Cytec Industries Inc. v Nalco Company
[2021] FCA 970
•19 August 2021
FEDERAL COURT OF AUSTRALIA
Cytec Industries Inc. v Nalco Company [2021] FCA 970
Appeal from: Cytec Industries Inc. v Nalco Company [2019] APO 2 File numbers: NSD 130 of 2019 Judgment of: BURLEY J Date of judgment: 19 August 2021 Catchwords: PATENTS – appeal from decision of delegate of the Commissioner of Patents – patent application for method of reducing aluminosilicate scale – claims of patent application amended following delegate’s decision – hearing de novo
PATENTS – claim construction – whether claims include within their scope a reaction product mixture containing a single type of small molecule
PATENTS – validity – lack of support – comparison between invention specified in the claims and that described in the specification – technical contribution to the art – lack of support established
PATENTS – validity – lack of clear and complete description – classical sufficiency – whether specification enables skilled addressee to perform invention over the whole area claimed without undue burden – lack of clear and complete description established
PATENTS – validity – best method – characterisation of invention – where certain details in examples not disclosed – no failure to disclose best method
PATENTS – validity – lack of novelty – whether patent application anticipated by earlier filed specification – whether grace period provisions apply to “whole of contents” documents – grace period applies – lack of novelty not establishedLegislation: Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) ss 3 and Sch 6
Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (Cth)
Patents Act 1952 (Cth)
Patents Act 1990 (Cth) ss 18, 24, 40(2)(a), 40(2)(aa), 40(3), 59, 60, 65, 67, 79B, 105 and Sch 1
Convention on the Grant of European Patents, opened for signature 5 October 1973, 1065 UNTS 199 (entered into force 7 October 1977) art 83
Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1) (Cth) reg 4 and sch 6
Patents Act 1977 (UK) s 14(3)
Patents Regulations 1991 (Cth) regs 2.2(1A), 2.3(1A), 3.13D, 6.3 and 23.26(4)
Cases cited: Commonwealth Scientific and Industrial Research Organisation v BASF Plant Science GmbH [2020] FCA 328; 151 IPR 181
CSR Building Products Ltd v United States Gypsum Company [2015] APO 72
Evolva SA [2017] APO 57
GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No 2) Limited v Generic Partners Pty Limited [2018] FCAFC 71; 264 FCR 474
Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90; 222 ALR 155
Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; 207 CLR 1
Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27; 247 FCR 61
Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477; 155 IPR 1
Mont Adventure Equipment Pty Ltd v Phoenix Leisure Group Pty Ltd [2009] FCAFC 84; 176 FCR 575
Novartis AG v Johns & Johnson Medical Ltd [2010] EWCA Civ 1039; [2011] E.C.C. 10
Pfizer Overseas Pharmaceuticals & Ors v Eli Lilly & Co [2005] FCAFC 224; 225 ALR 416
Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd [2017] FCAFC 138; 126 IPR 427
Schering Biotech Corp’s Application [1993] RPC 249
Terrell on the Law of Patents (19th ed, Sweet & Maxwell, London, 2020)
Division: General Division Registry: New South Wales National Practice Area: Intellectual Property Sub-area: Patents and associated Statutes Number of paragraphs: 227 Date of hearing: 23, 26-30 October 2020 Counsel for the Appellant: Mr C Burgess with Ms J McKenzie Solicitor for the Appellant: Allens Counsel for the Respondent: Mr J Cooke with Ms M Evetts Solicitor for the Respondent: Shelston IP Lawyers Pty Ltd ORDERS
NSD 130 of 2019 BETWEEN: CYTEC INDUSTRIES INC.
Appellant
AND: NALCO COMPANY
Respondent
AND BETWEEN: NALCO COMPANY
Cross-Appellant
AND: CYTEC INDUSTRIES INC.
Cross-Respondent
ORDER MADE BY:
BURLEY J
DATE OF ORDER:
19 AUGUST 2021
THE COURT ORDERS THAT:
1.The parties confer and supply to the chambers of Justice Burley, within 28 days, short minutes of orders giving effect to these reasons.
2.Insofar as the parties are unable to agree to the terms of the short minutes referred to in order 1, including the appropriate order as to costs, the areas of disagreement should be set out in mark-up.
3.The proceedings be listed for case management at 9.30am on 13 October 2021.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
REASONS FOR JUDGMENT
BURLEY J:
1 INTRODUCTION
[1]
2 THE WITNESSES
[12]
2.1 Cytec’s expert witnesses
[12]
2.2 Nalco’s expert witnesses
[17]
2.3 Joint expert report and concurrent evidence
[23]
3 THE PRIMER
[24]
3.1 The Bayer Process
[25]
3.2 Scale formation and management
[35]
3.3 Developing solutions to the scaling problem
[44]
4 THE PATENT APPLICATION
[46]
4.1 The complete specification
[46]
4.2 The claims
[74]
4.3 The chemistry of the claims
[78]
4.4 The person skilled in the art
[84]
4.5 Some agreed propositions regarding the disclosure of the specification
[86]
5 CLAIM CONSTRUCTION
[90]
5.1 Introduction
[90]
5.2 The single small molecule argument
[92]
5.2.1 The submissions
[92]
5.2.2 Consideration
[99]
5.3 Do the claims include any limitations as to the synthesis method used to form the reaction product mixture?
[116]
6 LACK OF SUPPORT
[119]
6.1 Introduction
[119]
6.2 The submissions
[122]
6.3 Consideration
[129]
7 LACK OF CLEAR AND COMPLETE DESCRIPTION
[140]
8 BEST METHOD
[150]
8.1 Introduction
[150]
8.2 The case law
[152]
8.3 The submissions
[158]
8.4 Consideration
[164]
9 NOVELTY
[202]
9.1 Introduction
[202]
9.2 Does the “grace period” apply?
[204]
10 DISPOSITION
[226]
1. INTRODUCTION
These proceedings are an appeal from a decision of a delegate of the Commissioner of Patents by the opponent, and a cross-appeal by the patent applicant, to the grant of patent application number 2012220990 entitled “Reducing aluminosilicate scale in the Bayer process”: Cytec Industries Inc. v Nalco Company [2019] APO 2 (delegate’s decision). The priority date of the patent application is 25 February 2011.
Since about 1888, a method developed by Karl Bayer known as the Bayer process has been used to extract alumina from bauxite in order to make aluminium metal. It has been developed over time, but even today it is the dominant method in use around the world. In summary, the process involves crushed and milled bauxite being added to a caustic Bayer liquor at a high temperature. This enables the alumina to be dissolved into the Bayer liquor and unwanted minerals to be left in a residual slurry, known as red mud. The mixture of red mud and Bayer liquor travels through a system of tanks and pipes until the red mud is removed leaving a pregnant liquor. The pregnant liquor is then cooled to allow alumina-containing crystals to precipitate as solids to be removed from it. This process removes about half of the valuable alumina from the Bayer liquor. The spent liquor is then returned to the system to digest more bauxite.
One problem with the operation of the Bayer process is that bauxite contains silica which can accumulate and form scale on surfaces within the equipment which eventually has to be removed. The patent application concerns a method of reducing scale.
On 7 February 2012, Nalco Company filed its patent application. It was examined and advertised as accepted by the Commissioner of Patents on 21 May 2015 and Cytec Industries Inc. filed a notice of opposition on 21 August 2015 pursuant to s 59 of the Patents Act 1990 (Cth), contending that the patent application should not proceed to grant on the basis that the claims were not novel, that they lacked an inventive step and that the application did not comply with the requirements of s 40(2) and s 40(3) of the Patents Act. On 8 January 2019 a delegate of the Commissioner of Patents found that the description in the specification did not provide a clear enough and complete enough disclosure of the invention and that the claims were not supported. The delegate also found that several of the claims lacked clarity and novelty. Other grounds advanced, including lack of inventive step, were rejected.
On 8 January 2019, Cytec filed a notice of appeal pursuant to s 60(4) of the Patents Act from those parts of the decision of the delegate upon which it did not succeed. On 25 February 2019, Nalco filed a cross-appeal which was later amended.
On 4 November 2019, Nalco obtained leave of the Court pursuant to s 105(1A) of the Patents Act to amend the claims of the application. In these reasons I refer to the amended form of the complete specification as the patent application.
The amendments sought to overcome those aspects of the delegate’s decision that were determined adversely to Nalco. Cytec then amended its statement of grounds and particulars to address the patent application’s amended form. Those grounds are:
(1)That the invention claimed is not supported by the matter disclosed in the specification within s 40(3) of the Patents Act;
(2)That the complete specification does not disclose the invention in a manner which is clear enough and complete enough for it to be performed by a person skilled in the relevant art within s 40(2)(a) of the Patents Act;
(3)That the complete specification does not disclose the best method known to Nalco within the requirements of s 40(2)(aa) of the Patents Act;
(4)That the invention claimed in claims 1, 2, 5, 8, 9 and 12-16 is not novel in light of PCT/US2010/049555 (WO 2011/037873), another patent owned by Nalco, entitled “Reducing aluminosilicate scale in the Bayer process” (WO 873); and
(5)That the invention claimed is not for an “invention” or a “manner of manufacture” within s 18(1)(a) of the Patents Act.
In its opening submissions, Cytec abandoned reliance on ground (5).
Although styled as an appeal, the present proceeding is in the original jurisdiction of this Court and involves a hearing de novo on the grounds and evidence before the Court. As the opponent to grant, Cytec bears the onus in relation to each ground of opposition raised. Section 60(3A) of the Patents Act, which was introduced with the passage of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) (RTB Act), provides that the Commissioner may refuse an application if satisfied, on the balance of probabilities, that a ground of opposition exists. That is the standard by which the present proceeding is to be judged.
The Patents Act that applies to the present dispute is in the form as amended by the introduction of the RTB Act, with the exception that the form of the Patents Act and Patents Regulations 1991 (Cth) applying in relation to the novelty grace period issue arising in ground (4) pre-dates the RTB Act.
For the reasons set out in more detail below, I have concluded that the opposition to the grant of all of the claims of the application should succeed on the basis of the lack of support (s 40(3)) and lack of sufficient disclosure (s 40(2)(a)) grounds.
2. THE WITNESSES
2.1 Cytec’s expert witnesses
Gregory Philip Power has since 2004 been a director and principal consultant of Arriba Consulting Pty Ltd, a company through which he provides consulting services in the bauxite-alumina industry including in relation to Bayer process management, technology, laboratory analysis and research. Since 2004 he has also been an honorary visiting scientist at the Commonwealth Scientific and Industrial Research Organisation where he is a research advisor in mineral chemistry, specialising in Bayer process chemistry and bauxite residue.
Dr Power obtained a PhD in chemistry from the University of Western Australia in 1975. He then worked as a senior research scientist for the National Institute of Metallurgy in Randburg, South Africa, before returning to Australia and completing a postdoctoral fellowship at Murdoch University and a research fellowship at the School of Chemistry of the University of Western Australia. In the 1980s, he worked as a laboratory director and then as chief chemist and research manager at Worsley Alumina Pty Ltd. There he commissioned and directed a laboratory, developing a research programme focussed on organics removal and oxalate behaviour, process chemical additives, lime chemistry and analytical methods. In the 1990s and early 2000s, he held roles first at Alcoa of Australia as a chief chemist, chemical and environmental services manager and technology services manager, and then at Alcoa World Alumina Australia as a sustainable technology manager and as technical manager for air quality.
Dr Power affirmed one affidavit in these proceedings. He gives evidence about: the Bayer process and how its various parameters can be adjusted depending on the type of bauxite being refined; the problem of scale formation in the Bayer process and approaches to its management as at February 2011; the team of people who would be tasked with finding a useful or better solution to the scaling problem, and their likely approach; the disclosure of WO 873 and how this would inform his approach to managing or controlling scale as at February 2011; and, the disclosure of the patent application and how this compares to that in the WO 873 patent.
Christopher John Easton has since 2005 been a Distinguished Professor at the Research School of Chemistry of the Australian National University. Since being awarded a PhD by the University of Adelaide in 1981, he has held teaching and research positions in the chemistry departments of several universities. He has authored or co-authored over 300 publications in the field of organic chemistry and has presented numerous conference papers, the majority of which have been directed to the chemical structure and function of molecules and their synthesis. He has also been involved in a number of projects, including in collaboration with industry partners, involving synthesis, analysis and purification of organic compounds, some of which have been related to the field of industrial chemistry.
Professor Easton affirmed two affidavits in these proceedings. In his first he gives evidence about the Bayer process and the problems caused by aluminosilicate scale formation, and the disclosure of WO 873 and the patent application. Annexed to his first affidavit are copies of declarations made by Professor Easton for the purposes of the opposition proceedings before the delegate. In his second affidavit, he provides further commentary on the patent application.
2.2 Nalco’s expert witnesses
Denis R Audet has since 2015 been a director and principal consultant of Audet Process Audit, a company through which he provides consulting services, principally focussed on Bayer process optimisation, troubleshooting, research and audit, to the alumina industry. He was awarded a Doctorate in Chemical Engineering in 1986 from the Université de Technologie de Compiègne, France.
In 1986, Dr Audet commenced working for Alcan International Ltd where he remained, in a range of different roles, until 2015. He was initially involved in developing, and later training others in the use of, simulation software to predict the effect that varying Bayer process parameters would have upon the size and purity of alumina precipitates. He later held roles in the crystallisation and ceramics groups at Alcan where, in addition to working on improving impurity control in the Bayer process and developing alumina products such as toothpaste, paints and fire retardants, he continued to work on making improvements to the simulation software and providing technical assistance to various alumina refineries around the world. He later moved to Australia where, in addition to working on optimising the process by which alumina hydrate is precipitated in the Bayer process, he also developed expertise on the parts of the Bayer process concerned with the way in which the bauxite is introduced into the process. His work has also been concerned with understanding the effect that impurity precipitation, such as silica and oxalate precipitation, has upon alumina hydrate precipitation. Dr Audet is also the co-inventor of two patents relating to the precipitation of alumina in the Bayer process and has published various papers on the topic.
Dr Audet affirmed one affidavit in these proceedings. He gives evidence about: the Bayer process and the problems and difficulties associated with it, including scale formation and management; the appropriate team of people to develop a solution to the scaling problem in the Bayer process; the disclosure of the WO 873 patent; the disclosure of the patent application; and whether he could perform the method in the patent application based on the disclosure of the specification. Dr Audet also responded to the affidavit evidence of Dr Power and Professor Easton.
John Gerard Bellwood has since 2019 been a part-time consultant to BASF Mining Solutions, principally focussing on supporting projects relating to chemical additive synthesis and application to mining and mineral industries on an industrial scale. He was awarded a Bachelor of Science (Chemistry) in 1982 from the University of Durham, United Kingdom.
In 1982, Mr Bellwood commenced working for Allied Colloids Limited where he spent the majority of his time in the laboratory conducting testing on new polymers and chemical reagents for applications related to the oil industry. In this role he worked with chemists who were responsible for developing the compounds he tested and became familiar with their techniques of production and synthesis. He also supported sales personnel by conducting testing to demonstrate how the chemical products might perform in specific customer applications. In 1994 he relocated to Australia to work for Allied Colloids Australia Pty Ltd (later acquired by Ciba then BASF), where he worked on projects including designing and commissioning a polymer production facility, and leading the technical and process support team for a facility manufacturing flocculants for applications such as mineral processing and extraction. He also led a team that developed a new range of flocculants designed to treat waste material in the Bayer process.
Mr Bellwood affirmed one affidavit in these proceedings. In it he gives evidence about: the disclosure of the patent application; the disclosure of the WO 873 patent and how that compares to the patent application; and his response to the affidavits of Professor Easton.
2.3 Joint expert report and concurrent evidence
Each of the witnesses joined in the preparation of a joint expert report. They also gave oral evidence in a concurrent session, during which they were cross-examined. I found that each expert gave frank and helpful evidence and was careful to refer to matters within their expertise. In this regard, Dr Power has expertise in process chemistry, particularly in the context of the Bayer process. Each of Dr Audet and Mr Bellwood also have experience in the Bayer process. Although Dr Audet has a good understanding of chemistry, he does not have experience working as a synthetic or organic chemist and frankly conceded that his understanding of some aspects under discussion were not as deep as that of Professor Easton, whose strength lies in his extensive experience in synthetic organic chemistry. Professor Easton, however, has only a general familiarity with the Bayer process, and so is less well-placed to give evidence about that process than the Bayer process experts (Dr Power, Dr Audet and Mr Bellwood), whose knowledge in that field was considerably more extensive. I have taken these matters into account in considering the evidence of each of the witnesses.
3. THE PRIMER
The parties co-operated to produce a primer that sets out aspects of the common general knowledge as it stood at the priority date of the patent application. What follows is taken from that document.
3.1 The Bayer Process
The Bayer process uses bauxite as the starting material. Bauxite is a rock containing many minerals, including aluminium hydroxides (gibbsite and boehmite) and aluminosilicate clays which are insoluble in water but soluble in strong caustic soda. The other main constituent of bauxite is ferrous (iron) oxide, which gives the bauxite its red appearance. The iron and most other minerals contained in the bauxite are not readily soluble in caustic soda. Silica and/or organic compounds are the main impurities present in bauxite. The amounts and levels of these impurities can depend on where the bauxite was mined. The organic impurities typically come from plant roots or soil that has decayed. The amount of organic impurity depends on how the soil is removed during the mining of bauxite, the geology of the area and climate. For example, bauxite from Western Australia has higher amounts of organic impurities compared to bauxite from the Northern Territory or North Queensland.
To dissolve aluminium hydroxide in the form of gibbsite and/or boehmite, crushed and milled bauxite is added to a solution of caustic soda (sodium hydroxide), which has an alkaline pH at high temperature. This basic solution is known as the Bayer liquor, which continuously flows within a closed circuit comprising various machinery that facilitate different stages and conditions for the Bayer process. By taking bauxite, crushing it and heating it to over 100°C (and more typically at least 140-145°C where the bauxite is predominantly gibbsite or at least 250°C where the bauxite is predominantly boehmite) in caustic soda in a pressurised vessel, alumina is extracted into solution (referred to as liquor) and the rest of the minerals are left in a residual sludge/slurry (red mud). The mixture then flows through a series of decanters (operating at about 105°C under atmospheric pressure) in the presence of flocculants to settle and remove the red mud from the liquor, and the liquor is filtered (using, for example, a sand filter) to remove any residual mud particles, leaving a pregnant liquor.
The Bayer liquor from the decanters then flows to crystallisers which are large tanks (typically around 4,500m3 in volume and usually about 35m in height) to crystallise and precipitate the alumina hydrate. The crystallisers are placed in series (typically 15-30 tanks) usually along a gradient such that the liquor cascades from one crystalliser to the next by gravity flow. Each crystalliser has an agitator to ensure mixing. The liquor and/or slurry flowing to the crystallisers is cooled to a temperature of about 80°C, which initiates the alumina trihydrate (or alumina hydrate) precipitation process by mixing the liquor with fine alumina hydrate “seeds” which are added to the first crystalliser in the series. Alumina-containing solids are then removed from the liquor to be processed and then eventually smelted into aluminium metal.
The spent liquor is returned to digest more bauxite. After the liquor leaves the final crystalliser, the liquor remains rich in alumina, however, it is typically half the original alumina concentration present during digestion. A key element of the Bayer process is this recirculation of the liquor.
Below is a diagram showing the process flow described in the above paragraphs.
The core step of the Bayer process is the removal of the alumina hydrate by precipitation (cooling and seeding). This is done by all refineries and the chemistry of this part of the process is almost always the same. However, the first portion of the Bayer process (up to and including digestion, which is the process of extracting alumina from bauxite by high pressure leaching (digestion) in caustic soda) can occur differently depending on the type of bauxite, as the different types require different pre-processes to extract alumina. For example, lateritic bauxite must be ground and preferably desilicated prior to digestion, as described below. Other bauxites may need to be fired in a kiln, usually with lime, to free up the alumina prior to digestion.
After the crushed and milled bauxite has been added to caustic soda, a slurry solution (which is rich in alumina as well as undissolved bauxite) remains at digestion temperature for a time sufficient to dissolve the alumina, which can typically be at least 30 minutes to several hours. The temperature of the slurry is then rapidly reduced in sequential stages, such as by suddenly significantly reducing the pressure and allowing energy to escape. This generates steam which is used to heat up the input Bayer liquor (earlier within the circuit) for digestion via heat exchangers, which are a series of tubes (with heat-conductive surfaces) through which the Bayer liquor runs during the digestion phase. This stage is most prone to silica scale formation on the heat exchangers as silica tends to form in the parts of the Bayer process circuit which are hotter.
In Australia, all refineries applying the Bayer process use the process in broadly the same way, subject to variations in bauxite and know-how being used. One key difference is the digestion temperature used as between refineries, which can either be a high temperature (220-270°C where the bauxite contains significant amounts of boehmite) or low temperature (145-175°C where only the gibbsite is intended to be recovered). The reason for the difference is the type of bauxite being processed, or the relative proportions of different forms of alumina-bearing ore. In lateritic bauxite which is found in Australia, there are two key types of aluminium containing ores – gibbsite (aluminium hydroxide – alumina trihydrate) which is soluble in caustic soda at low temperatures (common in Western Australia), and boehmite (aluminium oxy-hydroxide – alumina monohydrate) which requires high temperatures (common in Queensland). Bauxite will generally contain both gibbsite and boehmite and it is their relative proportion that dictates the digestion temperature that is used. In particular, only if there is a significant proportion of boehmite would the higher temperatures for digestion be justified to extract alumina from the boehmite in addition to the gibbsite.
After digestion, it is common for refineries to use a range of chemical additives while applying the Bayer process. The same types of chemical additives are used by refineries in the same ways, but the quantities of additives and the specific additives selected could vary between refineries. The selection and variation of additives is a standard and routine part of the process for refinery operators. Chemical additives were and are generally developed and supplied by chemical companies such as Cytec and Nalco.
The chemical additives known and commonly used in the Bayer process before February 2011 included settling agents, flocculants, clarifying agents, agglomeration agents, filtration aids and anti-scalants. For example:
(1)A slurry containing fine mud (red mud) is produced after digestion of bauxite, and the mud needs to be separated out. From the 1950s-60s, settlants were developed, where the slurry was placed into a tank to let the mud settle, but fine particles do not settle very well. To improve settling, a settling agent (usually a polymer which will survive in caustic soda and having some charged groups which are oppositely charged to what is holding the mud in suspension) could be added, to attach to the mud particles and cause them to coagulate and settle.
(2)Flocculants neutralise the charge of the mud particles, allowing them to stick together. This is a simpler and more cost effective method of removing mud particles than filtering.
(3)Having flocculated the mud, a clarifying agent was added to eliminate the final remaining particles of fine mud.
(4)Agglomeration agents (often called crystal growth modifiers) were added to help the process of precipitating alumina hydrate.
(5)Filtration aids were used in the process of washing and filtering precipitated alumina hydrate.
(6)Anti-scalants were used to inhibit or reduce the formation of aluminosilicate scale on plant equipment.
3.2 Scale formation and management
Scale management is a key issue for the industry because scale of various types impacts on all parts of the process, including operating costs, costs of equipment and health and safety issues. Aluminosilicate scale (DSP), unlike most chemicals, precipitates more readily at higher temperatures. All bauxite contains some clay (aluminosilicate) which dissolves quickly in the Bayer process and results in silica in solution. When this solution is heated for digestion, the silica precipitates as DSP, which grows as a hard glass-like film on the hot equipment. DSP can therefore form obstructions and adversely affect the efficiency of the plant's equipment. In the Bayer process diagram above, the silica scale hotspots are highlighted in red.
DSP/scale is a solid growth on the surface of a tank, pump or pipe. The way scale builds up in the Bayer process is similar to scale build up in a kettle. If hard water is boiled in a kettle with an internal heating coil, calcium scale will build up and affect the heat exchange. Consequently, the kettle needs to be descaled with acid (for example, citric acid).
The high temperature heat exchangers included within the digesters and evaporators, are key problem areas for scale formation. Scale can grow quickly (with several microns of scale within a few days of operation) and will continue to grow over time. The hard glassy scale is a good heat insulator, meaning the efficiency of the heating tubes starts to reduce as scale builds up, and this reduction will happen proportionately. Scale forms not only in the heat exchangers included within the digesters and evaporators, but they are the main problem area because scale adheres to a hot surface. Scale will also form in other pipes, pumps, and the digestion vessels themselves (especially in places where there may be a join or liquor flow into a vessel where it flashes, resulting in sudden concentration around an entry point). Scaling can happen throughout the processing plant, anywhere there is liquor in contact with a hot surface.
After some weeks or months of operation, the scale needs to be cleaned off. This usually involves taking the heat exchanger offline, draining it down and putting it in acid (usually dilute sulfuric acid combined with a corrosion inhibitor). Once the scale is removed, the acid will attack the metal, so the process has to be managed carefully. In general, it is a messy and expensive process. For example, if not enough corrosion inhibitor is in the acid, the tubes will have to be replaced. Taking heat exchangers offline is also a big operational issue, because it means refineries must have spare heat exchangers, which increases capital costs.
In addition to acid cleaning, two other ways of managing the problem of aluminosilicate scale build-up known before February 2011 were:
(1)reducing the amount of silica in solution going into digestion through a pre-desilication process; and
(2)additives to the liquor which prevented the scale forming.
The patent application concerns additives.
The pre-desilication process occurs between milling and digestion, and has been used since approximately the late 1960s or early 1970s for almost all lateritic bauxite processing worldwide. This involves the milled slurry being heated to just under 103°C and being held for approximately 12 hours. The clay in that time will dissolve, releasing silica into solution, which will re-precipitate as aluminosilicate, resulting in less silica in the solution. This process can remove up to approximately 90% of the silica from solution, but not all of it. Therefore, the scale problem remained downstream in the Bayer process and still needed to be addressed. This led to the development of the anti-scalant chemical additives identified in [39(2)], which would be added into the liquor.
One chemical solution to the problem of aluminosilicate scale was developed by Cytec. This was an oxysilane-based anti-scalant additive that would keep the silica in solution and prevent scale formation. By February 2011, the product was marketed by Cytec under the brand name Max HT. Max HT is typically added during the evaporation process of the Bayer process. It is intended to remain in the Bayer liquor at the same concentration, albeit with some loss when red mud is removed from the decanters. Max HT has minimal effect on other aspects of the Bayer process, other than reducing or preventing silica scale formation. It stabilises (i.e. keeps dissolved) digested silica from the bauxite by preventing or reducing crystallisation on the heat exchanger. The silica can then be removed by precipitation on red mud in digestion or pre-desilication.
In summary, the following matters in respect of scale formation and management were known and regarded as generally well-known and accepted in the field as at February 2011:
(1)build-up of aluminosilicate scale (DSP) in Bayer process equipment was a significant problem;
(2)mechanical cleaning (by drilling out heater tubes or jack-hammering larger vessels) and acid cleaning (by dissolving the scale in sulphuric acid containing a corrosion inhibitor) of the equipment to remove scale meant that equipment had to be taken offline, resulting in added costs and loss of productivity, as well as occupational health and safety issues;
(3)pre-desilication resulted in lower amounts of silica in solution, but did not eliminate the problem entirely;
(4)chemical additives had been developed which were designed to hold silica in solution and prevent the precipitation of DSP, but were not necessarily effective in all Bayer liquors at reasonable (sufficiently low) concentrations; and
(5)those working in the field continued to investigate improved methods of managing and controlling DSP scale formation.
3.3 Developing solutions to the scaling problem
In developing a scale inhibitor, while a product would initially be developed on a laboratory scale, it would need to be tested on an industrial scale in a refinery. Particularly when viscosity and miscibility are relevant factors, how the material mixes in the equipment available at a plant will be of great interest, and consideration would be given to how to introduce the product into the liquor stream. Factors to consider would include how the product is pumped (whether it is actively pumped or poured out of a pipe or whether to have a sparging mechanism), how rapidly it is introduced and whether it will settle at the bottom of a mixing tank or float to the top.
If the material is very viscous, it will not mix very well with the Bayer solution (which is aqueous, highly alkaline and has a high salt content). Viscous material is also more difficult to pump through pipes and dosing equipment. The degree to which this is a problem depends on the viscosity of the material and how much needs to be added to the liquor. One way to reduce viscosity, as done with flocculants, is to dissolve the material in a carrier to make it more easily dispersed.
4. THE PATENT APPLICATION
4.1 The complete specification
The complete specification of the patent application commences by identifying that the field of the invention relates to compositions of matter and methods of using them to treat scale in various industrial process streams, and in particular certain silane based small molecules that have been found to be particularly effective in treating aluminosilicate scale in a Bayer process stream (page 1 lines 4 – 7).
The background of the invention notes that the Bayer process is used to manufacture alumina from Bauxite ore. The patent application then says (page 1 lines 15 – 22):
The process uses caustic solution to extract soluble alumina values from the bauxite. After dissolution of the alumina values from the bauxite and removal of insoluble waste material from the process stream the soluble alumina is precipitated as solid alumina trihydrate. The remaining caustic solution, known as “liquor” and/or “spent liquor” is then recycled back to earlier stages in the process and is used to treat fresh bauxite. It thus forms a fluid circuit. For the purposes of this application, this description defines the term “liquor”. The recycling of liquor within the fluid circuit however has its own complexities.
The specification then explains that bauxite often contains silica in various forms and amounts, some of which do not dissolve in the Bayer circuit and others, such as clays, which are reactive and dissolve when added to the liquor, thus increasing the silicon concentration in it. The specification provides (page 2 lines 3 – 8):
As liquor flows repeatedly through the circuit of the Bayer process, the concentration of silica in the liquor further increases, eventually to a point where it reacts with aluminium and soda to form insoluble aluminosilicate particles. Aluminosilicate solid is observed in at least two forms, sodalite and cancrinite. These and other forms of aluminosilicate are commonly referred to, and for the purposes of this application define, the terms “desilication product” or “DSP.
The specification says that because DSP has an inverse solubility, where precipitation increases at higher temperatures, and because it can precipitate as fine scales of hard insoluble crystalline solids, its accumulation in Bayer process equipment is a problem. As DSP accumulates in pipes, vessels, heat transfer equipment and other process equipment it forms flow bottlenecks and obstructions that can adversely affect liquor throughput. It also reduces the efficiency of heat exchangers. These effects are typically managed through a descaling regime, which involves process equipment being taken off line and the scale being physically or chemically treated, but this leads to regular periods of down-time for critical equipment, and the use of hazardous concentrated acids (page 2 lines 11 – 23). The specification describes that another known approach is deliberately to precipitate DSP as free crystals rather than as scale to reduce the concentration of silica in solution. However, total elimination of silica is impractical, and changing process conditions can lead to changes in the solubility of DSP, resulting in consequent precipitation as scale (page 2 line 24 – page 3 line 7).
The specification then refers to the prior art Max HT product at page 3 lines 8 – 20:
Previous attempts at controlling and/or reducing DSP scale in the Bayer process have included adding polymer materials containing three alkyloxy groups bonded to one silicon atom as described in [five patents] and published article Max HTTM Sodalite Scale Inhibitor: Plant Experience and Impact on the Process, by Donald Spitzer et. al., Pages 57-62 Light Metals 2008, (2008) all of whose contents are incorporated by reference in their entirety.
Manufacturing and use of these trialkoxysilane-grafted polymers however can involve unwanted degrees of viscosity, making handling and dispersion of the polymer through the Bayer process liquor problematic. Other previous attempts to address foulant buildup are described in [two patents] both of which are incorporated by reference in their entirety.
The reference to adding polymer materials in this passage serves to distinguish the prior art solution to the “small molecule” solution to the scaling problem proposed in the patent application.
Under the heading “Summary of the Invention” the first aspect of the invention is said to provide a method for the reduction of aluminosilicate containing scale in a Bayer process comprising the steps of (page 4 line 19 – page 4b line 3):
adding to the Bayer process stream an aluminosilicate scale inhibiting amount of a composition comprising at least one small molecule, the at least one small molecule comprising at least three components, one being an R1 component, one being an R2 component and one being an R3 component, the components within the small molecule arranged according to the general formula:
wherein the small molecule may be at least one of: carbonates, bicarbonates, carbamates, ureas, amides and salts thereof and:
R1 is selected from the group consisting of: H, alkyl, amine, structure (A) and structure (B);
each R2 is G, and each R3 is independently selected from the group consisting of H, alkyl, amine, G and E,
wherein each G is one item independently selected from the group consisting of: 3-glycidoxypropyltrimethoxysilane, 3-glycidoxypropyltrialkoxysilane, 3-glycidoxypropylalkyldialkoxysilane, 3-glycidoxypropyldialkylmonoalkoxysilane, 3-isocyanatopropyltrialkoxysilane, 3-isocyanatopropylalkyldialkoxysilane, 3-isocyanatopropyldialkylmonoalkoxysilane, 3-chloropropyltrialkoxysilane, 3-chloropropylalkyldialkoxysilane, and 3-chloropropyldialkylmonoalkoxysilane and wherein G is optionally hydrolyzed;
each E is independently selected from the group consisting of ethylhexyl glycidyl ether, C3-C22 glycidyl ether, C3-C22 isocyanate, C3-C22 chloride, C3-C22 bromide, C3-C22 iodide, C3-C22 sulfate ester, C3-C22 phenolglycidyl ether, and any combination thereof, and
n is an integer from 2 to 6.
This was a consistory clause for the unamended version of claim 1. This aspect relates to silane-based small molecules added to the Bayer process stream.
The silane based small molecules of this embodiment are defined by the Markush diagram wherein each of R1, R2 and R3 are “selected from the group consisting of” different chemical compounds. R1 is selected from a very broadly described group which includes amines and structures (A) and (B). Structure (A) relevantly includes 1-amino-2-propanol (AP), and structure B relevantly includes hexane diamine (H) and ethyl diamine (ED). R2 is G, which relevantly includes 3-glycidoxypropyltrimethoxysilane (GPS) and R3 relevantly includes 2-ethylhexyl glycidyl ether (E). These inclusions are relevant to the claims under consideration.
The specification describes that a second aspect of the invention involves a method for the reduction of aluminosilicate containing scale in a Bayer process involving mixing with the stream an aluminosilicate scale inhibiting amount of a composition comprising at least one small molecule comprising three components, the first being a multiamine having from 2 to 5 amine groups, the second being selected from silanes similar to G, as defined in the first aspect, and the third being similar to E, as defined in the first aspect. It is not necessary for present purposes to describe the third aspect.
Two further embodiments are then identified at page 4d. One is a method for reducing siliceous scale in a Bayer process comprising the step of adding to a Bayer liquor an aluminosilicate scale inhibiting amount of reaction product between an amine-containing molecule and an amine-reactive molecule containing at least one amine-reactive group per molecule and at least one –Si(OR)n group per molecule, where n = 1, 2 or 3, and R = H, C1-C12 Alkyl, Aryl, Na, K, Li or NH4 or a mixture of such reaction products (page 4d lines 12 – 18). The expert evidence indicates that this covers a large range of unidentified reaction products which can reduce siliceous scale using two reagents, namely (1) an amine-containing molecule and (2) an amine reactive molecule containing at least one amine-reactive group per molecule and at least one –Si(OR)n group per molecule.
The other embodiment described on page 4d involves adding to a Bayer liquor “an efficacious amount of reaction product” between (1) an amine-containing “small molecule”; (2) an amine-reactive “small molecule” containing at least one amine reactive group per molecule and at least one –Si(OR)n group per molecule, where n = 1, 2 or 3 and R = H, C1-C12 Alkyl, Aryl, Na, K, Li or NH4 or a mixture of such reaction products; and (3) a non-polymeric amine reactive hydrophobic hydrocarbon. The expert evidence indicates that this embodiment is similar to the previous embodiment, however, the molecules produced are defined as “small molecules” and use three reactants.
A next embodiment is described to be a method of reducing DSP in a Bayer process comprising the step of adding to the Bayer process stream an aluminosilicate scale inhibiting amount of a mixture of the products previously defined (page 4e lines 2 – 4).
The detailed description of the invention commences by defining “polymer” to mean a chemical compound comprising essentially repeating structural units each containing two or more atoms and “small molecule” to mean a chemical compound comprising essentially non-repeating structural units. It states that the terms “small molecule” and “polymer” are mutually exclusive (page 4e lines 15 – 24).
After defining other terms, the specification describes the Bayer process in general terms (page 6 lines 10 – 20) before stating, at page 6 lines 21 – 26:
In this invention, it was discovered that dosing of various types of silane-based products can reduce the amount of DSP scale formed.
In at least one embodiment of the invention, an effective concentration of a silane-based small molecule product is added to some point or stage in the liquor circuit of the Bayer process, which minimizes or prevents the accumulation of DSP on vessels or equipment along the liquor circuit.
(Emphasis added)
The specification repeats (page 7 line 8 – page 8 line 14) the general embodiment identified as the “first aspect of the invention” (see [52] above). It then says (page 9 lines 1 – 2):
In at least one embodiment said small molecule is selected from the group consisting of: (I), (II), (III), (IV), (V), (VI), (VII), (VIII), and (IX):
then depicting nine drawings of individual structures I-IX, each of which is a compound formed from the reaction of H, GPS and E.
The specification continues by setting out nine further sets of embodiments by reference to the said small molecule being selected from groups of numbered small molecules, each of which is drawn. In total 65 small molecules are depicted.
The patent application then points out that the invention resides in the use of small molecules as opposed to the higher molecular weight polymers of the prior art. It says at page 33 lines 5 – 17:
The effectiveness of these small molecules was unexpected as the prior art teaches that only high molecular weight polymers are effective. Polymer effectiveness was presumed to depend on their hydrophobic nature and their size. This was confirmed by the fact that cross-linked polymers are even more effective than single chain polymers. As a result it was assumed that small molecules only serve as building blocks for these polymers and are not effective in their own right. (WO 2008/045677 [0030]). Furthermore, the scientific literature states “small molecules containing”...“[an] Si-O3 grouping are not effective in preventing sodalite scaling”...because...“[t]he bulky group”...“is essential [in] keeping the molecule from being incorporated into the growing sodalite.” Max THTM Sodalite Scale Inhibitor: Plant Experience and Impact on the Process, by Donald Spitzer et. al., Page 57, Light Metals 2008, (2008). However it has recently been discovered that in fact, as further explained in the provided examples, small molecules such as those described herein are actually effective at reducing DSP scale.
The patent application then sets out three advantages to using small molecule based inhibitors as opposed to the polymeric inhibitors (page 33 lines 20 – 26). First, the smaller molecular weight means that there is a larger number of active, inhibiting moieties available around the DSP seed crystal sites at the DSP formation stage. Secondly, the lower molecular weight allows for an increased rate of diffusion of the inhibitor, which favours fast attachment of the inhibitor molecules onto DSP seed crystals. Thirdly, the lower molecular weight avoids high product viscosity and so makes handling and injection into the Bayer process stream more convenient and effective.
The specification then provides two examples. Example 1 is entitled “Example of a Synthesis Reaction A, E and G” and provides (page 34 line 7 – page 35 line 20):
In a typical synthesis reaction the three constituents: A (e.g. hexane diamine), G (e.g. 3-glycidoxypropyltrimethoxysilane) and E (e.g. ethyl hexyl glycidl ether) are added to a suitable reaction vessel at a temperature between 23-40°C and allowed to mix. The reaction vessel is then warmed to 65-70°C during which time the reaction begins and a large exotherm is generated. The reaction becomes self-sustaining and depending on the scale of the reaction, can reach temperatures as high as 125 to 180°C. (see FIG. 1).
Figure 1, depicted at the end of the specification, is earlier described as “a graph illustrating a batch reaction profile of the invention” and is as follows:
The specification continues (page 34 lines 13 – 24):
Typically the reaction is complete after 1 to 2 hours and then the mixture is allowed to cool down. As an aspect of this invention this un-hydrolyzed product mixture can be isolated as a liquid or gel or a solid in a suitable manner. Alternatively, the reaction product mixture can be hydrolyzed, via a number of methods, to prepare a solution of the hydrolyzed product mixture in water. The hydrolysis of the alkoxysilane groups in the component G results in the formation of the corresponding alcohol (e.g. methanol, ethanol etc,. depending on the akloxysilane used in the synthesis).
It is common to those skilled in the art to conduct the ring opening of an epoxide with a reactive amine in a batch mode (where the components are mixed together), heated to an initiation temperature above room temperature (e.g. 50-65°C) with the reaction temperatures allowed to reach as high as 125 to 180°C. This can cause internal cross-linking and side reactions to occur - which is often desired in the resin manufacturing processes.
The reference to resin manufacturing processes is to polymers which, as noted above at [59], the specification contrasts with the small molecules of the invention. The specification continues (page 34 line 25 – page 35 line 6):
However, at least one embodiment involves the use of a continuous or semi-batch synthesis method which provides several advantages over the batch process commonly used. This involves adding only a portion of the G and E constituents either together or sequentially or individually in a form of a slow feed to initiate the primary epoxide ring opening reaction, followed by the slow continuous feeding of the two constituents G and E (either together or separately and at the same time or sequentially). This method allows for a much better control over the overall reaction, the reaction temperature and provides a better overall yield of the active compounds in the product also avoiding the undesired side reactions. (see FIG. 2).
(Emphasis added)
Figure 2 is described earlier in the specification as “a graph illustrating a semi-batch reaction profile of the invention” and is as follows:
The specification continues (page 35 lines 7 – 16):
In at least one embodiment the synthesis reaction utilizes constituent G = 3- glycidoxypropyltrimethoxysilane. Prolonged exposure at high temperatures above 120°C can result in internal coupling reactions and multiple substitutions with the reactive amine groups such as hexane diamine or ethylene diamine. The resulting un-hydrolyzed reaction products will turn to a gel over shorter time period accompanied by an increase in the reaction product viscosity. Use of a semi-batch process or continuous or separate or slow sequential or individual or combined feed of the E and G epoxides into the reaction mixture allows better control of the reaction temperature thereby reducing the amount of methanol that is generated and isolated during the reaction. Furthermore the reaction mixture has a lower viscosity and accounts for fewer undesired side reactions (see Table l).
Example 2 is entitled “Examples of the relative DSP scale inhibition of various A:G:E small molecules formed during the synthesis reaction disclosed above”. The example begins (page 36 lines 1 – 9):
The scale inhibition performance of the small molecule is typically performed as follows:
l) A small amount of sodium silicate (0.25 - 1.5 g/L as SiO2) is added to a Bayer refinery spent liquor at room temperature to raise the silica concentration in the liquor.
2) Portions of this liquor sample are dosed with varying amounts of the new scale inhibitor compound or mixture.
3) Dosed and untreated (or Blank) liquor samples are subjected to elevated temperatures between 96 to 105°C for 4 to 6 hours.
4) Samples are then cooled and the amount of DSP scale formed in each of the dosed liquors samples are measured and compared to that formed in the untreated or blank samples.
Table 2 then shows the relative DSP scale inhibition for several A + G + E synthesized mixtures “using the synthesis reaction disclosed earlier”. The five synthesized mixtures are the result of the reaction of five different amines with glycidoxypropyltrimethoxysilane (the G component) and 2-ethylhexyl glycidyl ether (the E component):
The specification states, at page 37 line 6, that the term “comprising” means “including, but not limited to”.
4.2 The claims
Claim 1 provides (with integer numbers added):
(1) A method for the reduction of aluminosilicate containing scale in a Bayer process comprising the step of:
(2) adding to the Bayer process stream an aluminosilicate scale inhibiting amount of a composition comprising at least one small molecule
(3) selected from the group consisting of compounds (I) through (XIII), (XV) through (XXX), (XXXII) through (XLVII), (LIII) through (LVIII) and (LX)
(4) within a product mixture formed from the reaction of a) hexane diamine, ethylene diamine or 1-amino-2-propanol; b) 3-glycidoxypropyltrimethoxysilane; and c) 2-ethylhexyl glycidyl ether:
[drawn thereafter are the 46 further compounds referred to in integer (3)]
It will be seen that integer (4) identifies three constituent reactants from which the product mixture is to be formed:
(1)Hexane diamine (H), ethylene diamine (ED) or 1-amino-2-propanol (AP) being amines (abbreviated conveniently to A (or amine) which can mean any one of H, ED or AP);
(2)3-glycidoxypropyltrimethoxysilane (GPS) being an amine-reactive compound that has a silane (Si(OR)3) group; and
(3)2-ethylhexyl glycidyl ether (E) being an amine-reactive hydrophobic hydrocarbon.
Claims 2 – 16 are as follows:
2. A method according to claim 1, wherein the small molecule is selected from the group consisting of compounds (I) through (XIII), (XV) through (XXX) and (XXXII) through (XLII).
3. A method according to claim 1, wherein the small molecule is selected from the group consisting of compounds (LIII) through (LVIII).
4. A method according to claim 1, wherein the small molecule is selected from the group consisting of compounds (LIII), (LIV) and (LV).
5. A method according to claim 1, wherein the small molecule is selected from the group consisting of compounds (I) through (IX).
6. A method according to claim 1, wherein the small molecule is selected from the group consisting of compounds (X) through (XIII) and (XV) through (XIX).
7. A method according to claim 1, wherein the small molecule is selected from the group consisting of compounds (XX) through (XXII).
8. A method according to claim 1, wherein the small molecule is selected from the group consisting of compounds (XXIII) through (XXIX).
9. A method according to claim 1, wherein the small molecule is selected from the group consisting of compounds (XXX) and (XXXII).
10. A method according to claim 1, wherein the small molecule is selected from the group consisting of compounds (XXXIII) though (XLII).
11. A method according to claim 1, wherein the small molecule is selected from the group consisting of compounds (LVI) through (LVIII) and (LX).
12. A method according to claim 1, wherein the small molecule is present in a solution in an amount ranging from about 0.01 to about 100 wt%.
13. A method according to claim 1, wherein the composition further comprises an item selected from the list consisting of: amines, activators, antifoaming agents, co-absorbents, corrosion inhibitors, coloring agents, and any combination thereof.
14. A method according to claim 1, wherein the composition comprises a solvent, the solvent is selected from the group consisting of: water, alcohols, polyols, other industrial solvents, organic solvents, and any combination thereof.
15. A method according to claim 1, wherein the composition is isolated from a synthesis reaction in the form of a solid, precipitate, gel, salt and/or crystalline material in pHs ranging from 0 to 14.
16. A method according to claim 1, wherein the composition is hydrolyzed prior to being added to the Bayer process.
4.3 The chemistry of the claims
At this point it is convenient to refer again to the primer, which sets out some of the background organic chemistry relevant to an understanding of the claims.
The drawn small molecule structures in claim 1 consist of 47 of the 65 structures depicted in the body of the specification. The primer records that they can be placed conceptually into five groups, examples of which are set out below, where the amine (or A) component is circled in green, the GPS component is circled in red and the ether (or E) component, if present, is circled in blue. Those five groups are:
(1)hexane diamine (i.e. the A component), with 3-glycidoxypropyltrimethoxysilane (GPS) and 2-ethylhexylglycidyl ether (E), (noting that some molecules do not include an E component, and the trimethoxysilane (Si(OCH3)3 groups on the molecules have been hydrolysed to Si(OH)3);
(2)ethylene diamine (i.e. the A component), with GPS and E, (noting that some molecules do not include an E component, and the trimethoxysilane (Si(OCH3)3 groups on the molecules have been hydrolysed to Si(OH)3);
(3)ethylene diamine (i.e. the A component), with GPS and E, (noting that some molecules do not include an E component, and the trimethoxysilane (Si(OCH3)3) groups on the molecules have not been hydrolysed);
(4)1-amino-2-propanol (i.e. the A component), with GPS and E, (noting that some molecules do not include an E component, and the trimethoxysilane (Si(OCH3)3 groups on the molecules have been hydrolysed to Si(OH)3); and
(5)1-amino-2-propanol (i.e. the A component), with GPS and E, (noting that some molecules do not include an E component, and the trimethoxysilane (Si(OCH3)3) groups on the molecules have not been hydrolysed).
The small molecules identified are amine-based (each must have an A component) which must also have at least one silane group (from the GPS component) and may optionally also have one or more non-silane hydrophobic group(s) (the E component). This is apparent from the fact that the structures identified in integer 3 of claim 1 include a number of structures with no E group at all, and some where E is present.
Each of the small molecules in the claims of the patent application are relatively simple molecules. The structures are formed from the A, GPS and E reactants by a reaction between the epoxide ring at the end of GPS or E (both have the same single epoxide ring at one end) and an amine group of the A reactant. The amine nitrogen (N) attaches to a carbon atom adjacent the oxygen (O) of the epoxide ring, causing the epoxide ring to open. A hydrogen (H) from the amine is transferred to the oxygen which was originally part of the epoxide ring to form a hydroxyl (OH) group. All of the claimed structures are formed by way of this reaction, with different permutations of GPS and E attaching to the relevant amine.
This epoxide-amine reaction is exothermic, due to the epoxide ring opening during the reaction, which releases energy in the form of heat, and the resulting lower energy state when the carbon atom in the epoxide ring has bound to the amine nitrogen (N), substituting for one of the hydrogens (H) previously bound to the amine nitrogen (N).
Each primary amine group (NH2) on hexanediamine, ethylene diamine and 1-amino-2-propanol, before reacting, has two hydrogen (H) groups and is therefore able to react with two epoxide reactants. The compounds shown in claim 1 show different combinations and degrees of epoxide-substitution on the amine. Hexanediamine and ethylene diamine are both diamines, having two primary amine groups (one at each end of their carbon chain) and can react with four epoxide groups. 1-Amino-2-propanol is a monoamine with only one primary amine group (at the end of the carbon chain) and can react with two epoxide groups.
When reference is made to compounds as being hydrolysed or not hydrolysed, this refers to the GPS component of the molecules, which in some of the structures appears as a trimethoxysilane (Si(OCH3)3) and in others appears hydrolysed as a trihydroxysilane (Si(OH)3).
4.4 The person skilled in the art
The subject matter of the patent application is chemistry, particularly organic chemistry as it relates to the synthesis of reaction product mixtures containing the small molecules claimed and the chemistry of their application to the inhibition of silica scale formation in Bayer liquor. The disclosure of the specification focusses on the use of synthesised small molecule product mixtures in the Bayer process to reduce the formation of scale.
There is no dispute that each of the experts called to give evidence fall within the class of persons with a practical interest in the subject matter of the invention.
4.5 Some agreed propositions regarding the disclosure of the specification
The experts in their joint report agreed that the product mixtures described and claimed in the patent application are formed from the reaction of one of the specified amines (H, ED or AP) and the amine-reactive silane containing molecule (GPS) and the amine-reactive hydrophobic hydrocarbon (E). In their joint report they say:
17. [The application] provides structural drawings which are conceptual representations of the silane-containing products that would be formed through amine-epoxide ring opening reactions and expected to be present in the resulting product mixtures. Why these silane compounds were chosen to be illustrated instead of others that would inevitably be present in the complex reaction product mixtures, or their proportions or individual effectiveness, is not disclosed.
18. Claim 1 states that a product mixture must contain at least one of the small molecules listed, and that the product mixture is added to the Bayer stream in an inhibiting amount. Claims 2-11 are dependent on claim 1 limiting [sic] to specific subsets of the possible structures. The scale-inhibiting action of a product mixture will inevitably be attributable to the aggregate influences of all of the silane compounds present in the complex mixture, rather than any specific individual compound which may be present in the mixture in only a small amount.
19. Dependent Claims 12-15 relate to how the product may be formulated.
20. Dependent Claim 16 allows for the product to be hydrolysed prior to being added to the Bayer process.
In their oral evidence there was little difference between the experts as to the complexity of the product mixtures. When one of the three different forms of amine is reacted with GPS and E, the consequent reaction mixture will contain an extremely large variety of small molecules and will include all of the small molecules listed in claim 1, subject only to being limited by those molecules containing the same form of amine backbone that was added to the mixture. Professor Easton explained why so many different small molecules would be formed, despite the input being simply three reactants:
PROF EASTON: Because each reaction has at least four possibilities. Each time the amine reacts with an epoxide, and each time the substitutions are sequential, so the second substitution, it’s at least four more; the third one, it’s at least four more. So if you look at the compound like compound 1 or 2, I could probably expect to produce a reaction mixture that would have 10 per cent – something like that – of those molecules in there with a whole lot of other molecules from subsequent reactions, but once I get up to a compound that’s tetrasubstituted like compound 8 or 9, because of the number of possible reactions, there’s literally thousands of possibilities...
They agree that there was no known way to avoid the production of a complex product mixture including within it all of the other compounds specified within the claim.
The experts also agree that the examples in the patent application disclose methods for making the product mixtures identified in the laboratory, and that beyond general guidance, not enough detail is provided in the specification to enable the examples to be replicated. They add that the focus of the synthesis method disclosed is a semi-batch process in which reactants are added gradually. They agree that the patent application states that the semi-batch process allows for much better control of the overall reaction and the reaction temperature and provides a better overall yield of the active compounds in the products, also avoiding undesired side reactions. They agree that whilst the patent application discloses an empirical laboratory method for testing the scale-inhibiting effectiveness of the product mixtures “[n]ot enough detail is provided to enable the examples to be replicated”.
5. CLAIM CONSTRUCTION
5.1 Introduction
It is appropriate to address two issues of claim construction before turning to the grounds of invalidity advanced by Cytec. They may be summarised as follows:
(1)whether the claims encompass an embodiment wherein the composition added to the Bayer process stream comprises only one type of small molecule selected from the group of compounds identified in claim 1 (the single small molecule argument); and
(2)whether the claims include any limitations as to the synthesis method to be employed.
The principles of claim construction are not in dispute and are conveniently set out in the decision of the Full Court in Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90; 222 ALR 155 (Hill, Finn and Gyles JJ):
[67] There is no real dispute between the parties as to the principles of construction to be applied in this matter although there is some difference in emphasis. It suffices for present purposes to refer to the following:
(i) the proper construction of a specification is a matter of law: Décor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400;
(ii) a patent specification should be given a purposive, not a purely literal, construction: Flexible Steel Lacing Company v Beltreco Ltd (2000) 49 IPR 331 at [81]; and it is not to be read in the abstract but is to be construed in the light of the common general knowledge and the art before the priority date: Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1 at [24];
(iii) the words used in a specification are to be given the meaning which the normal person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification: Décor Corp Pty Ltd at 391;
(iv) while the claims are to be construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification, although terms in the claim which are unclear may be defined by reference to the body of the specification: Kimberley-Clark v Arico at [15]; Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 610; Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 478; the body of a specification cannot be used to change a clear claim for one subject matter into a claim for another and different subject matter: Electric & Musical Industries Ltd v Lissen Ltd [1938] 56 RPC 23 at 39;
(v) experts can give evidence on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings to be given by skilled addressees to words which might otherwise bear their ordinary meaning: Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 at 485-486; the Court is to place itself in the position of some person acquainted with the surrounding circumstances as to the state of the art and manufacture at the time (Kimberley-Clark v Arico at [24]); and
(vi) it is for the Court, not for any witness however expert, to construe the specification; Sartas No 1 Pty Ltd, at 485–486.
5.2 The single small molecule argument
5.2.1The submissions
Cytec submits that claim 1 encompasses:
(a)embodiments where the listed small molecules are contained “within” a complex reaction product mixture; in other words the “composition” that is added to the Bayer process is the complex reaction product mixture;
(b)embodiments where the reaction product mixture composition contains a single type of small molecule, being one of those small molecules identified in integer (3); and
(c)embodiments where the listed small molecules have been “selected from...within a product mixture” by isolating them from the complex product mixture within which they were formed.
Cytec draws support for (b) and (c) from the language of claim 1 and also from claim 12 which claims a method according to claim 1 wherein the small molecule is present in a solution in an amount ranging from about 0.01 to about 100% by weight. Read in the context of its dependency on claim 1, Cytec submits that claim 12 further demonstrates that within claim 1 is a composition where there is no product mixture, but rather consists of 100% of one of the selected small molecule structures.
Nalco accepts that claim 1 includes within its scope the result of the reaction of A, GPS and E within (a), being a product mixture which will include at least one, and most likely all, of the claimed small molecules (depending on which of the amine reactants is used) in various proportions. It submits that the experts agree that in practice the reaction of those three reactants will almost inevitably form each of the claimed small molecules, corresponding to the selection within A (whether H, ED or AP), in various proportions within the product mixture. It submits that Mr Bellwood and Professor Easton understood that the formation of any of the claimed small molecules will occur randomly. As at the priority date, three of the experts thought it was possible but statistically unlikely that only one of the claimed molecules and not other of the claimed molecules would be within a product mixture formed by the reaction of A, GPS and E.
As I note further below, Nalco also accepts that a product mixture within the claim may theoretically include a single type of small molecule, being one of those identified in integer (3), within the construction (b). However, it submits that this would be a random happenstance that the claim does not “require”.
Nalco, contests that the claim includes any embodiment wherein a single type of small molecule is isolated from the product mixture within construction (c).
Nalco submits that the dependent claims do not detract from its construction. It submits that the reference to “the small molecule” in claims 2 to 12 refer to the “at least one small molecule” within the product mixture formed from the reaction of A + GPS + E and that this term should be given the same meaning as in claim 1. With respect to claim 12, Nalco submits that it concerns the dilution of the product mixture and therefore the small molecules within it, and does not claim a product mixture having only one of the claimed small molecules and not others.
Nalco submits that by defining the scope of the claims by reference to particular small molecules that will inevitably form from the reaction of A + GPS + E, it is plain that the product mixture must be the result of “the reaction” disclosed in the patent application. This, it submits, demonstrates that the selection of the small molecules in claim 1 is not arbitrary. Nalco also submits that the product mixture formed from the reaction of A + GPS + E need not contain only the small molecules identified in the claims, and that this is supported by the expert evidence that other compounds formed from the reaction will inevitably be present in the product mixture.
5.2.2Consideration
The scientific evidence concerning claim 1 is not substantially in dispute. The compounds illustrated in claim 1 would conceptually be derived as a product of the three identified reactants (depending on the selection of the amine), but the patent application does not describe how the specific small molecules could be separated from that product mixture. The patent application also does not provide any explanation as to why the specifically drawn compounds, as opposed to other molecules which would also inevitably be contained in the product mixture made from the reactants, have been specifically identified as effective in reducing aluminosilicate scale when added to the Bayer process. Example 1 in the patent application describes general methods of producing the synthesis reaction of A + GPS + E and recites a preference for a semi-batch method. Example 2 identifies various different amines used and indicates that hexane diamine is the most preferred of the amines to use in the synthesis reaction.
The compounds illustrated in claim 1 are all derived from the same silicon-containing moiety (GPS) and hydrophobe (E), with the only variation being the amine component, which may be in the form of H, ED or AP.
The 47 specifically illustrated compounds in the claim are likely to be present as the product of the reaction identified in integer (4) and would be within a very complex mixture, which would include small molecules and polymers. The person skilled in the art reading the specification would attribute the aluminosilicate scale inhibiting effect to the combination of all of the silane compounds in the mixture formed from A + GPS + E, rather than any specific individual small molecule which would be present in the mixture in small amounts.
The evidence indicates that it is not possible to say, based on the disclosure of the specification, whether any particular compound in the mixture is responsible for all, most, or only some of the effect. In his affidavit, Mr Bellwood provided a slight qualification to this general statement by making the point that the listed compounds in the patent application did not include compounds containing only A and E reactants (i.e. compounds without the silane group GPS) because such compounds would not be active in DSP scale inhibition or reduction.
The reason for the complexity of the mixture was discussed in the evidence and concerns the number of potential primary and later reactions within the mixture as the explanation given by Professor Easton set out in [87] above indicates.
Against this immediate background and the common general knowledge, I turn to consider the language of claim.
For the reasons that follow, in my view, the language of claim 1 encompasses a composition that is made up of a single type of small molecule selected from the group identified within the product mixture formed from the reaction of A + GPS + E (within the construction propounded by Cytec in (b) above) as well as a composition that includes a complex mixture of many of the small molecules depicted in the claim as well as many other compounds (within (a) above). It is not apparent that the claim encompasses an embodiment that involves isolating a small molecule from the reaction product mixture within the construction propounded by Cytec in (c).
The claim refers to adding to the Bayer process stream an “aluminosilicate scale inhibiting amount of a composition comprising at least one small molecule selected from the group” consisting of 47 identified compounds. The word “comprising” is defined to mean “including, but not limited to” and the words “at least one small molecule” includes the selection of one molecule only. It is apparent from the breadth of the meaning of “including” that the entirety of the composition may be one type of small molecule or more than one such type. It is difficult to read the claim in a different way. The type of small molecule may be one or more selected from the group of nominated compounds that are “within a product mixture” that is “formed from the reaction of a) hexane diamine, ethylene diamine or 1-amino-2-propanol; b) 3-glycidoxypropyltrimethoxysilane; and c) 2-ethylhexyl glycidyl ether”.
I reject the submission that the words “selected from” refer to the selection of the three alternative amines, H, ED or AP. That is not a natural or common sense way to understand the words “selected from”; the verb “selected” applies to the compounds identified in the claim, not the amines identified in integer (4). Although the choice of either H, ED or AP as the amine “backbone” will influence which of the small molecule compounds identified in integer (3) may appear within the reaction product mixture, that choice does not account for the language of “comprising at least one small molecule”.
The result is that, properly construed, the claim includes within its scope both: (a) a complex reaction mixture, formed from the reaction of A + GPS + E, that includes within it many of the identified small molecules as well as many more compounds; and (b) a reaction mixture, formed from the reaction of A + GPS + E, that is made up of a single type of small molecule identified in the claim. The language of “comprising at least one small molecule” indicates that the claim covers the spectrum between these two possibilities.
Indeed, as I have noted, Nalco accepts that the scope of the claim includes a composition comprising a single type of the same small molecule. As Nalco put it in closing submissions:
MR COOKE: ...it’s impossible, your Honour, to be able to say, “I’m going to get this particular compound”. You can’t do it. And there’s no evidence that you could, and we don’t submit that you can. And with the…“at least one”, your Honour, right, what that’s dealing with is the fact that when there’s a random reaction, right – because you don’t – because all you’ve got control of is the reaction itself, and not the molecules which are formed from that reaction. But you know, as a matter of chemistry, the probabilities you’re going to get them, and we know, as a matter of chemistry, that you’re more likely – you’re most likely to get a proportion –differing proportions of each of those small molecules – three of the experts, as at the priority date, although they said it’s statistically unlikely that you would only get one of the claimed small molecules and not other of the claimed small molecules in the reaction within the product mixture, it was still a possibility....But the point is…just consider the situation where it didn’t have the words “at least one of the molecules” in there...Because it’s a random event, how could you be actually 100 per cent sure?...You can’t because you can’t control it....
HIS HONOUR: But the – I don’t think there was any disagreement that the - the probability of actually getting one was infinitesimally small, even if you set to one side Dr Power.
Mr COOKE: Yes
HIS HONOUR: So you’re saying the drafting was done for the purpose against that infinitesimally small prospect.
MR COOKE: Well – well, it – yes.
The reference to the small prospect that one would obtain only one type of small molecule in the composition arises from the expert evidence. As Mr Bellwood put it, the probability of a single small molecule emerging within the reaction mixture would be like trying to win the lottery in every country in the world with the same six numbers on the same weekend. Dr Power considered that the prospect of this occurring was an impossibility. Even so, it is apparent from the foregoing that Nalco does not dispute that claim 1 encompasses a single type of molecule forming the composition to be added to the Bayer process stream, but it submits that this is necessary for the patentee to have claim coverage against the infinitesimally unlikely event to which it refers.
In my view the Nalco concession is properly made. However, claim 1 is not to be understood as claiming only the infinitesimally small happenstance to which the evidence refers. The claim is not limited in scope as to how the single type of molecule becomes the result of the reaction product mixture. Claim 1 simply encompasses a circumstance where 100% of the reaction mixture formed from the reaction of A + GPS + E is composed of a single type of one of the identified small molecules. Put another way, the claim includes within its scope any circumstance where a single type of the small molecules identified in integer (3) emerges as the outcome of the product mixture, regardless of the conditions in which the reaction is conducted.
Fifthly, based on evidence given by Professor Easton, Cytec contended in closing submissions that the examples ought to have included, in relation to the semi-batch synthesis method used to produce the HGE product, the following details:
(1)the order and sequence of the addition of the reactants;
(2)the rate of addition (feed rate) and mixing of each of the reactants being added to the reaction;
(3)the amount and relative ratio of the reactants;
(4)the temperature controls used for the reaction; and
(5)the reaction time.
In dissecting the examples in this way, Cytec tends to distract attention from the correct approach. As noted, the invention disclosed and claimed is not to a method of industrial or laboratory synthesis of the identified small molecules but to the novel application of the reaction product mixture on an industrial scale in a Bayer process stream.
Sixthly, and further to the fifth point, the evidence adduced by Cytec does not serve to demonstrate that there is a relevant correlation between, on the one hand, laboratory test results of the type it alleges are omitted from the patent application and, on the other, industrial scale process development. Indeed, Professor Easton was not asked in his evidence in chief to address the utility of the information in the examples for a subsequent industrial application, which might have been more material to the present question. His evidence focussed upon whether he would be able to replicate the best results set out in the examples. It was upon this premise that the five omitted items of information now relied upon by Cytec are based. However, as I have noted, I am not satisfied that the laboratory experiments exemplified in the examples of the patent application would provide a useful proxy for industrial manufacture in any event.
Finally, I turn specifically to the five points made by Cytec set out above at [188].
The first of these (order and sequence of addition of reactants) is, as noted earlier, addressed in example 1. The evidence of the Bayer process experts was that in light of the disclosure in the specification, they would understand it to teach to add the amine to the reaction vessel first, then add a small amount of GPS + E to kick off the reaction, and then feed in GPS + E together to maintain the reaction. Although the language used in the example is not completely clear, I accept that this is how the person skilled in the art would understand the teaching.
In relation to the second (feed rate and mixing of reactants), the patent application discloses that using the semi-batch process is recommended as it enables the feed rate of the reactants to be controlled, which controls the exothermic reaction. For reasons I have explained in more detail above, the specific feed rate and mixing used for the HGE product is not material to the disclosure when it is applied on an industrial scale.
In relation to the third (the amount and relative ratio of the reactants), each of the Bayer process experts agreed that if seeking to implement the invention in an industrial setting they would commence with a 1:1:1 molar ratio of the reactants and test the reaction product mixture for efficacy. They would do this even if example 2 had provided specific or different molar ratios for the HGE product. I have noted above that Dr Audet and Mr Bellwood explained that they would do this because the molar ratios should be optimised for the particular Bayer liquor used in each refinery. I accept this evidence.
In relation to the fourth (the temperature controls used for the reaction), the patent application discloses: (a) that the epoxide ring opening reaction between the A reactant and the G and E reactants is initiated at a temperature of approximately 65-70°C; (b) prolonged exposure at high temperatures above 120°C is to be avoided so as to maximise the yield of the small molecules; (c) the temperature of the reaction must be controlled to avoid undesired side reactions and to provide a reaction mixture with lower viscosity (as exemplified by Table 1); (d) the semi-batch synthesis method is recommended as it enables the feed rate of the reactants to be controlled, limiting the rate of the exothermic reaction, and ensuring that the temperature is controlled within the optimal range of approximately 82-93°C (as exemplified by Figure 2).
In relation to the fifth (reaction time), the Bayer process experts agreed that the time it will take for the reaction to complete will differ depending on the amount of the reactants used, the temperature at which the reaction is performed, the production facility used, and the feed rates.
Having regard to the matters addressed above, in my view, Cytec has not demonstrated that the patent applicant has failed to disclose the best method known to it of performing the invention within s 40(2)(aa).
I should note that in cross-examination, Cytec suggested to Dr Audet that if he were to have been provided with a “recipe book” containing all of the details used to synthesise the HGE product as at the priority date, and he were asked by a commodity chemical company to develop the best possible Bayer process antiscalant product using the patent application, he would “take it without hesitation”, and indeed pay for it if he was short on time. Dr Audet accepted these propositions, qualifying his acceptance by pointing out that he would buy the recipe book if he wanted a “guaranteed solution”, because without the recipe book, he could not be so guaranteed.
Understandably, Cytec placed reliance on this evidence in its closing submissions. However, the difficulty with this exchange is that it appears to be inconsistent with Dr Audet’s more detailed and reasoned evidence that he would need to optimise the synthesis parameters of the reaction product mixture for industrial sized manufacture, as well as the individual Bayer liquor in each refinery in which the reaction product mixture is to be used. I do not think, by this evidence, Dr Audet intended to recant from his earlier views, and it was not suggested to him that he did. I take this evidence to indicate that such a recipe book could assist the skilled addressee in developing a reaction product mixture, on a laboratory scale, for the particular Bayer liquor used in example 2. However, this is not the invention claimed in the patent.
In a similar vein, Mr Bellwood accepted that whilst that is not an approach that he would take, having the recipe book would provide him with a “starting point” for the optimisation process that he would undertake in any event. Mr Bellwood accepted that having the recipe book would mean that he could make a reaction product mixture that had the scale reduction qualities of the HGE product. He also accepted that he could perform tests on other Bayer liquors to confirm the efficacy of the mixture in the liquor of those refineries. If satisfactory, he could take the product forward to plant testing and scaling up. By these answers Mr Bellwood accepted that having more information of this type could be useful. However, again, I am not satisfied that by this short passage of answers that Mr Bellwood should be understood to have retreated from the more reasoned explanations to which I have referred above about the distinction between the outcome of laboratory tests and the method ultimately likely to be used for industrial scale synthesis. Most scientists offered more information would accept it, but that fact does not of itself mean that there has been a failure to supply a best method.
Accordingly, the challenge advanced on the basis of s 40(2)(aa) of the Patents Act fails.
9. NOVELTY
9.1 Introduction
Cytec contends, as an alternative to its case based on the lack of clear and complete disclosure within s 40(2)(a) of the Patents Act, that WO 873 anticipates the claims of the patent application. It accepts that in order to succeed in this regard it must establish that:
(1)the “grace period” provision in s 24(1)(a) of the Patents Act does not apply;
(2)WO 873 anticipates the claims of the patent application; and
(3)WO 873 meets the requirements of the definition of “whole of contents” novelty, as set out in the definition of “prior art base”.
Cytec accepts that if it succeeds in its contention that the claims of the patent application lack sufficient description within s 40(2)(a) because of the presence of the words “at least one small molecule” in claim 1, then it cannot succeed in establishing the whole of contents requirements necessary under s 7(1)(c) of the Patents Act (because the notional claims proposed by Cytec also used the words “at least one small molecule”), with the consequence that its novelty argument must fail. That eventuality has arisen. Furthermore, for the reasons set out below, I conclude that the grace period provision does apply, with the consequence that the lack of novelty argument must fail on that basis also. As a consequence, I have not considered the disclosure of WO 873 or the “whole of contents” requirement (identified in (2) and (3) above) which Cytec would also have had to establish to succeed in its novelty challenge.
9.2 Does the “grace period” apply?
There is no dispute about the relevant facts underlying this argument:
(1)WO 873 claims a priority date of 25 September 2009;
(2)WO 873 was filed on 21 September 2010;
(3)WO 873 was published on 31 March 2011;
(4)The patent application claims a priority date of 25 February 2011; and
(5)The patent application was filed on 7 February 2012.
By s 18(1)(b)(i) of the Patents Act, an invention so far as claimed in any claim will be taken to be novel when compared with the prior art base as it existed before the priority date of that claim unless it is not novel in the light of any one of three kinds of information specified in s 7(1), each of which must be considered separately, being:
(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;
(c)prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1.
Sub-paragraph (b)(ii) of the dictionary definition in the Patents Act provides a definition of “prior art base” that is sometimes referred to as “whole of contents” novelty:
prior art base means:
...
(b) in relation to deciding whether an invention is or is not novel:
...
(ii) information contained in a published specification filed in respect of a complete application where:
(A) if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
(B) the specification was published on or after the priority date of the claim under consideration; and
(C) the information was contained in the specification on its filing date.
Cytec contends that WO 873 is a prior art document to which s 7(1)(c) applies on the basis that it has been published, that it contains information filed in respect of a complete specification that would have a priority date earlier than the claims of the patent application (within (A)), that the WO 873 specification was published on 31 March 2011 which was after the priority date of the application being 25 February 2011 (within (B)) and the information relied upon was in the specification of WO 873 on its filing date, being 21 September 2010 (within (C)).
There is no dispute that the relevant form of s 24 and regs 2.2(1A) and 2.3(1A) is as they stood prior to the amendments made in the RTB Act. This is because the relevant “information” (being the publication of WO 873) was made available before 15 April 2013: see RTB Act s 3 and schedule 6, items 32, 33 and 133(4); Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1) (Cth) reg 4 and schedule 6 item 7; Regulations reg 23.36(4) item 3.
Section 24(1)(a) provided:
24 Validity not affected by certain publication or use
(1) For the purpose of deciding whether an invention is novel or involves an inventive step or an innovative step, the person making the decision must disregard:
(a) any information made publicly available, through any publication or use of the invention in the prescribed circumstances, by or with the consent of the nominated person or patentee, or the predecessor in title of the nominated person or patentee…
…
but only if a patent application for the invention is made within the prescribed period.
Regulation 2.2 was entitled “Publication or use: prescribed circumstances” and reg 2.2(1A) provided:
For paragraph 24 (1) (a) of the Act, the circumstance that there was a publication or use of the invention within 12 months before the filing date of the complete application, is a prescribed circumstance.
Regulation 2.3 was entitled “Publication or use: prescribed periods” and reg 2.3(1A) provided:
For information of the kind referred to in paragraph 24 (1) (a) of the Act, if the applicant relies on the circumstance in sub-regulation 2.2 (1A), the prescribed period is the period of 12 months after the information was first made publicly available.
Nalco submits that a straightforward application of s 24(1)(a) requires that WO 873 be disregarded from consideration as a prior art document because it is “information made publicly available, through....publication...in the prescribed circumstances, by or with the consent of the...patentee”. Nalco submits that WO 873 satisfies the “prescribed circumstances” because it is “a publication...within 12 months before the filing date of the complete application” in accordance with regs 2.2(1A) and 2.3(1A).
Cytec submits that the grace period afforded by s 24(1)(a) and the Regulations has no application because the words made publicly available in that section serve to limit its operation only to the types of prior art information identified in s 7(1)(a) and (b), but not s 7(1)(c). Cytec submits that ss 7(1) and 24(1)(a) must be read together, given that the latter operates to limit the scope of the former. The term “publicly available” is well understood to mean information being accessible to the public, yet documents available by reference to the whole of contents provision in s 7(1)(c) are not made “publicly available” or even accessible to the public, and s 24(1)(a) must be construed accordingly.
Cytec submits that its construction would result in a rule of general application for whole of contents publications which would reflect their special status as unpublished patent filings of the same patentee. It submits that the purpose of the grace period under s 24(1)(a) is generally intended to protect inventors who inadvertently disclose their invention before seeking protection and to encourage the sharing of research results between inventors, thereby allowing researchers and academics to publish and discuss results in journals and peer reviewed literature, without putting at risk any patentable subject matter that is disclosed. Furthermore, the legislature has separately provided in s 79B for inventors to be able to make multiple successive divisional applications in relation to an invention that is disclosed in an earlier filing. By providing that divisional applications are entitled to the same priority date as the parent application (reg 3.13D) the risk of self-anticipation is avoided by this mechanism, and abuse is also avoided by confining the later patent to the same term (ss 65, 67 and reg 6.3). Cytec submits that if s 24(1)(a) is construed as applying to documents within s 7(1)(c), this would make a simple filing strategy available to patentees who might, instead of filing a divisional application under s 79B, file a provisional application for a second, later in time, patent on the same date that the patentee files the complete specification for the first application. In so doing, the grace period would apply to the earlier filed documents and the second application will enjoy a patent term that is not tied to that of the first application, thereby benefitting from a de facto extension of term.
Cytec also contends that the Patents Act 1952 (Cth) provided no exemption for inventors who engaged in prior claiming, and the whole of contents provisions were introduced as an extension of that concept. Had the legislature intended to depart from the position that self-disclosure exemptions did not apply to the patentee’s own earlier patent filings then, Cytec submits, one might have expected that clear language in the legislative scheme would have made that clear. Further, Cytec submit that had this been the intention of Parliament, an express statement to that effect might have been made in the extrinsic materials.
Finally, Cytec submits that there is a difficulty construing s 24(1)(a) by reference to anything in the Regulations, or by reference to the decision of the Full Court in Mont Adventure Equipment Pty Ltd v Phoenix Leisure Group Pty Ltd [2009] FCAFC 84; 176 FCR 575 as the Court there was considering the proper construction of the Regulations and, in any event, s 24(1)(a) was enacted over a decade before the Regulations upon which reliance is now placed and it is difficult to see a logical means by which the latter can assist in the construction of the former.
Despite the care with which Cytec’s submissions were put, I am unable to accept them.
Section 24(1)(a) states, in plain terms, that for the purposes of deciding whether an invention is (relevantly) novel, the person making the decision must disregard “any information made publicly available, through any publication or use...” of the invention. That is to be understood by reference to the accepted meaning of “publicly available” and “publication”. The coincidence of the words “publicly available” in ss 7(1)(a) and (b) does not warrant a reading down of the meaning of those words in s 24(1)(a) as being applicable only to subsections 7(1)(a) and (b), and not to information that has been made publicly available as part of a disclosure that falls within s 7(1)(c). There is no doubt that information may be publicly available within the definition of prior art base identified by reference to s 7(1)(c).
So understood, s 24(1)(a) provides an exception to the prior art information that may be considered when assessing novelty for each of the kinds of prior art documents identified in s 7(1), regardless of whether they fall within subsections (a), (b) or (c). I am unable to glean from the language of s 24(1)(a), or the context in which it appears in the Patents Act, any means by which it may be said that Parliament intended that whole of contents documents be precluded from benefitting from the grace period provision.
By allowing for the Regulations to identify the prescribed circumstances and the prescribed period, it is apparent that Parliament intended for those circumstances and that period to be varied from time to time, all the while requiring that the information be of a type that has been made publicly available. In this context, it may be noted that reg 2.2(1A) provides that the relevant circumstance is the publication of the invention within 12 months of the filing date of the complete application. By tethering the prescribed circumstance to filing date, rather than the priority date, it is apparent that the legislature intended information of the type in s 7(1)(c) to be within the ambit of s 24(1)(a). That is because none of the prior art information referred to in ss 7(1)(a) or (b) is published after the priority date and before the filing date of the complete application. As Nalco submits, had the legislature intended only to exclude information of the kinds referred to in s 7(1)(a) and (b), then it could have used the priority date and not the filing date in the Regulations. Indeed, had Parliament intended to confine the operation of s 24(1)(a) to the kinds of information identified in ss 7(1)(a) and (b), then it could have done so in terms.
Whilst it may be accepted that one does not construe the language of s 24 by reference to the Regulations, it is apparent that the drafting of the Regulations has been done with the operative section in mind.
I do not accept that in so construing s 24(1)(a) the consequence is to thwart the aim to promote free discussion of inventions. Indeed, the construction that I have preferred no less promotes such free discussion than the construction propounded by Cytec.
Nor do I consider that the concern raised by Cytec – that patentees will, in effect, gain an additional year of the patent term by adopting the strategy to which Cytec refers in its submissions – is determinative. That submission somewhat oversimplifies the position. For instance, by filing the patent application a year later and not availing itself of divisional status under s 79B, the patent application loses the benefit of the earlier priority date, with the consequent adjustment of the common general knowledge and exposure to other prior art information.
Accordingly, in my view, the grace period provision applies to WO 873. There is no dispute that the result is that WO 873 is not information that may be taken into account in assessing novelty.
Accordingly, Cytec fails in its novelty challenge to the patent application.
10. DISPOSITION
For the reasons set out in more detail above, I have found that the grounds of opposition to the grant of all of the claims of the patent application based on lack of support within s 40(3) and lack of clear enough and complete enough disclosure within s 40(2)(a) succeed, but that the grounds based on lack of novelty within s 7(1) and failure to disclose the best method within s 40(2)(aa) fail. My preliminary view is that Cytec should have 70% of its costs of the proceedings, which allows for its success in the appeal, but also for its failure in respect of some of the grounds of opposition.
The parties should confer and supply to my chambers, within 28 days, short minutes of orders giving effect to these reasons. Insofar as they are unable to agree to the terms of the orders (including as to costs), the areas of disagreement should be set out in mark-up. The proceedings will be listed for case management at 9.30am on 13 October 2021 to determine what further steps, if any, are required.
I certify that the preceding two hundred and twenty-seven (227) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Burley. Associate:
Dated: 19 August 2021
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