Daikin Industries, Ltd v E.I. Du Pont De Nemours and Company
[1996] APO 45
•18 September 1996
official notice
decision of a delegate of the commissioner of patents
Application: No. 641740 in the name of Daikin Industries, Ltd
Title: Ternary Blended Refrigerant
Action: Opposition under Section 59 of the Patents Act 1952
by E.I. Du Pont De Nemours and Company
Decision: Issued .
Abstract: Opposition under section 59 of the 1952 Act - prior claiming and non-compliance with section 40.
Invention relates to ternary blended refrigerants. Five ternary blends of HFC’s were claimed with a proviso that the total number of hydrogen atoms m and the total number of fluorine atoms n are present in a ratio m / (m + n) that on the average is smaller than 0.5. This is said to result in blends that are substantially non-flammable.
Opposition dismissed. No prior claiming because the claims of Australian patent 640652 are not fairly based on the US basic application and therefore not entitled to an earlier priority date. There was not a “real and reasonably clear disclosure” of the refrigerant compositions claimed in the patent. Nicola Leonadis v Sartas No. 1 Pty Limited, (1996) AIPC 91-239, CCOM Pty Ltd v Jeijing Pty Ltd 28 IPR 48 and Hoffman-La Roche & Co AG v Commissioner of Patents (1970) 123 CLR 529 considered;
Issues raised in relation to section 40 could be easily resolved in light of the normal rules of construction.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 641740 by Daikin Industries, Ltd. and opposition under Section 59 of the Patents Act 1952 by E.I. Du Pont De Nemours and Company
background
Daikin Industries, Ltd. (Daikin) lodged patent application No 74076/91 on 4 April 1991 as a convention application based on application 2-90775 filed in Japan on 4 April 1990.
The application was accepted and given the number 641740. Acceptance was advertised on 30 September 1993 and on 30 December 1993 E.I. Du Pont De Nemours and Company (Du Pont) filed a notice of opposition. Du Pont served a statement of grounds and particulars on 30 March 1994 and its evidence-in-support on 30 June 1994. Daikin did not serve evidence-in-answer.
Daikin subsequently filed a request to amend the complete specification on 3 October 1994 and a further request on 21 August 1995. These requests were eventually withdrawn on 22 January 1996 and the opposition came to hearing in Melbourne on 5 August 1996. Mr J Lyons of Counsel and Mr B Connor, Patent attorney of Carter Smith & Beadle, Camberwell represented the applicant. Mr M Houlihan, Patent attorney of Callinan Lawrie, Kew represented the opponent.
As the application was lodged prior to but advertised accepted after commencement of the Patents Act 1990, the opposition is in substance determined, in accordance with the provisions of section 234(3) of the 1990 Act, under Part V of the Patents Act 1952 but with the procedures of the opposition governed by Chapter 5 of the Patents Regulations 1991
The opponent's statement of grounds referred to paragraphs (d) to (i) of sub-section 59(1) of the 1952 Act; however Mr Houlihan indicated at the hearing that the opponent was relying only on paragraphs (d) and (i), that is, prior claiming and non-compliance with section 40.
SPECIFICATION
The specification commences by reviewing prior art chlorofluorocarbon based refrigerants and indicates that because of the environmental impact of these there is an urgent demand for a refrigerant which has little or no potential to cause depletion of the stratospheric ozone layer. The section titled “Summary of the Invention” indicates that the objective is achieved by using a mixture of three compounds selected from a group of specific hydrofluorocarbons or HFC’s. Later in the specification it is said that the refrigerants “desirable for use” have a composition in the range that they are non-flammable or flame retardant.
The claims of the specification are as follows:
A ternary blended refrigerant selected from the group consisting of the compositions (a) to (e):
(a)a composition consisting essentially of difluoromethane, pentafluoroethane and 1,1,1,2-tetrafluoroethane;
(b)a composition consisting essentially of pentafluoroethane, 1,1,1,2-tetrafluoroethane and 1,1,1-trifluoroethane;
(c)a composition consisting essentially of difluoromethane, l,1,1,2-tetrafluoroethane and 1,1,1-trifluoroethane;
(d)a composition consisting essentially of difluoromethane, pentafluoroethane and 1,1,1-trifluoroethane;
(e)a composition consisting eventually of 1,1,1,2-tetrafluoroethane, 1,1,1-trifluoroethane and 1,1-difluoroethane;
with the proviso that the total number of hydrogen atoms m in the fluorohydrocarbons and the total number of fluorine atoms n in the fluorohydrocarbons are present in said mixtures in a ratio
m / (m + n) that on the average is smaller than 0.5.
A refrigerator which is operated using a refrigerant comprising any one of compositions (a) to (e):
(a)a composition consisting essentially of difluoromethane, pentafluoroethane and 1,1,1,2-tetrafluoroethane;
(b)a composition consisting essentially of pentafluoroethane, 1,1,1,2-tetrafluoroethane and 1,1,1-trifluoroethane;
(c)a composition consisting essentially of difluoromethane, l,1,1,2-tetrafluoroethane and 1,1,1-trifluoroethane;
(d)a composition consisting essentially of difluoromethane, pentafluoroethane and 1,1,1-trifluoroethane;
(e)a composition consisting essentially of 1,1,1,2-tetrafluoroethane, 1,1,1-trifluoroethane and 1,1-difluoromethane;
with the proviso that the total number of hydrogen atoms m in the fluorohydrocarbons and the total number of fluorine atoms n in the fluorohydrocarbons are present in said mixtures in a ratio
m / (m + n) that on the average is smaller than 0.5.
Evidence
The evidence-in-support includes:
A declaration by William Edwin Dobney (Dobney) together with exhibits:
WED-1 - A copy of the accepted specification
WED-2 - A copy of Australian patent specification 640652
WED-3 - A copy of a computer printout from the “Australian Patent Office inquiry system”
A declaration by Donald B. Bivens PhD (Bivens)
Both declarants provide comments on the construction and clarity of the present specification. They also construe the claims of Australian patent 640652 and give reasons why they believe the present invention is the subject of those earlier claims.
I will refer to this evidence and the pertinent points raised by Mr Lyons and Mr Houlihan where appropriate in my decision.
decision
Prior Claiming
The opponent alleges prior claiming by its Australian patent 640652. This patent was sealed on 5 January 1994 and is in force at least until 22 May 1997. The claims of 640652 reads as follows:
“1.A refrigerant composition which comprises a fluorinated hydrocarbon blend of at least two of HFC-134a, HFC-134 and HFC-125 with at least one of HFC-152a (CH3CHF2), HFC-32(CH2F2), HFC-143a(CH3CF3), HFC-143(CHF2-CH2F) and FC-218 (CF3CF2CF3), each said fluorinated hydrocarbon having a normal boiling point in the range of -80°C to +50°C and said blend being miscible at temperatures in the range of -40°C to +20°C with a lubricant which is a polymer of a compound of the general formula; Rf(CH2)nCH=CH2 where Rf is a fluorocarbon radical from CF3 to C20F41; and n is 0 to 2, said lubricant having an SUS viscosity at 38°C(100°F) of at least 50.
2.A composition as claimed in claim 1 wherein said blend comprises HFC-125, HFC-32 and at least one of HFC-134 and HFC-134a.
3.A composition as claimed in claim 1 wherein said blend comprises HFC-125, HFC-134a and HFC-143a.
4.A composition as claimed in claim 1 wherein said blend comprises HFC-134, HFC-143a and HFC-32.”
Mr Houlihan stated the opponent’s view that the case is one of an overlap in the monopoly defined in the claims. In particular, that the compositions (a) and (b) referred to in Daikin’s claims were claimed in the patent. These compositions in the terminology of the Du Pont patent “consist essentially” of:
(a) HFC-32, HFC-125 and HFC-134a
(b) HFC-125, HFC134a, and HFC-143a
Each of course is limited by the proviso that the total number of hydrogen atoms m and the total number of fluorine atoms n are present in a ratio m / (m + n) that on the average is smaller than 0.5. Mr Houlihan however argued with support from Bivens para. 11 and Dobney para. 20 that these compositions by definition satisfy this proviso in any proportion. It was also argued that these compositions were “capable of being miscible” with the lubricant defined in the Du Pont claims - see Dobney para. 33.
Mr Lyons at the hearing began by questioning the priority date of 23 May 1989 claimed by patent 640652 from US basic application 356330. Mr Houlihan responded by raising a point of procedural fairness in that the issue was not foreshadowed by evidence-in-answer and that the opponent should be allowed further time to prepare its case. In particular he referred me to the decision of the delegate in CSIRO v Asterol International, Patent Office decision on application No. 630446, 22 December 1994. While I did not necessarily believe there would be any prejudice to the opponent in these circumstances, the US basic document was not introduced in evidence by either party and, since I believed that it might be of significance to my decision, I invoked the provisions of regulation 5.11. Consequently I allowed the parties to address the issue of the priority date of Du Pont’s patent at the hearing and allowed Du Pont a further 14 days from the hearing to make any further submissions. In the event no further submissions were made.
The claims of the Du Pont patent are only entitled to the priority date of 23 May 1989 if they are fairly based on the matter disclosed in the US basic document. Mr Lyons referred me to a number of decisions in relation to the issue of fair basis and in particular to the decision in Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (1987) 15 FCR 382. Mr Houlihan also directed me to the recent decision of the full Federal Court in Nicola Leonadis v Sartas No. 1 Pty Limited, (1996) AIPC 91-239. This decision includes a review of the relevant law and confirms the decision in CCOM Pty Ltd v Jeijing Pty Ltd 28 IPR 48 where it was found that:
“In Rhone-Poulenc (at 11) Fullagar J. emphasised that disclosure without claim is enough. Hence, it is wrong to proceed as if testing for infringement and to seek to isolate in the body of the complete specification, or in the provisional specification, 'essential integers' or 'essential features' of an invention disclosed therein and to ask whether they correspond with the essential integers in the claim in question; cf. Coopers Animal Health Australia Limited v Western Stock Distributors Limited (1986) 67 A.L.R. 390 at 406, the decision at first instance. Nor would it be applying the statute to ask whether the earlier specifications fairly described the essential features of the invention disclosed in the later specification; cf. Yamazaki at 93, 97. Fullagar J. also pointed out that the requirement of ‘fair basing’ on matter disclosed in an earlier specification would be senseless if what was required was that the subject matter of the claim must have been actually claimed in the earlier specification; rather, there must be ‘a real and reasonably clear disclosure’.”
The court however did not support the proposition suggested in the CCOM decision that there was a requirement that the claim should be “plainly foreshadowed” and noted:
“If the matter is tested according to these principles, the only conclusion that can be reached is ... that the claims as expressed do not travel beyond the matter disclosed”
The court also referred to Société des Usines Chimiques Rhône-Poulenc v Commissioner of Patents (1956) 100 CLR 5, Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (supra) and the tests stated in Re Mond Nickel Co Ltd’s Application (1956) RPC 189 as supporting the proposition that an earlier specification may be regarded as disclosing more than one invention and that a subsequent claim need not take all that is disclosed. As the court put it:
“This plainly leaves open that there may be other material disclosed in the provisional specification, but not included in the claim, which, however, will destroy the fair basing of the claim only if it is ‘inconsistent with the alleged invention claimed’ ”.
US patent application 356330 begins by stating that the field of the invention relates to lubricants used with refrigerants in compression refrigeration and air-conditioning systems. More particularly it is said to relate to lubricants for use with saturated hydrocarbons having 1-4 carbon atoms that are partially or fully substituted with at least one atom of chlorine or fluorine, and have a normal boiling point of -80ºC to +50ºC. It is then stated to be specifically related to lubricants for use with tetrafluoroethanes, e.g. 1,1,1,2-tetrafluoroethane (HFC-134a), and 1,1,2,2-tetrafluoroethane (HFC-134), etc and of lesser importance pentafluoroethane (HFC-125). These compounds are significant in that they are proposed substitutes for CFC-12.
The problem to be overcome is said to be that existing mineral oils are “substantially immiscible with tetrafluoroethanes” and one of the objects is said to be to provide a combination of lubricating oil and refrigerants such as tetrafluoroethane eg HFC-134a. At page 5 the invention is said to be based on the discovery that a “HFC oil” with specific characteristics “will be completely miscible with tetrafluoroethanes and pentafluoroethane, usually 80-90% by volume of the tetrafluoroethanes HFC-134 and HFC-134a, the pentafluoroethane, HFC-125 and other saturated hydrocarbons having 1-4 carbon atoms that are partially or fully substituted with at least one atom of chlorine or fluorine, and have a normal boiling point of -80ºC to +50ºC, or blends thereof, in the range of temperatures from -40ºC to at least 20ºC, preferably to 100ºC, the critical temperature of HFC-134a”.
The description at pages 6 to 7 further indicates that in the preferred embodiment any of HFC-134, HFC-134a and HFC-125 are more or less suitable as the refrigerant (as a substitute for CFC-12) but “could be blended with each other as well as with other refrigerants” including CFC-12, HCFC-22, HFC-152a, HCFC-124, HCFC-124a, HCFC-142b, HFC-32, HFC-143a, HFC-143, and FC-218. However only “those blends of tetrafluoroethane or pentafluoroethane with other refrigerants which are miscible with the lubricants of this invention in the range of -40ºC to about 20ºC are included.” The remainder of the description however concentrates on the properties of the “HCF oils” and particularly their miscibility with HFC-134a. There is no further discussion of the refrigerant blends that could be used with those oils and there is nothing to suggest that one blend possesses any advantage over any other. The claims of the basic document define a composition comprising both lubricant and refrigerant components.
The question then is whether this disclosure forms a fair basis for the claims of the Du Pont patent that are directed to specific blends of refrigerant compositions. In light of the authorities I have already referred to there is no difficulty in the basic document disclosing more than one invention, or including matter that was not subsequently claimed. In my view however, the basic document is directed to only one invention, that is, a composition including a lubricant and a saturated hydrocarbon refrigerant. One might even conclude that it lay in the lubricant itself but it is unreasonable to suggest that there could be any “reasonably clear disclosure” of a refrigerant composition separate from the lubricant. In this sense, the basic document includes matter that is inconsistent with what is subsequently claimed.
I also do not think that there is “a real and reasonably clear disclosure” of the specific refrigerant blends claimed. The references at pages 5 and 6 - 7 to a number of possible blend components cannot be seen as a broad disclosure of the particular blends claimed in the patent and the situation is distinct from that in Hoffman-La Roche & Co AG v Commissioner of Patents (1970) 123 CLR 529 where particular compounds were found to be broadly disclosed by a description of the more general class to which they belonged. Here the disclosure of the basic document in relation to the refrigerant composition is so lacking in specifics that it cannot be said to provide a real disclosure of any particular group of blends and certainly not the actual compositions claimed. What is claimed goes beyond choosing from a number of alternative blends and appears to follow from an inventive step in no way apparent from the basic document.
Consequently I find that the claims of the Du Pont patent are not entitled to the priority date of 23 May 1989. Since the priority of the present application is not contested and precedes the patent’s next available priority date of 22 May 1990, Du Pont’s opposition on the ground of prior claiming must fail.
Section 40
Mr Houlihan referred me to the following issues under this ground of opposition:
The meaning of “consisting essentially of” and “said mixtures” in claims 1 and 2
The antecedent for “the compositions” in claims 1 and 2
Whether the blend of claim 1 was one of the compositions (a) to (e) or a blend comprising three of the compositions (a) to (e)
Claim 1 being inconsistent with the statement of the invention at page 2 lines 14 to 23
The expressions “m+m=6” at page 2 line 21 and “m/m+n” at page 4 line 1
That some of the examples are outside the scope of the claims introducing lack of clarity
The explanation of flammability in the specification in relation to the proviso clause and the ratio m / (m + n) that on the average is smaller than 0.5.
The first 6 of these do not pose any difficulty in light of the normal rules of construction and I do not believe that the expert declarants Dobney and Bivens have any real difficulty in interpreting the specification and claims. The last issue mentioned is however worth some further discussion.
The specification at page 4 states that the refrigerant is “substantially nonflammable” when m/m+n<0.5 on average in the mixture of the three components represented by the formula ClHmFn. Du Pont correctly points out that this proviso is satisfied for compositions (a) to (d) in any proportions and that it is only meaningful for composition (e). Bivens at para. 10 to 13 argues that the proviso means that the compositions are “non-flammable” and that this is in conflict with the dotted lines in the triangular diagrams for compositions (a) to (d) that are said to define a range of mixtures that are non-flammable. The function of the lines is explained at page 6 lines 4 to 6 of the specification.
Mr Lyons at the hearing emphasised that the lines defined regions on the diagrams that indicate compositions that are “non-flammable” while the proviso restricted the compositions to being “substantially non-flammable” as described at page 3 line 30 to page 4 line 3. There is in fact little in the specification to explain how the proviso was arrived at, however I find that the reference at page 3 line 34 to it being desirable that the refrigerants are “non-flammable or flame retardant” supports the proviso being to compositions that are “substantially non-flammable”. I conclude that the skilled addressee would recognise that there was a difference between “substantially non-flammable” at page 4 and “non-flammable” at page 6 and that this view would be confirmed when the respective diagrams were considered.
Consequently I find that the opposition also fails in relation to Section 40.
Conclusion
I have found that the ground of prior claiming is not made out because the claims of the opponent’s patent are not entitled to a priority date earlier than the priority date of the present application. Furthermore I have found that the opposition fails on the ground of non-compliance with Section 40.
That being the case I dismiss the opposition and direct, subject to an appeal of this decision, that the application proceed to sealing.
costs
Having taken all the circumstances into account I do not believe there is any grounds to depart from the general principle that costs follow the event or that costs should be awarded beyond those set out in Schedule 8 of the Regulations. I award costs against the opponent, E.I. Du Pont De Nemours and Company
Delegate of the Commissioner of Patents
Philip M Spann
Patent attorneys for the applicant: Carter Smith & Beadle, Camberwell
Patent attorneys for the opponent: Callinan Lawrie, Kew
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