Dextec Metallurgical Pty. Ltd. v. Societe Miniere Et Metallurgique De Penarroya

[1983] APO 30

In the Matter of the Patents Act 1952

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In the Matter of Application No. 510493 by DEXTEC METALLURGICAL PTY. LTD.

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In the Matter of Opposition thereto under Section 59 by SOCIETE MINIERE ET METALLURGIQUE DE PENARROYA.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
         Application No. 510493 by Dextec Metallurgical Pty. Ltd. was advertised accepted on 26 June, 1980.   Notice of opposition thereto under section 59 was lodged on 26 September, 1980.   The matter was heard in the Melbourne Sub‑Office on 7 February, 1983.   The applicant was represented by Mr. W. McMaster, Patent Attorney, instructed by Cowie, Thomson & Carter, Patent Attorneys, Melbourne and the opponent by Mr. C.M. Bentley, Patent Attorney, of Clement Hack & Co., Patent Attorneys, Melbourne.
         At the hearing, Mr. Bentley stated that the opponent only sought to rely on the grounds of opposition set out in paragraphs (d), (e) and (i) of sub‑section 59, viz.: prior claiming in the complete specification of a patent, prior publication and non‑compliance with section 40.   He indicated that the additional grounds of want of novelty and obviousness were also open although the opponent presented no evidence to support these grounds.

The Specification
         The description indicates that the invention relates to the dissolution and recovery of base metals from base metal sulphates and acid soluble ores and concentrates.   It defines "base metal" to mean: zinc, lead, cadmium and associated small amounts of copper and precious metals.   It then indicates that a particular aspect of the invention relates to those ores and concentrates in which copper is not a major component.
         The specification then discusses the disadvantages of the prior art in the following terms:

"The pyrometallurgical treatment of base metal sulphides is expensive, polluting and often requires the disposal of by‑

product, sulphuric acid.

To overcome the disadvantages of the pyrometallurgical process, particularly pollution, processes have been developed to oxidise sulphides under pressure in autoclaves using ammonia, produces large amounts of ammonium sulphate which must be disposed of, and, often requires an associated plant for the production of pure oxygen.

Another process (described in US Patent 3,673,061) accomplishes the oxidation of sulphides at the anode of an electrochemical cell.   The presence of iron in the ore causes a very low current efficiency unless electrolytic iron is produced.   The process is expensive, requires the market‑

ing of electrolytic iron and sulphur to be economical and has high power costs."

In respect of the instant invention the specification states:

"This invention seeks to at least in part reduce the problems associated with the above processes and allows the low cost conversion of base metal ores and concentrates to the metals at atmospheric pressure without the consumption of expensive reagents or the production of by‑products with disposal problems."

The specification contains 7 examples and ends with 12 claims, claim 1 being the sole independent claim, it reads:

"A process for extracting a base metal (as herein defined) from a base metal bearing ore or concentrate, said process including forming a slurry of the ore or concentrate with a solution containing chloride ions and copper ions, intimately mixing oxygen bearing gas with the slurry, maintaining the mixture substantially at atmospheric pressure at a temperature up to the boiling point of the solution, and maintaining the pH of the mixture from 1.5 to 7.0, whereby iron if present in the ore or concentrate is solubilised in the process and is substantially precipitated as ferric oxide, sulphide sulphur if present in the ore or concentrate is oxidised and is substantially converted to elemental sulphur, and the base metal is taken into solution; mixing the resultant solution with base metal ore or concentrate whereby ionic copper is precipitated from the solution, separating the solution from the precipitate, and thereafter recovering base metal from the solution."

The Evidence
         The evidence on behalf of the opponent consists of a declaration by Jean‑Michel Demarthe.   In relation to his experience and qualifications M. Demarthe declares:

"I am a Graduate of the Ecole Centrale des Arts et Manufact‑

ures (PARIS, FRANCE) and "Docteur es Sciences Physiques" (PARIS, FRANCE).   Since obtaining these qualifications, I joined in 1972 the Research Centre of Trappes (FRANCE) which is presently part of the so‑called "Societe MINEMET RECHERCHE" and which conducts research operations for the IMETAL subsidiaries, specially for the so‑called "Societe Miniere et Metallurgique de PENARROYA" and I was appointed as a Head of Hydrometallurgy Laboratories; I am presently the Head of Metallurgical Research Department, Research Program Coordinator and Assistant Manager.   A large part of my activity has been in the field of the recovery of lead, zinc and copper from ores and concentrates containing the same."

The sole declarant for the applicant is Peter Kenneth Everett who is a Director of Dextec and the inventor of the present alleged invention.   He declares in paragraph 3 of his declaration:

"I am a graduate of the University of New South Wales with the degree of Bachelor of Science, in Chemical Engineering, in 1965.

Since that time I have worked in hydrometallurgy, for five years in Canada with Union Carbide, and since then at my own laboratories in Sydney.   My interests have been mainly in manganese, base metals and gold and silver.

I have been continuously experimenting with hydrometall‑

urgical recovery of the base metals since 1972."

Section 40
         Mr. Bentley raised a number of objections under section 40.   In summary, the objections raised were:

1.The term "ionic copper" used in the claims is unclear because the term is ambiguous.

2.The process defined in claim 1 is not operable over the whole of the pH range defined.   According to the opponent's expert, M. Demarthe, Cu(II) is not soluble in the pH range 4 to 7 and the specification contains insufficient and even erroneous teaching when it describes a process being carried out in this range.

3.Claim 1 erroneously refers to "ferric oxide" being precipitated.   According to M. Demarthe goethite, an hydrated ferrix oxide [FeO(OH)] is precipitated under the conditions defined in the claim.

4.As the applicant has stressed the importance of the precipitation of ionic copper, the specification should describe the form of the precipitate and precise the method by which the copper is precipitated by the ore.   The specification does not fully describe the invention as it does not contain such information.

Taking each submission in turn, I will first consider the clarity of the term "ionic copper".   M. Demarthe has something to say on this issue in his declaration in reply:

"... I answer that the term "ionic copper" is confusing since in solution in a chloride medium it is possible to have Cu(I) in cationic form, in the neutral form of copper fluoride and the major part, in the form of anionic complex.   With regard to Cu(II), if the major portion is in the cationic form (complex with oxygen and one chloride ion) there is also neutral cupric chloride and cupric anions.   Consequently the expression "ionic copper" is rather awkward and confusing."

Claim 1 indicates that this "ionic copper" is precipitated from the solution as a result of base metal ore or concentrate addition.   It seems to me that the claim uses "ionic copper" as a generic term covering all the copper species in solution that are precipitated by mixing ore or concentrate with the solution.   I am not satisfied that any difficulty is caused as a result of the specification's use of the term.   It appears to me that M. Demarthe used the term freely in his declaration in support without encountering any confusion.
         The opponent's submission concerning the pH range defined in the present specification is based on an expression of disbelief by its witness, M. Demarthe.   M. Demarthe however does not declare that he has tried to carry out the process in the pH range 4 to 7 and found that he has not been able to implement the invention.   I do not consider that the opponent has provided evidence which clearly establishes the non‑workability of the process in this pH range.   In any case I consider that the opponent's submissions on this point go to the utility of the process and not sufficiency.
         Mr. Bentley's third submission concerns the opponent's contention that goethite and not ferric oxide is precipitated under the process conditions of the invention.   The applicant's declarant, Mr. Everett, contends that it is not believed that all iron is deposited as goethite, in fact it may be several species.   He states: "In this respect the term "ferric oxide" was selected to generically indicate all its forms, e.g. jarosites, goethites, etc.".
         I consider that the reference to "ferric oxide" must be looked at in the context of claim 1 as a whole.   Thus the "ferric oxide" is precipitated in an aqueous medium.   The text "Advanced Inorganic Chemistry", 2nd Ed. by Cotton and Wilkinson at page 858 indicates that there is no evidence that any definite hydroxide, Fe(OH)3, exists, and that the precipitate is best described as "hydrous ferric oxide", Fe2O3.nH2O.   It further indicates that at least a part of such precipitate seems to be FeO(OH) (goethite).   This appears to confirm Mr. Everett's contention that iron may be deposited as several species.   I am not satisfied that the opponent has established that any confusion arises as a result of the use of this term.
         The fourth submission concerns the detail with which the specification describes the step of precipitation of ionic copper.   I do not believe that the opponent has provided evidence that establishes that an understanding of the present invention requires such detailed information concerning the method of precipitation and the nature of the precipitate.   Consequently I do not agree with the opponent's contention that the specification fails to fully describe the invention.
PRIOR CLAIMING
         The present application ("Dextec"), accompanied by a provisional application, was lodged on 1 April, 1976.   The complete specification was lodged on 30 March, 1977.   There was no argument that the claims of the complete specification should not be entitled to the date of lodgement of the provisional specification as their priority and I am satisfied that they are so entitled.
         The opponent argued that there is a prior claiming situation existing between the present claims and those of their own patent No. 490140 ("Penarroya").   Patent No. 490140 was lodged on 15 May, 1975 as a Convention application based on a French application No. 7416773 made on 15 May, 1974.   It will be seen that the date of lodgement of this patent precedes the earliest priority date of the present claims, namely 1 April, 1976.
         Mr. Bentley submitted that both specifications claim substantially the same invention even though there is a difference in the language used in the respective claims.   Thus, he asserted, the present claims are prior claimed by the claims of Penarroya's patent.   He cited the precedent Syntex S.A.'s patent (1966) RPC 560 in support of this submission.
         In demonstrating this alleged equivalence of invention claimed, Mr. Bentley adopted the approach of M. Demarthe whereby he divided claim 1 of the two specifications into a number of labelled steps, that is:
"Dextec"
         "A process for:

(a)extracting a base metal (as herein defined)

(b)from a base metal bearing ore or concentrate, said process

(c)including forming a slurry of the ore or concentrate

(d)with a solution containing chloride ions and copper ions,

(e)intimately mixing oxygen bearing gas with the slurry,

(f)maintaining the mixture substantially at atmospheric pressure

(g)at a temperature up to the boiling point of the solution,

(h)and maintaining the pH of the mixture from 1.5 to 7.0,

(i)whereby iron if present in the ore or concentrate is solubilised in the process and is substantially precipitated as ferric oxide,

(j)sulphide sulphur if present in the ore or concentrate is oxidised and is substantially converted to elemental sulphur, and the base metal is taken into solution;

(k)mixing the resultant solution with base metal ore or concentrate

(l)whereby ionic copper is precipitated from the solution,

(m)separating the solution from the precipitate

(n)thereafter recovering base metal from the solution."

"Penarroya"

"A method for:

(a)selectively bringing into solution, one or more non‑ferrous metals selected from the group consisting of lead, copper, nickel, zinc, silver, cobalt and cadmium,

(b)contained in an initial product selected from the group comprising sulphurized ores and concentrates,

(c)comprising lixiviating said initial product with an aqueous solution,

(d)containing cupric chloride,

(e)having an oxido‑reduction potential of from 400 to 800 millivolts with respect to the hydrogen electrode potential,

(f)at a temperature of between 50`c and the boiling temperature of said aqueous solution,

(g)regenerating the resulting solution in situ at atmospheric pressure,

(h)with both an oxygen containing gas, and,

(i)a regenerating agent selected from the group consisting of hydrochloric acid, ferrous chloride and mixtures thereof,

(j)while maintaining the ph of the solution at a value not exceeding 3,

(k)maintaining the cuprous ion concentration at a value at least equal to lg per litre and,

(l)separating the sulphur and any residue from the reaction mixture."

Relying on M. Demarthe's evidence, Mr. Bentley made a step by step comparison between the two claims in an attempt to show the purported equivalence of invention claimed in the two specifications.   It was the opponent's submission in relation to feature "(k)" of "Dextec" that gave rise to strong disagreement from the applicant.
         The opponent's declarant M. Demarthe describes step "(k)" of "Dextec" as a process "wherein the copper is taken into solution" even though, in the claim itself, this step is defined as "mixing the resultant solution with base metal ore or concentrate".   On this basis, the opponent contends that step "(k)" of "Dextec" is equivalent to feature "(k)" of "Penarroya", that is, the feature of "maintaining the cuprous ion concentration at a value at least equal to lg per litre".
         Mr. Mcmaster, on the other hand, asserted that there is a fundamental difference between the two claims and that this is to be found in the feature of "mixing the resultant solution with base metal ore or concentrate whereby ionic copper is precipitated from solution ("(k)" and "(l)" of present claim 1).   He argued that features "(k)" and "(l)" of present claim 1 result in ionic copper being precipitated, not "taken into solution" as asserted by the opponent.   It was the applicant's contention that contrary to the opponent's submission, there is no feature corresponding to Dextec "(k)" and "(l)" in the "Penarroya" claim.
         The present specification discusses the need to recover the copper catalyst used in copper catalysed oxidation reactions.   It describes a process in which this recovery is achieved by the addition of basic metal ore or concentrate to the solution resulting from the oxidation reaction.  According to the specification, this addition causes the copper catalyst to precipitate allowing removal of the copper containing precipitate for subsequent re‑use. Recovery of the base metal can then be undertaken on the resultant catalyst free solution.
         Present claim 1 seeks to define such a process.   As already discussed, it defines the addition of base metal ore or concentrate and the consequent precipitation of ionic copper.   It seems to me clear that such an addition results in the removal of ionic copper from the solution.   I can find nothing in the evidence or the two instant  specifications to support M. Demarthe's understanding that such an addition results in ionic copper being taken into solution.   I can only surmise that it is based on an assumption that copper associated with the added ore or concentrate is introduced into the solution.   Such an assumption however does not take cognizance of the fact that the present defined process is restricted to base metals having small associated amounts of copper.
         On this particular point M. Demarthe does declare at paragraph 27 of his evidence‑in‑reply:

"In answer to Everett paragraph 26, if the conditions necessary to precipitate cuprous sulfide are not complied with, all the cupric copper produced during the air bubbling state is reduced into cuprous chloride and this entails a minimum value of 1 g/l of cuprous chloride."

However this assertion is based on the proposition that even though the present specification teaches, and the present claims define, the resultant precipitation of ionic copper, this precipitation will not in fact occur.   I have no evidence before me establishing that the precipitation reaction does not occur, accordingly I do not find M. Demarthe's comments on this point to be relevant.
         There are other differences between the two claims apart from the fact that the Penarroya claim does not include features "(k)" and "(l)" of present claim 1.   For example, the Penarroya claim emphasises the use of a regenerating agent in the in‑situ regeneration of the catalyst whereas present claim 1 is silent on this feature.   Also the iron precipitation step of Penarroya claim 7 is referred to in the context of the use of ferrous chloride as the regenerating agent ‑ the present claims are silent on this point.
         I am of the opinion that the opponent has failed to establish the ground of prior claiming in a patent.   I am not convinced that the claims of the "Penarroya" patent are directed to the same invention as that defined by the present claims.   In particular, the "Penarroya" claims make no reference to the steps "(k)" and "(l)" of present claim 1.   There is also no evidence before me establishing that these steps are common general knowledge steps.
PRIOR PUBLICATION AND WANT OF NOVELTY
         Mr. Bentley argued as a subsidiary matter that the present claims are prior published by German Offenlegungsschrift 2521690, which corresponds to Penarroya's Australian Patent 490140, and which was available in the Patent Office library shortly before the priority date of the opposed specification.   Mr. Bentley argued that the German document contains the same disclosure as the Penarroya patent and therefore the arguments on prior publication were similar to those used for prior claiming.
         Mr. McMaster pointed out that the content of the German specification was not discussed in the evidence but he did agree that the translation showed its disclosure to be very similar to that of the Penarroya patent.   He also pointed out that because there was no allegation of prior use of the invention described in 2521690 it merely represented a paper anticipation.   He then directed my attention to Canadian General Electric v. Fada Radio ((1930) RPC 69 at page 90) and argued that there were differences between the citation and the present specification similar to those discussed in considering the prior claiming ground and therefore there were no "clear and unmistakable directions so to use it".   After perusal of the German document I agree with Mr. McMaster that the German specification does not teach the present invention and consequently fails to prior publish the present claims.

         Turning to the ground of want of novelty, I agree with Mr. McMaster that the differences between the Australian specification and the German specification do contribute to the working of the invention and thus the present invention is novel (Griffin v. Isaacs (1942) AOJP 739) when considered in light of the disclosure of the German document.
OBVIOUSNESS
         There is no evidence before me establishing that German specification 2521690 formed part of common general knowledge at the priority date of the present claims.   Also the evidence of M. Demarthe cannot be considered in relation to obviousness as he is a foreign expert who is not qualified to comment on the state of common general knowledge in Australia at the priority date.   The opponent has therefore not provided any evidence relating to the ground of obviousness and consequently fails to establish this ground.
CONCLUSION
         I find that the opponent has failed to establish any of the grounds of opposition on which it relied.   I am also satisfied that there are no other lawful grounds of objection.   Consequently I direct that the application and complete specification may proceed to sealing, subject to any appeal.   I award costs against the opponent.

(P.A. Kilborn)