Dearborn Chemical Company Limited v Rohm and Haas Company

[1995] APO 7

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 602951 in the name of Dearborn Chemical Company, Limited

Title:    Biocide Protectors

Action:    Opposition by Rohm and Haas Company under sub-section 104(4)

Decision:     Issued            .

Abstract:    Amendments not allowable.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 602951 by Dearborn Chemical Company, Limited and an opposition by Rohm and Haas Company under sub-section 104(4)

background

Patent application 602951 by Dearborn Chemical Company, Limited was advertised accepted on 1 November 1990. Rohm and Haas Company filed a notice of opposition under section 59 of the Patents Act 1952 on 1 February 1991. The applicant filed a request to amend the application during the period for filing evidence. The request to amend was advertised accepted on 15 July 1993. The opponent filed a notice of opposition to the allowance of the amendments on 15 October 1993. A hearing was held in Canberra on 19 December 1994. Mr Michael Angliss, patent attorney of Davies Collison Cave, represented the applicant. Mr Michael Houlihan, patent attorney of Callinan Lawrie, represented the opponent.

The amendments

The specification as accepted included three independent claims and 48 claims in total.  The independent claims read as follows:

1.  A process for treating an aqueous fluid in contact with iron metal to sustain the biocidal effectiveness of an organic biocide contained in the fluid and detrimentally affected in untreated fluid by the presence of the iron metal, comprising the step of adding to the fluid at least one biocide protector selected from the group consisting of molybdate, chromates, zinc salts, copper salts, cadmium salts, dialkylthioureas, alkoxylated rosin amines, azole biocide protectors, phosphonate biocide protectors, and zinc dust, or a mixture thereof, in an amount effective to inhibit the loss of biocidal effectiveness.

34.  A biocidal composition for use in treatment of aqueous fluids in contact with iron metal comprising an organic biocide which is detrimentally affected by the presence of iron metal and at least two biocide protectors selected from the group consisting of molybdates, chromates, zinc salts, copper salts, cadmium salts, dialkylthioureas, alkoxylated rosin amines, benzotriazole, phosphonates, and zinc dust.

43.  A biocidal composition for use in treatment of aqueous fluids in contact with iron metal comprising an organic biocide which is detrimentally affected by the presence of iron metal and at least one biocide protector.

The amended specification includes five independent claims and a total of forty claims.  The process claims are as follows, with additions (to accepted claim 1) underlined and deletions underlined in brackets:

1.  A process for treating an aqueous fluid in contact with iron metal to sustain the biocidal effectiveness of an organic biocide contained in the fluid and detrimentally affected in untreated fluid by the presence of the iron metal, comprising the step of adding to the fluid at least one biocide protector selected from the group consisting of molybdates, chromates, zinc salts, copper salts, cadmium salts, dialkylthioureas, alkoxylated rosin amines, azole biocide protectors, phosphonate biocide protectors, and zinc dust, or a mixture thereof, in an amount effective to inhibit the loss of biocidal effectiveness and wherein the weight ratio of biocide protector to biocide is in the range of from 0.1:1 to 30,000:1.

21.  A process for treating an aqueous metal working fluid in contact with iron metal to sustain the biocidal effectiveness of an organic biocide contained in the fluid and detrimentally affected (in untreated fluid) by the presence of the iron metal, comprising the step of adding to the fluid at least one biocide protector selected from the group consisting of molybdates, chromates, zinc salts, copper salts, cadmium salts, dialkylthioureas, alkoxylated rosin amines, azole biocide protectors, phosphonate biocide protectors, and zinc dust, or a mixture thereof, in an amount effective to inhibit the loss of biocidal effectiveness and wherein the weight ratio of biocide protector to biocide is in the range of from 0.1:1 to 30,000:1.

40.  A process for treating an aqueous fluid in contact with iron metal to sustain the biocidal effectiveness of an organic biocide contained in the fluid and detrimentally affected in untreated fluid by the presence of the iron metal, comprising the step of adding to the fluid at least one biocide protector selected from the group consisting of molybdates in a dosage amount of at least 150 ppm, chromates in a dosage amount of at least 20 ppm, zinc salts in a dosage amount between 10 ppm and 2000 ppm, copper salts in a dosage amount between 20 ppm and 100 ppm, cadmium salts in a dosage amount between 25 ppm and 250 ppm, dialkylthioureas in a dosage amount of at least 10 ppm, alkoxylated rosin amines in a dosage amount of at least 0.15 ppm, azole biocide protectors in a dosage amount of at least 10 ppm, phosphonate biocide protectors in a dosage amount of at least 5 ppm, and zinc dust in a dosage amount of at least 5 ppm, or a mixture thereof(, in an amount effective) to inhibit the loss of biocidal effectiveness and wherein the weight ratio of biocide protector to biocide is in the range of from 0.1:1 to 30,000:1.

Amended claims 24 and 32 are directed to a biocidal composition, with the differences from accepted claim 34 highlighted as above:

24.  A biocidal composition for use in treatment of aqueous fluids in contact with iron metal comprising an organic biocide which is detrimentally affected by the presence of the iron metal and at least two biocide protectors selected from the group consisting of molybdates, chromates, zinc salts, copper salts, cadmium salts, dialkylthioureas, alkoxylated rosin amines, azole biocide protectors (benzotriazole), phosphonate biocide protectors (phosphonates), and zinc dust and wherein the weight ratio of biocide protector to biocide is in the range of from .1:1 to 30,000:1.

32.  A biocidal composition for use in treatment of aqueous fluids in contact with iron metal comprising an organic biocide which is detrimentally affected by the presence of the iron metal and at least one (two) biocide protector(s) selected from the group consisting of molybdates, chromates, zinc salts, copper salts, cadmium salts, dialkylthioureas, alkoxylated rosin amines, azole biocide protectors (benzotriazole), phosphonate biocide protectors (phosphonates), and zinc dust, or a mixture thereof, in an amount effective to inhibit the loss of biocidal effectiveness and wherein the weight ratio of biocide protector to biocide is in the range of from 0.1:1 to 30,000:1.

The amendments also included new pages 4 and 4a, which contained statements corresponding to new claims 1, 21, 24 and 32.

evidence and submissions

The only evidence filed in relation to the matter was a statutory declaration by Mr Houlihan filed as evidence in support.  In his declaration Mr Houlihan states that he has a Bachelor of Applied Science (Applied Chemistry) and a Bachelor of Applied Science (Wine Science).  He has over 19 years continuous experience in drafting, prosecuting, interpreting and litigating patent applications and patents particularly in the fields of chemistry, biochemistry, and chemical engineering.

At the hearing, Mr Angliss submitted that the declaration was made by the opponent's attorney and not by an expert in the field of the invention.  The applicant submitted that the opinions made by the attorney in a declaration should be given no more weight than those made at the hearing.  Much of the applicant's case rested on the decision of Ethyl Corporation's Patent [1972] RPC 169, where it was put forward that "disclosed in substance" means either expressly disclosed or impliedly disclosed. Impliedly disclosed means that it would be implied by the expert reader. Mr Angliss also referred me to AMP v the Commissioner of Patents 1974 AOJP 3224, where it was stated that the substance of a claim must appear from the language itself interpreted in accordance with ordinary rules of interpretation with a knowledge of the prior state of the art to which the claim relates.  The applicant submitted that as there was no evidence on file as to what an expert reader may or may not imply, the opponent had not made out its case.

decision

I do not agree that a declaration by an attorney filed as evidence in support is exactly the same as opinion expressed by the attorney at the hearing.  There is a significant difference in that in the former case, the applicant has the opportunity of filing expert evidence as evidence in answer refuting the evidence in support.  However, I take note that the declarant has not demonstrated that he is an expert in the field of the invention and the declaration must be read in the light of the experience set out therein.  As there is no evidence as to how a skilled addressee would interpret the specification, I have relied on the ordinary meaning of the language used in the specification in conjunction with the general rules of construction as set out in Decor Corporation Pty Ltd v Dart Industries Inc, 13 IPR 385. If the applicant believes that there is something implied in the specification which is not obvious from the ordinary language used, it would have been in their own best interests to file expert evidence to that effect.

The statement of grounds and particulars set out particulars (a) to (g) under sub-section 102(1), (a) to (l) under sub-section 102(2)(a), and (a) to (d) under sub-section 102(2)(b).  In some cases, similar objections were taken under each of the grounds and where possible I will deal with these together.

1. The opponent stated that each of the new independent claims propose to state that the "weight ratio of biocide protector to biocide" is in a specified range of 0.1:1 to 30,000:1.  Page 29 lines 2 to 4 of the filed specification disclosed in relation to the range "0.1:1 to 30,000:1" that this ratio was with respect to the total protectors relative to biocide.

The claims define "at least one biocide protector" selected from a group.  It is not clear from the claims if the stated weight ratio applies to each biocide protector or to the weight ratio of total biocide protectors.  The claim is therefore ambiguous.  The only disclosure of the claimed range in the specification as filed and accepted is the passage referred to by the opponent.  There is no basis for this range other than to the total biocide protectors.  The range defined in independent claims 1, 21, 24, 32 or 40 is not clearly restricted to total biocide protectors.  The amendment is not in substance disclosed and therefore not allowable.

The opponent also stated that on new pages 4 and 4a, the weight ratio of biocide protector to biocide is not limited to the weight ratio of "total" biocide protector to biocide as was required by page 29 lines 2 and 4 of the specification.  I agree that this introduces an inconsistency into the specification and does not comply with section 40.

1. New claim 2 states that the biocide protector "comprises" a zinc salt and the organic biocide "comprises" an isothiazolone.  According to the opponent, the only disclosure for the weight ratio range of biocide protector to biocide of 1:1 to 20,000:1 is at page 29 lines 13 to 14.  This disclosure is confined to where the biocide is zinc salt and the organic biocide is isothiazolone.  The opponent submitted that the word "comprises" in new claim 2 has broader meaning and scope than the word "is".  Mr Angliss, on the other hand, submitted that there was a direct disclosure of new claim 2 at page 29.  The relevant parts of page 29 are as follows:

"Representative compositions exemplified by the above Examples comprise isothiazolones and ... zinc salts...  In these compositions the most preferred weight ratio range of ... zinc salts to isothiazolone is from about 1:1 to about 20,000:1" (emphasis added).

I agree with Mr Angliss that claim 2 is disclosed in the specification as filed and is within the scope of the claims as accepted.  Paragraph 12 of the Houlihan declaration stated that the disclosure at page 29 does not provide basis for the biocide protector to be zinc salts plus another of the listed protectors while the biocide is isothiozolone plus another of the organic biocides.  But that is not what claim 2 defines.   The word "comprise" was considered in Asahi v WR Grace, 22 IPR 491 at 514, and the subsequent decision on appeal. In that case it was decided that "comprise" meant "consists of" and would not cover claims in respect of an infinite number of substances which might be added. I believe a similar construction of the word is appropriate in the present situation.

1. New claim 4 states that the biocide protector is water insoluble.  The opponent, in the statement of particulars, submitted that

"... the only original disclosure of the possibility of a biocide protector being water insoluble is confined to zinc dust.  There is no disclosure that in general or that all other nominated biocide protectors can be water insoluble."

Page 23 lines 22 to 24 state that "the zinc dust results demonstrate that water solubility is not essential in every case".  According to Mr Angliss this statement says that there are water soluble and water insoluble protectors.  The results from the examples demonstrate that water solubility is not essential in every case.  The statement can quite reasonably be read to include other water soluble biocide protectors.  I agree with this construction.  As claim 2 is appended to claim 1, and within the scope of the original claims, new claim 2 is an allowable amendment.

1. The opponent submitted that new claim 21 did not recite the limitation as given in new claim 1 and the originally filed claims which stated that the organic biocide is detrimentally affected "in untreated fluid" by the presence of the iron metal.  Mr Houlihan submitted that this amounted to the deletion of an essential feature, which was not an allowable amendment.  He referred to the decisions of International Playtex Corporation's Application, (1969) RPC 362 and Re Rosen (1990) AIPC 90-633 regarding the deletion of essential features.

Mr Angliss submitted that "in untreated fluid" was not a limitation on the process.  However the term does appear to place some limitation on the type of organic biocide used in the process.  The claims before amendment were limited to organic biocides detrimentally affected in untreated fluid.  The removal of this condition amounts to a broadening of the claim.  Therefore the omission of the limitation "in untreated fluid" in claim 21 is not an allowable amendment.

1. The opponent alleged that there were a number of deficiencies with new claim 40.  According to the opponent there is no counterpart in the accepted claims to new claim 40.  New claim 40 recites the dosage rate of various of the biocide protectors as were disclosed on pages 27 and 28 of the accepted specification.  The opponent also submitted that there is no disclosure in the accepted specification for where the biocide protector is "azole biocide protector in an amount of at least 10 ppm".  Further, the opponent argued that new claim 40 does not include the requirement that the biocide protectors are present "in an amount effective" to inhibit the loss of biocidal effectiveness.

As acknowledged by the opponent, the dosage rates recited in new claim 40 were disclosed at pages 27 and 28 of the specification.  Page 44 discloses the use of azoles in concentrations of at least 10 ppm.  It appears from the specification that the dosage rates now recited in claim 40 are preferred effective dosage rates for inhibiting the loss of biocidal effectiveness.  Therefore the dosages are within the scope of "an amount effective to inhibit the loss of biocidal effectiveness " claimed before amendment.  I do not agree that new claim 40 needs to contain the words "in an amount effective" to inhibit the loss of biocidal effectiveness, as the effective amounts of each protector are now specifically defined in terms of dosage rates.

1. New claim 40 refers to a range of 1.5:1 to 30,000:1.  There is no broad disclosure of this minimum 1.5:1 weight ratio with respect to each and all of the identified biocide protectors.  This is also at variance with the ratio of 0.1:1 to 30,000:1 at page 4a line 6.  The applicant conceded this point at the hearing and proposed submitting amendments to correct the minimum ratio in claim 40.

1. The opponent objected that new claim 8 proposes to state that there is a dosage amount of between 10 and 2000 ppm of zinc sulphate made to the fluid, whereas accepted claim 7 required that the zinc salt is added such that the total amount of zinc salt to be present in the fluid would be 10 ppm to 2000 ppm.  According to the opponent new claim 8 covers a process where an additional amount of between 10 and 2000 ppm can be added, whereas accepted claim 7 was to a process where a maximum of 10 and 2000 ppm of zinc salt was present.

However I do not see this distinction between the new and the accepted claims.  The relevant part of accepted claim 7 is "... wherein the zinc salt is added in an amount of 10 ppm to 2000 ppm" and in new claim 8 "... wherein the zinc salt is zinc sulphate and wherein the dosage is between 10 ppm and 2000 ppm".  Accepted claim 7 did not refer to the total amount of zinc salt present in the fluid but defined an amount of zinc salt added as biocide protector.  I do not see any difference in the substance of new claim 8 and the accepted claims.  I consider claim 8 to be within the scope of the claims before amendment.

The opponent raised similar objections against new claims 11, 12 and 13.  I consider that these claims are also allowable for similar reasons.

1. In new claim 24, "benzotriazole" of accepted claim 34 has been replaced by "azole biocide protectors".  It was submitted by the opponent that the scope of new claim 24 is substantially broader than accepted claim 34.

Mr Angliss referred to accepted claim 43 and stated that new claim 24 was within the scope of this claim.  I agree.  Accepted claim 43 defines at least one biocide protector.  The description at pages 39 to 44 gives a number of examples of suitable azoles along with a definition of "azole biocide protectors".

The opponent also submitted that "phosphonates" of accepted claim 34 has been replaced by "phosphonate biocide protectors" in new claim 24.  Phosphonate biocide protector is given a specific definition in the description at pages 23 to 26.  "Phosphonate biocide protectors" is narrower in scope than "phosphonates" and is within the scope of the claims before amendment.  Claim 24 is in substance disclosed in the specification as filed and is within the scope of the claims before amendment.

1. The opponent compared new claim 29 to accepted claim 40.  New claim 29 proposes to replace "0.51" which is the lower limit of weight ratio of zinc sulphate to organic biocide by "0.50".  According to the opponent the weight ratio range is therefore larger than that as accepted in claim 40.

At the hearing, Mr Angliss submitted that there was a colon missing between the 5 and the 1 in 0.51 in accepted claim 40 and that this was an obvious error.  The amendment to new claim 29 merely corrected this obvious error to bring the claim into line with the description.  I accept this argument as this is consistent with the way in which ranges are specified throughout the description and claims.  The amendment to new claim 29 is allowable.

1. The opponent objected to new claims 31 and 39.  The relevant part of these claims is:

"... wherein the organic biocide comprises methyl-4-isothiazolin-3-one and 5-chloro-2-methyl-4-isothiazolin-3-one in a weight ratio of approximately 8.6:2.6".

The opponent submitted that it was uncertain whether the ratio of the methyl compound to 5-chloro compound is 8.6:2.6 or if the ratio of 5-chloro compound to methyl compound is 8.6:2.6.  However I consider it is perfectly clear from the claim that it is the former which the claim is defining.  While claims 31 and 39 are worded slightly differently to accepted claim 42, the substance of the claims is the same.

1. The opponent objected that claims 18, 27 are unclear due to the presence of "preferred" carbon atom ranges therein.  But I do not think that the word "preferably" is in itself objectionable unless it makes the claim difficult to construe clearly.  I do not believe that is the case here.  The person skilled in the art would be able to construe the claim knowing that the numbers of carbon atoms qualified by "preferably" are preferred but not essential features of the claims.

1. The opponent also alleged that claim 35 is unclear in that it refers to "benzotriazole in a weight ratio of isothiazolone" (emphasis added).  This appears to be a typographical error.  The correct meaning of the claim would be perfectly clear to a skilled addressee and does not result in any lack of clarity of the claim.

conclusion

I have found that the amendments are not allowable for the reasons given above in points (1), (4) and (6).  Therefore, I refuse to allow the amendments.

I see no reason why costs should not follow the event.  I award costs against the applicant.

Brendan Bourke
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Davies Collison Cave, Melbourne

Patent attorneys for the opponent   :  Callinan Lawrie, Melbourne