to the high grade plant, the low grade ore to the concentrator (if available) and the waste to the waste dump, noting that in some cases all the ore needs to be processed (except the waste) and is directed to the concentrator and upgraded to meet contract specifications.”
Examples of methods and apparatus used in selective mining include[52]:
[52] Miljak #1 at [20]
- Manually sampling bench blasthole drill cones for grade assessment.
- Automated sampling of drill cones, or drill chips as they are generated, for grade assessment.
- Downhole logging tools for blasthole or mine plan hole analysis, based on Prompt Gamma Neutron Activation Analysis (PGNAA) or electromagnetic methods, for grade assessment.
- Optical mine face analysis for grade assessment.
- The marking out of sections of bench according to mine plan.
- The possible use of preferential blasting of bench sections based on grade assessment.
- The removal and handling of portions of an ore bench based on the grade assessment.
- The screening of blasted material according to size distributions that are beneficial for obtaining subsequent grade uplift.
Another separation approach is ore sorting. Dr Holmes explains ore sorting as[53]: “…a means of upgrading low grade ore by rejecting waste material ... [w]hat is generally meant by sorting is a combination of analysis of the material and then separation of the material on the a basis of the analysis.”
[53] Holmes #1 at [27]
There are two main options for ore sorting[54] “…particle-by-particle sorting and bulk sorting, the latter is more feasible for a bulk commodity such as iron ore. Particle size is also a significant factor in selecting whether to adopt particle-by-particle or bulk ore sorting, particularly for feed material containing large quantities of fine particles such as iron ore fines comprising particles from around 6 mm down to micron size Implementation of the bulk sorting approach would involve sensor measuring the average grade of bulk “slugs” of iron ore linked to a “flop-gate
that directs high and low grade slugs to separate bins or conveyor belts for further processing.”
[54] Ibid at [28]
Dr Miljak states that bulk sorting may be applied to mine heaps, draw point material, haul trucks, mine trains, conveyors, load-haul-dump (LHD) equipment etc. Dr Miljak provides a number of examples of what he considers common general knowledge in bulk sorting[55]:
[55] Miljak #1 at [21]
·The manual sampling and subsequent measurement of material grade associated with ore parcels at draw points, on trains, on conveyors etc.
·The automated measurement of material grade in ore parcels on conveyors including for example but not limited to optical, X ray, nuclear or electromagnetic sensors.
·The measurement of material grade in ore parcels on mine haul trucks at portal installations, using methods such as radiometric methods.
·The measurement of ore material grade in ore parcels on underground mine trains, using methods such as optical methods.
·The measurement of material grade in ore parcels on underground LHD machines at portal installations, using methods such as optical methods.
·The separation of ore parcels on conveyors, based on comparison of an assessed parcel grade against a threshold, such as for coal ore parcels.
·The separation of ore parcels on trucks on respective ore handling stockpiles, based on a comparison of an assessed parcel grade against a threshold, such as for uranium ore parcels.
·The design and use of bulk diverters to mechanically sort parcels of ore based on the parcel grade.
Measurement techniques which could be used to estimate the grade and/or elemental concentration of bulk samples include[56] neutron capture, neutron activation, neutron inelastic scattering, gamma-ray backscatter, X-ray fluorescence, laser induced breakdown spectroscopy, optical methods and magnetic or electromagnetic methods.
[56] Holmes #1 at [29]-[32]
In relation to particle by particle sorting, Dr Miljak states[57]:
[57] Miljak #1 at [22]
“This sub-field involves the separation of mined material at the individual rock scale. This can be performed manually or much more commonly in the modern period through the use of automated machines that separate individual rocks in an ore stream of up to approximately several hundred tonnes per hour. This methodology is usually employed after secondary crushing to obtain particle size distributions that are suitable for the automated separation machines. What I consider to be specific CGK includes:
·The characterization of the grade material in an individual rock, including for example but not limited to optical, X ray, nuclear or electromagnetic sensors.
·The use of machines to separate individual rocks by comparing the measured grade against a threshold, including for example pneumatically separating rocks from the stream using blasts of air or other actuators.
·The separation of roes using rock-by-rock methods across a variety of commodities, such as diamonds, gold, nickel, copper, antimony, tungsten and industrial minerals.”
Although it is clear from the evidence that there are a number of other techniques which could be performed during bulk separation, the crushing of mined material and performing further processing after sorting appears relevant to the present application.
According to Dr Holmes, the crushing of mined material is commonly done[58]:
[58] Holmes #1 at [37]
“Blasted mined material is put into a primary crusher at the mine site to reduce the particle size and then the material would be interrogated by an analysis technique and accordingly separated into for instance material having a high grade and material having a low grade … higher grade designated material could undergo secondary or tertiary crushing to reduce the size of the material and subsequent processing.”
It is also standard practice to further process the ore after sorting using a beneficiation process if required to meet customer requirements[59]:
“This concentration process could be conducted on a bulk scale after primary sorting if a suitable dry sorting technique was available that was fast enough, or alternatively a wet concentration process could be used.”
It is clear from the above that common general knowledge includes the following:
·There is a wide selection of various separation and assessment techniques which could be used to perform bulk separation and bulk assessment of mined material.
·In relation to ore sorting, this is commonly performed by either bulk sorting or particle by particle sorting.
·It is common practice to crush mined material
·It is common practice to further process ore after sorting via a dry sorting or wet sorting technique.
[59] Ibid at [39]

100. While individual elements may be known, it does not always follow that each and every possible combination will be part of the common general knowledge.
101. During an initial meeting with FB Rice, Dr Holmes was asked how he would approach the problem of processing large volumes of mined material with a high throughput[60]. Dr Holmes explained that[61] “…the majority of open mine operations initially use sampling as a tool for grade control. A ore bench is sampled and the samples assayed and graded. As a result the bench is graded into regions of high grade, medium grade and waste ore.”
[60] Holmes #1 at [33]
[61] Ibid at [34]

102. Once this assessment has been completed[62], low volume mined material is either sorted on a particle by particle basis, and high volumes sorted in bulk. With both methods, a suitable analysis technique such as optical, electromagnetic or nuclear may be used. Once sorted, the material is separated by flop gates or dividers depending on the grade determined, and may be subjected to a downstream sort. Both high grade and waste ore may be further processed to extract high grade material if the ore price per tonne warranted it. The number of different grades or thresholds is ultimately dependent on a customer’s requirement.
[62] Ibid at [35] –[ 43]

103. In this regard, Dr Holmes makes it clear that when designing a flowsheet, the ultimate goal is to produce a product of economic value. In order to get to this point, a common sense approach is used to progressively process ore with a number of ore sorting and ore analysis methods beginning with bulk sorting options and eventuating with sorting on a particle by particle basis.
Novelty
104. Section 7(1) provides that:
“(1) For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:
(a) prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;
(b) prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information”

105. It is well established that the general test for anticipation or want of novelty is the reverse infringement test[63], and this test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed[64]. The alleged anticipation must also contain “clear and unmistakable directions” to produce the invention as claimed[65]. However, if the alleged anticipation contains a direction which is capable of being carried out in a manner which would infringe the invention as claimed, but would at least as likely be carried out in such a way that would not do so, the invention as claimed will not be anticipated[66]
[63] Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; 137 CLR 228 at [19]
[64] Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40; 16 IPR 545 at [19]
[65] Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224; 68 IPR 1 at [314]
[66] General Tire & Rubber Co v The Firestone Tyre and Rubber Co Ltd [1972] RPC 457 at 485-486; (1971) 1A IPR 121 at 138, Novozymes A/S v Danisco A/S [2013] FCAFC 6; 99 IPR 417 at [177]
106. The Opponent relies on the following documents for lack of novelty.
·BORSARU, M. et al., “Bulk Analysis Using Nuclear techniques”, International Journal of Applied Radiation and Isotopes, Vol. 34 No. 1, 1983, Pages 397 – 405 (“D8”)
·VINCENT, J., “Preconcentration of mill feeds using automated ore sorting processes”, The Australian Institute of Mining and Metallurgy Annual Conference Proceedings, 1980, Pages 283 – 295 (“D9”)

D8 - BOSARU
107. D8 is a CSIRO publication with Dr Holmes named as a co-author. According to the introduction:
“THE EVER-INCREASING need for faster and more reliable methods of quality control in the mining industry has created much interest in both static and continuous analysis of bulk samples. Conventional chemical analysis techniques use comparatively small samples, so there is always a compromise between the representativeness of the samples and the time and effort spent in sampling and sample preparation. Bulk analysis, on the other hand, uses large samples that are more likely to be representative of the ore from which they are taken. Moreover, the relatively short time required for a single bulk analysis can increase the speed of analysis.”

108. The paper goes on to discuss various techniques for bulk analysis in several sections entitled:
2Determination of Iron in Iron Ore by Gamma-Ray Backscatter
3Detection of Shale in Sedimentary Iron Ores
4Neutron Methods for the Analysis of Iron Ore
5Determination of Alumina and Silica in Bauxite Ores
6Determination of Ash and Ash Components in Coal
7Determination of Manganese and Alumina in Manganese Ores
8Measurement of Soil in Shredded Sugar Cane

109. The Opponent submits that at least claim 23 is anticipated by section 3 of D8. D8 describes the analysis of shale as (emphasis added by the Opponent)[67]:
“This has led to the development of an on-stream shale detector for use mainly on conveyor belts from primary crushers, to detect the presence of truckload quantities of shale. The shale appears when a shovel digs across a contact zone into a shale band, or when trucks carrying low-grade ore are directed to the high-grade crusher by mistake. With the shale detector, the grade controller is immediately made aware of the presence of shale and can either locate its source and take corrective action, or divert it to a beneficiation plant for upgrading. Alternatively, a shale detector can be used at the input point of a beneficiation plant to detect truckloads of high-grade ore among a normal feed of shaley ore.”

[67] The Opponent’s Submission at [119]; D8 at Page 399

110. The Applicant’s position[68] in relation to section 3 of D8 relies on Ms Painter’s comments[69]:
“D8 discloses detecting the presence of shale in mined ore that is being transported on a conveyor belt. The detection is specific to shale, which is a waste material and indicates how much waste is present but not how much valuable mineral is in the ore (e.g. ore grade). It is not a disclosure of an assessment of the grade of the mined ore as a bulk material. This is a different approach to the invention. Also, there is no disclosure in D8 of particle sorting as required by amended independent claim 1.”
[68] The Applicant’s summary of submissions at [125]
[69] Painter at [p45]

111. On this point, the Opponent submits that:
“D8 is directed to bulk analysis and grading in so far as the assessment of shale is concerned. The measure of the waste content of the iron ore is inversely related to ore grade and hence can be used as a proxy for grade[70]. The ore undergoes bulk bulk analysis and the grade controller then grades the material depending on the result of that analysis. The separation is based on grade and there is express reference to a grade controller.
The specification as page 7 line 19 to 29 discusses that the grade thresholds can take into account all different characteristics of the mined material. This would certainly encompass the assessment of the amount of shale in a mined material as a means of indirectly determining grade. Indirect determination of grade is further defined in dependent claim 36.”
[70] Holmes #2 at [23]

112. I am inclined to agree with the Opponent. As stated above, the specification defines grade[71] as “the concentration of an element of interest in an ore resource.” Claim 23 does not specify that this needs to be a direct or indirect assessment.
[71] Ibid at Page 6 lines 1 - 3
113. It follows that the process described by section 3 of D8 involves a first receiving mined material from a primary crusher. The mined material is then placed on a conveyor belt and undergoes bulk assessment by the shale detector. Depending on the grade of the mined material, the material is diverted to a beneficiation plant for upgrading.
114. Therefore 23 lack novelty in light of D8. Similarly, it is clear that claim 51 is also disclosed in D8.

115. In relation to the dependent claims, the Opponent submits that claims 31 – 32, 36 – 38, 40 – 44 and 54 – 56 are also disclosed in D8[72] as follows:
[72] The Opponent’s Submission at [123]-[133]
“Claim 31 is also disclosed. D8 discloses the method applied in respect of iron ore.
Claim 32 is also disclosed. D8 discloses an iron ore which is high in shale which can, in turn, be classified as low grade iron ore. See D8 page 399 column 2.
Claim 36 is disclosed. The assessment of ore is an indirect assessment in the sense that the amount of shale is assessed.
Claim 37 is disclosed. The dynamic trial discussed in D8 utilises a conveyor belt.
Claim 38 is disclosed. D8 states in the abstract ‘Because penetrating neutrons and gamma radiation is used, measurements are obtained from a large volume of sample, which ensures the analyses are representative of the bulk.’ This teaches an analysis of the entire bed depth using a penetrative analysis rather than merely analysing the surface.
Claim 40 and 41 are discloses. The shale detector is described for use on conveyor belts from primary crushers. See D8 at page 399 second paragraph.
Claim 42 is disclosed. See D8 at page 398 column 1 ‘…slightly better accuracy can be obtained if density corrections are made, which necessitates weighing the sample before analysis.’ The weighting the material indicates that each segment is determined on the basis of mass.

Claims 43 and 44 are disclosed. D8 at page 399 first paragraph discloses that the dynamic trial of the prototype on a conveyor belt demonstrates that partial truckloads (down to about 20 tonnes) can be readily monitored for shale content. This discloses segments of at least 5 tonnes and 20 tonnes.
The apparatus of claim 51, 54, 55 is disclosed by the shale detector, grade controller and processing plant described in D8.
The remaining claims not discussed lack an inventive step.”

116. I have reviewed this and agree with the Opponent.
D9 – Vincent
117. D9 is a publication that was contained in the Australian Institute of Mining and Metallurgy Annual Conference Proceedings dated May 1980. The abstract states:
“Ore sorting is a high capacity, low cost method of preconcentrating ores and in some cases of producing a marketable concentrate. In most cases it is applied to run of mined material, immediately after primary crushing and screening in sizes ranging from 10 mm to 150 mm … Modern ore sorting machines rely on the synchronous operation of four internal sub systems, feed presentation, sensing, data processing and separation. A variety of different sub systems is available which can be combined in various forms to produce sorters capable of handling a wide variety of mineral types.”

118. The paper begins by describing a pre-concentration process[73]:
“In most situations ore sorting is used as a preconcentration technique being applied ahead of fine grinding and subsequent chemical or physical mineral extraction processes As such, it’s function is to identify and separate mineralised material from waste products rather than to achieve complete separation of the minerals from the host or country rock.”
[73] D9 at Page 284

119. The paper explains that[74] “[m]odern ore sorting machines depend on the synchronised operation of four separate but interdependent subsystems each of which perform a specific function in the ore sorting process.” This is show in Figure 1 which is reproduced below:
[74] Ibid at Page 284
120. Bulk presentation and sensing is described as follows:
Bulk presentation[75]:
“This system is used for material which contains too high a percentage of fines for rock by rock sorting. Incoming feed is spread uniformly over the sorting belt in preparation for a subsequent bulk property assessment. To date use of this system has been largely restricted to radiometric bulk sorting machines.”
[75] Ibid at Page 285

Sensing system[76]:
“The sensing system gathers relevant data from each rock or in the case of bulk sorting, from discrete zones of material so that a decision can be made as to which particles or zones are ore and which are waste.”
[76] Ibid at Page 285

121. Separation of the mined material can be performed by rock by rock separation (particle), or bulk separation[77]. The paper further discusses a number of commercially available bulk sorters including Ore Sorter Model 17 and Model 18 Bulk Fine Radiometric Sorters.
[77] Ibid at Page 286
122. The Model 18 Bulk Fines Radiometric is described as follows[78]:
“This machine has been designed to sort friable types of uranium deposits common in the United States of America and like the Yeelirrie deposit in Australia … [e]ach zone of material has its level of natural gamma activity measured by a shielded scintillation counter array … [g]amma counts and calculated zone volume are used to calculate a theoretical uranium grade which is then compared against a pre-set cut off level to do an ore/waste assessment. As the material falls from the sorting belt high and low grade zones are deflected onto separate conveyors by high speed gates which are activated by the electronic processor. Depending on the specific gravity of the material to be sorted the Model 18 Bulk Fines Radiometric Sorter can achieve throughput capacities of up to 200 tonne/h.”
[78] Ibid at Page 289

123. The Opponent submits that the features of independent claim 1, 23 and 59 are disclosed by D9. In relation to claim 23, the downstream processing is described on page 284 as subsequent chemical (wet) or physical (dry) mineral extraction processes. With claim 59, the abstract states that the method described in D9 is performed after primary crushing. In relation to the sorting of copper, D9 refers to the sorting of chalcopyrite which is copper containing ore[79].
[79] Ibid at page 293
124. Responding to the Opponent’s submissions, the Applicant relies[80] on the comments of Ms Painter. D5 in Ms Painter’s comments relates to D9[81].
“D5 provides a summary of ore sorting technology as at 1980. The paper discusses bulk sorting and particle sorting as alternative technology options. The left hand column on page 285 describes a bulk presentation system as being “used for material which contains too high a percentage of fines for rock by rock sorting”. The paper discloses that the use of bulk sorting has “been largely restricted to radiometric sorting machines” – left hand column page 285. The right hand column on page 285 discusses four sensing systems. There are further details of these systems on pages 287-291. There is no disclosure in D5 of a combination of bulk sorting and particle sorting as required by amended claims 1. Also, there is no disclosure in D5 of the step of “processing at least one separated segment in a downstream processing plant and producing upgraded material” as required by amended independent claim 23. Also there is no disclosure of amended independent claim 59 which is confined to sorting copper ores.”
[80] The Applicant’s summary of submissions at [132]
[81] Painter at [50]

125. I am inclined to disagree with Ms Painter. The independent claims state that the grade of successive segments of mined material is assessed. In some claims, the material is transported along a pathway. The mined material is then subjected to a separation step on the basis of grade. Further I note that D9 describes the system of figure 1 at a broad level, where each stages of presentation, sensing and separation is selected depending on the mined material.
126. It follows that claims 1, 23 and 59 are not novel in light of D9. Similarly, this also extends to claims 19, 51 and 63.

127. In relation to the dependent claims, the Opponent submits that claims 2, 11 – 12, 15, 20 – 22, 26, 60 – 62 and 64 – 69 are not novel in light of D9[82] as follows:
[82] The Opponent’s Submission at [157]-[166]
“Claim 2 (and claim 26) is disclosed. The processes, as discussed in relation to Feature 1.2, are a dry sorting process conducted on the ore (being the high grade material).
Claim 11 is disclosed. In respect of bulk presentation, D9 discloses that the incoming feed is spread uniformly over the sorting belt in preparation for a subsequent bulk property assessment. The sorting belt described in D9 is for the purpose of the claim the pathway for a bed of material.
Claim 12 is disclosed. D9 teaches radiometric sensing systems which measure the amount of natural gamma radiation from minerals. It is known that radiometric sensors are sufficiently penetrating to be suitable for depth measurements. Further, D9 teaches that in respect of the model 18 bulk fines radiometric sorter ‘the processor effectively breaks up the stream of material into separate but touching zones of known dimensions. Gamma counts and calculated zone volume are used to calculate a grade which is compared against a cut off level.’ Volume necessitates a depth measurement.
Claim 15 (and claim 40) is disclosed. As discussed above, D9 teaches that there is a primary crushing step before the mined material is processed according to the methods described in the document.
The apparatus of claim 19 to 21 are also disclosed for the reasons discussed in relation to the method disclosed. See the overall configuration shown in Figure 1. Each individual bulk analysis unit operation is also disclosed in specific detail by preference to particular bulk sorting machines (as well as particle sorting machines).
Claim 22 is disclosed. The material treated has been mined as disclosed in D9.
Claim 60, 61 and 62 are disclosed by reference to the pre-concentration techniques referred to in D9 which may be wet or dry.
Claims 63 to 67 being the apparatus corresponding to the methods previously discussed are disclosed. A standard apparatus used for reducing the size of the mined material is the pre-crusher.
Claims 68 and 69, being the mining of ore, are disclosed as is dry sorting as previously discussed.
The remaining claims not discussed above are obvious in light of D9.”

128. I have reviewed this and agree with the Opponent.
Conclusion on Novelty
Consequently as set out above:
·Claims 23, 31 – 32, 36 – 38, 40 – 44, 51 and 54 – 56 are not novel in light of D8.
·Claims 1 – 2, 11 – 12, 15, 19 – 23, 26, 51, 59 – 63, 64 – 69 are not novel in light of D9.

Inventive Step
129. According to Section 7(2) and 7(3) of the Patents Act, an invention is taken to involve an inventive step unless it would have been obvious to the person skilled in the art in the light of the common general knowledge, either considered alone or together with the prior art. The prior art is information that the skilled person could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant.
130. A test for obviousness was provided by Aicken J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] FCA 12; (1981) 148 CLR 262 as follows[83]:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
[83] Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] FCA 12 at [45]; (1981) 148 CLR 262 at [286]

131. In considering the question of what constitutes “a matter of routine”, the High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411 stated[84]:
“Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce a useful [desired result]?”
[84] Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 at [51]- [53]; 212 CLR 411 at [51]- [53]

132. The usual approach in determining inventive step is the problem-solution approach. Once the problem has been formulated and the common general knowledge and the prior art based has been determined, the question of whether the claimed solution is obvious must be addressed.
133. In determining the problem or the “starting point” for considering inventive step, I am mindful of the words of the majority of the Full Court in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 as follows[85]:
“If the problem addressed by a patent specification is itself common general knowledge, or if knowledge of the problem is s 7(3) information, then such knowledge or information will be attributed to the hypothetical person skilled in the art for the purpose of assessing obviousness. But if the problem cannot be attributed to the hypothetical person skilled in the art in either of these ways then it is not permissible to attribute a knowledge of the problem on the basis of the inventor’s “starting point” such as might be gleaned from a reading of the complete specification as a whole. There are a number of reasons why this should be so.”
[85] AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [203]

134. The Opponent relies on the following for lack of inventive step:
·Obviousness in light of the common general knowledge
·GB 2017294 A (General Mining and Finance Corporation) 3 Oct 1978 (“D12”)
·WO 2010/042994 A1 (TECHNOLOGICAL RESOURCES PTY. LIMITED) 22 April 2010 (“D3”)

The problem to be solved
135. In order to formulate the problem to be solved, I will first consider what the specification states as the problem being addressed and whether the invention as claimed provides a solution to the problem.
136. According to the specification [86]:
“A significant proportion of low grade ore can remain as stockpiled ore. As a consequence, there are large stockpiles of mined ore that have been classified as low grade ore that have potentially significant economic value notwithstanding the low grade of the ore.”
[86] Specification as amended on 23 September 2016 at Page 2 Line 34 – Page 3 Line 2

137. While the specification does go on to discuss a wide variety of factors which may apply depending on the mine, what the mined material is, and the sorting thresholds, the assessment and separation of the mined material is performed on the basis of a grade, the definition of grade being entirely subjective. In this regard, it is clear that the goal is to obtain ore of significant economic value.
138. On this basis, I conclude that the problem addressed by the opposed application can be broadly formulated as “how to sort or upgrade mined material”.
Ascertained, Understood and Regarded as relevant
139. According to subsection 7(3), documentary information relevant to the assessment of inventive step must be information that the person skilled in the art, before the priority date of the claims, could be reasonably expected to have ascertained, understood and regarded as relevant.
140. The declarants Mr Chin[87], Ms Painter[88], Dr Holmes[89] and Dr Miljak[90] refer to assessing information publicly available in technical literature (patent and non-patent) as a routine part of their work.
[87] Chin at [34]-[36]
[88] Painter at [30]-[32]
[89] Holmes #1 at [44]
[90] Miljak #1 at [32]

141. It is clear that D8, D9, D12 and D3 would all be ascertained, understood and regarded as relevant.
Obviousness in light of common general knowledge
142. On this point, the Opponent submits[91]:
[91] The Opponent’s Submission at [196]-[199]

“The specification does not disclose any advance in the art in either bulk sorting or particle sorting. The broadest claims, namely claims 1, 23 and 59, each encompasses bulk sorting within what the Opponent submits are standard or routine unit operations.
Claim 1 specifies dry particle sorting after bulk sorting. Dry particle sorting was known. It is a routine matter to optimise the process by including a further sorting step after bulk sorting.
Claim 23 specifies downstream processing after bulk sorting. Downstream processing is typical and this might be done by either a wet method or a dry methods.
Claim 59 specifies the processing of copper and primary rushing. The specification itself is directed primarily to the analysis of iron ore. There is no advance disclosed that would suggest use in relation to copper would be anything other than routine use of the same method. Primary crushing is done as a matter of routine at the mine site prior to further sorting or processing.”

143. It would be fair to say that the above submission also applies to independent claims 19, 51 and 63.
144. As I have discussed above, common general knowledge includes the following:
·There is a wide selection of various separation techniques which could be used to perform bulk separation and bulk assessment of mined material.
·In relation to ore sorting, this is commonly performed by either bulk sorting or particle by particle sorting.
·It is common practice to crush mined material
·It is common practice to further process ore after sorting via a dry sorting or wet sorting technique.

145. To illustrate their point, the Opponent presented Dr Holmes with a hypothetical problem[92]:
“…if I was tasked with devising an improved flowsheet to sort the low grade mined material, or high grade material, obtained from an ore bench, prior to June 2010, how would I approach the problem. To assist in answering this question, I was asked how I would approach the problem of processing large volumes of mined material with a high throughput”
[92] Holmes #1 at [33]

146. Dr Holmes provided a solution[93] within the scope of claims 1, 23 and 59 and reiterated his steps as being[94]: “(a) sampling; (b) mining the bench; (c) crushing; (d) feeding crushed ore onto conveyors to determine the grade of successive slugs (or segments); (e) separating; and (f) further sorting and/or wet processing steps to clean.”
[93] Holmes #1 at [34]-[43]
[94] Holmes #2 at [33]; The Opponent’s Submission at [212]
147. On this note, the Applicant refers to the comments of Ms Painter[95]. In summary, Ms Painter states that she was not aware of the information provided by Dr Holmes and that Rio Tinto had a focus on increasing new mining production rather than recovering value from stockpiled low grade ore.
[95] Painter at [60]

148. However as I’ve discussed above, I can accept Ms Painter’s statement only to the extent that this is normal practice within Rio Tinto. It does not follow that the operations of a single company is a sound representation of what occurs in the wider mining community, nor does having no awareness of information of a general nature be said to be a fair representative of publicly available information.

149. It is clear that Dr Holmes when presented with a hypothetical problem had no issues in providing a solution of a general nature that anticipated at least the independent claims.
150. In relation to the dependent claims, the Opponent submits that the dependent claims are[96]:
“…merely known processing parameters or unit operations and, in some instances, the claims merely recite the only known alternative.”
[96] The Opponent’s Submission at [218]

151. The integers introduced by the dependent claims can be summarised as follows:
·Classifying, separating and processing mined material into categories of “high grade”, “low grade” and “waste ore”.
·Assessing the grade of successive segments using Prompt Gamma Neutron Analysis (PGNA).
·Dry sorting segments via a splitter system comprising chutes.
·Performing wet processing.
·The size of a segment is determined on the basis of the mass of the mined material of the segment.

152. One such example of bulk assessment is the use of PGNAA which is described in the specification[97]:
[97] Specification as amended on 23 Sept 2016 at Page 18 Line 34 – Page 19 Line 14
“One grade detection option is Prompt Gamma Neutron Activation Analysis (PGNAA), for the following reasons:
·Commercially available, minimising development requirements and risk.
·Proven in iron ore operations.
·High probability of satisfactory detection at primary crushed ore particle size and conveyor bed depth.
·Elemental analysis rather than mineralogical/phase analysis aligns well with current grade control methods and enables simple data analysis and control logic.”

153. Dr Bearman explains that in addition to iron ore, PGNAA can also be used to analyse copper [98]:
“From a general knowledge of physics, copper responds well to PGNAA. PGNAA was a known technology prior to 2 June 2010. Any skilled practitioner would have been able to outline this process and it would have been more than a theoretical “desirable objective” as PGNAA was a known invention and simple separation systems such as splitters were commonly available”.
[98] Bearman #2 at [102]

154. Ms Painter disagreed[99] with the answer to the hypothetical problem provided by Dr Holmes. On this point, Ms Painter explains that as early as 2006, the Rio Tinto group of companies was looking at developing new mining concepts which includes considering ore sorting options to recover value from low grade ore. Ms Painter states that she was not aware of any other mining companies that were looking at developing the same or similar concept at 2 June 2010.
[99] Painter #2 at [60]
155. Ms Painter also states that[100] “Certainly, Dr Holmes does not state that he devised ‘an improved flowsheet to sort the low grade material, or high grade material, obtained from an ore bench ‘as defined by the amended claims on or before 2 June 2010.”

[100] Ibid at [62]

156. Dr Holmes responded by explaining that there are numerous examples of mines using ore sorting[101] and that Ms Painter’s view that she was not aware of any other mining companies other than Rio Tinto being interested in further processing and/or ore sorting “…is an insular view created by a particular company’s confidentiality practices, because iron ore companies have a keen interest in further processing when required.”.
[101] Holmes #2 at [41] – [43]

157. Dr Holmes also clarify that[102] “…I am not asserting that I did devise an improved flowsheet for sorting iron ore, because I have not worked in this area recently. However, if I had have been asked to devise an improved flowsheet to sort low grade mined material, or high grade material, obtained from an ore bench, I would certainly have been capable of doing so prior to June 2010, and I would have done so as spelt out in paragraph 33 above as it would have yielded higher gains.”
[102] Ibid at [44]
158. In light of the above and based on Dr Holmes’s solution to the hypothetical problem, I am satisfied that it would have been obvious to at least:
·Initially reduce the size of mined material via the use of a crusher.
·Perform at least one instance of bulk assessment and bulk separation.
·Subject said mined material to at least one further processing or upgrading step depending on the required grade.
·Transport the mined material through all of the above steps via the use of a conveyor belt.
·It would be at least obvious to use PGNAA as a bulk assessment technique in order to analyse iron ore or copper.

159. Therefore I consider that all of the independent claims are obvious in light of common general knowledge alone.
160. Moving on to the dependent claims, the Opponent submits that all of the dependent claims are made obvious based on the evidence of Dr Holmes and Dr Miljak as it applies to the dependent claims[103]. I am inclined to agree with the Opponent that all of the claims would be anticipated by common general knowledge alone for the following reasons.
[103] The Opponent’s Submission at [218]-243]

161. Claims 2 to 6, 18, 24 to 30, 49 – 50, 52 - 53, 57 – 58, 67 and 69 refer to sorting against first grade threshold and a second grade threshold, wherein the second grade threshold is higher than the first grade threshold.
162. Dr Holmes makes it clear that it is desirable to separate mined material into two streams of high grade and low grade ore. Either or both streams may be subjected to further processing in order to extract high grade material wherein the threshold is dependent on customer requirements. Both dry and wet processing are viable options depending on the mined material. Dr Miljak[104] also agrees that it is common practice to perform a grade assessment of mined material according to a first threshold, and subject the mined material to further processing according to subsequent thresholds until an intended grade of material is obtained.
[104] Miljak #1 at
163. Claims 7 to 9 and 31 - 33 indicate that the mined material is iron ore comprising of low grade, high grade, and waste iron ore. As made clear above, iron ore is commonly mined. It follows that raw iron ore would consist of low grade, high grade and waste ore.

164. Claims 10 and 34 refers to analysing the grade of an unmined section of a mine and classifying the section into blocks of high grade, low grade and waste ore prior to mining the ore. However the specification makes it clear that this step is conventional[105]. Therefore, it would be obvious to carry out these steps as a matter of routine.
[105] Specification as amended on 23 Sept 2016 at Page 1 Line 35 – Page 2 Line 21
165. Claims 11 and 37 refer to the use of a conveyor belt to transport the mined material. I consider this feature to be conventional and no further explanation is required.

166. Claims 12 and 38 clarify that the grade assessment step comprises assessing the grade of successive segments of the mined material by analysing the entire bed depth of the mined material. However as stated above, this is typically performed by PGNAA.

167. Claims 13 and 39 state that the grade assessment step comprises PGNAA. This is obvious for the reasons above.

168. Claims 14 to 15, 20, 40 – 41 and 54 states that prior to performing the method of claim 1, a primary crushing step is used to reduce the size of the mined material. However, as stated above, the first point after the mined material leaves a transport or delivery device is the use of a primary crusher so that the mined material is reduced in size. Therefore it would be obvious to utilise this conventional step as a matter of routine.
169. Claims 16, 21, 47 and 55 further define that the sorting of the mining mineral against a threshold is performed using chutes. Dr Holmes[106] makes it clear that the use of a splitter system and chutes are well known and conventional. Therefore, it would be obvious to utilise a conventional splitter system and chutes as a matter of routine.
[106] Holmes #2 at [29]
170. Claims 17, 42 – 46 and 48 all refer to various parameters of the sorting system in relation to the segment size. Dr Miljak[107] explains that the speed or size of the ore as it is transported along a conveyor is part of common mining practice and may be restricted by what can be practically handled by the machinery. Dr Holmes[108] adds that dry sorters capable of sorting mined material irrespective of the type of mined material at a rate of up to 2000 tph is well known. Therefore this parameter relates to no more than mere routine optimisation involving no inventive ingenuity.
[107] Miljak #1 at [28]
[108] Holmes #2 at [28]
171. Claims 35 to 36 state that grade assessment is either a direct assessment of grade or an indirect assessment of grade. Dr Miljak[109] regards both direct and indirect assessment assessments of grade to be common general knowledge. Examples of known analytical methods capable of performing direct or indirect assessment of grade has been discussed above. Therefore the use of direct or indirect assessment is conventional in the art and it would simply be a matter of routine to select one or the other.
[109] Miljak #1 at [26]
172. Claims 56 and 68 add a step of mining ore. It is apparent on the face of this claim that this step would be common general knowledge.
173. Claims 60 – 62 and 64 - 66 state that at least one separated segment is processed in a downstream processing plant which may be a wet processing plant or a dry processing plant. However, as made clear above, this step is obvious.
174. Consequently I find that all of claims 1 – 69 to be obvious in light of common general knowledge alone.
Inventive Step in light of D8 & D9
175. In relation to D8, the Opponent submits[110]:
“The experts relied upon by the Applicant attempt to distinguish D8 on two primary grounds, firstly, the detection of shale (rather than iron or copper directly) and, secondly, no disclosure of a dry sorting step as per claim 1.”
[110] Ibid at [245]

176. In relation to the second primary ground, as I have discussed above in relation to common general knowledge, it would be routine to incorporate dry sorting as one option of upgrading mined material. As such, the inclusion of this step would be obvious. In relation to the first primary ground, I note that claim 59 refers to broad steps but makes explicit reference that the ore is copper containing ore. However, as discussed above, the only example of an analysis step provided in the specification is the use of PGNAA. Dr Bearman made it clear that this technique is equally applicable to copper containing ore as it is to iron ore. Therefore it would be obvious to a person skilled in art that the analysis step could be performed by PGNAA. Similarly, it would be a matter of routine, to focus on iron ore or copper ore.
177. It follows that based on my conclusion above on obviousness in light of common general knowledge alone, I find that all of the claims not addressed in my discussion of novelty in light of D8 would lack an inventive step in light of D8.

178. Similarly, all of the claims not addressed in my discussion of D9 would lack an inventive step in light of D9.
D12 – Bulk Radioactive Ore Sorter
179. D12 is a patent application filed in the United Kingdom and is entitled “Bulk Radioactive Ore Sorter”. The abstract states:
“This invention relates to a method of and apparatus for sorting mined ore which includes a radio-active component such as uranium. The apparatus consists of a belt conveyor 12 onto which the ore is fed in an even layer, at least one scintillation crystal detector 14 which is located below the conveyor belt and adapted to measure the radioactive emission of zones of ore on the belt, a weight sensor 20 a mechanical sorter 16 at the end of the conveyor for sorting the ore into grades having various emission levels and a computer having inputs connected to the scintillation detector and weight sensor and output connected to the sorter for operating the sorter when the measured zones of ore are discharged from the conveyor into the sorter.”

180. In D12, ore is defined as any mined material which has a radio-active component[111]. “The method includes the steps of measuring a physical characteristic of the ore in the stream and them [sic] sorting the ore into above and below a predetermined radio-active, physical measurement ratio.”[112]
[111] D8 at Page 1 Column 1 Lines 7 - 9
[112] Ibid at Page 1 Column 1 Lines 31 - 35
181. D12 further describes that[113], “the sorting means consists of a chute into which the ore on the conveyor is deposited and which is adapted by means in the chute on a delayed signal from the detecting means to discharge the radio-active ore above a predetermined level in one direction from the chute and the remainder of the ore in another direction” and[114] “in use, ore which has been crushed to a substantially uniformed gauge, conveniently 25 millimeters or smaller, is fed into the hopper 10”.
[113] Ibid at Page 1 Column 1 Line 58 – Page 1 Column 2 Line 65
[114] Ibid at Page 2 Column 1 Lines 35 - 38
182. D12 differs from claims 1 and 23 in that there is no reference to a dry sorter (claim 1) or a downstream processing plant (claim 23). However the Opponent submits that as D12 already teaches a mechanical sorter and that this results in a separation process producing two separate streams[115]:
“It will be inevitable in practice and certainly routine that either or most likely both of those streams will be ultimately sent downstream for further processing. Feature 23.3 simply requires downstream processing to produce an upgraded material. It is routine to add a downstream processing plant to process streams of mined material to achieve a desirable upgraded material; this is routinely done. It follows that claim 23 is obvious in light of D12.
Downstream processing may routinely be either dry or wet sorting. Claim 1 specifying dry sorting merely recites a standard process option for upgrading the stream. It follows that claim 1 is obvious in light of D12”
[115] The Opponent’s Submission at [272]-[273]

183. In relation to claim 59, D12 does not explicitly state that the ore is copper containing ore. However Dr Miljak explains[116]:
“In fact, there exist classes of deposit where significant levels of copper, iron and relatively high natural radiation levels can exist in the same ore. These are known as Iron-Oxide hosted Copper Gold (IOCG) deposits, the world famous “Olympic Dam” deposit in South Australia being just one example of this deposit style. IOCG deposits may generally be mined for copper, iron, gold or uranium content. These facts are part of CGK. The measurement of natural radioactivity to potentially infer the grade of copper containing ore (be it the grade of copper, iron, gold or uranium) cannot necessarily be dismissed … the specification also describes the “indirect” measure of grade … which is consistent with using natural radioactivity to infer grade.”
[116] Miljak #2 at [34]

184. Therefore in light of the above, claims 1, 23 and 59 lack an inventive step in light of D12. Similarly, this also applies to claims 19, 51 and 63.
185. In relation to the dependent claims, claims 13 and 39 refer to the use of PGNAA. Although PGNAA is known and commercially available, the evidence on file does not allow me to conclude that it would be a matter of routine to incorporate this into D12. Therefore claims 13 and 39 are inventive in light of D12.
186. However in light of my discussion above that all of the claims lack an inventive step in light of common general knowledge alone, I find that dependent claims 2 – 12, 14 – 18, 20 – 22, 24 – 38, 40 – 50, 52 – 58, 60 – 62 and 64 – 69 lack an inventive step in light of D12.
D3 – A method of sorting mined, to be mined or stockpiled material to achieve an upgraded material with improved economic value
187. D3 is an application published in the name of the Applicant. According to the abstract:
“A method of sorting material that comprises determining whether a volume of material to be mined or a volume of stockpiled material is upgradable to produce a supply of material of greater economic value. If the determination is positive, the material is dry sorted to increase the grade or economic value. The determination is done by taking a plurality of samples from the initial volume of material and analysing the material to determine if the material is able to be upgraded. The determination can be by X-Ray analysis. The upgrading can involve a size reduction step.”

188. The Opponent submits that the definitions and terminology used in D3 is near identical to the present application[117].
[117] The Opponent’s Submission at [285]-[291]
189. The Applicant submits that D3 does not disclose bulk sorting based on grade and relies on the evidence provided by Ms Painter[118]:
“There is no disclosure of bulk sorting in D3. For example, there is no disclosure in D3 of the step of “assessing the grade of successive segments of the mined material as the mined material is transported along a pathway” as required by amended independent claim 1 and 59 or the step of “assessing the grade of successive segments of the mined material” as required by amended independent claim 23. D3 discloses the use of screens to reduce particle size. These references are not disclosures of bulk sorting based on grade as required by the invention.”
[118] Painter at [43]

190. The Applicant’s position is that although D3 does refer to the use of screens, the assessment is primarily made on the size of the mined material and is not an assessment based on grade. However, D3 does provide alternative embodiments.
191. In one embodiment[119], the grade of successive segments of mined material is determined via a series of dry sorting steps, so that the mined material is progressively upgraded. Alternatively[120], grade assessment is made from a plurality of samples taken from stockpiled material to determine whether said stockpiled material is upgradable, and subsequently upgrading said material.
[119] D3 at Pages 6 - 7
[120] Ibid at Pages 5 - 6
192. The Opponent submits that:
“The evidence of Dr Holmes is that bulk sorting is part of the common general knowledge. In circumstances where the document discloses two successive sorting steps it is a matter of routine to specify the first step as a bulk step and then to utilise particle sorting for streams as a further refinement. He discusses this in detail in Holmes #1 [52] – [55]”

193. The Opponent explains that[121] “if it is accepted that it would be routine to implement bulk sorting in the flowsheet in D3, the remaining claims are either expressly disclosed or would, as a matter of routine, be added to the process as refinements.” This is followed by an explanation of why claims 2 – 3, 7 – 10, 14 – 15, 26 – 27, 31 – 34 and 40 – 41 are disclosed by D3[122].
[121] The Opponent’s Submission at [294]
[122] Ibid at [295] – [299]
194. I have reviewed the Opponent’s submission and am inclined to agree with the Opponent. As set out above in my discussion of common general knowledge, when designing a flowsheet, the ultimate goal is to produce a product of economic value. In order to get to this point, a common sense approach is used to progressively process ore with a number of ore sorting and ore analysis methods beginning with bulk sorting options and eventuating with sorting on a particle by particle basis.
195. Furthermore in light of my conclusion above that all of the claims lack an inventive step in light of common general knowledge alone, I find that all of the claims lack an inventive step in light of D3.
Manner of Manufacture
196. According to section 18 of the Patent Act 1990;
(1) Subject to subsection (2), an invention is a patentable invention for the purpose of a standard patent if the invention, so far as claimed in any claim:

(a)is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies.

197. Section 6 of the Statue of Monopolies provides as follows:
“Provided also and be it declared and enacted that any declaration before mentioned shall not extend to any letters patent and grants of privilege, for the term of 14 years or under hereafter to be made of the sole working or making of any manner of new manufacture within this realm to the true and first inventor and inventors of such manufactures which others, at the time of making such letters or grant, shall not use, so as also they be not contrary to the law, nor mischievous to the state, by raising prices of commodities at home or hurt of trade or generally inconvenient.”

198. A detailed analysis of relevant case law was provided by the Delegate in Raymond Ludwig John Tettman v Technological Resources Pty. Limited [2017] APO 40 (the “Tettman decision”) [123], however I will highlight that the assessment as to whether a claimed invention is properly the subject of a patent is one of substance over form as set out in Research Affiliates vCommissioner of Patents [2014] FCAFC 150 (“Research Affiliates”) and Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (“RPL”). More recently, this is made clear D’Arcy v Myriad Genetics Inc [2015] HCA 35 (“Myriad”)[124]:
“Whatever words have been used, the matter must be looked at as one of substance and effect must be given to the true nature of the claim.”
[123] Raymond Ludwig John Tettman v Technological Resources Pty. Limited [2017] APO 40 at [21]-[28]
[124] D’Arcy v Myriad Genetics Inc [2015] HCA 35 at [144]

199. On 28 July 2017, I exercised my power under section 60(3) of the Patents Act to take into account grounds of opposition not relied upon by the opponent in their statement of grounds and particulars. I invited the parties to provide comment in regard to a further basis for a lack of patentability. I noted that:
“On the face of the claim, the substance of the invention appears to be a mere scheme for sorting material comprising steps such as:
·Assessing the grade of mined material
·Sorting the mined material on the basis of grade into segments
·Upgrading or beneficiation of at least one segment

To my mind, this appears to be a purely logistical process with none of the claimed substance providing a technical contribution. I am unable to determine if there is any invention or ingenuity in the implementation of technology in the claim.”

200. The parties were provided two (2) weeks to file submissions addressing manner of manufacture, and a further two (2) weeks to provide responding submissions.
Are the claims directed towards a mere scheme?
201. The Applicant agreed that emphasis must be placed on the substance of the claimed invention over the form of the claims. However this contribution must be determined based on a reading of the specification as a whole and the skilled addressee understanding of the common general knowledge and prior art.

202. The Applicant referred to Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Application, [2006] EWCA Civ 1371; [2007] RPC 7 where the England and Wales Court of Appeal outlined a four-step “technical effect” approach in respect to the question of excluded subject matter under UK law.
203. The Applicant submits that the substance of the claimed invention as defined in claim 1 is the combination of two different types of sorting. Bulk sorting then particle sorting, to produce an upgraded material via a series of physical steps. While each integer may have been previously known, in isolation, particle sorting is not an effective option for large volumes of ore because of the cost and practical materials handling issues for large scale sorting. Bulk sorting of itself is not an effective option to determine conclusively whether there is sortable valuable material in bulk segments.
204. The Applicant submitted that, by proceeding with this particular combination, claim 1 permits the recovery of mined material that would previously have been impossible technologically to recover at all or at least to be able to recover cost effectively. This also leads into the assessment of manner of manufacture as exemplified in Grant v Commissioner of Patents [2006] FCAFC 120 that the invention as defined by claim 1 transforms otherwise unusable mining material into usable and valuable form.
205. In response to my letter, the Opponent submits:
“Each claim recites known conventional features of steps to be used or implemented in their normal standard way. The CSIRO Opponent notes that the same steps recited by the Delegate to illustrate the process are recited in a similar manner by the experts who give evidence in this opposition. For example, Painter #1.9.1 shows the broad steps of claim 1 in conceptual terms as a flowsheet.
The applicant has sought to obtain a monopoly for a flowsheet which is nothing more than a mere scheme for sorting mined material. The subject matter is not a manner of manufacture, in the same way that the method of constructing portfolio of assets in Research Affiliates was not a manner of manufacture, or the method of gathering evidence in RPL Central. The method practiced there was done on a computer and in the present case the method is simply practiced by the standard use of known apparatus for sorting and is therefore broadly analogous. The Specification under opposition presents the invention in simplistic terms, indicating that the purported invention is the concept or flowsheet only – which is nothing more than a mere scheme.”

206. On this point, the Applicant submits that the claimed invention is not an algorithm, a business method, a computer enabled invention or a biotechnology invention as exemplified in Research Affiliates, RPL or Myriad:
“The claimed method is a combination of physical steps, each of the steps is a separate step and the claims define combinations of these steps that process a large volume of feed material, in a defined way to produce a physical outcome which differs in composition from the feed material. This is not analogous in any way to an algorithm.

207. Referring to claim 1, the Applicant submits that claim 1 is not a scheme or a purely logistical process:
“Claim 1 defines a series of physical processing steps on a feed material comprising valuable and non-valuable material that sort the feed material into process streams, at least one of which is an upgraded material stream that has a high proportion of valuable than is in the remainder of the feed material. The method defined in claim 1 makes it possible to separate valuable material from a large volume of material in a cost effective and efficient way. In the case of claim 1, this is achieved by a combination of physical processing steps on the feed material, with one step being a bulk sorting step and the other step being a particle sorting step on selected segments of the bulk-sorted material. The feed material is transformed by the steps into multiple streams, at least one of which is an upgraded valuable material stream.”

208. Referring to what the delegate stated in the Tettman Decision, the Opponent points to the following passage[125]:
“I consider it clear that the invention’s substance in the independent claims is nothing more than a decision as to whether to deploy a dry sorting process (of any non-descript type) based upon a non-technical or abstract analysis and logic. In itself, such a substance has no material advantage or economic significance being merely a set of analytical steps leading to a decision. Such subject matter has traditionally failed for patentability as being a mere scheme, or even intellectual information.”
[125] Raymond Ludwig John Tettman v Technological Resources Pty. Limited [2017] APO 40 at [40]

209. On this point, the Opponent submits this is similar to the present invention which is, as defined in claim 1, the decision to sort on a bulk basis and then to sort on a particle basis both of which are known techniques. In support, the Opponent refers back to what the delegate stated in the Tettman Decision[126]:
“Turning also to the themes articulated in Research Affiliates and RPL, there is no functioning of technology within the independent claims beyond that which is generic. Here, material is generically mined and dry sorted to generically produce material. The problem allegedly addressed by the claimed invention is not one of the technical limitations in sorting, but a logistical or business problem. In other words: “What do I do with material that is to some degree relatively valuable but that I don’t presently use commercially?” The solution of the claims is to work out, in a generally abstract sense, whether it can be dry sorted and whether dry sorting is viable from a logistical point of view. This is not patentable subject matter. It is business innovation, not technical innovation.”
[126] Ibid at [41]

210. In light of the above, it appears that the contribution to the art of the claimed invention as per claim 1 resides in the combination of sorting mined material via bulk sorting then particle sorting. For completeness, I note that there is little difference between claim 1 and claim 19, and the independent claims defined by set 2 and set 3. In set 2, particle sorting is replaced with downstream processing of selected segments. Set 3 does not require particle sorting but rather, defines that copper ore is initially reduced in size.
211. While I agree with the Applicant that the system provides an advantage in that it makes it possible to recover valuable material that would otherwise not be recovered, the same could be said for any upgrading or beneficiation step which produces material in accordance to a threshold. I also agree that the claimed invention is not an algorithm.
212. All of the steps of performing crushing of mined material, bulk assessment, bulk separation, and dry sorting or downstream processing are broadly defined in the independent claims as a mere reference to the general concept that such steps could be performed. Neither the claims nor the specification indicates exactly what technical components would be suitable but rather, has left the implementation to the skilled addressee. Therefore, in accordance with the guidance provided by Research Affiliates and RPL, it is clear that the technology defined within the independent claims is merely generic.

213. Additionally, the assessment of grade as being above or below a threshold is entirely subjective. The specification indicates that such a threshold may be determined according to[127]:
“…mineralogy of the mined material, mining costs, separation (such as dry sorting) costs, and downstream costs, including processing costs to produce a marketable product from the mined material that meets a customer specification in terms of grade and other characteristics such as particle size, and also include costs to transport that product to customers”
[127] Specification as amended on 23 Sept 2016 on Page 7 lines 19 - 28

214. It is clear that this determination is not one that I would consider technical subject matter but rather, is entirely subjective and dependent on costs or a customer specification. Therefore the problem addressed by the claims it not one of technical limitation in sorting or recovering valuable material, but a logistical or business problem.
215. In this regard, it is clear that the substance of the invention is directed towards nothing more than the arrangement of mineral processing concepts which could be used to sort and upgrade mined material. While there is a requirement that the arrangement must be able to sort and upgrade mined material in accordance with a threshold, as per above this threshold is entirely subjective and dependent on costs or a customer specification. It follows that the economic significance which may result from sorting or upgrading the mined material is unrelated to any improvement in the functionality of the system.

216. Consequently it is clear that the substance of the invention as defined in the independent claims is purely a logistical process. I have considered the dependent claims and find that they do not incorporate any features which would resolve the issues of patentable subject matter.
217. Therefore I find that the subject matter of all of the claims do not define a manner of manufacture.
Are the claims directed towards mere working directions?
218. On this point, the both the Applicant and the Opponent refers to the written submissions in the Tettman Opposition. In the Tettman Opposition, it was submitted that the claims are simply directed towards mere working direction citing Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232. The Applicant disagrees on the basis that the specification makes it clear that the claims define a combination of features.
219. A working direction is defined as the mere optimisation of a known process to more efficiently produce an old product, or to more efficiently operate a known device to an old effect amounts to no more than a working direction, provided that result could have been achieved without inventive ingenuity. Where the result is new, or where an inventive selection is involved, such processes are patentable.

220. The claims of the opposed application are directed towards the sorting or upgrading of mined material which, as set out in the evidence, is an old result. All of the claims steps which aim to achieve this old result are described with a high degree of generality. As set out above in my discussion of inventive step in light of common general knowledge, all of the claims relate to conventional steps which are either obvious on the face of the claim, or would simply be a matter of routine.

221. In this regard, it is clear that all of the claimed steps are mere working directions. I find that the invention as claimed in all of the claims defines no more than mere working directions and thus, are not directed towards a manner of manufacture.
Conclusion
222. The Opposition is successful. I find that:
·All of the claims are not directed towards a manner of manufacture
·All of the claims are obvious in light of common general knowledge
·All of the claims lack novelty and/or lack an inventive step in light of any one of D3, D8, D9.
·Claims 13 and 39 are novel and inventive in light of D12.
·Claims 1 – 12, 14 – 38 and 40 – 69 are not novel and not inventive in light of D12.

223. Typically where an opposition succeeds on one or more grounds, it is appropriate that the Applicant is provided an opportunity to propose suitable amendments to address the issues outlined in the decision. However I consider that there is no patentable subject matter that could potentially be claimed, and there are no suitable amendments which would overcome the ground of inventive step. I find that there is no subject matter within the specification which could form the basis for an allowable claim.
224. Consequently, the application is refused.
Costs
225. The opposition is successful. It is normal practice that costs should follow the event. I award costs according to Schedule 8 against the Applicant.
Isaac Tan
Delegate of the Commissioner of Patents