Cytec Industries Inc v Nalco Company

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Cytec Industries Inc. v Nalco Company [2019] APO 2

Patent Application: 2012220990

Title:Reducing aluminosilicate scale in the Bayer process

Patent Applicant:                   Nalco Company
Opponent:  Cytec Industries Inc.
Delegate:  K. Wagg
Decision Date:  8 January 2019
Hearing Date:  10 October 2018

Catchwords: PATENTS – lack of clear enough and complete enough disclosure established – lack of clarity established – lack of support established – priority date considered – lack of novelty established – lack of inventive step not established – opportunity to file further amendments – costs awarded against the Applicant.

Representation: Patent attorney for the applicant: Dr Gareth Dixon of Shelston IP
Patent attorney for the opponent: Dr Linda Govenlock and Dr Claire Gregg of Allens Patent & Trade Mark Attorneys.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2012220990

Title:Reducing aluminosilicate scale in the Bayer process

Patent Applicant: Nalco Company
Date of Decision: 8 January 2019
DECISION
The ground of s 59 (c) has been successful: claims 1-3, 14-22 lack clarity; the description does not provide a clear enough and complete enough disclosure of the invention in claims 1-22 and claims 1-22 are not supported. Claims 1-2, 10, 13-14, 19 and 21 lack novelty. All other grounds fail on the evidence filed. Costs are awarded against the Applicant under Schedule 8.
There are proposed amendments on file. Subject to appeal, the applicant is given 60 day to file further amendments.
REASONS FOR DECISION
Background

Patent application number 2012220990 (the Opposed Application or the Specification) was filed on 07 February 2012. The application claims a priority date of 25 February 2011. The applicant is Nalco Company (the Applicant). On 21 August 2013 the Applicant filed a request for examination with the Commissioner. Consequently, the substantive amendments of the Patents Act 1990 brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Raising the Bar) apply to the present application. This includes the amendment to subsection 60 (3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists. Any subsequent references to sections of the Patents Act relate to the Patents Act 1990 as amended by the Raising the Bar Act. A similar qualification applies to references to the Patents Regulations 1991.
The application was examined and advertised as accepted by the Commissioner on 21 May 2015. Cytec Industries Inc. (the Opponent) filed a notice of opposition to grant on 21 August 2015 under section 59 of the Act. This decision is in relation to the opposition to grant under section 59 (this opposition).
After evidence in support was filed, the Applicant sought leave to amend the specification on 25 May 2016 (the first amendments). The first amendments resulted in a stay of these proceedings. The Opponent filed a notice of opposition to the first amendments and a hearing was held on 16 October 2017.[1] A delegate of the Commissioner refused the amendments[2] and the evidence was completed for this opposition.
[1] Cytec Industries Inc. v Nalco Company [2018] APO 4.
[2] Cytec Industries Inc. v Nalco Company [2018] APO 4 at 159.
The Applicant sought leave to amend the specification again on 10 August 2018 when they filed their summary of submissions in relation to this opposition and filed further amendments (the amendments). The hearing in relation to this opposition was deferred because of exceptional circumstances on request by the Applicant.
On 31 August 2018 a delegate of the Commissioner stated that if both parties agreed between themselves that the nature of the amendments was such that this opposition should be heard after the outcome of the amendments was known, then the Commissioner was also agreeable. The Opponent responded and did not consent to deferring the hearing date till after the outcome of the amendments was known.
A hearing was held in Sydney on 10 October 2018 to decide the opposition.
The Grounds of Opposition
The Statement of Grounds and particulars identified three main grounds: novelty, inventive step and s 40. Under section 40, clear enough and complete enough disclosure, best method of performance, clarity and support were particularised. At the hearing the following were pressed:
·Claims 1-3 and 19-22 (at least[3]) are not clear.
·The specification does not disclose the invention defined in claims 1-22 in a manner which is clear enough and complete enough to be performed by the PSA.
·The invention defined in claims 1-22 is not supported across its full scope.
·Claims 1-4, 8 ,10, 13 and 19-22 (at least) is not novel when compared to the prior art base.
·Claims 1-22 lack an inventive step when compared to the prior art base.
[3] The Opponent used the term “at least” in their submissions.
Onus and Standard of Proof
The onus lies with the Opponent to satisfy me that, on the balance of probabilities, a ground of opposition exists. [4] If I am satisfied then I may refuse the Opposed Application.[5]
[4] Section 60(3A).
[5] Ibid.
Evidence
The parties relied on the following evidence:

Evidence Declarant Date Reference Exhibits

In Support Prof Christopher John Easton 23 February 2016 Easton #1 Schedule 1
CJE-1 to CJE16

In Answer Dr John David Kildea 25 May 2016 Kildea JDK-1 to JDK-7

Dr Gareth Michael Dixon 25 May 2016 Dixon GMD-1 to GMD-2

In Reply Prof Christopher John Easton 15 February 2018 Easton #2 -
The Specification

Before commencing to construe the specification, I note what Middleton J said:
"It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”[6]
[6] Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214, 100 IPR 451 at [139].
In order to properly construe the specification it is important to obtain an idea of the technology the invention relates to and from there obtain a picture of the person skilled in the art. A good starting point for this is the field of the invention.
The Field of the Invention
The Opposed Application begins by outlining the field of the invention as:
“This 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 in a Bayer process stream.”[7]
[7] Page 1 lines 4-5.
The invention clearly involves industrial process streams, such as the Bayer process stream, and in the above paragraph a problem with them is mentioned: scale and in particular aluminosilicate. These are treated with silane based small molecules.
Following the Field of the Invention, the specification provides a section entitled “Background of the Invention” where prior art as well as problems with it is discussed.
Background of the Invention
The Background begins with a decription of the Bayer process and the specification incorporates US 6,814,873 in its entirety.[8] The Bayer process is described as the treatment of Bauxite ore with a caustic solution where alumina is solubilised in a caustic solution and insoluble waste material is removed. The alumina in the process stream is then precipitated out as solid alumina trihydrate and collected. The remaining caustic solution (liquor) is recycled back to treat fresh Bauxite ore in a fluid circuit.[9]
[8] Page 1 lines 13-14.
[9] Page 1 lines 15-22.
The specification then notes that Bauxite can contain different forms of silica and some forms (such as clay) are reactive to the caustic conditions of the Bayer process and are dissolved in the liquor.[10] These increase in concentrations as the liquor is recycled and eventually react with the aluminium and soda to form aluminosilicate particles.[11] The specification refers to them as the desilication product or “DSP”.[12] DSP has inverse solubility (precipitates at higher temperatures and dissolves at lower temperatures) and forms fine scales that accumulate in the Bayer process equipment.[13]
[10] Page 2 line 1.
[11] Page 2 line 2.
[12] Page 2 lines 6-7.
[13] Page 2 lines 10-17.
The specification then goes onto discuss typical ways of managing scale. These include descaling regimes-where the equipment is taken offline and cleaned - or adding a desilication step to the process (where the DSP is precipitated in an extra step).[14]
[14] Page 2 lines 18-page 3 lines 7.
The specification then discusses the use of polymers which have three alkyoxy groups bonded to one silicon atom and can be added to the process.[15] However, these are said to be problematic with the following statement:
“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.”[16]
[15] Page 3 lines 8-15
[16] Page 3 lines 16-18.
The objective of the current application is then set out:
“It is an object of the present invention to overcome or ameliorate at least one of the disadvantages of the prior art, or to provide a useful alternative.
[17] Page 3 lines 21– page 4 line 2.
Thus while a range of methods are available to Bayer process operators to manage and control DSP scale formation, there is clear need for, and utility in, an improved method of preventing or reducing DSP scale formation on Bayer process equipment.”[17]
With this background in mind and the problems identified an idea of who the patent is addressed to can be formed, that being the person skilled in the art.
The Person Skilled in the Art (PSA)
The person skilled in the art (PSA) has been considered previously with Finkelstein J saying:
“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.” [18]
[18] Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; 49 IPR 225 at [70].
However, the PSA is not a real person, but an artificial construct that is used as a tool of analysis by the Court, and in this case the Commissioner, to make a determination. This concept was established in AstraZeneca:
“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.”[19]
[19] AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30 at [23].
Prof Easton and Dr Kildea are presented as experts in this case. The Applicant alleged[20] that Prof Easton is not a relevant skilled person because, whilst being an eminent professor of chemistry, he has not had personal industrial experience in using the Bayer process and he states that he has only taught it as part of lectures.[21] Prof Easton explains the Bayer process in his declaration[22] and the Applicant suggests that this is nothing more than a textbook appreciation of the process.[23] The Opponent responded[24] to this allegation by stating that a practical interest does not require practical experience and cited that in the Opposition to the s 104 amendments the Delegate accepted his evidence and found it “compelling”.[25]
[20] Applicant’s submissions at 29.
[21] Easton #1 at 25.
[22] Easton #1 at 26-29.
[23] Applicant’s submissions at 29.
[24] Opponent’s submissions at 13-14.
[25] Cytec Industries Inc. v Nalco Company 2018 [APO] 4 at [34] and [85].
Lord Diplock stated that those likely to have a practical interest in the subject matter are the PSA:
“My Lords, a patent specification is a unilateral statement by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his invention (i.e. ‘skilled in the art’)”[26]
[26] Catic Industries Inc. v Hill & Smith Limited [1982] RPC 183 at 243.
In Australia the Full Federal Court approved this approach with Heerey, Emmett and Dowsett JJ stating:
“The uninventive by skilled worker is likely to have a practical interest in the subject matter of the claimed invention.”[27]
[27] Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd [2002] FCAFC 315; 56 IPR 248 at [39], 257.
It is clear from background I set out above the Opposed Application is directed towards solving the problem of alumniosilicate scale in the Bayer process in a way that is better than previous methods. It is clear that Prof Easton’s experience and interest in the Bayer process itself is not practical. His declaration is silent in relation to consulting work, research or industrial work relating to the Bayer process and it is clear that the majority of his research is in the field of Organic Chemistry.[28] It also appears that the Applicant is arguing that Prof Easton is an Organic Chemist and the person skilled in the art is an Industrial Chemist and although the solution to the problems with the Bayer process in this case is to use small molecules, or “compositions of matter”, the problem is an industrial one. The background of the specification, however, also notes there were methods of dealing with aluminiosilicate scale such as trialkoxysilanes and these had issues with viscosity. The Full Court of the Federal Court observed that the team approach to the PSA “is designed to solve a problem which requires the joint efforts of experts in more than one field.”[29] It is therefore my view that the PSA would involve consultation between both an Industrial Chemist and an Organic Chemist working in a team.
[28] Easton #1 at 18-23.
[29] Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd [2002] FCAFC 315; 56 IPR 248 at [91], 271.
The Opponent also submitted that the evidence of Prof Easton should be preferred over that of Dr Kildea because in the s 104 Opposition decision the Delegate was compelled by evidence from Prof Easton that the exemplary reactions would produce complex mixtures.[30] Indeed reactions which produce small molecules is something that I would expect a prominent Organic Chemist like Prof Easton to be able to reliably inform the Commissioner of. It does not mean, however, that I should be compelled by all of his evidence because a delegate found one particular piece compelling. Furthermore, in the setting of a patent opposition hearing, the Federal Court rules on evidence do not apply and instead the weighting and evaluating of evidence to decide the characteristics of the person skilled in the art and the common general knowledge is the normal work of a delegate of the Commissioner of Patents. I will therefore weigh the evidence of Prof Easton, particularly that which relates to industrial chemistry accordingly. Similarly Dr Kildea does have an interest in the Opposed Application proceeding to grant, he is a named inventor and his evidence will also be weighed accordingly.
[30] Cytec Industries Inc. v Nalco Company 2018 [APO] 4 at [85].
The Invention Described in the Specification
The specification provides three aspects of the invention under the Summary of the Invention on page 4. These all relate to:
“a method for the reduction of aluminosilicate containing scale in a Bayer process comprising the steps of:
[31] Page 4 lines 16-20.
adding to the Bayer process stream an aluminosilicate scale inhibiting amount of a composition comprising at least one small molecule”[31]
The at least one small molecule is defined in each of these three aspects with a more limited scope each time. It is drawn out as a Markush structure at line 1 of page 4 and again at line 5 of page 4c as being a tertiary amine, i.e. R₁NR₂R₃. The groups attached to the amine (the R groups) are defined in these embodiments. One R group will have a glycylalkylsilane, one will have a glycylalkylester and one will be an alkylamine. This provides the broad disclosure of the small molecule.
The specification then lists “at least one embodiment of the invention”, followed by another embodiment.[32] The at least one embodiment is as follows:
“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.”
[32] Page 4d lines 11- page 4e line 4.
The “another embodiment” adds to the Bayer process an efficacious amount of reaction product of three components. I note that these 3 components appear to describe the amine formula of R₁NR₂R₃, with one R group being the silane, one R group being a non-polymeric amine and the other R group being an amine reactive hydrophobic hydrocarbon.
The detailed description of the invention follows from page 4e to the examples on page 34 with pages 9-32 showing structures of individual small molecules I-LXV. Example 1 is provided on page 34. In this example three components (A e.g. hexane diamine), G (e.g. 3-glycidoxypropyltrimethoxysilane) and E (e.g. ethyl hexyl glycidyl ether) are reacted.[33] The product may be isolated or can be hydrolysed.[34] The embodiment goes on to discuss the reaction being carried out in a batch, batch on batch or semi-batch manner.[35] This semi-batch method involves the addition of constituent G in the form of a slow feed. The semi-batch method is said to give a reaction mixture that has lower viscosity and less methanol produced.[36]
[33] Page 34 lines 7-14.
[34] Page 34 lines 14-19.
[35] Page 35 lines 1-16.
[36] Page 35 table 1.
Five reaction mixtures are then produced using different amines (component A)[37] and their crude reaction mixture is tested for its ability to remove scale.[38]
[37] Page 36 table II.
[38] Page 35 table II right hand column.
The specification ends with 22 claims with claim 1, 19 and 21 being the independent claims.
The Claims and Clarity
The approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd:
“the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear … while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole … it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification … terms in the claim which are unclear may be defined or clarified by reference to the body of the specification” [39]
[39] [2009] FCAFC 70, 81 IPR 228 at [118] – [120].
It is also a requirement of subsection 40(3) of the Act that the claims must be clear. This requirement is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim".[40] Therefore if a construction of the claims, where the monopoly is defined cannot be determined, then the claims must fail for want of clarity. Claim 1 as accepted is repeated below:
[40] Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59.
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, 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-glycidoxytrialkyloxysilane, 3-glycidoxypropylalkyldialkoxysilane, 3-glycidoxypropyldialkylmonoalkoxysilane, 3-isocyanatopropyltrialkoxysilane, 3-isocyanatopropylalkyldialkoxysilane, 3-isocyanatopropyldialkylmonoalkoxysilane, 3-chloropropyltrialkoxysilane, 3-chloropropylalkyldialkoxysilane, and 3-chloropropyldialkylmonoalkoxysilane and wherein G is optionally hydrolysed;
           each E is independently selected from the group consisting of 2-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.

The claim is clearly directed to a method of reducing aluminosilicate scale in the Bayer process by the addition of a composition to the stream. That composition contains “at least one small molecule” which has three components. There was some discussion in the evidence on how one would distinguish a small molecule from a polymer.[41] The claim itself defines the small molecule by having three components, i.e. R₁, R₂ and R₃ and then states that the compounds are arranged according to a general formula, i.e. around a nitrogen and the structure is given. Furthermore, the words “small molecule” and “polymer” are defined in the specification.[42] In my view the words “small molecule”, although vague, do not lead to a lack of clarity.
[41] See for example Easton #1 at 82-89 and Kildea 65-73.
[42] Page 4e lines 20-25.
Claim 19 is another independent claim, it reads as follows:
“A method for the reduction of aluminosilicate containing scale in a Bayer process comprising: mixing with a 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, wherein the first component is a multiamine having from 2 to 5 amine groups; the second component is selected from the group consisting of: 3-glycidoxypropyltrimethoxysilane, 3-glycidoxytrialkyloxysilane, 3-glycidoxypropylalkyldialkoxysilane, 3-glycidoxypropyldialkylmonoalkoxysilane, 3-isocyanatopropyltrialkoxysilane, 3-isocyanatopropylalkyldialkoxysilane, 3-isocyanatopropyldialkyl-monoalkoxysilane, 3-chloropropyltrialkoxysilane, 3-chloropropylalkyldialkoxysilane, and 3-chloropropyldialkylmonoalkoxysilane and wherein the second component is optionally hydrolysed; and the third component is selected from the group consisting of: 2-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.”
In claim 19 no structure is given, however, the groups R₁, R₂ and R₃ of claim 1 appear to correspond to the first, second and third components of claim 19.
Claim 21 is the other independent claim it reads almost identical to claim 1 however the groups R₂ and R₃ are both selected from the group consisting of: H, alkyl, amine, G and E, with G and E both having the same definitions as in claim 1. A full copy of the accepted claims is attached at the end of this decision.
The Opponent submitted several “representative examples” of the claims allegedly lacking clarity. All of these relate to the structure of the small molecule itself. They stated that this was a ‘rare case’ of an unresolvable lack of clarity.[43] The Applicant conceded that the current claims did lack clarity; however, they believed they are overcome by their amendments on file. I will therefore discuss the issues raised by the Opponent.
[43] Wake Forest University Health Sciences v Smith & Nephew Pty Ltd (No 2) [2011] FCA 1002 at [3].
Before dealing with the Opponent’s “representative examples” of the alleged lack of clarity, I will first deal with the construction of the groups R₂ and R₃ which are “components” of the small molecule. When one looks at the structure of the R₁NR₂R₃ it is clear that R₁, R₂ and R₃ are substituents bound to the nitrogen in the small molecule. However, R₂ is defined as G and G is then defined as being, for example 3-glycidoxypropyltrialkoxysilane. 3-Glycidoxypropyltrialkoxysilane is described by Prof Easton as being a “discreet chemical species”[44] that is, it is a compound per se and not a “component” or substituent. This is true for all the items G can be independently selected from. The Delegate in the s 104 hearing discussed this issue.[45] He found that, on reading the specification as a whole, that the claim should be read as being “R₂ is derived from” and “R₃ is derived from”.[46] Dr Kildea interpreted the claims to mean that these groups are “derived from” the discreet species.[47] In my view, when one looks at the specification as a whole it is clear that the small molecule is the product of the reaction of the three components defined and the composition that is added to the Bayer process contains that product. This view is not inconsistent with the previous decision.
[44] Easton #1 Schedule 1 page ii and page iii.
[45] Cytec Industries Inc. v Nalco Company [2018] APO 4 at [148]-[153].
[46] Ibid at [154].
[47] Kildea at 81.
The Opponent submitted that the claims lacked clarity in the definition of the group E. Many of the groups E can be are defined by C₃-C₂₂. This type of nomenclature is often used in claims involving compounds to mean that the group can have any number of carbons between 3 and 22. However, in the current claims there is no information about the structural conformation of the carbons. Prof Easton stated:
“this term merely identifies the number of carbon atoms in an unidentified substituent group, but there is no information as to the arrangement of the carbon atoms and thus, no information as to the structure (eg, aliphatic, alkyl, alkenyl, aromatic, (poly)cyclic, and so forth) of the substituent group.”[48]
[48] Easton #1 at 70.
Dr Kildea did not respond to this statement as his evidence was focused on the proposed amendments which were not allowed. The claim refers to groups such as C₃-C₂₂ halide and C₃-C₂₂isocyanate and indeed there is no information about the structure of the carbons atoms or if double bonds or cyclic groups are present. This cannot be resolved by looking at the specification as a whole since this is repeated throughout.[49] Furthermore these groups in E can be “any combination thereof” which is also unclear as to how they would exist in a combination.[50] This language is also repeated in the specification.[51] Therefore, the definition of the group E is unclear. Claims 19 and 21 also include these groups. However, in claim 19 the group E is simply referred to as the third component. Therefore claims 1, 19 and 21 lack clarity because they define C₃-C₃₃ without providing information about the structure of the carbons. The dependent claims 2-3, 14-18, 20 and 22 do not provide any clarification on these groups and as a consequence these claims also lack clarity.
[49] See page 4d lines 6-10, page 8 lines 9-10.
[50] Easton Schedule 1 at page iv.
[51] Page 4b line3, page 8 line 11.
The Opponent also submitted that claim 3 is not clear because it states that R₂ is E. Claim 3 is dependent on claim 1 where R₂ is defined as being G. The Opponent states that because R₂ can only be G in claim 1 it is not possible, citing Prof Easton who says they are mutually exclusive.[52] I disagree. There is no requirement under Australian law that appended claims narrow the scope of earlier claims, even though this is often the case.[53] Thus, although claim 3 is claiming something that is not within the scope of claim 1, it is defining the group and the monopoly sought can be determined. I do not find this claim unclear for this reason.
[52] Easton Schedule 1 page v.
[53] Austal Ships Sales Pty Ltd v Stena Rederi Aktibolag [2008] FCAFC 121 at [47].
The Opponent further submitted that claim 19 is not clear as it defines a method of reducing aluminosilicate scale using at least one small molecule and then only defines the small molecule by three components. There is no information about how the “components” are orientated.[54] With Prof Easton concluding that it is impossible to determine what small molecule is encompassed by this claim. This claim does not provide the structure R₁NR₂R₃ and suffers from the issue I mentioned above, that the “components” are defined as discreet species, or compounds per se, rather than as substituents. In the other claims, the orientations of the components, which appear to be intended to mean substituents is unable to be resolved. No structural information is given and the claim is not defining a crude reaction mixture, I therefore agree with the evidence of Prof Easton and thus claim 19 fails for want of clarity.
[54] Easton Schedule 1 page viii.
Both claim 1 and 21 give the general formula of R₁NR₂R₃, and define the groups in a similar way. After the structure of general formula of R₁NR₂R₃ is given, the following words appear:
“wherein the small molecule may be at least one of: carbonates, bicarbonates, carbamates, ureas, amides and salts thereof”… followed by the definitions of R₁, R₂ and R₃
The Opponent submitted that none of the definitions of R₁, R₂ and R₃ allow for these groups citing evidence of Prof Easton.[55] I agree. It is impossible to see how a group like a urea or a carbamate would occur and when the specification is read as a whole I cannot see how one is made in the reactions provided. Furthermore the carbonates and bicarbonates claimed do not have a nitrogen in the group and are incongruent with the general formula R₁NR₂R₃ in the claim. As a consequence these claims are unclear.
[55] Easton #1 at 69.
The Opponent also submitted that claim 21 is not clear as it states “n is an integer from 2 to 6” when there is no “n” defined. Prof Easton stated that this did not make sense to him.[56] Since there is no “n” present in the claim this is a variable that need not be defined. It does not render the claim unclear. The scope of the claim is not muddied by this definition. A construction can be determined. Therefore this part of the claim is not fatal its clarity.
[56] Easton Schedule 1 page ix.
Conclusion on Clarity
Claims 1-3, 14-22 lack clarity.
Section 40(2)(a)
The amendments brought about by Raising the Bar amended s 40 (2) to read as follows:
“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;”
There is limited judicial interpretation of this provision in Australia with Perram J stating that:
“the only requirement now in s 40(2)(a) relates to enablement.”[57]
[57] Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421 at [167].
In that case the Respondent did not advance a case that the specification did not enable the PSA to perform the invention and so the ground was addressed without the need to determine a test for enablement.[58] With that in mind I will follow the approach adopted by the delegate in CSR Building Products Limited v United States Gypsum Company[59] which involves the following three steps:
(1) Construe the claims to determine the scope of the invention as claimed,
(2) construe the description to determine what it discloses to the person skilled in the art, and
[58] Ibid.
[59] [2015] APO 72.
[60] Ibid at [89].
(3) decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.[60]
This was expanded by the delegate in Evolva[61] to include the following two questions:
(4)Is it plausible that the invention can be worked across the full scope of the invention?
[61] Evolva SA [2017] APO 57.
(5)Can the invention be performed across the full scope of the claims without undue experimentation?
The Opponent submitted that the specification does not provide information that would enable the person skilled in the art to: make and use at least one compound falling within the scope of claims 1-22 and make and use each of the thousands of possible compounds encompassed by the general formulae defined in claims 1-3 and 14-22, including the unspecified “carbamates, ureas, amides and salts thereof.[62]
Construction of the claim
[62] Opponent’s submissions at 106.
The Opponent’s reason for the person skilled in the art to be unable to make and use “at least one compound” falling within the scope of the claims relied on the fact that in the s 104 decision the Delegate stated that the claims embrace the possibility of using each of the compounds defined in the claims “alone and in the absence of any other component in the composition.”[63] In that case the Delegate was construing the claims as proposed to be amended.[64] The same words are used in the current claims and I accept that the construction of the claims includes compounds which are alone and in isolation.
Construction of the description
[63] Cytec Industries Inc. v Nalco Company 2018 [APO] 4 at [43].
[64] Ibid at [42]-[43].
In the s 104 Opposition the Delegate also construed the description, in view of the amended claims, and in that case found that in was plausible that LXVI and LXVII were produced[65] but was compelled to conclude that they were part of a “complex mixture” and because the claims include the use of a single small molecule, with no information on how to isolate them, these two compounds were not enabled to be used alone. In the current opposition Prof Easton commented on the description and whether or not he thought it was enabling by saying:
“that reactions between the types of compounds designated A, E and G will afford complex product mixtures. AU ‘990 does not disclose synthetic methods or details that would enable me to prepare individual compounds (including the structures (I)-(LXV), or to identify and prepare specific product mixtures.”[66]
[65] Ibid at [87].
[66] Easton #1 at 108.
Prof Easton came to this conclusion based on the disclosure of WO 2003/002057. He noted that WO 2003/002057 describes a similar reaction and refers to it as a “polyaddition reaction” and gives a mixture rather than a single compound as the product.[67] Prof Easton then gave evidence about the batch and feed rate which would influence how “complex” the product mixture was.[68] In my view, the specification teaches that gels will form in the batch method, particularly if left at higher temperatures because of internal coupling and multiple substitutions.[69] It states:
“Prolonged exposure at high temperatures above 120 ºC can result in internal coupling reactions and multiple substitutions with the reactive amine groups such as hexane diamine or ethylene diamine. The resulting unhydrolyzed reaction products will turn to a gel over shorter time period accompanied by an increase in the reaction product viscosity.”[70]
[67] Easton #1 at 99.
[68] Easton #1 at 109-112.
[69] Page 35 lines 8-10.
[70] Ibid.
Indeed, the gels and increased viscosity appear to be the complex mixtures that Prof Easton is talking about. However, it then becomes clear in the specification that a semi-batch process does not result in the problem:
“Use of the semi-batch process”…“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.”[71]
[71] Page 35 lines 13-16.
I give little weight to Prof Easton’s evidence on these industrial processes and reactions for them as his experience is on a laboratory scale. Dr Kildea, however, recognises that table I on page 35 teaches how this reaction can be optimised.[72] Dr Kildea states that:
“It is clear that the 64 small molecules in [amended] claim 1 are a natural extension of the five small molecules (XLV), (XXXV), (LXVI), (LXVII) and (LV) specifically exemplified in Table II of the opposed application. I do not believe any undue invention or experimentation would be required on the part of the intended addressee in order to extend the general concept embodied in the five exemplified small molecules to the 59 other now claimed by the applicant.”[73]
[72] Kildea at 106-111.
[73] Kildea at 104.
I accept this evidence.
Does the description enable to the PSA to use a compound “alone and in isolation”?
The description does not give the PSA any information about isolation or purification of those compounds. The amines used have two reactive cites[74] and different reactions can occur at the different sites and some side reactions and a number of isomers can be formed in the reaction product.[75]
[74] Kildea at 91.
[75] Kildea at 92-97.
The next question then follows.
Is it plausible that the PSA could isolate the compounds or tweak the reaction conditions in such a way that it only produced a single compound?
I do not have any evidence on this point, however, purification and isolation are indeed something an organic chemist is familiar with. I therefore find that on the balance of probabilities that it is plausible that this could be done.
Can the individual compounds be isolated or the reaction conditions tweaked in such a way that only one compound is produced without undue experimentation?
The question of undue experimentation does allow for some trial and error by supplementing the disclosure with the common general knowledge. However, this supplementation cannot be in a way that could be considered inventive.[76] I do not have any evidence as to whether the skilled addressee could isolate a single compound, or tweak the reaction conditions such that only one compound is produced. However, it is clear that the disclosure gives mixtures. In my view, the reaction protocols, which involve the reaction of three species with more than one reaction site on a molecule, would require significant reworking to yield a single compound. Furthermore, to isolate a single compound would require significant work. For example if chromatography was used there is no information on what solvent systems or stationary phase to even start with. Likewise in an industrial setting, where chromatography is less likely to be used there is no information on possible fractionation or recrystallization or other separation techniques. Therefore on the balance of probabilities, I find that the use of individual compounds is part of the scope of the claims and is not enabled by the disclosure in the description. The use of a single compound in the composition is part of all of the claims 1-22.
[76] Grant Fisher v ToolGen Incorporated [2018] APO 65 at [63].
I have found above under clarity, that the carbonates, bicarbonates, carbamates, ureas, amides and salts thereof are not clear because they are incongruent with the general formula in the claim. Similarly there are no examples of these other than in the consistory clause and nothing that would enable the PSA to make a compound containing these functional groups. The synthesis of these would require different chemistry and a reworking of the invention and without any disclosure of a method which could be used to make them, it follows that they are not disclosed in a manner clear enough and complete enough for the PSA to perform the invention.
There is not a clear and complete enough disclosure of the invention defined by claims 1-22.
Section 40(3)
The amendments brought about by Raising the Bar introduced the following requirement under s 40 (3):
“The claim or claims must be … supported by matter disclosed in the specification.”
Perram J discussed support in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd[77] where he cited the explanatory memorandum and concluded that it did not allow for any continuity of the law of fair basis. Perram J did not elaborate on the approach to be taken in assessing support.
[77] [2018] FCA 421 at [168]-[172].
In CSR Building Products Limited v United States Gypsum Company the delegate provided a three step approach:
(1) construe the claims to determine the scope of the invention as claimed,
(2) construe the description to determine the technical contribution to the art, and
[78] [2015] APO 72 at [110].
(3) decide whether the claims are supported by the technical contribution to the art.[78]
I have construed the claims and description above. The Opponent submitted the technical contribution is purportedly the use of the individual silane compounds. I disagree, in my view the technical contribution is the crude reaction mixture of three species. This crude mixture is produced, preferably in a semi-batch manner, and provides a mixture of silane compounds and this mixture of products can be fed into the Bayer process to reduce aluminosilicate scale.

The claims include within their scope the use of single compounds, alone and in isolation for the reduction of aluminosilicate scale these have not been isolated or prepared individually in the specification and therefore the technical contribution does not extend to their use other than as a crude reaction product mixture and as a consequence claims 1-22 are not supported.
In claim 1 the definition of E lists the groups and then states that they can occur in “any combination”. The Opponent submitted that this was not supported. I have found this group unclear. The group itself is appears to be intended to be a single substituent and it is not clear how it can occur in a combination as currently defined. If follows from this that it is not supported because there is no disclosure or enablement of E occurring in combinations.
The Opponent submitted that the claims lacked support because they encompass thousands of possible structures. Dr Kildea stated this in his evidence, which as indicated previously, was focused on the refused s 104 amendments:
“there were literally thousands of permutations possible for the previously-defined NR₁R₂R₃ small molecule when each of the possibilities for R₁, R₂ and R₃ was taken into account.”
Of course, according to Dr Kildea, there are still thousands of permutations possible. The Opponent submitted that this scope vastly exceeds any technical contribution set forth in the body of the specification. Indeed the claims are broad; however, evidence of broad claims in itself is not sufficient to satisfy me that the claims lack support. I do not find that the breadth of the claims in itself results in a lack of support.
The Opponent submitted that the carbonates, bicarbonates, carbamates, ureas, amides and salts thereof claimed in claim 1 and 21 were not supported by the specification. I have found these unclear and lacking a clear enough and complete enough disclosure, for similar reasons the technical contribution disclosed in the body of the specification provides does not extend to these classes of compounds.
Claim 21 includes a definition where R₂ is E and R₃ is E, this means that it encompasses compounds where no silane group is present. The synthesis disclosed in the specification involves three components and only one contained a silane group. If reactions occurred between the other between two species, then a compound would be yielded which does not contain a silane group. Dr Kildea acknowledged this.[79] The Opponent submitted that these compounds lack support because the specification teaches that the silane moiety is an essential part of the invention. The law of support, however, in no way allows for a continuation of the law of fair basis[80] Indeed the process of comparing essential features in the body of the specification with the claims was rejected by the High Court in regards to fair basis:
“It is wrong to seek to isolate in the body of the specification “essential integers” or “essential features” of an alleged invention and to ask whether they correspond with the essential integers of the claims in question.”[81]
[79] Kildea at 94.
[80] Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421 at [172].
[81] Lockwood Security v Doric Products [2004] HCA 58 at [68].
I do not accept that this approach, which was wrong for fair basis, is now part of the law of support. I have outlined my approach above. The specification discusses the compounds where R₂ is G and R₃ is E. The pictured compounds do all contain an Si(OH)₃ or Si(OMe)₃. The field of the invention states that the silanes in particular are particularly effective. In my view the technical contribution relates to the crude product mixture containing the Si(OH)₃ or Si(OMe)₃compounds as well as compounds which do not. In my view I do not have enough evidence relating to these compounds to decide if they do or do not form part of the technical contribution. Therefore this submission has not been made out.
Claims 1-22 are not supported.
Priority Date
The Opposed application claims priority from the filing date of the provisional application: US 13/035,124, filed on 24 February 2011 (the priority document).[82] The Opponent alleged that the accepted claims are not entitled to the priority date claimed and instead are only entitled to the date of 7 February 2012, i.e. the filing date of the complete specification. This is relevant to the current opposition because it affects both the grounds of Novelty and Inventive Step. The grounds of Novelty and Inventive Step involve a comparison between the claims and the prior art base.[83] It is generally accepted that the prior base is defined by publication or action before the priority date.[84] Therefore, I will form a conclusion on the priority date in order to decide the grounds of Novelty and Inventive Step.
[82] Exhibit CJE-16.
[83] s 7(1)(a) and s 7(3)(a).
[84] With the exception of “whole of contents” novelty, which will be discussed later.
The Opponent alleged that the claim for the priority date of 24 February 2011 failed for three reasons. I will deal with each of these in turn. Firstly, the Opponent submitted that the priority document was not the “first application in respect of the invention filed in a Convention country” because, in their view, an earlier application for the same invention exists. I have reproduced a diagram from the Opponent’s submissions below for convenience:
[85]
[85] Opponent’s submissions at 26.
In this submission the Opponent alleged that the first filing of the current invention was US 12/567,116, this went onto become WO 2011/037873 which is cited for novelty. The priority document for the current application was filed later (US 13/035,124). They cited Article 4C of the Paris Convention[86] this states:
“(1) The periods of priority referred to above shall be twelve months for patents…
(2) These periods shall start from the date of filing of the first application; the day of filing shall not be included in the period.
…
[86] Paris Convention for the Protection of Industrial Property, 20 March 1883 (entered into force 07 July 1884) (the Paris Convention). Australia became a party on 10 October 1925 and the Stockholm revisions to Articles 1-12 on 27 September 1975.
[87] Art 4C Ibid.
(4) A subsequent application concerning the same subject as a previous first application within the meaning of paragraph (2), above, filed in the same country of the Union shall be considered as the first application, of which the filing date shall be the starting point of the period of priority, if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority.”[87] (their emphasis)
The Applicant stated in the oral hearing that an Opposition before the Commissioner is not the forum to be discussing the Paris Convention. Article 4C of the Paris convention is reflected in our legislation so I will therefore focus on section 43 (5) which states that:
“If, at the time when a Convention application or a PCT application is made in respect of an invention:
(a) an application (the earlier application) has been made for protection in respect of the invention in a Convention country; and
(b) the earlier application was made in the prescribed period; and
(c) the earlier application has been withdrawn, abandoned or refused without becoming open to public inspection; and
(d) the earlier application has not been used as the basis of claiming a right of priority in a Convention country under a law of that country; and
(e) a later application has been made by the same applicant for protection in respect of the invention in a Convention country;
the earlier application is taken, for the purposes of this Act, to have never been made.”
This provision is similar to s 96 as it existed before the Raising the Bar Act, except previously an applicant could ask the Commissioner to disregard an earlier application if the same criteria as above were met and if both applications were made in the same Convention country. This provision was amended to better reflect the requirements in Europe and the United Kingdom.[88]
[88] Explanatory Memorandum for Raising the Bar.
The Opponent’s argument states that because an earlier application, i.e. US 12/567,116, has been made in respect of the invention and this has not been withdrawn, abandoned or refused and is open to public inspection, then the current application, allegedly to the same invention, cannot claim priority from US 13/035,124 (a later, separately filed provisional application). Furthermore they submitted that because there is a continuation in part relationship between the two families in the United States that this proves that US 12/567,116 is the earlier application for the invention. The Applicant has not tried to and does not appear entitled to include a claim to priority in Australia from US 12/576,116 and would not be entitled to under s 38 and reg 3.11; this would be greater than 12 months.
It is clear that s 43(5) allows for an earlier application to be disregarded under certain circumstances. Those circumstances do not apply in the present case since US 12/567,116 has not been withdrawn, abandoned or refused, is open to public inspection and served as the basis for a claim of priority of WO 2011/037873. The Explanatory memorandum relating to s 43 states that:
“If the Commissioner could not disregard the applications the applicant would not be able to rely on any of the earlier applications as a basis for claiming priority for their complete application, because the first application made for the invention was filed more than 12 months before the complete application. Once published, the earlier application would likely also deprive the complete application of novelty.”[89] (my emphasis).
[89] Ibid item 44.
I note that the Opponent cited the document WO 2011/037873 for novelty and inventive step if novelty cannot be acknowledged.
Is US 12,576,116 the first disclosure of the invention?
US 12/576,116 is not in evidence itself, nor do I have submissions in relation to the disclosures of US 12/576,116 and how they are believed to be the same invention. The Opponent appears to be relying on the disclosure of the later document WO2011/037873 solely and how it deprives the claims of novelty. Furthermore, the Opponent relies on the fact that US 12/576,116 is used in a continuation in part under US law. However, in my view, I cannot make this determination without looking at US 12/576,116. Because of the lack of evidence on this document I cannot take this submission any further.
The Opponent submitted that the Opposed Application is not entitled to the claimed priority date because the priority document does not provide a clear enough and complete enough disclosure of the alleged invention. Section 43(2A) states that:
(a) prescribed circumstances apply in relation to the invention defined in the claims; and
(b) a prescribed document discloses the invention in the claim in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.
The Explanatory Memorandum for this section states:
“Each claim in a patent specification has a priority date (the date at which the patentability of the invention is assessed, with the result, for example, that their application takes precedence over a second application filed after than date). Currently, the test for determining the priority date is whether the claim is ‘fairly based on’ what is disclosed in the document identified by the applicant as their priority document. That is, the test for determining priority mirrors the ‘fair basis’ test in subsection 40(3). This test is currently imposed in the Patents Regulations.
[90] Explanatory memorandum item 10.
The item amends paragraph 43(2)(b) to provide that, if prescribed circumstances apply in relation to the claim and the prescribed document discloses the invention claimed in that claim in a manner that is clear and compete enough for the claimed invention to be performed by a person skilled in the art, the priority date of the claim will be the date that is determined under the Regulations. For the intended operation of the ‘clear enough and complete enough’ test, see the notes relating to item 8 above.”[90]
The Explanatory Memorandum goes onto state the intention of this change:
“First, the amendment is intended to maintain consistency between the requirement of subsection 40(2) and the requirement for priority. Applicants should not be able to secure a priority date on the basis of a disclosure in a provisional or other relevant application that is less complete than required in a complete specification. Otherwise the applicant is in a position to deter competitors before they have fully realised the invention.”[91]
[91] Ibid.
It was deemed to be important to put this requirement in the Act rather than the regulations:
“Secondly, the amendment is intended to increase the transparency of the Act. The priority date is fundamental to the validity of a patent. Accordingly, it is more appropriate that the key aspect (‘clear and complete enough’) of such an important test for priority is explicit in the Act.”[92]
[92] Ibid.
The test for priority is therefore the same test as that for s 40(2)(a). I will thus use the process from CSR Building Products Limited v United States Gypsum Company,[93] if that test is not satisfied the priority date will become the filing date of the specification under reg 3.12 (2) and reg 3.13A. The test is therefore:
(1) Construe the claims to determine the scope of the invention as claimed,
(2) Construe the priority document to determine what it discloses to the person skilled in the art, and
[93] [2015] APO 72.
[94] Ibid at [89].
(3) Decide whether the priority document provides an enabling disclosure of all the things that fall within the scope of the claims.[94]
I note that Section 43 (3) states that:
“Where a claim defines more than one form of an invention, then, for the purposes of determining the priority date of the claim, it must be treated as if it were a separate claim or each form of the invention that is defined.”
Thus if two different forms of the invention exist, they are treated as separate claims. Then s 43 (4) states:
“The priority date of a claim of a specification may be different from the priority date of any other claim of the specification.”
This allows for different forms of the invention in a single claim to have different priority dates. In Grant Fisher v ToolGen Incorporated[95] the delegate faced a similar issue. He used the following process to determine the priority dates:
·The earlier application is construed to determine the matter for which it provides an enabling disclosure.
·The claim in question is construed to determine the scope of the invention defined and whether the claim defines more than one form of the invention.
·One or more priority dates is assigned corresponding to the date of filing of the specification, or to the date of filing of the earlier application if that application clearly discloses the invention, or one or more forms of the invention defined by the claims.
What does the earlier document provide an enabling disclosure of?
[95] [2018] APO 65
The priority document has a similar disclosure to the Opposed Application, indeed the batch, batch-on-batch and semi-batch method of the Opposed Application is repeated on page 35 of the priority document and table 1 is identical. The reaction examples with the 5 different amines on page 36 of the specification with table II are also repeated in the priority document. In summary the priority document makes a similar disclosure as the Opposed Application.
The scope of the claims in question?
The claims use a method with a composition comprising “at least one small molecule” which, in my view, includes at least two different forms of the invention. One form being the use of a single compound alone and in isolation, and another form using a mixture of compounds from the crude reaction mixture. The isolated single compound requires an extra step, which was not enabled and is therefore not just an alternative within the claim[96] to using a mixture, but instead is a different form. I am therefore of the view that using a small molecule alone and in isolation is a different form of the invention to using a mixture of small molecules.
What are the priority dates of the different forms?
[96] AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99; 107 IPR 177 at [251]; Nichia Corporation v Arrow Electronics Australia Pty Ltd [2015] FCA 699 at [58]-[87].
The priority document fails to provide a clear enough and complete enough disclosure of the claimed invention insofar as it claims the use of the compounds “alone and in isolation” for the same reasons the body of the specification lacked a clear enough and complete enough disclosure. This form of the invention is only able to claim priority from the filing date of the Opposed Application and not the filing date of the priority document. The form of the invention which uses mixtures of compounds from a crude product mixture of the reaction is enabled in the priority document and therefore is entitled to the claimed priority date.
Novelty

100. It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, is novel. Subsection 7(1) states that an invention is taken to be novel unless it is not novel when compared to prior art information. The Act then states that prior art information can be information made publically available in a single document.[97] A citation may also be part of the prior art base under Subsection 7(1) if it is information contained in a published specification filed in respect of a complete application where: 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 the specification was published after the priority date of the claim under consideration; and the information was contained in the specification on its filing date and when it was published. This is referred to in the parlance as a “whole of contents” citation.
[97] ss 7(1)(a).
101. The well-established general test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement".[98]
[98] [1977] HCA 19; 137 CLR 228 at 235.

102. This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed, see Nicaro Holdings Pty Ltd v Martin Engineering Co.[99] In order to meet this requirement, the prior art must “contain clear and unmistakeable directions to do what the patentee claims to have invented” (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited (General Tire)).[100] If it is an inevitable consequenceof carrying out the directions in the prior art that the PSA would do something that falls within the scope of the claims, then the claims will lack novelty.[101]
[99] (1990) 91 ALR 513 at 517.
[100] [1972] RPC 457 at 486.
[101] Novozymes A/S v Danisco A/S [2013] FCAFC at [145].
103. The Opponent submitted that claims 1-4, 8, 10, 13 and 19-22 are not novel when compared to the following document:
WO 2011/037873 (NALCO COMPANY) 31 March 2011 (WO ‘873)[102]

[102] Exhibit CJE-3

104. I note that this is the same document that claims priority from the application that was alleged to be the first application filed in respect of the invention claimed. WO ‘873 was published on 31 March 2011. This is later than the priority date claimed; however, it is earlier than the filing date. The disclosure of WO ‘873 is relevant to the novelty of the accepted claims, in their entirety, under “whole of contents” novelty. This is because WO ‘873 claims priority from US 12/567,116 which was filed on 25 September 2009, which is earlier than the claimed priority date of the Opposed Application. This document is also relevant to novelty where the priority date of the claim, i.e. to the isolated compounds is the filing date.
105. WO ‘873 begins with a background to the invention which is very similar to that of the current application. The field of the invention of the current application[103] is identical to lines 7-10 of WO ‘873. WO ‘873 also discusses the issue of polymers in the prior art.[104] It is clearly directed to the reduction of aluminosilicate scale in the Bayer process. WO ‘873 then sets outs its embodiments one of those is repeated below:
[103] Page 1 lines 4-7.
[104] WO ‘873 Page 3 lines 6-8.
“Another embodiment is directed towards a method for reducing siliceous scale in a Bayer process comprising the step of adding to a Bayer liquid 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.”[105]
[105] WO ‘873 page 3 line 25 – page 4 line 5.

106. Amine is defined as being:
“‘Amine” means a molecule containing one or more nitrogen atoms and having at least one secondary amine or primary amine group. By this definition, monoamines such as dodecylamine, diamines such as hexanediamine, and triamines such diethylenetriamine, are all amines.”[106]
[106] WO ‘873 page 4 24-page 5 line 2.

107. I note that hexanediamine, mentioned above, is used in the Opposed Application.
108. The Opponent submitted that a structure shown on the top of page 11 of WO ‘873 is the same compound of structures (I) and (XLIV) in the current claims. The Applicant strongly denied this. I have repeated the diagram from the Applicant’s submissions below:
[107]
[107] Applicant’s submissions at 43.
109. At first glance, these compounds look quite different. However, the structure on the left is actually two separate compounds where there is overlap between the Si-R of the compound on top and the compound below. WO ‘873 clearly states that these are two compounds on page 10, where it is stated that:
“Two representative structures of such amine-silane-hydrophobe adducts are shown below”.[108]
[108] WO ‘873 page 10 at 24-25.

110. The compounds shown from WO ‘873 are of a general, “representative” nature and are provided as part of a sub-structure. The groups M, J and R are defined as:
“M, J, and R groups are each one independently selected from the list consisting of C₁-C₆ alkyloxy, hydrogen, hydroxide, or C₁-C₆ alkyl groups.”

111. In my view this is in fact a disclosure of many compounds, i.e. where M, J and T are selected from XXX, and compounds (I) and (XLIV) are included.
112. Example 3 of WO ‘873 involves the embodiment I have discussed above. It states that:
“Similar tests were conducted to assess the effects of reagents comprising the reaction product of 1) a small molecule amine, 2) an amine silane and 3) an amine reactive hydrophobe. The method used was the same as that described in example 2 and reagents used to produce the active components are listed in table 3 together with the activity as measured by percent of DSP precipitated compared to an undosed control sample.”[109]
[109] WO ‘873 page 16 lines 2-3.

113. The Opponent submitted that the final entry in table 3 of WO ‘873 is identical to the first entry of table II in the Opposed Application.[110] The Applicant responded by stated that table 3 line 1 was different.[111] This response addressed a different entry in the table to the one the Opponent raised. The entry raised by the Opponent is repeated below:
[110] Opponent’s submissions at 62.
[111] Applicant’s submissions at 45.

…
^[112]
[112] WO ‘873 page 17 table 3 final entry.
114. H is 1,6- Hexanediamine,[113] GPS is 3-glycidoxypropyltrimethoxysilane[114] and E is 2-Ethylhexylglycidyl ether.[115] Indeed WO ‘873 carries out a reaction with the same starting materials as the current claims. I am satisfied that final entry in table 3 of WO ‘873 is clear and unmistakeable directions to carry out a reaction between 1,6- Hexanediamine, 3-glycidoxypropyltrimethoxysilane and 2-Ethylhexylglycidyl ether and then to use the product of that reaction for the reduction of aluminosilicate scale in the Bayer process. The question then becomes is the product of this reaction in WO ‘873 within the scope of the accepted claims.
[113] WO ‘873 page 16 at line 16.
[114] WO ‘873 page 5 at line 3.
[115] WO ‘873 page 16 at line 15.
115. The Opponent submitted that because this is the same reaction as Table II of the Opposed Application, it follows that it would produce the same products. Table II of the Opposed Application is as follows:
[116]
[116] Page 36 lines 15-17.
116. Indeed Prof Easton states that structures (I)-(IX), (XXVII)-(XXXII), (XLII)-(LII) and (LXI)-(LXV) is based on the reaction with the 1,6-diaminohexyl residue, with the Si(OH)- or Si(OCH₃)- and Dr Kildea states compound (XVI) is made using hexane diamine. In my view WO ‘873 uses the trimethoxysilane, and although the hydroxyl is contemplated on page 11 (above) I do not consider it clear and unmistakable directions to make the hydroxyl compounds. Furthermore, there is no disclosure of hydrolysis of the methoxy groups prior to use in the Bayer process and I do not have any evidence that this would have inevitably been done. Thus this feature, present in dependent claims, is not anticipated.
117. I note, however, that WO ‘873 just states that the compounds are reacted together and does not mention a batch, batch-on-batch or semi-batch process as disclosed in the Opposed Application. The question then becomes would following the directions of WO ‘873 inevitably result in the production of the reaction products of the Opposed claims. Given that same starting materials are used in the current application as those used in WO ‘873 I am satisfied on the balance of probabilities that the same products, albeit it in a complex mixture will be produced. In my view this is a very different set of circumstances to that in Albany Molecular Research Inc v Alphapharm Pty Ltd[117] where a method in the prior art could not be repeated. In this case the disclosure in the prior art is very similar to that in the current specification and would inevitably produce a mixture of compounds the same as those produced in the current specification. The current claims 1-2, 10, 13-14, 19 and 21 all include compounds which are products of the reaction disclosed in WO ‘873; this is clear from the structures when the hexane diamine is incorporated into the molecule.
[117] [2011] FCA 120 at [151].
118. The Act defines the prior art base in respect to the determination of novelty for whole of contents as follows:
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.[118]
[118] Patents Act 1990 Schedule 1 Dictionary.

119. I note that one could envisage claims to the disclosure of WO ‘873. The next step is to determine whether or not the disclosure in WO ‘873 has, or would have, an earlier priority date. WO ‘873 has a filing date of 21 September 2010, so at least has this as its priority date. I cannot determine whether it has an even earlier priority date from US 12/567,116 as this document is not in evidence. As September 2010 is before the earliest priority date of the Opposed Application it follows that this ground has been made out. Claims 1-2, 10, 13-14, 19 and 21 lack novelty in the light of WO ‘873.
Inventive Step
120. It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, involves an inventive step. Subsection 7(2) states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art (subsection 7(3)).
121. The test for whether an invention is obvious is to ask whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd[119] Aickin J stated:
[119] [1981] HCA 12; 148 CLR 262 at 286.
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."

122. In Alphapharm,[120] the High Court endorsed the use of the reformulated "Cripps question":
[120] Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; 212 CLR 411.

"Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art and the facts, directly be led as a matter of course to try the invention as claimed in the expectation that it might well produce a solution to the problem."[121]
[121] Alphapharm at [53].

123. This has been elaborated on in the Full Federal Court’s decision Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft:
“We do not think that the plurality in Alphapharm were saying that the reformulated Cripps question was the test to be applied in every case. Rather, it is a formulation of the test which will be of assistance in cases, particularly those of a similar nature to Alphapharm. The plurality did not reject as an alternative expression of the test the question whether experiments were of a routine character to be tried as a matter of course (The Wellcome Foundation Limited v VR Laboratories (Aust) Proprietary Limited (1981) 148 CLR 262, at 280‑281, 286, per Aickin J). We do not think there is a divide here in terms of whether an expectation of success is relevant between a test which refers to routine steps to be tried as a matter of course and the reformulated Cripps question. It is difficult to think of a case where an expectation that an experiment might well succeed is not implicit in the characterisation of steps as routine and to be tried as a matter of course.“[122]
[122] [2014] FCAFC 73 at [71].

124. In AstraZeneca AB v Apotex Pty Ltd[123] (AstraZeneca), the court held that in formulating the problem it is not permissible to incorporate information that is not available to the person skilled in the art either as common general knowledge or information available under subsection 7(3).
[123] [2014] FCAFC 99; 107 IPR 177.
125. The Opponent submitted that the claims lacked an inventive step when the common general knowledge is combined with either of two documents.[124] The common general knowledge was considered by Emmett J in ICI Chemicals & Polymers Ltd v Lubrizol Corporation Inc:
[124] Opponent’s submissions at 74.
“The common general knowledge is the technical background to the hypothetical skilled worker in the relevant art. It is not limited to material which might be memorised and retained at the front of the skilled workers mind but also includes material in the field in which he is working which he knows exists and to which he would refer as a matter of course. It might, for example, include:
·           standard texts and handbooks;
·           standard English dictionaries;
·           technical dictionaries relevant to the field;
·           magazines and other publications specific to the field.” [125]
[125] [1999] FCA 345; 45 IPR 577 at [112].

126. The common general knowledge must be established by evidence as stated by Emmett J in Dynamite v Aruze:
“It is necessary to establish common general knowledge by appropriate evidence. Evidence that consists of generalised and sweeping statements of opinion or recollection, unsupported by secondary materials such as text books, trade journals and technical publications, should be treated with caution and given little weight.” [126]
[126] [2013] FCA 163 at [104].

127. I accept the Opponent’s submission that the build-up of scale was a significant problem in industrial processes, including the Bayer process was common general knowledge. Both of the experts were in agreement on this and it is discussed in the Opposed Application and both of the citations.[127] The Opponent listed several dot points as to what was common general knowledge and while some of them may be part of the common general knowledge (for example that the Bayer process involves a caustic environment), they do not advance the Opponent’s case when they are combined with the disclosures of the documents. Of particular relevance to the independent claims are two points which I will deal with here. These are that polymeric compounds are more viscous than lower molecular weight compounds and that high viscosity compounds can cause problems with handling and dispersion in the Bayer process.
[127] Easton #1 at [29]; Kildea at [26], [28].
128. Firstly, the evidence cited by the Opponent in support of the notion that polymeric compounds are more viscous than lower molecular weight compounds is by Prof Easton when he is discussing the reactions in the current specification where he states:
“In my opinion, increased viscosity is indicative of a higher proportion of polymers in the reaction product, whereas a reduction in viscosity is indicative of a lower proportion of polymers and a higher proportion of small molecules and oligomers in the mixture.”[128]
[128] Easton #2 at [28].

129. This statement is made in the context of the Opposed Application and is focused on a particular set of circumstances. Although it appears to make sense, it might not apply in all circumstances and to induce a general statement from an opinion on a particular set of conditions is an incorrect approach to establishing the common general knowledge.
130. Secondly, the evidence cited by the Opponent in support of highly viscous compositions causing problems with dispersion in the Bayer process are again statements made in relation to the Opposed Application. Dr Kildea states:
“Accordingly, while the desired small molecules can indeed be made in a batch process, the outcome has undesirable aspects in terms of both material handling and unwanted side products that make it an impractical route for production of such small molecules in practice. This is clearly taught through comparison of the data expressed in Table I, above.”[129] (my emphasis)
[129] Kildea at [107].

131. Dr Kildea is not saying that at this was common general knowledge, rather, he is talking about what is taught by the Opposed Application. Furthermore, the later statement cited is in relation to the description:
“the description of the reaction in the terms used in the opposed application clearly outlines to those skilled in the art how to optimally produce the desired small molecule components while minimising any undesirable side reaction products that may hinder both performance and materials handling or manufacturing logistics.”[130]
[130] Kildea at [111].

132. These comments only establish what Dr Kildea read in the context of the Opposed Application and what it was doing. It does not show that these were widely known and formed part of the common general knowledge.
133. The Opponent cited WO ‘873 for inventive step stating that the priority date is to be taken as the filing date. I have found on the evidence that the later priority date only applies to the claim where only one compound is used alone and in isolation, the priority document teaches the reaction and use of the crude mixture. WO ‘873 does not teach separation and isolation and furthermore I could find no direction which would lead the person skilled in the art to isolate and separate the reaction product as it is used in WO ‘873 without purification. Furthermore I have no submissions or evidence on this point. Therefore, on the balance of probabilities, WO ‘873 does is not prejudicial to the inventive step of the accepted claims.
134. The Opponent also submitted that claims 1-22 do not involve an inventive step when the common general knowledge is combined with the following document:
WO 2008/045677 A1 (CYTEC TECHNOLOGY CORP) 17 April 2008[131] (WO ‘677)[132]
[131] This is before the priority date claimed.
[132] Exhibit CJE-4.

135. The Opponent submitted that WO ‘677 begins by stating the field of invention it is directed to :
“This invention relates to polyamines and methods of using them for treating scale in various industrial process streams. Preferred embodiments relate to hydrophobically modified Si-containing polyamines that have been found to be particulary useful for treating aluminosilicate scale in difficult-to-treat industrial process streams, such as the Bayer alumina process, nuclear waste streams and kraft paper mill effluent streams.”[133]
[133] WO ‘677 at [0001].

136. WO ‘677 then discusses other Si-containing polymers and methods[134] before stating the summary of the invention it relates to:
[134] WO ‘677 at [0004]-[0005].
“Novel Si-containing polymers and methods have now been developed for the treatment of scale in industrial process streams.”[135]
[135] WO ‘677 at [0006].

137. The disclosure that follows is a broad Markush structure of the Si-containing polymers. The document then states:
“Another embodiment provides a composition comprising a polymeric reaction product of at least a polyamine, a first nitrogen-reactive compound, and a second nitrogen-reactive compound, the polymeric reaction product having a weight average molecular weight of at least about 500”.[136]
[136] WO ‘677 at [0024].

138. Indeed the document is disclosing a similar reaction to the Opposed Application but is directed towards polymers, rather than small molecules. The document mentions a large number of polyamines at [0025] and mentions 1,2-aminoethane, 1,5-diaminopentane and 1,5-diaminohexane. I note that these are used in the Opposed Application. Similarly at [0026] glycidoxypropyl trimethoxysilane is mentioned in a large list of Si-containing nitrogen-reactive compounds. A large number of ethers are given at [0027]. In paragraphs [0030] and [0031] two embodiments are generally described relating to examples 1-6 and 1-7 respectively. In terms of the examples of WO ‘677 Prof Easton notes that:
“Examples 1-6”…“demonstrate that polymeric reaction products having greater hydrophobicity were more effective at reducing deposition of sodalite.”[137]
[137] Easton #1 at 61

And
“Examples 7-15”…“showed that the more hydrophobic products reduced the amount of sodalite that precipitated.”[138]
[138] Easton #1 at 62.

139. I note that WO ‘677 is silent on the issue of viscosity. Prof Easton, in reply, reads the issue of viscosity from the Opposed application and then states that it would have been a problem with WO ‘677:
“The passage at page 3, lines 16-20 of AU '990 identifies the problem of viscosity encountered with trialkoxysilane-grafted polymers described in the prior art, specifically WO '677. In this context, WO '677 is said to disclose the addition of silane-containing polymer materials to the Bayer process stream, but that "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" (page 3, lines 16-18). I agree that trialkoxysilane-grafted polymers (such as trialkoxysilane-grafted polyethyleneimines described in WO '677) will have a relatively high degree of viscosity.”[139]

[139] Easton #2 at 31.

140. I note that Examples 7-15 are directed towards making polymers[140] and not small molecules. Furthermore, small molecules are not suggested. Prof Easton’s statements about this were only made in reply and the Applicant submitted that they were tainted with hindsight. The High Court warned against hindsight in Aktiebolaget Hassle v Alphapharm Pty Ltd[141] and approved the words of Lord Diplock in Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd:

[140] WO ‘677 at [0031] and [0058]-[0059]
[141] [2002] HCA 59; (2002) 212 CLR 411; (2002) 194 ALR 485; (2002) 77 ALJR 398 at [29]
“Once an invention has been made it is generally possible to postulate a combination of steps by which the inventor might have arrived at the invention that he claims in his specification if he started from something that was already known. But it is only because the invention has been made and has proved successful that it is possible to postulate from what starting point and by what particular combination of steps the inventor could have arrived at his invention. It may be that taken in isolation none of the steps which it is now possible to postulate, if taken in isolation, appears to call for any inventive ingenuity. It is improbable that this reconstruction a posteriori represents the mental process by which the inventor in fact arrived at his invention, but, even if it were, inventive ingenuity lay in perceiving that the final result which it was the object of the inventor to achieve was attainable from the particular starting point and in his selection of the particular combination of steps which would lead to that result." [142]
[142] [1972] RPC at [362].

It is clear to me that WO ‘677 discusses polymers throughout the specification and makes no mention of the problem with viscosity and I cannot see any direction to use small molecules.
141. Prof Easton goes on to state that:
“the preparation and use of trialkoxysilane-grafted polymers (e.g., as described at para [0030] and exemplified in Examples 2-6 of WO '677) is just one embodiment that is disclosed in WO '677. WO '677 also describes (e.g., para [0030]) alternative methods for preparing Si-functionalised reaction products involving "condensation" reactions in which (1) a relatively low molecular weight polyamine (e.g., 1,6-diaminohexane, 1,2-diaminoethane, triethylenetetramine, etc) is reacted with (2) a first Si-containing amine reactive compound (e.g., glycidoxytrimethoxysilane – paragraph [0026]) and (3) a non-Si-containing amine reactive compound (e.g., 2-ethylhexylglycidyl ether – paragraph [0027]). As I indicated in paragraph 30 above, Examples 7-15 of WO '677 illustrate this "semi-batch" methodology, namely the sequential, dropwise addition of the respective amine-reactive compounds to an amine compound.”[143]
[143] Easton #2 at 32.

142. The disclosures in paragraphs [0026] and [0027] are part of what is often referred to as a “laundry list” and I do not see any reason why one would be directly led to use the specific choices required to arrive at the current claims. The routine steps a person skilled in the art would take have not been set out nor how this relates to any common generally knowledge. In my view Prof Easton has, in his evidence in reply, used hindsight make a selection based on the claims of the Opposed Application. Furthermore, I do not see the benefit in comparing a dropwise addition with a semi-batch process when the end result in one is a mixture of polymers and the other yields a mixture of small molecules. This evidence does not satisfy me that, on the balance of probabilities, the PSA would be directly led as a matter of routine to the claimed invention with the expectation of success.
143. Based on the evidence I have, this ground of opposition fails.
Conclusion
144. The ground of s 59 (c) has been successful. The ground of novelty has also been successful. All other grounds fail.
Opportunity to Amend
145. It is usual for the Commissioner to give the Applicant an opportunity to amend after a successful opposition where there is scope to overcome the existing grounds. In the current case the Applicant filed amendments with their summary of submissions for this hearing. I will note that these amendments appear to overcome ground of s 59 (c) in relation to s 40. However, the proposed amendments include claims to the use of reaction products yielded from the reaction of 1,6- Hexanediamine, 3-glycidoxypropyltrimethoxysilane and 2-Ethylhexylglycidyl ether (see claim 1 pages 52-55). It seems likely that the applicant will need further amendments in order to avoid the disclosure of WO ‘873 which discloses this reaction. I will allow the applicant time to file further amendments.
Costs
146. The Opposition has been successful. Costs are awarded against the Applicant under Schedule 8.
K. Wagg
Delegate of the Commissioner of Patents

Evidence	Declarant	Date	Reference	Exhibits
In Support	Prof Christopher John Easton	23 February 2016	Easton #1	Schedule 1 CJE-1 to CJE16
In Answer	Dr John David Kildea	25 May 2016	Kildea	JDK-1 to JDK-7
In Answer	Dr Gareth Michael Dixon	25 May 2016	Dixon	GMD-1 to GMD-2
In Reply	Prof Christopher John Easton	15 February 2018	Easton #2	-

[2019] APO 2

8 January 2018