Delta EMD Australia Pty Limited v Tronox LLC
[2008] APO 30
•27 November 2008
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 765967 in the name of TRONOX LLC
Title: High Discharge Capacity Electrolytic Manganese Dioxide and Methods of Producing the Same
Action: Opposition by DELTA EMD AUSTRALIA PTY LIMITED under Section 59 of the Patents Act 1990
Decision: Issued 27 November 2008
Abstract
The opponent raised grounds of novelty, inventive step, section 40/fair basis, manner of manufacture and utility. The opponent pursued all these grounds at the hearing.
I had found that claim 6 and claims 10, 11 when appended to claim 6, were shown to be lacking in novelty in light of a PhD thesis by Dr Rodney P. Williams, (Annexure G, Williams first declaration). Claim 6 and claims 10, 11 when appended to claim 6 also lacked an inventive step in light of the Williams thesis when combined with the common general knowledge. The opponent was unsuccessful on the grounds of Section 40/fair basis, manner of manufacture and inutility.
I consider that there is sufficient patentable subject matter within the opposed specification to enable the applicant to overcome the defects of claims 6, 10 and 11. The applicant is granted sixty days from the date of issue of this decision to file suitable amendments to overcome the defects identified in claims 6, 10 and 11.
The power of the Commissioner to award costs is based on section 210 and regulation 22.8. The opponent has been successful on two grounds in respect of claims 6, 10 and 11. Accordingly I award costs in accordance with Schedule 8, of the Patents Regulations 1991, against the applicant Tronox LLC and in favour of the opponent Delta EMD Australia Pty Limited.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 765967 by TRONOX LLC and an opposition under Section 59 of the Patents Act 1990 by DELTA EMD AUSTRALIA PTY LIMITED
BACKGROUND
Kerr McGee Chemical LLC filed patent application No. 765967 under the provisions of the Patent Cooperation Treaty (PCT) on 20 December 1999. The application claims priority from a United States basic application 09/217,168 filed on 21 December 1998. The application was examined and advertised accepted on 9 October 2003. By a request dated 7 February 2007 the name of the applicant was changed from Kerr McGee Chemical, LLC to Tronox LLC. A request to amend the specification under section 104 was filed on 9 October 2007. The request was advertised accepted on 31 January 2008. The allowance of the request was advertised on 19 June 2008.
Delta EMD Australia Pty Limited filed a notice of opposition on 9 January 2004. A statement of grounds and particulars was filed on 15 April 2004. The service of evidence in support, evidence in answer and evidence in reply was completed on 6 June 2007.
A hearing to deal with the substantive opposition was held in Canberra on 28 August 2008. Ben Fitzpatrick of counsel and Virginia Beniac-Brooks patent attorney, Phillips Ormonde & Fitzpatrick, Melbourne, represented the applicant. Fraser Old, patent attorney, Fraser Old & Sohn, Sydney, represented the opponent. Mr Old was accompanied by Mr Rod Williams, declarant for the opponent.
EVIDENCE
Evidence in support consists of:
· A declaration by Rodney P Williams, dated 1 July 2005, with appendices 1 to 4, and Annexures RPW1 and A to H. He states that he has a PhD in Physical Chemistry from the University of Newcastle (in 1996) wherein the subject of his doctoral thesis was, “Characterisation and Production of High Performance Electrolytic Manganese Dioxide for use in Primary Alkaline Cells.” He also states that he had been previously employed by BHP Ltd in various capacities between 1984 and 1999 attaining the position of Senior Research scientist prior to joining his current employer, Delta EMD Australia Pty Ltd where he holds the position of Technical Manager. He further states that by virtue of his education and experience he believes that he is an expert in the production and the properties of electrolytic manganese dioxide.
· A verification of an English language translation of Japanese published application No (1997) 9-78275 made by Michael Small care of Fraser Old & Sohn, patent attorneys, Sydney
Evidence in answer consists of:
· A declaration by Terrell Neils Andersen, dated 21 September 2006, with exhibits TNA-1 to 7. He states that he has a PhD in Physical Chemistry from the University of Utah (in 1958) wherein his doctoral thesis focused on electrochemistry. He also states that he had been variously employed between 1963 and 2001 (prior to his retirement in 2001) in academic institutions and research centres dealing with electrochemistry and electrometallurgy. The last position he held prior to retirement was as Principal Chemist with the Kerr-McGee Technical Centre in Oklahoma City. He is currently retired from full time employment and continues to provide consulting services to Kerr McGee with respect to EMD (electrolytic manganese dioxide).
· A declaration by Natalie Lynne Hibberd, dated 5 October 2006, with exhibits NLH-1 and 2. She states that she is an Information Researcher and dealt with External Client Services of Monash University for the provision of accession dates of two publications.
Evidence in reply consists of:
· A declaration by Rodney P Williams, dated 5 June 2007, with exhibits WILL1 to 3.
THE SPECIFICATION
The specification under consideration is the specification as amended after acceptance. Proposed amendments were filed on 9 October 2007. The allowance (unopposed) of the amendments was advertised on 19 June 2008. The specification commences by stating that the invention relates to electrolytic manganese dioxide (EMD) for use as the cathode in batteries and methods of producing the electrolytic manganese dioxide. It further states that the invention provides electrolytic manganese dioxide which when utilised in batteries imparts higher discharge capacity at high discharge rates. The specification then identifies the defects of the prior art as follows:
“By the end of the 1980’s, EMD was developed having what was thought to be a satisfactory discharge capacity at the then maximum discharge rates demanded by portable devices, i.e., about 0.5 watt. However, during the past several years, the development of lap-top computers, video cameras, cellular phones and the like have brought about a demand for high discharge capacity at higher discharge rates, i.e., from 1 to 2 watts. While some improvements in battery performance at high discharge rates have been made, EMD has not changed significantly in discharge capacity or in the process conditions utilised in its production for many years. Thus, there is a continuing need for better, higher quality EMD whereby alkaline and other batteries utilising the EMD having higher discharge capacities at the higher discharge rates presently required.”
This is followed by four consistory clauses. Clause one is directed to a method of producing EMD having a high discharge capacity at high discharge rates. Clause two is directed to improved cathode materials including the EMD of clause one. Clause three is directed to improved cathode materials including EMD having a specified intrinsic discharge capacity and specified initial open circuit voltage. Clause four is directed to improved cathode materials including EMD having a specified intrinsic discharge capacity, a specified initial open circuit voltage and a specified compressed density. Subsequently the specification provides a brief description of the drawings followed by a detailed description of the invention including examples of the invention as well as examples of the prior art. The specification concludes with eleven claims, four of which are independent, four are omnibus claims (appended to various independent claims) and three are appended to claim 1. The independent claims read as follows:
1.A method of producing electrolytic manganese dioxide (EMD) having a high discharge capacity at high discharge rates by electrolysis in an electrolytic cell having cathodic and anodic electrodes disposed therein including the steps of:
maintaining an aqueous electrolyte solution comprised of sulfuric acid and manganese sulfate in said electrolytic cell at a temperature in the range of from 95oC to 98oC, said solution having sulfuric acid therein in an amount in the range of from 25 to 40 grams of sulfuric acid per liter of solution, having manganese sulfate therein in an amount whereby manganese ion is present in the range of from 5 to 15 grams of manganese ion per liter of solution, the amount of sulfuric acid in said electrolyte solution being greater than or equal to two times the amount of manganese ion therein; and
applying electric current to said electrodes whereby said anodic electrode current density is in the range of from 2.5 to 3.5 amperes per square foot and high discharge capacity EMD produced is deposited on said anodic electrode.
5.An improved cathode material including electrolytic manganese dioxide (EMD) having an AA-cell discharge capacity at a 1 watt discharge rate of at least about 68.2 milliampere hours per gram and an AA-cell discharge energy at a 1 watt discharge rate of at least about 755 milliwatt hours.
6.An improved cathode material including electrolytic manganese dioxide (EMD) having an intrinsic discharge capacity of at least about 256.1 milliampere hours per gram and an having an initial open circuit voltage of at least about 1.639 volts.
7.An improved cathode material including electrolytic manganese dioxide (EMD) having an initial open circuit voltage of about 1.639 volts or higher, an intrinsic discharge capacity of about 254.6 milliampere hours per gram or higher and a compressed density of at least about 3.162 grams per cubic centimeter.
STATEMENT OF GROUNDS AND PARTICULARS
The opponent raised grounds of novelty, inventive step, section 40/fair basis, manner of manufacture and utility. The opponent pursued all these grounds at the hearing.
DECISION
Both parties made oral submissions at the hearing and had filed written submissions prior to the hearing. I shall refer to these as well as any earlier filed evidence wherever relevant in my decision.
Novelty
The opponent had listed seven documents and an allegation of prior use for the ground of novelty in the statement of grounds and particulars. Of those seven documents, one was raised on the basis of a “whole of contents” novelty matter. I shall first consider the matter of novelty by prior publication, next the matter of novelty based on “whole of contents” and finally novelty based on prior use in Australia.
Novelty – Prior publication
The reverse infringement test from Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at 235 states:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
The reverse infringement test teaches that if a citation discloses all the features of the claim, the claim will lack novelty. If the citation does not disclose all the features of the claim, the claim will still lack novelty provided the citation discloses all the essential features of the claim; but if the essential features are not disclosed in the citation, the claim is novel (Nicaro Holdings v Martin Engineering 16 IPR 545 and Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183).
Before considering the documents raised by the opponent against novelty, I shall proceed to determine the features of the invention set out in claim 1 of the specification. I note that the independent claims 5 to 7 have different features to claim 1 and I have addressed these subsequent to claim 1. The features of claim 1 are:
1. A method of producing electrolytic manganese dioxide (EMD) having a high discharge capacity at high discharge rates by electrolysis in an electrolytic cell having cathodic and anodic electrodes disposed therein including the steps of:
2. maintaining an aqueous electrolyte solution comprised of sulfuric acid and manganese sulfate in said electrolytic cell at a temperature in the range of from 95oC to 98oC,
3. said solution having sulfuric acid therein in an amount in the range of from 25 to 40 grams of sulfuric acid per liter of solution,
4. having manganese sulfate therein in an amount whereby manganese ion is present in the range of from 5 to 15 grams of manganese ion per liter of solution,
5. the amount of sulfuric acid in said electrolyte solution being greater than or equal to two times the amount of manganese ion therein; and
6. applying electric current to said electrodes whereby said anodic electrode current density is in the range of from 2.5 to 3.5 amperes per square foot (26.9 to 37.7 A/m2) and
7. high discharge capacity EMD produced is deposited on said anodic electrode.
The features of claim 5 are:
1. An improved cathode material including
2. electrolytic manganese dioxide (EMD) having an AA-cell discharge capacity at a 1 watt discharge rate of at least about 68.2 milliampere hours per gram and
3. an AA-cell discharge energy at a 1 watt discharge rate of at least about 755 milliwatt hours
The features of claim 6 are:
1. An improved cathode material including
2. electrolytic manganese dioxide (EMD) having an intrinsic discharge capacity of at least about 256.1 milliampere hours per gram and
3. having an initial open circuit voltage of at least about 1.639 volts.
The features of claim 7 are:
1. An improved cathode material including
2. electrolytic manganese dioxide (EMD) having an initial open circuit voltage of about 1.639 volts or higher,
3. an intrinsic discharge capacity of about 254.6 milliampere hours per gram or higher and
4. a compressed density of at least about 3.162 grams per cubic centimeter.
The opponent and applicant provided detailed submissions on novelty against the documents raised which I have taken in to consideration. Rather than listing all those submissions for each citation I shall refer to them wherever relevant in my decision. The opponent has cited six documents including a patent specification which I shall assess on an individual basis. The patent specification is a Japanese document for which an English translation has been provided. Henceforth any reference made to disclosures of the Japanese document should be taken as disclosures made in the relevant English translation.
JP 9-78275 (English Translation, Annexure A, Williams first declaration)
JP 9-78275 discloses a method of production of electrolytic manganese dioxide using an aqueous electrolytic solution comprising a sulphuric acid solution of manganese sulphate wherein electrolysis is performed by switching the current density between 105 to 300 A/m2 and 20 to 100 A/m2 during the entire electrolysing period. The electrolyte composition is made up of 20 to 50 g/l of manganese and 30 to 80 g/l of sulphuric acid. The electrode materials are graphite, titanium and lead and the electrolyte bath must be kept at 90 to 100oC.
On comparing with claim 1 of the opposed application I note that features 4 (manganese concentration) and 5 (ratio of sulphuric acid to manganese ion) as set out above have clearly not been disclosed. Looking at feature 5 (sulphuric acid:Mn ratio) I note that this is not specifically defined in the citation as a requirement that must be met but for the ranges of sulphuric acid and manganese given the citation would encompass situations where this requirement would be satisfied for some of the range of values. Another difference lies in the switching of the electrolysing current applied in the process of the citation. The citation indicates that the best results are obtained when electrolysing current was applied at a density of 100 to 300 A/m2 for 0.5 to 6 hours and a density of 20 to 100 A/m2 for 10 to 100 hours and that these conditions are repeated 1 to 20 times and continuous electrolysis is performed over approximately 20 days (480 hours).
The opponent has asserted that the product of both processes is the same but has not provided any evidence to show that this is the case. Further even if the product were the same the opponent has not shown that the process of the citation possesses all the essential features of claim 1 of the opposed process. I find that claim 1 is novel in light of JP 9-78275. As I have found claim 1 to be novel I find that appended claims 2 to 4, 8 and 9 are consequently also novel.
I shall now consider claim 5. The citation indicates that the discharging properties of the EMD powder resulting from its method are found to be superior to that produced by any of the existing methods. The examples of the citation show that the discharge time up to a battery voltage of 0.9V in working examples 1 to 11 has been improved by 3 to 17% compared to the battery of comparative example 1, which was prepared without switching the current density during the electrolysing process. I note however that there is no explicit disclosure of the AA-cell discharge capacity and AA-cell discharge energy figures defined in opposed claim 5. Williams (declaration 2) at paragraph 14 provides a comparison of these features with figures of cell discharge capacity (calculated by Williams) for JP9-78275 making use of teachings provided in the opposed specification which indicates that the EMD of JP9-78275 and opposed claim 5 are similar. However, there is no firm evidence either from the citation or a physical practice of the process of the citation to show that the EMD product of the citation possesses the same properties as set out in claim 5 of the opposed application. Also there is no evidence to show that the practice of the process of the citation would inevitably produce a product with properties falling within the ambit of opposed claim 5. Further, I note that the feature of “an AA-cell discharge energy at a 1 watt discharge rate of at least about 755 milliwatt hours.” defined in claim 5 has not been shown to be disclosed by the theoretical calculations. I find that claim 5 of the opposed application does not lack novelty in light of JP9-78275. Consequently, claims 10 and 11 which are appended to claim 5 do not lack novelty in light of JP9-78275. No submissions were provided challenging the novelty of claims 6 and 7 and claims appended thereto. Thus I find that Claims 1 to 11 of the opposed application do not lack novelty in light of JP 9-78275.
“The Effect of Operating Parameters on the Properties of Electrolytic Manganese Dioxide,” Ph.D. Thesis, Meshan Mauthoor, University of Witwatersrand, Johannesburg, South Africa, 1995 (Annexure B, Williams first declaration)
The opponent’s submissions relevant to this document were directed to the novelty of only opposed claims 1 to 4.
I shall address the issue of public availability of the document raised by the applicant prior to addressing novelty. The third page of the document indicates that it was lodged with the University on 31 May 1995. The second page of the document refers to 1995 as the date of the document. This issue of public availability of PhD theses had been previously addressed by the delegates in Steel Foundations Limited v Soiltest Australia Pty Ltd [2001] APO 37 and Cadbury Schweppes PLC v Effem Foods Pty Ltd [2002] APO 38. Hence, unless there is clear evidence to the contrary I shall proceed on the assumption that the thesis was published and/or made available in the university library a few months after submission. Thus the latest possible publication date would be in 1996 which is clearly before the relevant priority date. I note also that the prior art base (see Definitions in Schedule 1 to the Patents Act 1990) referred to in section 18 (1)(b) of the Patents Act 1990 indicates that the publication can occur outside Australia.
The main disclosure of the Mauthoor document is directed to the effects on the properties of EMD of varying process parameters such as temperature, current density and electrolyte composition. The results are summarised as follows:
· An increase in electrodeposition temperature has the effect of increasing the electrical discharge capacity of the EMD
· The discharge capacity of EMD shows a maximum at a deposition current density between 25 and 35 A/m2 (2.3 to 3.3 A/ft2)
· The discharge capacity shows a maximum at a Mn:H+ ratio range between 0.4 to 1 (equivalent sulphuric acid:Mn mass ratio of 1.78 to 4.46)
Comparing the disclosure of the Mauthoor document with opposed claim 1, I find that there are several combinations of deposition conditions disclosed but none disclose the particular combination set out in claim 1. When the temperature in the cited process was varied it did not exceed 94.5oC which lies outside the opposed range of 95 to 98oC. The current density, sulphuric acid concentration and manganese concentration were held constant but only the sulphuric acid concentration lay within the opposed range. When the current density was varied with constant temperature and constant manganese and sulphuric acid concentrations, two values of current density and the sulphuric acid concentration lay within the opposed ranges. Sulphuric acid and manganese concentration effects were studied at a constant current density and temperature. The current density and temperature lay outside the opposed ranges. The manganese concentration varied from 12.9 to 41.2 g/l thus being partially within the opposed range. The sulphuric acid concentration ranged from 68.9 down to 18.4 g/l entirely covering the opposed range. The manganese and sulphuric acid concentrations were not explicitly disclosed but had been calculated by Williams (opponent’s declarant) and accepted by Andersen (applicant’s declarant). Overall I find that there is no disclosure of the combination of features of claim 1. I find that the Mauthoor document does not show claim 1 to be lacking in novelty. As I have found claim 1 to be novel I find that appended claims 2 to 4 are consequently also novel.
“Effect of Some EMD Structural Features on Alkaline Discharge Capacity,” T N Andersen, Progress in Batteries and Battery Materials, Vol 11 (1992), pp 105-129 (Annexure C, Williams first declaration)
The opponent raised this document in respect of claims 1 to 4 of the opposed application. The citation indicates that the EMDs studied fell into two classes determined by deposition conditions and the relationship between alkaline discharge capacity and structural properties. The two classes were: (1) those samples deposited at current densities less than ~3 mA/cm2 and at 95oC and (2) those samples deposited at current densities greater than ~6 mA/cm2 or at lower temperatures (91oC and 81oC). The citation stated that for Group 1 samples, the alkaline discharge capacity (at 20 mA/g) increases with deposition current density while for Group 2 the capacity decreases with deposition current and also with decreasing temperature. There are some differences between the disclosure of the citation and claim 1. For instance, the ratio of sulphuric acid to manganese ion is disclosed as constant in the citation but there is no requirement as in claim 1 that the amount of sulphuric acid in said electrolyte solution should be greater than or equal to two times the amount of manganese ion therein. Further the maximum temperature is 95oC and the range of 95 to 98oC is not disclosed. Also the manganese ion concentration of 5 to 15 g/l is not disclosed. Thus the combination of features of opposed claim 1 is not disclosed in the citation. Thus claim 1 and appended claims 2 to 4 do not lack novelty in light of the Andersen paper.
“Growth of electrodeposited γ-manganese dioxide from a suspension bath” E Preisler, Journal of Applied Electrochemistry, Vol 19 (1989), pp 540-546 (Annexure D, Williams first declaration)
The opponent indicated that the features of accepted claims 1 to 6 (current claims 1 to 4) were disclosed in the citation. The Preisler paper is directed to the electrodeposition of electrolytic manganese dioxide from a suspension bath which has solid particles of manganese dioxide added to the normal electrolyte of a manganese dioxide production bath. The paper indicates that use of the manganese dioxide suspension allows the anodic current density to be increased to values more than twice that used in the conventional EMD process. The process parameters (some calculated by Dr Williams and accepted by the applicant) disclosed by Preisler for the suspended bath are a temperature range of 90 to 95oC (same for conventional bath), sulphuric acid concentration of 39.2-68.7 g/l (same for conventional bath), manganese ion concentration of 16.5 to 27.5 g/l (same for conventional bath) and a current density of 7.9 to 23.23A/ft2 (0.46 to 9.29A/ft2 for a conventional bath). The opponent has referred to an Acid:Mn mass ratio of 1.43 to 4.17 but this is restricted to the conventional bath and does not allow for the manganese in suspension used in the bath of Preisler. From a reading of the Williams submission I find that the opposed claims are being challenged on the basis of both the new process as well as the conventional process disclosed in the Preisler document. On comparing the Preisler disclosure with claim 1 I note that:
· there is a one degree overlap of the temperature range used, the common point being 95oC.
· there is a 0.8 g/l overlap in the sulphuric acid concentration.
· The manganese concentration range of Preisler does not cover the opposed range.
· The current density range of Preisler does not cover the opposed range.
· The opponent has not provided any figures for the Acid:total Mn mass ratio where some of the manganese is in suspension.
I find that the Preisler disclosure relating to the suspension bath process does not disclose all the features of claim 1. Consequently I find that Preisler does not render claim 1 and claims 2 to 4, appended thereto as lacking in novelty.
I shall now assess the opposed claims against the conventional process disclosed in the Preisler document. My findings are the same as for the suspension bath process with regard to temperature, sulphuric acid concentration and manganese concentration. The current density and Acid:Mn mass ratio disclosed in Preisler does encompass the opposed ranges in claim 1. Thus the conventional process disclosed in Preisler does not teach the manganese concentration of opposed claim 1. Further Preisler does not indicate if the EMD product of the conventional process is EMD having a high discharge capacity at high discharge rates as set out in opposed claim 1. Consequently I find that Preisler (conventional process) does not render claim 1 and claims 2 to 4, appended thereto as lacking novelty.
Now considering claims 5, 6 and 7 there is no disclosure of the features of these claims in the Preisler document. Williams in his first declaration at paragraph 32 asserts that, “ …it is very likely that EMD produced according to the Preisler prior art conditions would have high drain discharge performance properties equivalent to or better than those outlined in (accepted) claim 8 of the ‘967 patent.” For novelty purposes the disclosure/teaching must be in the citation in question. This is not the case here. I find that claims 5, 6 and 7 do not lack novelty in light of Preisler. I note that appended claims 8 to 11 are omnibus claims appended to the independent claims. As none of the independent claims were shown to be lacking novelty I find that claims 8 to 11 are novel in light of Preisler. Thus I find that Claims 1 to 11 of the opposed application do not lack novelty in light of Preisler.
“New High Rate Panasonic Alkaline Cells,” ITE Battery Newsletter, 1, 1996, p. 42 (Annexure F, Williams first declaration)
The opponent argued that the citation disclosed EMD with significantly greater discharge performance than defined in opposed claim 5. They indicated that the superior discharge performance reported in the citation is the capacity and energy withdrawn from the EMD component of the battery cathode and is significantly higher than the capacity and energy withdrawn from the EMD as claimed by the applicant.
The applicant challenged the publication of the citation stating:
“There is no compelling evidence that the ITE Battery Newsletter was publicly available before the priority date of the opposed application – 21 December 1998. It is not clear whether the reference to 1996 at the top of the document has been typed in during the process of preparing the evidence, in the same manner as has been done in respect of Annexure H. It would therefore not be safe to rely on this indication to establish prior publication.”
The citation in question is titled “ITE Battery Newsletter No. 1 (Jan-Feb) 1996”. The applicant has not provided any evidence to show that the citation was not available to the public at the date in question. Regarding the publication date of the citation I accept that prima facie the document was published no later than February 1996 as I do not have any firm evidence to show that this was not the case. Regarding the disclosure it refers to AA-size cells with two graphs, one showing variation of the capacity of the cell in Ampere-Hours versus the Cell voltage (volts) and the other showing specific capacity in Ampere-Hour/kg at 130 mA and 1000 mA discharges with discharge down to 0.8 Volt. The latter graph shows figures for (1) a high rate Panasonic AA alkaline cell, (2) a Li-FeS2 cell and (3) a regular alkaline cell. Williams’s first declaration has provided a conversion of the figures from both graphs to units similar to those used in claim 5. The applicant has not challenged the converted figures.
Looking at claim 5, I note that it is directed to an improved cathode material including electrolytic manganese dioxide (EMD) having an AA-cell discharge capacity at a 1 watt discharge rate of at least about 68.2 milliampere hours per gram and an AA-cell discharge energy at a 1 watt discharge rate of at least about 755 milliwatt hours. The citation does not confine itself to EMD and cathode materials including EMD. Further the properties disclosed are those of the whole cell rather than an improved cathode material including EMD as defined in claim 5. I note that the other citations raised by the opponent have clearly referred to EMD and its properties. I cannot conclude that this citation is therefore disclosing properties of EMD/cathode materials including EMD, nor is there any suggestion that the performance of the cell is linked to use of EMD with improved properties. I find that the ITE Battery Newsletter does not show claim 5 to be lacking in novelty.
Looking at claims 6 and 7 they also define properties of initial open circuit voltage (IOCV) and claim 7 in addition refers to the compressed density of EMD. None of these features are disclosed in the citation. Thus the ITE Battery Newsletter does not render claims 6 and 7 as lacking in novelty. I note that appended claims 10 and 11 are omnibus claims appended to independent claims 5 to 7. As none of the independent claims were shown to be lacking novelty I find that claims 10 and 11 are novel in light of the citation. Thus I find that Claims 5 to 11 of the opposed application do not lack novelty in light of the ITE Battery Newsletter.
“Characterisation and Production of High Performance Electrolytic Manganese Dioxide for Use in Primary alkaline Cells,” Ph.D. Thesis, Rodney P. Williams, University of Newcastle, 1995 (specifically pp 97-108 and p. 267) (Annexure G, Williams first declaration)
The opponent in its written submissions raised this citation against claims 6 and 7. I shall address the issue of public availability of the document prior to addressing novelty. There is no indication on the material submitted in evidence (Annexure G, Williams first declaration) that it forms part of a PhD thesis and neither is there any date of submission and name of the author. Dr Williams has asserted in his declaration that this material formed part of his PhD thesis at the University of Newcastle in 1995. The applicant has not challenged the authenticity of the material submitted as annexure G but challenged the publication in Australia. Thus there is no disagreement that the material formed part of the Williams PhD thesis submitted to the University of Newcastle in 1995. The issue of publication of PhD theses had been previously addressed by the delegates in Steel Foundations Limited v Soiltest Australia Pty Ltd [2001] APO 37 and Cadbury Schweppes PLC v Effem Foods Pty Ltd [2002] APO 38. Hence, unless there is clear evidence to the contrary I shall proceed on the assumption that the thesis was published and/or made available in the university library a few months after submission. Thus the latest possible publication date would be in 1996 which is clearly before the relevant priority date.
I shall consider claim 6 which defines, “An improved cathode material including electrolytic manganese dioxide (EMD) having an intrinsic discharge capacity of at least about 256.1 milliampere hours per gram and an having an initial open circuit voltage (IOCV) of at least about 1.639 volts.” The table in the citation discloses values of open circuit voltage and alkaline discharge activity for a large variety of samples of Electrolytic Manganese Dioxide (EMD). Mr Andersen at paragraph 20 of his declaration, when discussing the Williams thesis states, “The only electrochemical discharge property measured was what Williams terms the alkaline discharge activity (ADA), which is identical to the “intrinsic capacity test” in the ‘967 patent application.” Thus I can compare the disclosures of Table 8.2 with claim 6. The applicant had stated that such a comparison was not proper as the methodology used to determine IOCVs in Table 8 of the thesis was not the same as that used in the opposed application. However I note that claim 6 is not restricted to any particular method and merely defines properties of electrolytic manganese dioxide. Before comparing the figures I need to determine how the term “about” in claim 6 should be interpreted. The opponent has indicated that the specification has provided some guidance in this matter at page 11, Table I where it lists values of various properties along with the expected standard deviation around those values. The applicant has not challenged this interpretation of the term “about” and its application to the values of claim 6. I agree that the values of standard deviation identified for the relevant properties set the variation (hence the limit of “about”) above and below the average value. The standard deviation was set at 2.0 mAh/g for intrinsic discharge capacity (or ADA) and at 0.006 V for the IOCV. Thus the base value of the intrinsic discharge capacity in claim 6 would be 254.1 mAh/g and the base value for IOCV would be 1.633. Looking at Table 8.2 of the citation I note that the following samples satisfy the requirements of claim 6, LSC 8/60 (1.635, 256), LSC 8/70 (1.639, 254), LSC 10/100 (1.642, 255), LSC 17/A (1.641, 254). The opponent had referred to sample LSC 17/N but this is not present in Table 8.2. I note that the value of 254 mAh/g is 0.1 mAh/g outside the minimum value but the difference equates to 0.04% which is clearly insubstantial. I find that Claim 6 of the opposed application lacks novelty in light of the Williams thesis. Consequently claims 10 and 11 when appended to claim 6 also lack novelty in light of the Williams thesis.
Looking at claim 7, it defines, “An improved cathode material including electrolytic manganese dioxide (EMD) having an initial open circuit voltage of about 1.639 volts or higher, an intrinsic discharge capacity of about 254.6 milliampere hours per gram or higher and a compressed density of at least about 3.162 grams per cubic centimeter.” This claim defines an additional feature of compressed density of EMD when compared with claim 6. This feature is not disclosed in the Williams thesis. The opponent stated that, “Just because the applicant measured and then claimed a cathode property of its allegedly inventive EMDs that no prior art document refers to, or battery manufacturing customer measures, it does not render opposed claim 7 patentable.” The opponent has not provided any evidence to show that the compressed density defined in claim 7 does not alter in anyway the product as defined in claim 6. Further from the documents provided by the opponent the disclosures appear to indicate that the physical structure (which could have an effect on the density) of the EMD has an effect on the performance of the material in a battery cell. In the absence of any evidence to show that the materials disclosed in the citation at Table 8.2 have the same compressed density as the material of claim 7, I find that claim 7 is novel in light of the Williams thesis. Consequently claims 10 and 11 when appended to claim 7 are also novel in light of the Williams thesis.
Novelty – Whole of contents
AU-A 15233/00 (Annexure E, Williams first declaration)
The opponent stated that claim 5 was clearly disclosed in the citation. The document in question has an earliest possible priority date of 16 November 1998. With regard to “whole of contents novelty” Section 7 (1)(c) of the Patents Act refers to:
(c) prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1.
The relevant portion of Schedule 1 defining prior art base states:
prior art base means:
(a)…
(b) in relation to deciding whether an invention is or is not novel:
(i)information of a kind mentioned in paragraph (a); and
(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 after the priority date of the claim under consideration; and
(C) the information was contained in the specification on its filing date and when it was published.
Looking at subparagraph (b)(ii) of the definition of prior art base in Schedule 1, and assessing the citation against the requirements stated therein I find that requirements (A) and (B) are satisfied. Regarding (C) there is no disclosure in the citation of the discharge capacity and discharge energy as specified in claim 5 of the opposed application. The opponent has asserted that the citation does disclose these features but only if certain calculations are carried out using ‘commercially available digitizing software’. The calculations were carried out by Dr Williams for the opponent. I agree with the applicant that there is no evidence that this digitizing software formed part of the common general knowledge at the priority date of the opposed application. I further find that there is no evidence to show that the skilled addressee when reading the citation would perceive both the features of opposed claim 5 such as an AA-cell discharge capacity at a 1 watt discharge rate of at least about 68.2 milliampere hours per gram and an AA-cell discharge energy at a 1 watt discharge rate of at least about 755 milliwatt hours therein. There is no indication that the skilled addressee when armed with the relevant common general knowledge at the relevant date would be able to determine that the features of opposed claim 5 were clearly disclosed in the citation. I also note that the citation indicates that the improvement in their invention lies in the use of a semisolid cathode containing EMD rather than an improved form of EMD alone. Thus I find that claim 5 is novel in light of AU-A 15233/00.
Novelty – Prior Use
Certificates of Analysis for Sales Before the Priority Date of EMD Product Produced in Australia by BHP-AMCL or Delta EMD Australia Pty Limited (Annexure H)
The opponent asserted that the claimed electrochemical properties in opposed claims 6 and 7 have been previously published in Certificates of Analysis of EMD produced by Delta EMD in Australia prior to 1998 and exported to customers in the USA. I note that the Certificates of Analysis (from BHP-AMCL and Delta EMD) do disclose the features of intrinsic discharge capacity, initial open circuit voltage and compressed density of EMD. I further note that the Certificates of Analysis from BHP clearly encompass the features (and defined ranges thereof) of claims 6 and 7. The law regarding prior use (prior to 1 April 2002) and at the time the opposed application was filed (20 December 1999) stated:
“prior art base means:
(a) in relation to deciding whether an invention does or does not involve an inventive step or an innovative step:(i) information in a document that is publicly available, whether in or out of the patent area; and
(ii) information made publicly available through doing an act in the patent area.
(b) in relation to deciding whether an invention is or is not novel:(i) information of a kind mentioned in paragraph (a); and
(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 after the priority date of the claim under consideration; and
(C) the information was contained in the specification on its filing date and when it was published.”I have italicised the relevant portions. They indicate that for prior use the requirement is “information made publicly available through doing an act in the patent area.” The patent area as defined in Schedule 1 of the Patents Act 1990 does not include the United States of America. Thus the Certificates of Analysis and accompanying material (EMD) in so far as they were sent to the USA cannot be considered to fall within the patent area. Regarding the presence of EMD and the Certificates of Analysis in Australia prior to being exported I need to determine if this presence constituted “information made publicly available through doing an act in the patent area.” The Certificates of Analysis do not indicate if they were made publicly available in Australia. In particular:
Information that is "publicly available" is information that the public has or can acquire by consulting some source open to it, i.e. material that can be inspected "as of right" by the public. It is enough that the information is available to a single person so long as that person is able to use the information freely without an obligation of confidence. (See Gadd v Mayor of Manchester, (1892) 9 RPC 516 at page 527, Fomento v Mentmore, (1956) RPC 87 at page 105, Monsanto (Brignac's) Application, (1971) RPC 153 at page 159)
There is no indication if these certificates were made available to “at least one member of the public who, in that capacity, was free, in law and equity, to make use of it” (PLG Research Ltd v Ardon International Ltd [1993] FSR 197 at 226 per Aldous J; Humpherson v Syer (1887) 4 RPC 407 at 413 per Bowen LJ).
The Certificates of Analysis for EMD indicate locations of BHP premises in Newcastle and the premises of Delta EMD Australia Pty Ltd (Delta). There is no accompanying evidence which shows that BHP or Delta made the Certificates of Analysis publicly available before the relevant priority date. I find that the alleged prior use in Australia of EMD and the presence in Australia of the relevant Certificates of Analysis have not been proved and do not destroy the novelty of claims 6 and 7 of the opposed application.
Inventive Step
The opponent’s initial submission was that the claimed invention lacked an inventive step in light of a) common general knowledge of at least one person skilled in the art in Australia at the priority date, and b) six documents raised against the opposed application for the purposes of novelty-prior publication. Their written submissions contended that claim 1 was obvious in light of a PhD thesis published by Meshan Mauthoor and JP 9-78275.
Subsections 7(2) and 7(3) of the Patents Act 1990 indicate that a claimed invention will lack an inventive step if it is obvious to a person skilled in the relevant art in the light of:
(a) common general knowledge in the art; or
(b) common general knowledge considered together with information publicly available in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
Aickin J set out the following test for obviousness in Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262 at page 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."
Application of this test in light of Subsections 7(2) and 7(3) of the Patents Act 1990, would require:
· a determination of the problem sought to be solved by the opposed patent specification
· a determination of the non-inventive worker in the field (or the person of ordinary skill in the relevant art) in Australia
· a determination of the common general knowledge in Australia at the priority date (8 August 1996)
In order to determine the problem that the invention sought to solve I shall have regard to the opposed specification. A reading of the specification identifies the following defects of the prior art which it seeks to overcome:
“…there is a continuing need for better, higher quality EMD whereby alkaline and other batteries utilizing the EMD having (sic) higher discharge capacities at the higher discharge rates presently required.”
The comparison is drawn with the 1980s where the maximum discharge rate demanded by portable devices was about 0.5 watt as opposed to current requirements of 1 to 2 watts. The specification also states that, “While some improvements in battery performance at high discharge rates have been made, EMD has not changed significantly in discharge capacity or in the process conditions utilized in its production for many years.” Thus the overall problem seems to identify the need for improved EMD as well as an improved process for its production.
The non-inventive skilled worker in the field would be a Battery Manufacturer/ Manufacturer of EMD/Industrial Chemist with expertise in EMD production. I note that the applicant’s declarant, Dr Andersen is one of the inventors of the opposed invention. Further he indicates that he is the inventor/co-inventor of several patents. Thus he is an expert in the field. He is from the USA and based on his evidence will not be able to comment on developments in EMD in Australia, though he can comment on some of the prior art developments in the field of EMD. Thus, though Dr Andersen does not fit the profile of the hypothetical non-inventive skilled worker in the field, based on the information provided, I consider that Dr Andersen would be able to provide relevant background information on electrolytic manganese dioxide and the state of the art at and around the relevant priority date. Based on the information provided, I consider that Dr Williams would be a non-inventive person skilled in the relevant art in Australia. Dr Williams in his declaration sets out what he considered to constitute the common general knowledge (henceforth cgk) in Australia at the relevant date. Dr Williams indicates that he was employed by BHP Ltd in various capacities between 1984 and 1999 attaining the position of Senior Research Scientist prior to joining Delta EMD Australia Pty Limited, where he holds the position of Technical Manager. I note therefore that Dr Williams is not an independent witness and shall therefore assess his evidence accordingly, that is, I shall seek corroboration of his assertions regarding cgk in Australia at the relevant date whenever they are challenged by the applicant.
I shall now assess Dr Williams’ list of material constituting the cgk in Australia. Dr Williams refers to a variety of “relevant publications” in a number of journals, newsletters and Battery Industry publications.
The teaching of the Courts is that the full extent of what constitutes common general knowledge in a particular matter can only be established by evidence. The Australian Patent Office Manual of Practice and Procedures, Volume 2 National at 2.5.2.1.3 indicates that to form an opinion on what is common general knowledge in the art, one may refer to the following as being indicative of the common general knowledge:
‘standard texts and handbooks, most dictionaries of standard English, relevant technical dictionaries, concession in the patent application under examination, magazines or other publications specific to the art, and patent specifications, under certain conditions.”
However the material disclosed in such publications does not necessarily constitute common general knowledge in the art. Thus in British Acoustic Films Ld v Nettlefold Productions (1936) 53 RPC 221 at page 250:
"In my judgement it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or a series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less merely because it is widely circulated. Such a piece of knowledge only becomes common general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art."
and
"It is certainly difficult to appreciate how the use of something which has in fact never been used in a particular art can ever be held to be common general knowledge in the art."
This was affirmed in General Tire & Rubber Company v Firestone Tyre and Rubber Company Ltd, with the qualification that "without question" should read "generally regarded as a good basis for further action".
Looking at the journals/publications listed by Dr Williams wherein only copies of a few papers have been actually provided, there is no evidence before me which establishes that they were generally known and regarded in Australia as a good basis for further action. There is no indication if all these documents were available in Australia, were read by those skilled in the art and generally accepted as a teaching of common general knowledge in the art of Electrolytic Manganese Dioxide manufacture. I do not consider that the documents raised by Dr Williams (including the publications actually submitted) formed part of the common general knowledge in Australia at the relevant date. However I do note that it was known to produce manganese dioxide electrolytically which would clearly involve a solution from which manganese dioxide can be deposited on an electrode. The electrolysis process would also require an anode and a cathode. Further the application of a current to the solution to cause the movement of ions and operating parameters such as temperature and solution concentrations would be something that the skilled addressee would need to take into account for working the process. I shall therefore assume that the common general knowledge on EMD related to a production process using electrolysis of a solution containing manganese which then facilitated deposition of manganese dioxide under certain operating conditions.
I shall now determine if the teaching of the listed documents raised in the statement of grounds and particulars against inventive step, either individually or in combination with the cgk in Australia, would render the opposed invention as lacking an inventive step. Before I proceed to do this I have to establish if the listed documents would have been ascertained understood and regarded as relevant by the non-inventive skilled worker in the art. All the documents relate to the art of the opposed application and I consider that the various documents which the opponent has established as being in the public domain before the priority date of the claims would be ‘understood’ and ‘regarded as relevant’ by the person skilled in the art. However, I believe considerable uncertainty surrounds whether one of these documents would have been ‘ascertained’; in particular, “New High Rate Panasonic Alkaline Cells,” ITE Battery Newsletter, 1, 1996, p. 42 (Annexure F, Williams first declaration). There is no indication of how widely this was circulated and whether it was publicly available.
In Nippon Kayaku Kabushiki Kaisha and Sankyo Company, Limited v Rohm and Haas Company [1997] APO 40, the hearing officer took the position that a document would be ascertained if it was published in such a manner or form that it could reasonably have been expected to be found by a person skilled in the art. I find myself in agreement with this approach. Applying it to the document in question I note that it is a newsletter and not a journal publication. No evidence has been provided to explain the distribution of this document, and no evidence has been presented which shows me that a person skilled in the art could reasonably be expected to have found this document. I conclude therefore that apart from the battery newsletter the citations raised against prior publication novelty would have been ascertained, understood and regarded as relevant. In particular, the remaining documents in question are all addressed to Electrolytic Manganese Dioxide production processes as well as characteristics of the finished product in alkaline cells. I shall consider each document individually to determine lack of inventive step.
JP 9-78275 (English Translation, Annexure A, Williams first declaration)
Under novelty I had determined that this document did not disclose features 4 and the specific requirement of feature 5 of claim 1 and further that it required that electrolysis be performed by switching the current density between 105 to 300 A/m2 and 20 to 100 A/m2 during the entire electrolysing period. The problem to be solved is to find better, higher quality EMD whereby alkaline and other batteries utilizing the EMD have higher discharge capacities at the higher discharge rates presently required (1 to 2 watts as opposed to previous requirements of about 0.5 watt). Thus I have to determine the teachings which would persuade the skilled addressee, when possessing this document and the established cgk and facing the problem of the prior art, to incorporate features 4 and 5 of the opposed application and also persuade them to stop switching current density. The opponent claims that the process of the citation provides a similar product to that of the opposed one. If this were the case why would the skilled addressee be persuaded or even motivated to change their process and add features 4 and 5 of the opposed application? I find that claim 1 of the opposed application does not lack an inventive step in light of JP 9-78275. As I have found claim 1 to be inventive I find that appended claims 2 to 4, 8 and 9 are consequently also inventive.
I shall now consider claim 5. Under novelty I had found that there was no firm evidence either from the citation or a physical practice of the process of the citation to show that the EMD product of the citation possessed the same properties as set out in claim 5 of the opposed application. Also there was no evidence to show that the practice of the process of the citation would inevitably produce a product with properties falling within the ambit of opposed claim 5. I had also found that the feature of “an AA-cell discharge energy at a 1 watt discharge rate of at least about 755 milliwatt hours.” defined in claim 5 had not been shown to be disclosed by the theoretical calculations. I do not find any indication of persuasive arguments/teaching which when combined with the established cgk and attempting to solve the problem of the prior art would lead the skilled addressee to alter the characteristics of the EMD of the citation to match those of claim 5 of the opposed application. Thus claim 5 does not lack an inventive step in light of JP 9-78275. I note that appended claims 10 to 11 are omnibus claims appended claim 5. As claim 5 was not shown to be lacking an inventive step I find that claims 10 and 11 are inventive in light of JP 9-78275. No submissions were provided challenging the inventiveness of claims 6 and 7 and claims appended thereto. Thus I find that Claims 1 to 11 of the opposed application do not lack an inventive step in light of JP 9-78275.
“The Effect of Operating Parameters on the Properties of Electrolytic Manganese Dioxide,” Ph.D. Thesis, Meshan Mauthoor, University of Witwatersrand, Johannesburg, South Africa, 1995 (Annexure B, Williams first declaration)
The opponent’s submissions relevant to this document were directed to aspects of the invention relevant to the inventiveness of only opposed claims 1 to 4. When comparing the disclosure of the Mauthoor document with opposed claim 1, I find that there are several combinations of deposition conditions disclosed but none disclose the particular combination set out in claim 1. When facing the problem of the prior art and possessing this document and the cgk in the art I have to determine if there is any matter which will persuade the skilled addressee to select the precise combination of conditions of the opposed claimed process. The opponent has not provided solid evidence of any persuasive matter leading the skilled addressee from the citation to the claimed invention. I find that claim 1 of the opposed application does not lack an inventive step in light of the Mauthoor PhD thesis. As I have found claim 1 to be inventive I find that appended claims 2 to 4 are consequently also inventive.
“Effect of Some EMD Structural Features on Alkaline Discharge Capacity,” T N Andersen, Progress in Batteries and Battery Materials, Vol 11 (1992), pp 105-129 (Annexure C, Williams first declaration)
The opponent challenged inventiveness relevant to the aspects of the invention set out in claims 1 to 4. There are some differences between the disclosure of the citation and claim 1. For instance, the ratio of sulphuric acid to manganese ion is disclosed as constant in the citation but there is no requirement, as in opposed claim 1, that the amount of sulphuric acid in said electrolyte solution should be greater than or equal to two times the amount of manganese ion therein. Further the maximum temperature is 95oC and the range of 95 to 98oC is not disclosed. Also the manganese ion concentration of 5 to 15 g/l is not disclosed. Thus the combination of features of opposed claim 1 is not disclosed in the citation. The opponent has not shown how the skilled addressee, having this document in their possession, would be led to pick the precise combination of features of opposed claim 1 when faced with the problems of the prior art. Thus I find that claim 1 does not lack an inventive step in view of Andersen. Hence appended claims 2 to 4 also do not lack an inventive step in light of the Andersen paper.
“Growth of electrodeposited γ-manganese dioxide from a suspension bath” E Preisler, Journal of Applied Electrochemistry, Vol 19 (1989), pp 540-546 (Annexure D, Williams first declaration)
The opponent challenged the inventiveness of independent claims 1 and 5 to 7. I had found that the Preisler disclosure relating to the suspension bath process did not disclose all the features of claim 1. In particular, the manganese concentration range, the current density range and the Acid:total Mn mass ratio where some of the manganese is in suspension did not cover or even fall within the ranges of opposed claim 1. I have not found any matter in this document which when combined with the cgk shows me teachings leading the skilled addressee from the process of Preisler to the process of opposed claim 1. For instance, there is nothing to indicate why the skilled addressee would not use manganese in suspension, or why they would pick a specific manganese concentration range, specific current density range and the same Acid:total Mn mass ratio of opposed claim 1. Hence I find that Preisler does not render claim 1 as lacking an inventive step and consequently I find that claims 2 to 4, appended thereto as not lacking an inventive step.
I shall now assess the opposed claims against the conventional process disclosed in the Preisler document. My findings are the same as for the suspension bath process with regard to temperature, acid concentration and manganese concentration. Thus the conventional process disclosed in Preisler does not teach the manganese concentration of opposed claim 1. Further Preisler does not indicate if the EMD product of the conventional process is EMD having a high discharge capacity at high discharge rates as set out in opposed claim 1. Based on the opponent’s submissions I have not found any material which would lead the skilled addressee from the conventional process to the opposed process of claim 1. Consequently I find that Preisler does not render claim 1 and claims 2 to 4, appended thereto as lacking an inventive step.
Now considering claims 5, 6 and 7 there is no disclosure of the features of these claims in the Preisler document. Williams in his first declaration at paragraph 32 asserts that, “ …it is very likely that EMD produced according to the Preisler prior art conditions would have high drain discharge performance properties equivalent to or better than those outlined in (accepted) claim 8 of the ‘967 patent.” However for inventive step purposes there must be some clear teaching or persuasive argument leading to the opposed invention. This is not evident from the Preisler document or the established cgk. I find that claims 5, 6 and 7 do not lack inventiveness in light of Preisler. I note that appended claims 8 to 11 are omnibus claims appended to the independent claims. As none of the independent claims were shown to be lacking inventiveness I find that claims 8 to 11 are inventive in light of Preisler. Thus I find that Claims 1 to 11 of the opposed application do not lack an inventive step in light of Preisler.
“Characterisation and Production of High Performance Electrolytic Manganese Dioxide for Use in Primary alkaline Cells,” Ph.D. Thesis, Rodney P. Williams, University of Newcastle, 1995 (specifically pp 97-108 and p. 267) (Annexure G, Williams first declaration)
I had determined that claim 6 of the opposed application lacked novelty in light of the Williams thesis. In particular claim 6 defined EMD possessing an intrinsic discharge capacity of at least about 256.1 milliampere hours per gram and having an initial open circuit voltage of at least about 1.639 volts. The problem of the prior art was to find EMD with higher discharge capacity at higher discharge rates. The opposed specification has given some indication of the actual capacity and rates that it considers to be higher than the prior art. Given this information and the problem to be solved, the skilled addressee would when provided with the citation be led to the higher discharge capacities disclosed therein. Also these discharge capacities have been limited to a specified initial open circuit voltage in the opposed claim and the citation provides several instances of this voltage in conjunction with the desired higher discharge capacity. I find that claim 6 and claims 10, 11 when appended to claim 6 lack an inventive step in light of the Williams thesis. Opposed claims 7 and 8 include the features of claim 6 but in addition specify a desired density of EMD. I have no evidence before me to show how the skilled addressee would be led to arrive at this requirement when faced with the problem of the prior art and having read the citation in question. I find that claims 7 and 8 and the claims appended thereto do not lack an inventive step in light of the Williams thesis.
Regarding the document (AU-A 15233/00 (Annexure E, Williams first declaration)) raised against ‘whole of contents-Novelty’ it does not satisfy the requirement of prior art base as set out for inventive step as it was not publicly available at the relevant date. The definition of prior art base as per the Patents Act has been discussed under the heading of Novelty-Prior Use.
Considering the issue of Novelty-Prior Use the definition of prior art base mentioned above requires that the information be made publicly available through doing an act in the patent area. I had determined in the prior use matter that the relevant information raised had not been made publicly available in the Patent Area. Consequently that instance of prior use is not applicable to the matter of inventive step.
Manner of Manufacture
The opponent asserted that the opposed invention did not comply with Section 18(1) (a) of the Patents Act 1990 for the following reasons:
· The claimed invention is directed towards a selection of parameters specified in the claims, however, there is no adequate support for any basis for this selection. In particular, the evidence shows that the so-called “inventive samples” do not produce any unexpected advantageous results over the prior art. Instead there is merely a blurred range of values as one moves between the disclosure of the prior art and the disclosure of the alleged invention. Indeed one sample (No. 9 of Table II) meets the requirements of claim 9 but is not characterised as “inventive.
· The opponent also asserted that the method claims constitute a mere working direction.
The applicant asserted that this ground was not made out in view of the submissions made regarding inventive step. They further asserted that there was no evidence to support this ground of opposition.
The opponent has focussed on the basis for selection of certain parameters. There is no requirement for the applicant to give reasons why they have selected certain parameters and not others. The requirement is for the applicant to describe the invention, how it may be implemented (best method of performance) and provide claims which are fairly based on the invention described. All these matters are section 40 issues and I shall address them under that heading. From the issues raised by the opponent it appears that they are also raising once again matters of novelty and inventive step rather than manner of manufacture. I have already addressed these matters. Regarding the issue of working directions the directions must relate to the production of an identical product. In this case there is nothing to show that an old process is being used and also if an old product is being produced. I find that the opponent has not shown that the opposed invention does not constitute a manner of manufacture.
Inutility
The opponent stated, “In relation to inutility, the claims as amended include within their scope compounds and processes which do not provide any advance in the art and thus fail to meet the promise of the specification. That is, the stated result provided by the invention at page 1 lines 8-11 of the specification is not met by all the compounds and processes of the claims.”
Regarding utility, in Valensi & Another v British Radio Corporation Ltd., (1973) RPC 337 it was said that to prove inutility it is necessary to show that an invention so far as claimed, will not work as described or with any modification which the addressee can properly be expected to make. On the other hand, if a proposed modification which would make the invention work as described, is one which the addressee of the specification cannot be expected to make, then the invention is not fully described.
Also, when considering utility in Tetra Molectric Ltd.'s Application, (1977) RPC 290 at page 297, the Court of Appeal distinguished inutility and lack of full description simply, by saying that "If you cannot achieve the promised result because of deficiencies in the information given in the specification, there is {lack of full description}. But if, following that information and having achieved mechanically that which the specification promises you will achieve by so following it, the end product will not of itself achieve that promise, then that is inutility."’
I note that the opponent has argued that as the claims include within their scope compounds which do not provide any advance in the art then this is a basis for lack of utility. This issue can be addressed under novelty and inventive step and is not a utility issue. On consideration of the issues raised by the opponent I note that there is nothing to show that the invention as claimed does not work. The opponent has raised matters of inconsistency saying that some of the examples (in the description) alleged to practice the invention do not fall within the ambit of some of the claims. This is clearly an inconsistency in the description and does not establish that the invention does not work. In particular the issues on inutility raised by the opponent prior to the last amendment of the specification (allowed unopposed) have been addressed by the amendment. The issue seems to be one of construction. Claim 1 has defined a process with certain operating parameters. There is no material before me which establishes that the skilled addressee is unable to work the invention. The operating parameters have been clearly set out and the ambit of terms such as “high discharge capacity at high discharge rates’ in claim 1 is defined at page 11 of the description. I have not been provided with evidence to show that when all the directions of claim 1 were followed that the process could not be performed or that the desired product was not produced, or that the desired product when produced did not behave as it was supposed to. Similarly when looking at product claims 5 to 8 there is no evidence to show that the product is unattainable or does not work in batteries or that when it is produced by the claimed process it does not have the desired characteristics. I note that as claims 2 to 4, 8, 9 are appended to claim 1 and claims 10, 11 are appended to claims 5 to 8 they also cannot be considered to be deficient in their utility. I therefore conclude that the ground of inutility has not been proven in this instance regarding claims 1 to 11 of the opposed application.
Section 40/Fair basis
The opponent’s statement of grounds and particulars raised the following matters:
(A) The opposed specification does not comply with Section 40(2) in that it does not describe the invention fully including the best method known to the applicant of performing the invention. Particulars are:
a. There is disconformity between the invention described in the specification and the invention claimed in the claims as to the best and/or most preferred values for ranges and/or parameters. See for example, claim 9 and page 14 lines 10-13 and claim 1 and page 9 lines 6-24.
b. The specification is confused as to what constitutes the prior art. See, for example, page 2 lines 9-11; page 3 lines 2-6; page 6 lines 17-20 and page 7 lines 9-12.
c. The specification is silent as to why, or for what reason, the concentration of sulphuric acid in the electrolytic solution is to be maintained at a level greater than or equal to two times the concentration of manganese in the electrolytic solution.
d. the specification describes as prior art two Samples 48 and 54 yet these disclose high acid to manganese ratios.
(B) The opposed specification does not comply with Section 40(3) in that the claims are not clear and/or not succinct and/or not fairly based on the matter described in the specification.
a. The term “comprised” in claims 1-6 is not clear in that it could mean either “having” or “consisting only of”.
b. The term “25 manganese” at claim 4 line 6 is not clear.
c. The numerical values for the ranges and/or parameters specified in the claims are different from those specified in the description and thus not fairly based. See for example, claim 1 and page 9 lines 6-24; and claim 9 and page 14 lines 10-13.
The applicant responded by stating relevant teachings of the Courts regarding fair basis, sufficiency and clarity and I shall refer to them if relevant in my decision on section 40 matters. The opponent’s declarant Dr Williams had also raised section 40 matters in his declaration and I shall address those matters if they have not been previously raised in the statement of grounds and particulars. I shall address the issues as they have been itemised above.
(A)a. I note that current claim 6 (old claim 9) defines, “An improved cathode material including electrolytic manganese dioxide (EMD) having an intrinsic discharge capacity of at least about 256.1 milliampere hours per gram and an having an initial open circuit voltage of at least about 1.639 volts (my emphasis). The description at page 14, lines 10-13 refers to features of discharge capacity, discharge energy and discharge rate (my emphasis). Thus there are different features being described here. I note that the features of claim 6 are disclosed in Table II of the description at pages 23-24. Thus the issue of fair basis does not arise in this particular instance.
(A)b The opponent has referred to various passages in the specification claiming confusion in determination of what constitutes the prior art. Having read these passages I am satisfied that they do not cause any confusion in determining the prior art. The passages indicate that the process of electrolytic deposition of manganese dioxide is well known. From reading the specification as a whole it is clear that the improvement lies in the specific combination of operating parameters and selection of quantity of materials used and the ratio of their quantities to each other. Thus the relevant passages make clear that for the inventive process a highly purified manganese sulphate solution must be provided and the processes by which this is done is identified via reference to several granted patents. The specification also makes clear that making reference to prior art patents is not to be taken as an admission that any of the material was published, known, or part of the common general knowledge in Australia as at the priority date of any of the claims. I do not see where the confusion arises as a result of the above disclosures in the description.
(A)c The issue to be addressed is whether the reasoning behind the selection of a particular ratio of sulphuric acid to manganese ion is necessary for a performance of the invention. There is no requirement that an applicant provide reasons or scientific basis or the theory behind the working of his invention. The applicant is required to describe the invention fully and the best method know to the applicant of performing the invention (section 40(2)(a)). I note that the opponent has not expressed or provided evidence to show that they had any difficulty in understanding or implementing the invention in practice. Thus I do not find any section 40 deficiency in the specification by way of the lack of reason being provided for selection of a particular ratio.
(A)d The issue here is whether the sample in question satisfies all the requirements of claim 1. Mere reference to only the manganese ratios is not a basis for a fair comparison and as far as I can see does not lead to any confusion. In Welch Perrin and Co. Pty. Ltd. v Worrel, (1961-1962) 106 CLR 588 the High Court held that the requirement for a full description is satisfied if it is possible to ascertain the nature of the invention from a reading of the specification as a whole, including the claims. If the skilled addressee is able to determine the invention from a fair reading of the specification and can resolve any issues of clarity and inconsistency to enable them to practice the invention then the description is not deficient under Section 40(2).
(B)a I note that in the current set of claims only claims 2 and 3 use the term “comprise”. In Australia, the meaning of “comprise” (vis-à-vis whether or not it is exhaustive) is determined in accordance with the context of its use. Thus in Asahi v WR Grace 22 IPR 491 it was held that in the circumstances of that case "comprise" was being used exhaustively. The decision in NV Philips Gloeilampenfabriken v Mirabella International, (1993) AIPC 91-025, appears to take a similar line. In General Clutch Corp. v Sbriggs Pty Ltd (1997) 38 IPR 359, after a review of the authorities and several dictionaries, the judge concluded that the normal linguistic meaning is that comprising means made up of, composed of, or constituted by the integers listed. In Fresnius Medical Care Australia v Gambro [2005] FCAFC 220, the court found the word had a non-exhaustive meaning – particularly noting subsequent dependant claims which added extra integers.
Accordingly, the word "comprise" must be given an interpretation appropriate to the context of its use. In some situations, the word will clearly exclude the presence of other elements. In other situations, the presence of other elements will clearly not be excluded. When "comprise" is used in a non-exhaustive sense, it would be expected that:
the advantages of the invention would arise from the features specified (and not from unspecified features),
where an integer is said to "comprise" certain elements, those elements would normally (although not necessarily always) be the predominant feature of the integer.
From a reading of the specification it is not immediately clear as to whether an exhaustive or non-exhaustive meaning should be applied. I note that claims 2 and 3 are referring to the composition of the anode and cathode in the electrolytic deposition of manganese dioxide. As this electrolytic deposition of manganese dioxide, which requires the use of a cathode and anode, is known I assume that the skilled addressee is capable of determining how the term comprise should be interpreted. That is, they would know if the cathode and anode used in the electrolytic deposition of manganese could be formed of pure copper or pure titanium. I note that the claims do not explicitly define the purity of the copper and titanium. Hence I conclude that the term “comprise” is being used in a non-exhaustive sense.
(B)b This matter has been resolved in the currently filed claims and is no longer an issue.
(B)c Comparing claim 1 with the passage at page 9, I note that the passage discloses a manganese concentration of ‘from about 5 to about 50 grams of manganese per liter of solution’. Claim 1 refers to a concentration of ‘from 5 to 15 grams of manganese ion per liter of solution’. Thus the claim has claimed a narrower range than the one in the description. The applicant is entitled to do this as it clearly falls within the specified range. The applicant may also narrow the range of their monopoly when relevant prior art is brought to their attention to avoid issues of novelty and inventive step. There is no indication that the narrowing of the range claimed has altered the nature of the invention or led to the invention not working. As noted by the High Court in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 at [12], the general principle underlying fair basis is:
‘... where the issue is one under a 40(3) of "fair basing" of a claim, what the 1990 Act requires is a comparison between the matter described in the specification and the claim which defines the scope of the monopoly.’
In order for a claim to be fairly based, the claims must be consistent with what the specification as a whole describes as the invention. I have not found any matter in the description or claims which shows that narrowing the range of manganese concentration in solution results in a different invention. I find that claim 1 does not lack fair basis merely because the range of manganese concentration claimed is narrower than that disclosed in the specification.
Regarding the matter claimed in claim 6 (old claim 9) and the disclosure in the passage at page 14 I had addressed this issue under (A)a above. I do not find that claim 6 lacks fair basis in view of the opponent’s submissions as the features being compared are different.
The opponent also raised the following matters in their written submissions at the hearing which I have addressed on an individual basis:
1. There is confusion between what is described as being the best or most preferred and what is claimed, see the “Consistory Statements” at p9 lines6 and p12 line 12 to p14 line 13 which are at odds with the amended claims.
The applicant is describing successive embodiments which provide an increasing level of detail. There is no requirement that the applicant claim all embodiments described. The applicant has quite clearly set out the monopoly they seek and I do not find any confusion arising from the matter set out in claim 1.
2. There is confusion as to what constitutes the invention and the prior art. For example, one of the “inventive EMD” samples namely sample number 35 falls outside the scope of the invention claimed in claim 1 because Mn concentration is 20 g/l (and thus outside the claimed range of 5-15).
As is evident from the submission the opponent has been able to determine that sample 35 falls outside the ambit of claim 1. Thus if the skilled addressee is able to work out where the sample should lie they are able to resolve the matter of apparent lack of clarity. Thus the issue of a real lack of clarity does not arise.
The other matters raised in the submission relate to novelty and inventive step issues which I have already addressed.
CONCLUSION
The opponent pursued grounds of novelty, inventive step, section 40/fair basis, manner of manufacture and utility.
I had found that claim 6 and claims 10, 11 when appended to claim 6 were shown to be lacking in novelty in light of the Williams thesis. Claim 6 and claims 10, 11 when appended to claim 6 also lacked an inventive step in light of the Williams thesis when combined with the common general knowledge. The opponent was unsuccessful on the grounds of Section 40/fair basis, manner of manufacture and inutility.
I consider that there is sufficient patentable subject matter within the opposed specification to enable the applicant to overcome the defects of claims 6, 10 and 11. The applicant is granted sixty days from the date of issue of this decision to file suitable amendments to overcome the defects identified in claims 6, 10 and 11.
COSTS
The opponent submitted that costs should follow the event. The applicant submitted that if they were successful then costs should follow the event.
The power of the Commissioner to award costs is based on section 210 and regulation 22.8. The opponent has been successful on two grounds in respect of claim 6 and claims 10, 11 when appended to claim 6. I note that in light of the documents raised during the evidence in support stage, the applicant had carried out amendments (allowed unopposed prior to the hearing) during the opposition period to overcome some of the objections raised. Thus the opposition has quite clearly raised valid issues which needed to be addressed. Accordingly I award costs in accordance with Schedule 8, of the Patents Regulations 1991, against the applicant Tronox LLC and in favour of the opponent Delta EMD Australia Pty Limited.
Jacob Elijah
Delegate of the Commissioner of Patents27 November 2008
Patent attorneys for the applicant : Phillips Ormonde Fitzpatrick, Melbourne
Patent attorneys for the opponent : Fraser Old & Sohn, Sydney
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