Cytec Industries Inc. v Nalco Company
[2018] APO 4
•16 January 2018
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Cytec Industries Inc. v Nalco Company [2018] APO 4
Patent Application: 2012220990
Title:Reducing aluminosilicate scale in the Bayer process
Patent Applicant: Nalco Company
Opponent: Cytec Industries Inc.
Delegate: Dr D.A.S. Beck
Decision Date: 16 January 2018
Hearing Date: 19 October 2017 in Sydney
Catchwords: PATENTS - opposition under section 104 – allowability under sections 102(1) and 102(2) considered – as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the complete specification and abstract as filed – as a result of the amendment, specification does not provide a clear enough and complete enough disclosure of all things that fall within the scope of the claims – as a result of the amendment, claims lack support insofar as they embrace isolated compounds in the absence of the other components of the complex mixtures in which their production was enabled – opposition successful – amendment refused – costs awarded against the applicant.
Representation: Patent attorney for the applicant: Dr Gareth Dixon, Shelston IP
Patent attorney for the opponent: Dr Linda Govenlock, Allens Patent and Trademark Attorneys
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2012220990
Title:Reducing aluminosilicate scale in the Bayer process
Patent Applicant: Nalco Company
Date of Decision: 16 January 2018
DECISION
The amendment is refused. Costs are awarded against the applicant.
REASONS FOR DECISION
The present opposition is governed by the Patents Act 1990 (the Act) as amended by the
Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act).
Amendments to sections 40 and 102 of the Act apply to the present case as a consequence of
Schedule 1, items 55(1)(e) and 55(9)(e) of the Raising the Bar Act – the applicant had not asked
for examination before 15 April 2013 (the request for examination was filed on 21 August
2013).Background
Patent application 2012220990 (the application) was filed by Nalco Company (the applicant) on 7 February 2012 under the provisions of the PCT, claiming an earliest priority date of 25 February 2011. The application was accepted on 1 May 2015, and its acceptance published in the Official Journal on 21 May 2015.
Cytec Industries (the opponent) filed a Notice of Opposition to grant of a patent under section 59 of the Act on 21 August 2015 and a statement of grounds and particulars (SGP) on 23 November 2015. Evidence in support and answer in the section 59 opposition was completed by 25 May 2016.
On 25 May 2016, the applicant filed a request to amend the specification under section 104 (the amendments). On 15 June 2016, pursuant to regulation 5.22 the opponent requested a direction from the Commissioner for a stay of the section 59 opposition on the grounds that the status of the amendments should be settled before the opponent is required to file their evidence in reply in regards to the section 59 matter.
On 17 June 2016 an examiner’s report was issued, objecting to the amendments under section 102(2)(a) on the grounds that several of the proposed claims would claim matter which would not in substance fall within the scope of the claims of the specification before amendment. The applicant filed a response to the examiner’s report on 22 June 2016.
A delegate of the Commissioner of Patents directed the stay in the section 59 proceedings on 28 June 2016. The examiner allowed the amendments on 1 July 2016, and on 14 September 2016 the opponent filed a notice of opposition to the amendments pursuant to section 104(4) of the Act and regulation 5.10(1) of the Patents Regulations 1991 (the regulations). This decision is in relation to the section 104(4) opposition (the opposition) to the amendments.
The SGP for the opposition was filed on 14 October 2016. Evidence in support, answer and reply for the opposition was completed by 24 April 2017.
Evidence in support consists of a first declaration by Professor Christopher John Easton and exhibits CJE-A1 to CJE-A9 annexed thereto. Evidence in answer consists of a declaration by Dr John David Kildea and exhibits JDK-1a and JDK-2a annexed thereto. Evidence in reply consists of a second declaration by Professor Christopher John Easton and exhibit CJE-A10 annexed thereto, and a declaration by Dr Roderick Glyn Ryles and exhibits RGR-A1 to RGR-A7 annexed thereto. I will refer to the relevant parts of the evidence where appropriate.
A request to file a further declaration for consideration under regulation 5.23 was filed by the applicant on 21 June 2017, on the grounds that the applicant’s witness, Dr Kildea, had not been allowed an opportunity to address the declaration of Dr Ryles, filed by the opponent in reply. On 4 July 2017, a delegate refused the regulation 5.23 request, finding that the further declaration of Dr Kildea which the applicant sought to be included in evidence was not likely to change the outcome of the opposition in a significant way.
In their written submissions in preparation for the hearing, the applicant submitted (at paragraph [12]) that because the delegate refused the regulation 5.23 request in relation to allowing the further declaration of Dr Kildea responsive to the declaration of Dr Ryles, it therefore follows that nothing in Dr Ryles’ declaration was likely to be determinative of the present opposition.
In and of itself this is not a valid conclusion to reach. The question of whether or not Dr Ryles’ declaration contains any determinative matter will be borne out by this decision.
A hearing was held on 19 October 2017 in Sydney to decide the opposition. The applicant was represented by Dr Gareth Dixon, assisted by Dr Jessica Chadbourne (from Shelston IP). The opponent was represented by Dr Linda Govenlock, assisted by Dr Claire Gregg (from Allens Patent and Trademark Attorneys).
The Law
This opposition is pursuant to subsection 104(4) of the Act, which states:
“The Minister or any other person may, subject to and in accordance with the regulations, oppose allowing an amendment.”
The provision setting out the requirements for opposition is subregulation 5.10(1), which states:
(1) For subsection 104(4) of the Act, a person opposes a request for leave to amend a filed document by filing a notice of opposition, in the approved form, within 2 months from the day the notice of the granting of leave to amend is published under subregulation 10.5(2).
The relevant provisions of the Act in this matter are those of subsections 102(1) and 102(2), which are set out below:
(1)An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together:
(a) the complete specification as filed;
(b) other prescribed documents (if any).
(2)An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2) or (3).
The ‘other prescribed documents’ for the purpose of paragraph 102(1)(b) are defined in regulation 10.2A which states:
For paragraph 102(1)(b) of the Act, the following documents are prescribed:
(a) an abstract that was filed with the complete specification;
(b) a missing part or element of a complete specification that was incorporated into the specification, in accordance with regulation 3.5A or Rule 20.5 or 20.6 of the PCT;
(c) an amendment that has been made to the complete specification after filing, for the purpose of:
(i) correcting a clerical error or obvious mistake; or
(ii) complying with paragraph 6(c) of the Act.
In the present case the only ‘other prescribed document’ is the abstract that was filed with the complete specification.
The ‘relevant time’ for the purpose of ss 102(2)(a)&(b) is after the specification has been accepted[1]. Subsections 40(2) and 40(3) of the Act as they apply to the present case are set out below:
[1] Subsection 102(2A) of the Act.
(2)A complete specification must:
(a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; and
(aa) disclose the best method known to the applicant of performing the invention; and
(b) where it relates to an application for a standard patent—end with a claim or claims defining the invention; and
(c) where it relates to an application for an innovation patent—end with at least one and no more than 5 claims defining the invention.
(3)The claim or claims must be clear and succinct and supported by matter disclosed in the specification.
The standard of proof that applies to oppositions under s104(4) for cases proceeding under the Raising the Bar provisions has not been expressly stated in the Act, however it is a logical inference that the standard required is the balance of probabilities[2] (consistent with the amendment to section 60(3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists), and it is the opponent who carries the onus of proof.
[2] CSR Building Products Limited v United States Gypsum Company [2016] APO 41 at [18]
Each of the grounds of section 102 to be considered in this decision are qualified by the preamble that an amendment is not allowable “if… as a result of the amendment…” Consequently, in each instance, attention must be directed and confined to the effect of the amendment proposed.[3]
[3] Ibid, at [21] to [25]
The specification and amendments
The specification is titled “Reducing aluminosilicate scale in the Bayer process”. Relevant to the claimed subject matter, the invention is described as relating to “compositions of matter and methods of using them to treat scale in various industrial process streams, in particular certain silane based small molecules that have been found to be particularly effective in treating aluminosilicate scale in a Bayer process stream.”[4]
[4] Specification as filed, page 1, lines 8 to 11.
The accepted specification contained 22 claims. The proposed amendments reduce this to 19 claims. The marked up version of the accepted claims as proposed to be amended, filed by the applicant on 25 May 2016, is attached to this decision as Annexe A.
The claims at acceptance included independent claim 1, directed to a method for reducing aluminosilicate scale in a Bayer process comprising adding to the Bayer process stream an aluminosilicate scale inhibiting amount of a composition comprising at least one small molecule, selected from a broad class of small molecules defined via a generic “Markush” style formula.
Claims 4 to 13 at acceptance were all appended to claim 1, and are directed to the same method, wherein said small molecule is selected from a list of specific molecules, defined via their individual structures and denoted compounds (I) to (LXV).
The claims as proposed to be amended deleted the independent Markush claim, and within new claim 1 provided a list of specific small molecules defined by their chemical structure (corresponding to claims 4 to 13 at acceptance). In addition, claim 1 as proposed to be amended added two molecules that had not previously been claimed, denoted compounds (LXVI) and (LXVII). These compounds are also claimed in dependent claims 3, 4 and 14 as proposed to be amended.
This entire opposition turns on the question of whether or not the addition of compounds (LXVI) and (LXVII) to the claims is an allowable amendment. Compounds (LXVI) and (LXVII) as they appear in the claims as proposed to be amended are reproduced below. Although these structures each depict an oxygen atom with only a single bond attached, I understand from the specification as a whole, and in particular the other compounds claimed, that what was intended by the applicant was the group “–OH”, and not “–O” as depicted:
The opposition
The opponent’s SGP identifies the grounds of opposition as:
a.Noncompliance of the amendments with subsection 102(1), in that as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the complete specification and abstract as filed.
b.Noncompliance of the amendments with paragraph 102(2)(a), in that as a result of the amendment, a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment.
c.Noncompliance of the amendments with paragraph 102(2)(b), in that as a result of the amendment, the specification would not comply with subsection 40(2)(a) because the specification would not disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.
d.Noncompliance of the amendments with paragraph 102(2)(b), in that as a result of the amendment, the specification would not comply with subsection 40(2)(aa) because the specification would not disclose the best method known to the applicant of performing the invention.
e.Noncompliance of the amendments with paragraph 102(2)(b), in that as a result of the amendment, the specification would not comply with subsection 40(3) because the claims would not be supported by the specification.
At the hearing the opponent pressed all grounds.
The person skilled in the art
It has long been established that many of the issues arising in an opposition are answered by viewing the patent through the eyes of the person skilled in the art:
“He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious.”
(Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 at [70])
However the skilled addressee is not a real person but an artificial construct that is used to analyse and interpret the patent, and there is a danger in trying to identify them as an actual person or persons:
“The notional person is not an avatar for expert witnesses whose testimony is accepted by the court. It is a pale shadow of a real person – a tool of analysis which guides the court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step.”
AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30 at [23]
In the present case the art is the reduction of aluminosilicate (or DSP) scale in the Bayer alumina refining process via the addition of scale inhibiting compositions. Logically then the skilled addressee would know about the Bayer process and the problems that DSP scale pose when carrying out that process as well as the use of scale inhibiting compositions to ameliorate those problems. Since the scale inhibiting compositions of the invention claimed involve small molecules the skilled addressee must also have some knowledge of the preparation of such molecules in order to put the invention into practice.
The applicant asserted in their written submissions for the hearing (at [30] to [37]) that the Evidence of Professor Easton was not representative of the skilled addressee because his knowledge and experience of the Bayer process is academic or textbook knowledge and not practically based.
The opponent submitted at the hearing that because Dr Kildea is a named inventor, directly involved with the drafting of the opposed specification he is the antithesis of the notional non-inventive skilled person, unable to provide an objective assessment of the specification.
Our understanding of the skilled addressee is informed by evidence from persons with knowledge in the art as to the things that they know and do, and what they understand to be commonly known and done in the course of their work. The weighting and evaluating of this evidence in order to decide the characteristics of the person skilled in the art is part of the normal work of a delegate of the Commissioner of Patents.
Given the nature of the art and the invention I conclude that a range of persons can provide useful evidence as to the characteristics of the person skilled in the art. Accordingly I will have regard to the evidence of all declarants. Where there is conflict in their evidence, I will resolve that conflict in the normal way.
Paragraph 102(2)(b) in relation to subsection 40(2)(a)
The opponent submitted that the proposed amendments are not allowable under paragraph 102(2)(b), in that as a result of the amendment, the specification would not comply with subsection 40(2)(a) because the specification would not disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.
As I have already stated, the language of paragraph 102(b) requires a consideration of the result of the amendment, which as articulated by Bennett J (in relation to the Act prior to Raising the Bar, but nevertheless still applicable in this instance) involves:[5]
“1. Identification of the precise amendment sought by identifying the difference between the specification as it stood immediately before the amendment and the specification as proposed to be amended; and
2. Determination whether, as a result of the amendment, the specification would not comply with ss 40(2) or 40(3).”
[5] Apotex Pty Ltd v Les Laboratories Sevier (No 2) [2009] FCA 1019; 79 IPR 100, at [34]
The provisions of s40(2)(a) were recently considered in detail in Evolva where the delegate reviewed numerous recent UK and EPO decisions, having regard for the guidance they provided,[6] and in doing so, reformulated the test for clear enough and complete enough disclosure, laid down in by the delegate in CSR[7] in the following way, as a process of construing the specification to determine:
[6] Evolva SA [2017] APO 57 at [22] to [45]
[7] CSR Building Products Limited v United States Gypsum Company [2015] APO 72 at [95]
·What is the scope of the invention as claimed?
·What does the specification disclose to the skilled person?
·Does the specification provide an enabling disclosure of all the things that fall within the scope of the claims, and in particular:
a)Is it plausible that the invention can be worked across the full scope of the claims?
b)Can the invention be performed across the full scope of the claims without undue burden?
I consider this approach to be appropriate in the present case but due to the grounds available under s104 oppositions, must limit my analysis to whether, as a result of the amendment, the requirements for clear enough and complete enough disclosure have been satisfied. In other words, I must consider the scope of the amended claims relevant to the matter in question, namely, compounds LXVI and LXVII.
What is the scope of the invention as claimed?
The wording of independent claim 1 as proposed to be amended is repeated below:
A method for the reduction of aluminosilicate containing scale in a Bayer
process comprising the steps of:adding to the Bayer process stream an aluminosilicate scale inhibiting amount of a composition comprising at least one small molecule, wherein the small molecule is selected from the group consisting of compounds (I) through (XIII), (XV) through (XXX), (XXXII) through (LVIII) and (LX) through (LXVII):
The claim is directed to reducing aluminosilicate scale in Bayer process streams via a method involving “steps”, however in the claim there is only one step explicitly defined, that of adding to the process stream an amount of a composition. The use of the word “comprising” in relation to these steps is a clear indication of the intention of the patentee to include methods which may involve additional steps not explicitly defined in the claim.
The amount of the composition to be added is limited only by the functional language – “an aluminosilicate scale inhibiting amount”. Thus the amount to be added must be effective to inhibit scale formation in the process stream.
Finally, the composition to be added must contain “at least one small molecule”, selected from those listed in the claim. Again, the word “comprising” is used, this time in relation to the small molecule, indicating that the composition may optionally contain one or more other components, including those that are, and those that are not, explicitly defined in the claim.
As a consequence of this, and the fact that the list of small molecules includes compounds LXVI and LXVII upon which the present opposition turns, the claim embraces the possibility of using either of compounds LXVI or LXVII alone and in the absence of any other components in the composition.
As I have already stated, these two compounds also appear in dependent claims 3, 4 and 14 as proposed to be amended. None of these dependent claims introduce any further features to the method of claim 1 as they merely reduce the list from which the small molecules are to be selected and are therefore narrower than, and fall completely within, the scope of claim 1.
What does the specification disclose to the skilled person?
The specification states, at page 1, lines 8 to 11, that the invention relates to:
“…compositions of matter and methods of using them to treat scale in various industrial process streams, in particular certain silane based small molecules that have been found to be particularly effective in treating aluminosilicate scale in a Bayer process stream.”
The specification goes on to describe the problems associated with aluminosilicate scale or DSP build up in Bayer process streams (at pages 1 to 2), before discussing the prior art as it relates to the use of DSP scale inhibitors (at page 3) which it says pose other problems, particularly in relation to high viscosity due to the polymeric structures of the compounds used in the prior art (see paragraph [2] on page 3 of the specification).
At paragraph [4] of page 3 the specification states:
“Thus while a range of methods are available to Bayer process operators to manage and control DSP scale formation, there is a clear need for, and utility in, an improved method of preventing or reducing DSP scale formation on Bayer process equipment.”
Although not stated explicitly it is a clear inference that the specification seeks to overcome the viscosity problems associated with polymeric DSP scale inhibitors via the use of small molecules capable of inhibiting DSP scale.
The specification proceeds to describe embodiments of the invention under the heading “Brief summary of the invention”, commencing on page 3 at line 20, with what I consider to be the broadest statement of the invention:
“At least one embodiment is directed towards 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.”
Consistent with this broadest embodiment, a further embodiment of the invention is then described, re-emphasising that the small molecules are reaction products of amine-containing molecules and amine reactive molecules containing at least one amine-reactive group and at least one silane group, at page 4, paragraph [1]:
“Another embodiment is directed towards a method for reducing siliceous scale in a Bayer process comprising the step of adding to a Bayer liquor an efficacious amount of reaction product between: 1) an amine-containing small molecule, and 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.”
This section of the specification then ends, at page 4, paragraph [2], with the statement:
“At least one embodiment is directed towards 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 products as defined above.”
The fact that the invention relates to small molecules and mixtures thereof defined as reaction products is reiterated under the heading “Detailed description of the invention”, at page 7, lines 4 to 7:
“In at least one embodiment the small molecule is a reaction product between an amine-containing small 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, Cl-C12 Alkyl, Aryl, Na, K, Li, or NH4, or a mixture of such reaction products.”
Based on these passages of the specification, it is clear that mixtures of the scale inhibiting small molecules are envisaged as embodiments of the invention.
The detailed description of the invention then continues, at page 7, line 8 to page 8, line 14, with what is essentially an identical recitation to that of claim 1 as filed, which is a generic Markush style claim. The only difference between this part of the description and claim 1 as filed is to be found at page 39, lines 4 to 5 of the claim, where it recites; “and wherein G is optionally hydrolysed”.
What follows in the disclosure are explicit depictions of the structures of the compounds of the invention, namely compounds I to LXV on pages 9 to 32 of the specification. Notably there is no depiction of the structures of compounds LXVI and LXVII now claimed in the opposed amendment.
At page 32, paragraph [2], the specification teaches that the effectiveness of the small molecules of the invention as DSP scale inhibitors in the Bayer process was unexpected in the prior art:
“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 crosslinked 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 [00301]). Furthermore, the scientific literature states "small molecules containing" ... "[an] Si-O3 grouping are not effective ln preventing sodalite scaling" ... , because ... "[t]he bulky group" ... "is essential [in] keeping the molecule from being incorporated into the growing sodalite." Max HTTM 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.”
At paragraph [3] on page 33 of the specification, three advantages of the invention over DSP scale inhibitors of the prior art are identified:
“A first advantage is that the smaller molecular weight of the product means that there are a larger number of active, inhibiting moieties available around the DSP seed crystal sites at the DSP formation stage. A second advantage is that the lower molecular weight allows for an increased rate of diffusion of the inhibitor, which in turn favors fast attachment of the inhibitor molecules onto DSP seed crystals. A third advantage is that 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 contains one example, beginning on page 34, which teaches a general method for combining three components, designated A, G and E to form mixtures of compounds of the invention. At lines 7 to 9:
“In a typical synthesis reaction the three constituents: A (e.g,, hexane diamine), G (e.g. 3‑glycidoxypropyltrimethoxysilane) and E (e.g. ethyl hexyl glycidyl ether) are added to a suitable reaction vessel at a temperature between 23-40 °C and allowed to mix.”
At lines 14 to 19 of page 34 the specification teaches that the compound mixtures of the invention may be isolated in un-hydrolysed or hydrolysed form:
“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).”
Notably, the specification only ever refers to isolating the “product mixture”, whether un‑hydrolysed or hydrolysed. There is no worked example or disclosure of a process or method for separating the individual component molecules generated in the mixture.
The specification then teaches at page 35, lines 12 to 16 that conducting the synthesis of the compound mixtures of the invention in continuous or batch mode reduces side reactions and undesirable polymerisation which have the detrimental effect of increasing viscosity. Evidence for this is provided in FIG 2 and Table 1 of the specification:
“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.”
On the basis of the reduced viscosity, and the reduced amount of methanol produced as a result of undesired polymerisation reactions (evidenced in the third example disclosed in Table 1 on page 35 of the specification), it is clear that the specification teaches that a semi-batch process is preferred for the synthesis of the compound mixtures of the invention.
Worked examples of the invention consist of five compound mixtures, detailed in Table II on page 36 of the specification, where each mixture is derived from a different amine compound (designated “A”). Table II is repeated below:
As seen in Table II, each of the exemplary compound mixtures of the invention demonstrably reduces the DSP scale in Bayer process liquor in amounts ranging from 8.5% (low dose, tetraethylene pentaamine derived compound mixture) to 99.8% (high dose, hexane diamine and 1-amino-2-propanol derived mixtures).
The specification then concludes with a number of statements (at pages 36 and 37) proclaiming that while it has disclosed preferred embodiments these are not intended to be strictly limiting or exhaustive and that the skilled addressee will be aware of alternatives, equivalents and variations based what has been disclosed.
In view of the above I consider that the specification discloses to the skilled person that the compound mixtures produced by the semi-batch or sequential or continuous reaction between;
1) an amine containing small molecule (such as the amines designated “A” in Table II of the specification) and,
2) an amine reactive small molecule containing an amine reactive group and a alkoxysilane group (such as glycidoxypropyltrimethoxysilane used in Table II of the specification) and,
3) a non-polymeric amine reactive hydrophobic hydrocarbon (such as 2-Ethylhexyl glycidyl ether used in Table II of the specification),
are useful compositions for effectively reducing or inhibiting DSP scale build up in Bayer process liquor.
Does the specification provide an enabling disclosure of all the things that fall within the scope of the claims as a result of the amendment, and in particular:
(a) Is it plausible that the invention can be worked across the full scope of the claim?
All of the declarants acknowledge that there is no explicit disclosure in terms of the depiction of the structures of compounds LXVI and LXVII in the specification as filed.[8] This is the basis of the case for the opponent. As noted by Professor Easton in his first declaration at paragraph [12]:
“On pages 9-32, both WO '769 and AU '990 show the same 62 specific compounds corresponding to the structures numbered (I)-(XIII), (XV)-(XXX), (XXXII)-(LVIII) and (LX)-(LXV) in the Amended Claims. However, compound structures (LXVI) or (LXVII) are not shown in either document.”
[8] Kildea at [28] and [88], Easton #1 at [13] and Ryles at [20].
The applicant argues that there is nevertheless an implicit disclosure of these compounds, primarily in the third and fourth compositions[9] (fifth and sixth rows) of Table II (which I have briefly discussed above) of the specification on page 36.
[9] Kildea at [29] and [88].
As an initial consideration the opponent argues that Table II does not clearly specify which isomer of glycidoxypropyltrimethoxysilane is used. See the first declaration of Professor Easton at paragraph [17]:
“In my opinion the information set out in Table II of WO '769 at best describes the use of unknown doses of unidentified product mixtures resulting from an unspecified reaction between undisclosed amounts of various amines (denoted "A"), an unidentified glycidoxyl propyltrimethoxysilane compound (denoted "G"), and 2-ethylhexy glycidyl ether (denoted "E"). In the case of the third and fourth entries of Table II to which Dr Kildea refers "G" is glycidoxypropyltrimethoxysilane, "E" is 2-ethylhexyl glycidyl ether, and "A" is either diethylene triamine (the third entry) or tetra ethylene pentaamine (the fourth entry).”
At paragraph [19] of his first declaration, Professor Easton further elaborates:
“I note that Table II does not even identify whether the reagent identified as "G" is 3‑glycidoxypropyltrimethoxysilane, which further obfuscates any ability to determine what compounds might be present in the mixture resulting from a reaction between "A", "G" and "E", let alone whether compounds corresponding to structures (LXVI) and (LXVII) were present in that mixture. (When 3-glycidoxypropyltrimethoxysilane is specifically being referred to WO '769 uses the abbreviation "GPS" (see page 5, line 8), and in my opinion there is no basis to assume that "G" also refers specifically to 3‑glycidoxypropyltrimethoxysilane as opposed to some other structural isomer).”
The applicant submitted that contrary to Professor Easton’s interpretation, it is plainly evident from a reading of the specification as a whole that the reagent identified as “G” in Table II is 3‑glycidoxypropyltrimethoxysilane (see the applicant’s written submissions at [55] to [57]).
Referring to the Markush structure described in the specification at page 8, lines 3 to 5, the only isomer of glycidoxypropyltrimethoxysilane disclosed is 3‑glycidoxypropyltrimethoxysilane. Furthermore in the exemplary synthesis of Example 1, at page 34, lines 8 to 9 and page 35, lines 7 to 8, 3‑glycidoxypropyltrimethoxysilane is the only isomer mentioned. Finally, examining each of the individual exemplary compound structures of compounds (I) to (LXV) on pages 9 to 32 of the specification as filed it is apparent that all of them are derived from 3‑glycidoxypropyltrimethoxysilane, either directly, or via subsequent hydrolysis of the methoxysilane groups.
I accept the applicant’s submissions in regard to the identity of the glycidoxypropyltrimethoxysilane isomer of Table II, because on a reading of the specification as a whole it is clear the 3- isomer is the only isomer contemplated. I therefore conclude that where Table II of the specification refers to G being glycidoxypropyltrimethoxysilane, the intention was to refer to the 3-isomer.
Moving on from that issue, the following question remains: Can it be said that the third and fourth compositions of Table II represent an implicit disclosure of compounds LXVI and LXVII? The applicant submits that they do, as Dr Kildea states at paragraph [29] of his declaration:
“In the opposed application, 65 compounds were directly drawn out by way of their chemical structures; these were denoted compounds (I) to (LXV). Compounds (LXVI) and (LXVII), respectively, are the third and fourth compounds exemplified in Table II of the opposed application; the first, second and fifth compounds fall within the originally-depicted structures (I) to (LXV) (i.e., they are structures (XXXV), (XLV) and (LV), respectively).”
However, contrary to the assertion by Dr Kildea that the first second and fifth rows of Table II “are structures (XXXV), (XLV) and (LV)” and that “compounds (LXVI) and (LXVII), respectively, are the third and fourth compounds exemplified in Table II”, Professor Easton offers a detailed and convincing explanation as to why these examples of the specification can at best be regarded as disclosures of complex mixtures of many compounds which may contain the compounds in question. At paragraph [20] of his first declaration, referring to his “first Easton declaration” in relation to the s59 opposition (exhibit CJE-A1in this opposition):
“For the reasons I discussed in Paras [116] - [118] and [134] - [146] of the First Easton
Declaration, reaction of the compounds denoted "A", "E" and "G" in Table II will inevitably lead to a complex mixture of products, the actual composition of which will vary according to numerous factors.”Professor Easton,[10] using a highly simplified reaction between a monoamine compound and a single amine reactive epoxide, illustrates the reasons why the significantly more complex examples of Table II of the specification (involving reaction between compounds containing multiple amine groups and two different amine reactive epoxides) will result in the production of complex mixtures containing large numbers of different compounds. At paragraphs [145] to [146] of CJE-A1 he concludes:
“For these reasons, reaction of 1,6-diaminohexane, 1,2-diaminoethane or 3‑aminoisopropanol, with 3-glycidoxypropyltrimethoxysilane and 2-ethylhexylglycidyl ether would only produce the compounds (I)-(LXV) illustrated on pages 9-32 and in claims 4-13 of AU '990 as a component of a complex mixture, including polymers, and even then in a proportion that is not possible to predict. I note that amines having three or five amine groups (e.g., diethylenetriamine, tetraethylenepentamine) are also contemplated by AU '990, which would introduce additional complexity to the product mixture.”
[10] See exhibit CJE-A1, At paragraphs [142] to [144].
Diethylenetriamine and tetraethylenepentaamine to which Professor Easton refers above, are the compounds used in the third and fourth exemplary compositions of Table II of the specification, and upon which the applicant relies in support of the argument that there is an implicit disclosure of compounds LXVI and LXVII in the specification.
Following the detailed explanation provided by Professor Easton, it is evident that Dr Kildea’s characterisation of Table II is incomplete.
Dr Kildea states that the first, second and fifth exemplary compositions of Table II “are structures (XXXV), (XLV) and (LV)” and that “compounds (LXVI) and (LXVII), respectively, are the third and fourth compounds exemplified in Table II”.
However, following the logic of Professor Easton in regards to the chemical reactions involved, and examining the structures of the compounds depicted on pages 9 to 32 of the specification, it is evident that each of the five exemplary compositions disclosed in Table II of the specification relate to a great many more compounds than Dr Kildea indicates in his declaration.
In relation to the first two exemplary compositions of Table II (Hexane Diamine and Ethylene Diamine respectively), it is evident that each of the reactions involved would produce at least 15 of the structures depicted in the specification as filed and, following the logic of Professor Easton, likely many more.
In relation to the fifth exemplary composition of Table II (1-amino-2-propanol), it is evident that the reaction involved would produce at least 3 of the structures depicted in the specification and, following the logic of Professor Easton, likely more.
Turning now to the third and fourth exemplary compositions of Table II (Diethylene Triamine and Tetraethylene Pentaamine respectively), following the logic applied above, I find it plausible that these reactions produced compounds LXVI and LXVII respectively, however it is clear that they can only have been produced as part of complex mixtures containing many other compounds.
Since the first and second examples of Table II, both involved reagent molecules having only 2 reactive amine groups, yet they led to at least 15 (and likely many more) compounds within the mixtures they each produced, it is a logical conclusion that Diethylene Triamine and Tetraethylenepentaamine, which contain 3 and 5 reactive amine groups respectively, will each produce complex mixtures[11] containing an even larger number of compounds.[12]
[11] Dr Ryles’ declaration at [38]
[12] Professor Easton’s second declaration at [15]
While Professor Easton has provided compelling evidence[13] that the exemplary reactions of the invention will produce complex mixtures, none of the parties has shown that compounds LXVI and LXVII will be prevented or prohibited from forming[14] in their respective examples.
[13] Professor Easton’s first declaration at [53] to [55]
[14] Dr Kildea’s declaration at [76]
The analysis of compound mixtures produced in Table II is summarised in the table below:
A:G:E Compounds
(This column is extracted from Table II)Compound mixtures derived Compound mixtures derived when subsequently hydrolysed A=Amine listed below
G=Glycidoxypropyltrimethoxysilane
E=2-Ethylhexyl glycidyl etherComponent structures Disclosed in specification as filed at Component structures Disclosed in specification as filed at Hexane Diamine XLIII, XLIV, XLV, XLVI, XLVII, XLVIII, XLIX, L, LI LII,
LXI, LXII, LXIII, LXIV, LXV and many othersPages 23 to 28
Pages 30 to 32
Undisclosed
I, II, III, IV, V, VI, VII, VIII IX,
XXVIII, XXIX, XXX, XXXI, XXXII
and many othersPages 9 to 12
Pages 18 to 19
Undisclosed
Ethylene Diamine XXXIII, XXXIV, XXXV, XXXVI, XXXVII, XXXVIII, XXXIX, XL, XLI, XLII,
LVI, LVII, LVIII, LIX, LX
and many othersPages 20 to 23
Pages 29 to 30
Undisclosed
X, XI, XII, XIII, XIV, XV, XVI, XVII, XVIII, XIX,
XXIII, XXIV, XXV, XXVI, XXVII
and many othersPages 12 to 16
Pages 17 to 18
Undisclosed
Diethylene Triamine LXVI and
many others
Structure not disclosed
UndisclosedN/A Tetraethylene Pentaamine LXVII and
many others
Structure not disclosed
UndisclosedN/A 1-amino-2-propanol LIII, LIV, LV,
and othersPages 28 to 29
UndisclosedXX, XXI, XXII,
and othersPages 16 to 17
Undisclosed
On balance I find that it is certainly plausible that compounds LXVI and LXVII were produced in their respective complex mixtures, disclosed in the third and fourth examples of Table II of the specification, and that I am therefore satisfied that this represents an implicit disclosure of these compounds, albeit, only as part of the complex mixtures in which they were produced. However the remaining question to be answered is whether or not the disclosure of the specification has enabled the invention to be performed across the full scope of the claim without undue burden.
(b) Can the invention be performed across the full scope of the claim without undue burden?
In my view, the specification has enabled the production of compound mixtures, five of which are identified in Table II of the specification, and their use in the inhibition of DSP scale build up in Bayer liquor. We must now consider whether this degree of enablement is commensurate with the full scope of the claim.
The opponent submits that because no description is provided as to how to isolate compounds LXVI and LXVII, or how to determine whether they are present and in what proportion in the event that they form as part of a complex mixture, they represent embodiments of the invention that cannot be performed without undue burden.[15],[16],[17]
[15] Professor Easton’s first declaration at [51] to [58]
[16] Professor Easton’s second declaration at [27] to [29]
[17] Dr Ryles’ declaration at [44] to [49]
The applicant responds, stating that “those familiar with operating the Bayer process do not expect, and do not require the use of chemical additives to the process to be 100% pure, unique compounds in order to effect a desired outcome.”[18]
[18] Applicant’s written submissions at [106]
Dr Kildea supports this view, at paragraphs [82] to [84] of his declaration, with the submission that it is commonplace in the art of the Bayer process, to utilise chemical structures to denote industrial grade mixtures of chemical compounds, and that therefore their isolation is not necessary:
“Across many industrial processes, and in the Bayer process in particular, the use of chemical structures to denote specific components of industrial grade materials or mixtures is both common and well understood. For example, lime (a common additive to the Bayer process) is often represented as "CaO" when the composition of the material used is well understood by those familiar with the process to contain a number of other calcium salts in addition to other components and contaminants. Sulfuric acid (used as a cleaner in the Bayer process) is typically denoted as "H2SO4" yet the product in use typically contains other species. Indeed, when actually used in practice, the solution used may often contain sulfuric acid as a relatively minor component. Referencing these observations back to the present invention, Bayer process liquor is often referred to as a "sodium aluminate solution" (and is labelled as such for shipping purposes, thereby satisfying international import/export regulations amongst other standards). However, those familiar with the process would be well aware that the liquor is indeed a mixture of components and not a pure solution uniquely and exclusively containing sodium
aluminate. Similarly, those familiar with operating the Bayer process do not expect, and do not require the use of chemical additives to the process to be 100% pure, unique compounds in order to effect a desired outcome. The use of chemicals in industrial processes typically employs industrial-grade products that may, and often do, contain mixtures of specific products. Rarely are these industrial grade products provided as pure single compounds. However, despite this lack of a single component, these products are often identified and known by a single chemical name and/or a single chemical structure.I accept this submission, but consideration must also be paid to the scope of the claims in question, and whether or not they are limited to the use of such complex mixtures, for the inhibition of DSP scale in the Bayer process.
In response to submissions by the opponent that compounds LXVI and LXVII are not produced from the reaction materials in Table II as “discrete” or “unique”, or in other words isolated compounds,[19] the applicant submitted that “the claims and teaching of the specification do not require compounds LXVI and LXVII to be made as discrete entities”.[20]
[19] Opponent’s written submissions at [35] to [39], citing Professor Easton’s first declaration at [12] to [13], [16], [18], and [20] to [21]
[20] Applicant’s written submissions at [59]
I agree that the claims and the teaching of the specification do not require isolation of compounds LXVI and LXVII but this does not help me to determine whether, as a result of the amendment, a real and reasonably clear disclosure of the invention as claimed has been satisfied.
Despite the fact that the claims do not require either of the compounds in question to be present in isolated form, they nevertheless include such a possibility within their scope. Meanwhile, the specification only discloses the use of these two compounds for the inhibition of DSP scale in the Bayer process, as part of a complex mixture containing many other compounds.
In relation to identifying and quantifying the compounds, Dr Kildea asserts that the skilled addressee could identify compounds LXVI and LXVII in a complex mixture using conventional analytical methods:[21]
“First, isolation and separation of the individual compounds is not required by the claims. Second, the specification describes the synthesis scheme and structure of the compounds, which would allow a skilled worker to use conventional analytical equipment and methods to identify the compounds within a mixture without undue experimentation.”
[21] Dr Kildea’s declaration at [78]
However, both Professor Easton and Dr Ryles assert that identifying and quantifying the compounds in question from the complex mixture produced in Table II would not be routine and would not be possible without undue experimentation. At paragraph [29] of his second declaration, Professor Easton states:
“…it is my view as an experienced chemist that the analysis itself would be extremely difficult, uncertain and expensive, particularly due to the number of products that would be present and the similarity of their structural components. The situation would be exacerbated if one was attempting to identify a compound that was only present in a small amount.”
And Dr Ryles states at paragraph [49] of his declaration:
“…given the complexity of the product mixtures that are produced when the A, G and E reactants are reacted, the analysis would be arduous and not a simple routine matter, particularly when the mixture contains structurally similar compounds, and small amounts of compounds.”
On balance I agree with these submissions. The specification only provides very limited and generic information as to how one might go about isolating the product mixtures of the invention from the crude reaction conditions. No information is given as to how the skilled addressee could isolate, identify or quantify individual components of the mixture from the myriad other components with similar structural and chemical properties within that isolated mixture.
As I have already stated, the specification has enabled the production of compound mixtures and their use in the inhibition of DSP scale build up in Bayer liquor. The claims as proposed to be amended are not limited to such mixtures, and include within their scope, compounds LXVI and LXVII in isolation.
The person skilled in the art has not been given sufficient information to be able to perform the invention insofar as the claims embrace compounds LXVI and LXVII absent the other components of the complex mixtures in which they are produced.
It follows that the person skilled in the art cannot perform the invention across its full scope without undue burden, because as a result of the amendment, the specification does not provide a clear enough and complete enough disclosure of all the things that fall within the scope of the claims.
Paragraph 102(2)(b) in relation to subsection 40(2)(aa)
The opponent submitted that the proposed amendments are not allowable under paragraph 102(2)(b), in that as a result of the amendment, the specification would not comply with subsection 40(2)(aa) because the specification would not disclose the best method known to the applicant of performing the invention.[22]
[22] Opponent’s written submissions at [102] to [113]
As I stated previously, my attention must be directed and confined to the effect of the amendment proposed.
The requirement for providing a best method of performing the invention under the current Act, as amended by the Raising the Bar Act, was recently considered by a delegate of the commissioner in Kineta, inc. [2017] APO 45, (Kineta). At paragraph [29] of Kineta, the delegate formulated the test for providing a best method of performance as a process of answering the following three questions, which I will now proceed to consider in relation to the amendments:
- What is the invention for which a best method must be provided;
- what method is described in the specification; and
- was the applicant aware of a better method?
What is the nature of the invention for which a best method must be provided?
The invention lies in the use of mixtures of silane based small molecules derived from the reactions between amines, amine reactive silanes and amine reactive hydrophobic hydrocarbons, for the inhibition of DSP scale in the Bayer process.
By an analogous approach to the findings of the delegate in Kineta at [32], It cannot fairly be said that the invention is simply the conception of the shape (or structure) of the molecules present in the mixtures of the invention. Until the applicant was in possession of the mixtures of compounds, as distinct from merely conceiving their component structures, it was not able to do the work to determine whether or not it had solved the problem. It is clear that the invention lies in the compound mixtures and the fact that they can be made. In order for the public to have the full benefit of the invention they must be able to prepare the mixtures and then use them for their beneficial properties. The invention must lie in both the compound mixtures and their use.
The nature of the invention has not changed as a result of the amendment.
What method does the specification disclose?
As I have already discussed, I consider that the specification discloses to the skilled person that the compound mixtures produced by the semi-batch or sequential or continuous reaction between;
1) an amine containing small molecule (such as the amines designated “A” in Table II of the specification) and,
2) an amine reactive small molecule containing an amine reactive group and a alkoxysilane group (such as 3-glycidoxypropyltrimethoxysilane used in Table II of the specification) and,
3) a non-polymeric amine reactive hydrophobic hydrocarbon (such as 2-Ethylhexyl glycidyl ether used in Table II of the specification),
are useful compositions for effectively reducing or inhibiting DSP scale build up in Bayer process liquor.
In relation to compounds LXVI and LXVII, I have already stated that I find that the balance of the evidence favours the fact that these compounds were produced as components of the DSP scale inhibitory compositions of the examples disclosed in Table II of the specification (the third and fourth compositions respectively).
Above I have also discussed my finding that the specification has enabled the production of compound mixtures and their use in the inhibition of DSP scale build up in Bayer liquor, including mixtures containing compounds LXVI or LXVII, by way of the aforementioned examples in Table II.
The fact that the specification was found to be lacking a clear enough and complete enough disclosure insofar as the claims embrace compounds LXVI and LXVII absent the other components of the mixtures in which they were produced, does not cause the specification to be deficient under subsection 40(2)(aa), because under this provision there is no obligation on the applicant to describe more than a single preferred embodiment.[23] In my view, the third and fourth compositions disclosed in Table II of the specification, and shown to be effective in inhibiting DSP scale in Bayer liquor, satisfy the requirements of providing a best method of performance in relation to the compound mixtures of the invention. However, it should also be pointed out that the other examples in Table II, of the first, second and fifth rows, are equally as valid in terms of providing a best method of performance of alternative embodiments within the claims and that therefore, as a result of the amendment, it is not necessary to provide a best method of performance of compounds LXVI and LXVII.
[23] Ethyl Corporation v California Research Corp. (1970) AOJP 562
Was the applicant aware of a better method?
The opponent submitted[24] that the declarant for the applicant, Dr Kildea, “clearly refers to work that was done, including reaction parameters and conditions that were not disclosed in the specification”, and that this indicates that the applicant must have been aware of a better method of performing the invention.
[24] Opponent’s written submissions at [110]
I have reviewed the passages of the relevant declarations of Dr Kildea referred to by the opponent in relation to this submission[25] and I can find nothing in them indicative of the fact that the applicant had done additional work, or knew of a better method of performance at the time of filing. Rather, these passages consist of Dr Kildea discussing what was disclosed in the specification as filed and how the skilled addressee would interpret that information in light of their common general knowledge.
[25] Dr Kildea’s declaration at [54], [73] to [75] and Exhibit CJE-A4 at [98], [103] and [112] to [113]
It follows that the ground of opposition in relation to subsection 40(2)(aa) has not been made out.
Paragraph 102(2)(b) in relation to subsection 40(3)
The opponent submitted that the proposed amendments are not allowable under paragraph 102(2)(b), in that as a result of the amendment, the specification would not comply with subsection 40(3) because the claims would not be supported by the specification.
The provisions of s40(3) were recently considered in detail by a delegate of the commissioner in CSR. The delegate reviewed several recent UK and EPO decisions, having regard for the guidance they provided,[26] and formulated the relevant test (which I will apply to the context of what arises as a result of the effect of the amendment) in the following way:[27]
i)Construe the claims to determine the scope of the invention as claimed,
ii)construe the description to determine the technical contribution to the art, and
iii) decide whether the claims are supported by the technical contribution to the art.
[26] CSR Building Products Limited v United States Gypsum Company [2015] APO 72 at [109] to [114]
[27] Ibid, at [115]
What is the invention as claimed?
Previously I stated that claim 1 as proposed to be amended is directed to reducing aluminosilicate scale in Bayer process streams via a method involving adding to the process stream an aluminosilicate scale inhibiting amount of a composition, containing at least one small molecule, selected from those listed in the claim. Included in the list of small molecules are compounds LXVI and LXVII, newly added by way of the proposed amendments, and upon which the present opposition turns because this is the result of the amendment.
As I have already stated, these compounds also appear in dependent claims 3, 4 and 14 as proposed to be amended.
What is the technical contribution to the art?
In Generics (UK) Ltd v H Lundbeck A/S [2009] RPC 13 (Generics), Lord Neuberger of Abbotsbury described the technical contribution at [95] as:
“in the context of a simple product claim such as the present (especially where the claim is to a single chemical product), the technical contribution is (at least in the absence of special factors) the product itself. As I have suggested, the technical contribution can often be equated with non-obvious novelty – what is new to the art and not obvious is really another way of identifying the technical contribution.”
In the present case the technical contribution cannot be regarded as the product itself, as the specification acknowledges that some of the molecules claimed are known for other uses,[28] and because the claims are directed to a method, rather than compositions per se.
[28] The specification at page 32, line 10, to page 33, line 4
Previously I provided an analysis and summary of what the specification discloses to the person skilled in the art. In view of this analysis I consider that the technical contribution to the art is that the compound mixtures produced by the semi-batch reaction between;
1) an amine containing small molecule (such as the amines designated “A” in Table II of the specification) and,
2) an amine reactive small molecule containing an amine reactive group and a alkoxysilane group (such as glycidoxypropyltrimethoxysilane used in Table II of the specification) and,
3) a non-polymeric amine reactive hydrophobic hydrocarbon (such as 2-Ethylhexyl glycidyl ether used in Table II of the specification),
are useful compositions for effectively reducing or inhibiting DSP scale build up in Bayer process liquor.
As I have stated above, the specification alleges that the compositions of the invention advance the field of DSP scale inhibition via the following three advantages of this novel use of the small molecule mixtures of the invention over prior art macromolecular DSP inhibitors:[29] They provide a larger number of active, inhibiting moieties available around the DSP seed crystal sites at the DSP formation stage, an increased rate of diffusion of the inhibitor, which in turn favours fast attachment of the inhibitor molecules onto DSP seed crystals, and lower viscosity enabling handling and injection into the Bayer process stream more conveniently and effectively.
[29] Paragraph [3] on page 33 of the specification
The technical contribution to the art has not changed as a result of the amendment.
Are the claims supported across their full scope?
The claims as proposed to be amended include within their scope small molecule products LXVI and LXVII absent the complex reaction mixtures in which their synthesis has been enabled by the specification. Previously I stated that the specification has not enabled the isolation of the individual components of the exemplary mixtures it discloses.
It follows that as a result of the amendment, the full scope of the claims is not supported by the technical contribution to the art.
Subsection 102(1)
Subsection 102(1) requires that the specification as proposed to be amended does not claim or disclose matter that extends beyond that disclosed in the complete specification and abstract as filed. As a result I must confine my analysis to a consideration of the consequences that follow as a result of the amendment.
This provision was introduced by the Raising the Bar Act and its application has yet to be considered by the courts. The purpose of s102(1) is explained in the Explanatory Memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (the Explanatory Memorandum) at item 29:
“This item amends the Act to require an applicant to meet the disclosure requirements at the time of filing the complete specification. It is intended to avoid the situation where patent rights accrue in the period before the applicant has fully described their invention.
The Federal Court has recently clarified that an invention need only be fully described at the date of grant. This means that it is possible for an applicant to file an inadequate description that can be subsequently remedied by amendment in order to meet the full description requirements before the date of grant.
This situation is problematic for two reasons.
First, it means that a patentee may gain protection for the period before they have adequately met their obligation to provide the public with a complete disclosure of the invention.
Second, it creates uncertainty for the public and competitors in the period between publication of the patent specification and grant. Without full details of the invention, the public and competitors may not be able to determine where they can safely operate without infringing the patent. They also may not be able to experiment on, or improve the invention.
In contrast to Australia, other countries’ patent laws require the disclosure requirements to be met at filing and do not allow the addition of any material that could not be directly derived from the information in the specification at filing. This includes not allowing the addition of new material to overcome an objection of lack of full description. For the reasons above, this result is preferred to the current Australian position.
The item introduces a provision preventing amendment of a complete patent specification after filing to add new matter that would go beyond the disclosure contained in the specification at its filing date. An applicant would not be able to amend the specification to add any material that the hypothetical skilled person could not directly derive by reading the information in the specification as filed.”
(emphasis added)As this provision is directed to the disclosure requirements being met at filing, it is closely related to the section 40 provisions requiring a clear enough and complete enough disclosure (s40(2)), and support for the claims (s40(3)). This is reflected in the IP Australia Patent Examiner’s Manual of Practice and Procedure (the MPP) at 2.23.8A, which states:
“In effect, sec 102(1) requires an applicant seeking to amend a specification to meet the disclosure requirements of sec 40 at the time of filing the complete specification.”
Since s102(1) is closely related to s40 and has yet to be the subject of judicial consideration in Australia, it is appropriate to follow the approach taken in CSR[30] and Evolva[31] where the delegates looked to juris prudence arising from the corresponding UK provisions.
[30] CSR Building Products Limited v United States Gypsum Company [2015] APO 72 at [88] to [97]
[31] Evolva SA [2017] APO 57 at [21] to [24]
The corresponding provisions in the UK legislation are in section 76 of the Patents Act 1977 (UK), and the subsections relevant to amendments are ss 76(2)&(3) which state:
(2)No amendment of an application for a patent shall be allowed under section 15A(6), 18(3) or 19(1) if it results in the application disclosing matter extending beyond that disclosed in the application as filed.
(3)No amendment of the specification of a patent shall be allowed under section 27(1), 73 or 75 if it—
(a) results in the specification disclosing additional matter, or
(b) extends the protection conferred by the patent
These provisions have been considered many times by the UK courts. In Nokia,[32] Lord Justice of the court of appeal Kitchin LJ, at [46], drew a direct link between UK section 76 and Article 123(2) of the European Patent Convention (the EPC), stating:
“The objection is founded upon Art.123(2) EPC:
A European patent application or a European patent may not be amended in
such a way that it contains subject matter which extends beyond the content of
the application as filed.”
[32] Nokia Corp v IPCom GmbH [2012] EWCA Civ 567, [2013] RPC 5
The test for added subject matter was formulated by Aldous J in Bonzel,[33] at [574], in the following way which, according to Kitchin LJ in Nokia at [49] is both “helpful and has stood the test of time”:
“The decision as to whether there was an extension of disclosure must be made on a comparison of the two documents read through the eyes of a skilled addressee. The task of the Court is threefold:
(1) To ascertain through the eyes of the skilled addressee what is disclosed, both explicitly and implicitly in the application.
(2) To do the same in respect of the patent,
(3) To compare the two disclosures and decide whether any subject matter relevant to the invention has been added whether by deletion or addition.
The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application either explicitly or implicitly.”
[33] Bonzel v Intervention (No 3) [1991] RPC 553
At paragraph [8] of Vector Corp, Jacob LJ clarifies that in circumstances analogous to those of the present opposition, consideration of the granted patent (in the present case the accepted application) is irrelevant:
“When amendment of a granted patent is being considered, the comparison to be made is between the application for the patent, as opposed to the granted patent, and the proposed amendment (see the definition of ‘additional matter’ in s.76(l)(b)). It follows that by and large the form of the granted patent itself does not come into the comparison. This case was to some extent overcomplicated by looking at the granted patent, particularly the granted claim 1.”
I consider this to be the correct approach for subsection 102(1), as the requirement is for comparison of the proposed amendments to the specification and abstract “as filed”, not the specification as accepted.
Consistent with the guidance provided by the IP Australia MPP in relation to s102(1), which I have discussed above, the issue of claim broadening was considered in T 0331/87[34] by the European Patent Office (EPO) Technical Board of Appeal (TBA) in relation to EPC Article 123(2), finding that in order to be allowable, the claim as proposed to be amended must be supported by the specification as filed:
“For the determination whether an amendment of a claim does or does not extend beyond the subject-matter of the application as filed, it is necessary to examine if the overall change in the content of the application originating from this amendment (whether by way of addition, alteration or excision) results in the skilled person being presented with information which is not directly and unambiguously derivable from that previously presented by the application, even when account is taken of matter which is implicit to a person skilled in the art in what has been expressly mentioned (Guidelines, Part C, Chapter VI, No. 5.4). In other words, it is to examine whether the claim as amended is supported by the description as filed.” (emphasis added)
[34] T 0331/87, Houdaille/Removal of feature [1991] E.P.O.R. 194, at [3]
Since the guidance for s102(1) provided by the MPP (discussed above), is that the specification as proposed to be amended must satisfy the disclosure requirements of section 40 at the time of filing, the findings I have made above in relation to disclosure and support will necessarily be determinative. The only difference in the approach taken in the present circumstances is that the abstract must also be considered as part of the disclosure for this provision, as a prescribed document under subregulation 10.2A(a).
The abstract of the specification depicts Figure 1, detailing the temperature profile for a batch reaction for the preparation of a compound mixture of the invention, and then provides the following text summarising the invention:
“The invention provides a method of inhibiting the accumulation of DSP scale in the liquor circuit of Bayer process equipment. The method includes adding one or more particular silane based small molecules to the liquor fluid circuit. These scale inhibitors reduce DSP scale formation and thereby increase fluid throughput, increase the amount of time Bayer process equipment can be operational and reduce the need for expensive and dangerous acid washes of Bayer process equipment. As a result, the invention provides a significant reduction in the total cost of operating a Bayer process.”
I find that the abstract adds nothing to the specification in terms of providing an enabling disclosure to the skilled addressee, of how to go about isolating the individual molecular components of the compound mixtures of the invention.
I have previously stated that there is not a clear enough and complete enough disclosure of compounds LXVI and LXVII absent the other components of the complex mixtures in which they were produced, and that the claims insofar as they embrace compounds LXVI or LXVII in isolated form, for use in the method of the invention, are not supported by the technical contribution to the art.
Accordingly it cannot be said that the specification and abstract as filed provide a direct and unambiguous disclosure of compounds LXVI and LXVII absent the other components of the complex mixtures in which they were produced.
It follows that as a result of the amendment, the specification claims matter that extends beyond that disclosed in the complete specification and abstract as filed.
Paragraph 102(2)(a)
The opponent submitted that the proposed amendments are not allowable under paragraph 102(2)(a), in that as a result of the amendment, a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment.
Since compounds LXVI and LXVII represent the only matter which has been added to the claims by the proposed amendment, I must consider whether or not these compounds fall within the scope of claim 1 as accepted.
Claim 1 defines the compounds to be used in the method of the invention, via a general formula involving three substituents “R1”, “R2” and “R3”, attached to a central nitrogen atom “N”:
The structures of compounds LXVI and LXVII and the required correspondence of their substituents about the central nitrogen atom, in order that they fall within the scope of claim 1 as accepted, are depicted below:
The detailed description of the invention, at page 7, line 8 to page 8, line 14, discloses what is essentially an identical recitation to that of claim 1 as accepted. The only difference in substance and scope between this part of the description and claim 1 as accepted is to be found at page 39, line 1 of the claim, where it recites; “and wherein G is optionally hydrolysed”.
Relevant to the present considerations, the substituent R1 both here and in accepted claim 1, is defined as, among other things, an alkyl or an amine. Secondly, the substituent R2 is defined via the variable “G” as, among other things, 3-glycidoxypropyltrialkoxysilane. Finally, the substituent R3 is defined via the variable “E” as, among other things, 2-ethylhexyl glycidyl ether.
The construction of the variables G and E, defined as 3-glycidoxypropyltrialkoxysilane and 2‑ethylhexyl glycidyl ether respectively, in this section of the specification, as well as in claim 1 as accepted, poses an issue, because both 3-glycidoxypropyltrialkoxysilane and 2‑ethylhexyl glycidyl ether are the names of discrete molecular entities in their own right, and not the names of substituent groups:
3-glycidoxypropyltrialkoxysilane 2-ethylhexyl glycidyl ether
Conventionally, if such groups are defined as substituents in generic Markush claims such as claim 1 as accepted, they are followed by the suffix “-yl”, along with a number to indicate the position of attachment to the molecule. For example, “(3-glycidoxypropyltrialkoxysilane)-2-yl” would denote that the central nitrogen atom in the formula of claim 1 is intended to be attached to the 2-position of the 3‑glycidoxypropyltrialkoxysilane entity.
Claim 1 as accepted therefore presents us with a non-conventional definition of the variables G and E, however in the context of the specification as a whole, this matter can be resolved.
As I have already discussed at length, there is ample support throughout the specification that the compounds of the invention do not contain epoxide groups but rather, are the products of reaction between epoxide groups with amine groups. All of the structures of compounds of the invention depicted on pages 9 to 32 of the specification are clearly derived from the reaction of amine groups with 3‑glycidoxypropyltrialkoxysilane and 2‑ethylhexyl glycidyl ether, as are all of the worked examples of the invention in Table II of the specification.
In addition, claims 4 to 13 as accepted are all dependent on claim 1 as accepted and these claims depict the same structures of compounds of the invention depicted on pages 9 to 32 of the specification which are clearly derived from the reaction of amine groups with 3‑glycidoxypropyltrialkoxysilane and 2‑ethylhexyl glycidyl ether.
I am therefore satisfied that the skilled addressee, in seeking to resolve the non-conventional definition of the substituents R2 and R3 in claim 1 as accepted would, after reading the specification as a whole, reach the conclusion that R2 is derived from 3‑glycidoxypropyltrialkoxysilane and R3 is derived from 2-ethylhexyl glycidyl ether, as advanced by the applicant.
The opponent also submitted[35] that the alkyldiamine and alkyltetraamine groups corresponding to R1 in compounds LXVI and LXVII do not fall within the scope of claim 1 as accepted and that in order, as Dr Kildea asserts,[36] for R1 to be derived from diethylene triamine or tetraethylene pentaamine, this would somehow require the terminal primary amine group to disappear or to be displaced.
[35] Applicant’s written submissions at [73] and Professor Easton’s first declaration at [40]
[36] Dr Kildea’s declaration at [53]
Since the substituent R1 both in the specification and in accepted claim 1, is defined as, among other things, an alkyl or an amine, I see no problem in regards to the alkyldiamine and alkyltetraamine substituents of compounds LXVI and LXVII and consider that they fall within the scope of claim 1 as accepted, being both alkyl and amine groups in their broadly accepted senses within the chemical arts and without need to resort to the specification for further clarification as Dr Kildea infers the need to do.
I therefore find that compounds LXVI and LXVII fall within the scope of claim 1 as accepted.
It follows that as a result of the amendment, the claims of the specification in substance fall within the scope of the claims of the specification before amendment.
Conclusion
The opposition is successful. The claims as proposed to be amended do not comply with the requirements of sections 102(1) or 102(2). The amendments will be refused.
Costs
Since both parties submitted at the hearing that costs should follow the event, I see no reason to depart from this general principle. Costs in accordance with Schedule 8 are awarded against the applicant.
Dr D.A.S. Beck
Delegate of the Commissioner of Patents
Annex A
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