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

[1983] APO 17

In the Matter of the Patents Act 1952

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In the Matter of Application No. 502388 for a Patent 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. 502388 was advertised accepted in the Official Journal of 26 July, 1979.   Notice of opposition thereto under section 59 was lodged on 25 January, 1980 by Clement Hack & Co., acting on behalf of Societe Miniere et Metallurgique de Penarroya ("Penarroya").
         Declarations in support of the opposition were served by Penarroya on Dextec Metallurgical Pty. Ltd. ("Dextec") on 13 November, 1980.   Although Dextec sought and obtained extensions of time up to 13 August, 1981 to serve declarations in answer it never did so, but on 18 May, 1981, it lodged a request under section 77 to amend the complete specification.   The reasons stated for the amendment were:

"To restrict the scope of the invention claimed to overcome grounds of Opposition."

One of the grounds of opposition related to prior claiming by the claims of Penarroya patent No. 490140, and while Dextec never directly indicated so, it apparently made the section 77 request to obviate this particular ground.  

Basically, the amendments consist of deletion of claims 1‑5 with corrections consequential thereto.   This had the effect of deleting one of the two embodiments described and claimed by the specification as at acceptance.  Penarroya opposed allowance of the amendments under section 82, but the opposition was dismissed and the hearing officer allowed the amendments on 3 September, 1982.
         It seems that another effect of the amendments made by Dextec was that the evidence in support of the section 59 opposition lodged by Penarroya was largely superseded.   Penarroya subsequently applied to adduce further evidence under sub‑regulation 59(3), Dextec contested the matter and the Assistant Commissioner, in a decision dated 20 December, 1982, refused the application.
         The hearing preceding this decision arose as a result of the section 59 opposition, and took place at Canberra on 3 May.   Dextec was represented by Mr. R.F. Pickering of Spruson & Ferguson, Patent Attorneys, Sydney, and Penarroya was represented by Mr. W.L. Thomson, Patent Attorney, Canberra, instructed by Messrs. Clement Hack & Co., Patent Attorneys, Melbourne.
The Specification
         The invention is concerned with electrochemical recovery of metal and the description of the specification in its present form states that:

"the invention relates to the dissolution and recovery of copper from copper and iron bearing ores or concentrates particularly sulphide ores or concentrates, and allows at a low cost the substantially pollution free production of copper metal at substantially atmospheric pressure in a single step."

It then describes various prior art processes, making reference to several patent specifications, viz.:
  Canadian Patent No. 618623
  U.S. Patent No. 3673061
  Australian Patents No. 459619
  No. 466261
  No. 476026
  Australian Application No. 56990/73.
         I note as a matter of interest that the Australian patent of Penarroya No. 490140 is not referred to anywhere in the Dextec application.   The specification then explains that the process of the invention overcomes the disadvantages of the described prior art processes and allows the single step conversion of chalcopyrite to elemental sulphur, iron oxide and metallic copper, (in relatively iron free solutions), at atmospheric pressure, without requiring the production of electrolytic iron.
         This statement is not, in my view, intended to be read by the applicant as imposing a limitation on the invention in the sense, for example, that the starting material must include chalcopyrite.   Thus there is a separate full statement of the invention in terms corresponding to claim 1 which requires only that the equivalent starting material be "a copper and iron bearing ore or concentrate".   The description goes on to explain that one of the major advantages of the process of the invention is that it can be operated under atmospheric pressure and consequently pressurised vessels do not have to be used.   Although the process of the invention would be operative at higher pressures, the invention and claims are restricted to securing this advantage.  Accordingly, the term "substantially atmospheric pressure" as used in the specification and claims means pressures other than pressures for which pressurised vessels are required.
         The statement of the invention to which I have referred, reads as follows:

"Broadly in accordance with the present invention there is provided a process for extracting copper from a copper and iron bearing ore or concentrate and concomittantly plating out the extracted copper at the cathode of an electro‑

chemical diaphragm cell which comprises immersing the ore or concentrate in an electrolyte in the anode compartment of the electrochemical diaphragm cell, intimately mixing the slurry so formed with finely dispersed air or other oxygen bearing gas at substantially atmospheric pressure and at temperatures of from 50`C to the boiling point of the electrolyte, the said electrolyte containing chloride ions in a concentration between that sufficient to maintain in solution any cuprous ions present and saturation, and passing current between the anode and cathode at a rate such that the hydrogen ions liberated at the anode maintain a pH of between 1.5 and 5.0 in the electrolyte, whereby the iron solubilised in the process is precipitated as ferric oxide, and in the case of a sulphide ore or concentrate sulphide sulphur oxidizable under the conditions is substantially converted to elemental form, and the copper is plated out on the cathode."

The specification illustrates the preferred form of the invention by reference to two figures and two detailed examples.   The statement of claim consists of eight claims, claim 1 being in the same terms as the statement of invention above, and claims 2 to 7 being appended claims.   Claim 8 is an omnibus claim making reference to the examples.
         From the description, a slurry of an iron‑containing copper ore or concentrate is anodically oxidised in a diaphragm cell.   The ore may or may not contain sulphur or sulphide.   The process of anodic oxidation yields Fe3+, Fe2+, Cu2+ and Cu+ from the ore, and also free S if the ore contains S=.   The mechanisms of these anodic reactions are not stated, but are undoubtedly complex; they may however be regarded as if the anode extracted valency electrons directly, e.g:
         2CuFeS2   Cu+ + Fe2+ + Cu2+ + Fe3+ + 4S   + 8e
                  H2O   2H+ + 1/2 O2 + 2e.
The Cu2+ is plated out at the cathode while the Fe2+ is oxidised to Fe3+ with gaseous oxygen (from air or other oxygen bearing gas) and precipitates out at the prevailing pH in a readily filterable form defined in claim 1 as ferric oxide, but described in example 1 as "gelatinous ferric hydroxide".   No analysis is given to support either result.
         The description and claims require that the pH of the electrolyte is controlled by current rate to between 1.5 and 5.0.   The current controls the rate of anodic oxidation, hence the generation of hydrogen ions.
The Evidence
         The only documentary evidence lodged in support of the opposition is an affidavit made by Jean‑Michel Demarthe.   M. Demarthe describes himself as a Graduate of the Ecole Centrale des Arts et Manufactures (Paris) and Docteur es Sciences Physiques (Paris).   He has been involved for about 10 years with research in the field of minerals and metals at Trappes, France, and is presently the Head of Metallurgical Research Department and Research Program Coordinator for Societe MINEMET RECHERCHE.   A substantial portion of the affidavit is directed to proving that the embodiment defined by claim 1 and its appended claims of the Dextec specification are prior claimed by the Penarroya Patent No. 490140.
Section 48
         At the hearing, no attempt was made by the opponent's representative, Mr. Thomson, to pursue the matter of prior claiming by the Penarroya patent No. 490140, and indeed, in my opinion, this would have been an unprofitable venture subsequent to the incorporation of the amendments in the Dextec specification.
Section 40
         On the question of section 40, Mr. Thomson made a number of attacks on the specification.   In summary, these were as follows:

1.Paragraphs 28 and 29 of the declaration in support indicate that the Dextec requirement of an upper pH limit of 7 (now 5 since the amendment) is confusing, as to the knowledge of the declarant Cu2+ is not soluble between a pH of 4 and 7 and Cu+ tends to precipitate as a result.   Consequently the Dextec process is not operable between a pH of 4 and 7 and the upper limit now claimed, i.e. pH5, is evidence of insufficient or erroneous teaching.

2.Paragraphs 31‑34 of the declaration in support indicate that the Dextec specification is incorrect in referring to the precipitation of ferric oxide in the process and that what is actually precipitated is goethite, a hydrated ferric oxide, FeO(OH).   Further, example 1 refers to the precipitation of gelatinous ferric hydroxide, thus further confusing the issue, as claim 1 is not in accordance with this example.

3.At page 9A, the Dextec specification recites:

"We have discovered a method of using electrochemical techniques and air at atmospheric pressure and at temperatures above 50`C to accomplish the oxidation of chalcopyrite in the pH range of approximately 1.5 to 5.0 and recovery of copper according to:

2CuFeS2 + 1.502    2Cu` + Fe2O3 + 4S`."

This statement appears to be a statement of invention, and therefore as claim 1 is not limited by reference to the terms of that equation, it is not fairly based.
         Taking Mr. Thomson's submissions in turn, I will consider first the matter of the pH range claimed for the process.   Mr. Thomson supported these submissions by reference to the qualifications and experience of the declarant, which are quite substantial.   Mr. Pickering countered by pointing out that the qualifications and experience of the declarant were obtained in France, and therefore were not relevant to the state of knowledge expressed in the specification of an Australian patent application.   My own view is that the tenets, principles and reactions of hydrometallurgy presumably hold good in France as they do in Australia, and it is only the state of knowledge in Australia about which a foreign declarant ought be unsure.   In the present case the question of whether the declarant or the specification is correct on the workability of the process above a pH4 is not resolvable on the evidence before me.   In any case, I view the matter as one of utility and not sufficiency, as clearly, the specification contains sufficient information for the performance of the steps of the process.
         Mr. Thomson's second submission concerns the nature of the precipitate ‑ the declarant indicates that it is an hydrated ferric oxide.   He does this on the basis of the technical disclosure in the Penarroya patent specification No. 490140.   On the other hand the Dextec specification refers in example 1 to a ferric hydroxide precipitate but in the claims to a ferric oxide precipitate. Mr. Pickering argued that there was no real problem, as a man skilled in the art would be aware that in the process as claimed the ferric oxide precipitate would occur in hydrated form.   In point of fact there is no evidence that a definite hydroxide, Fe(OH)3, exists and the precipitate commonly called ferric hydroxide is best described as hydrous ferric oxide, Fe2O3.nH2O.   At least a part of such precipitate seems to be FeO(OH), as stated by the opponent.   See, for example, 3rd Ed. "Advanced Inorganic Chemistry" by Cotton & Wilkinson at pages 863, 864.   Consequently I conclude that Mr. Pickering is correct in saying that a man skilled in the art would be aware of the form of the precipitate, i.e. insofar as it is capable of being determined.
         Mr. Thomson's third submission concerns the fair basis of the claims having regard to the statement at page 9A of the specification.   As Mr. Thomson has rightly pointed out, the statement appearing at page 9A is a statement of invention ‑ I view it however, as an inclusive and not an exclusive statement.   What constitutes the invention must be determined from a reading of the specification as a whole.   Thus the title, the consistory statement (recited earlier in this decision) and the broader claims are concerned only with a process for the recovery of copper from ores or concentrates.  Aside from the examples and the reference at page 9A, there is no indication that the process is in any way restricted to treating chalcopyrite (CuFeS2).   Additionally, page 16 of the specification recites:

"It follows that the process is suitable for the treatment of sulphides, oxides and mixed sulphide/oxide ores ...........

.... The use of chalcopyrite in the examples described is because it is one of the most common of the sulphide ores of copper, is reported to be the most noble and difficult to decompose of the sulphides of copper, and creates severe treatment problems due to the large amounts of chemically bound iron.   In general, other sulphides of copper are more easily treated by this process than chalcopyrite."

Consequently I cannot agree with Mr. Thomson's submissions on fair basis.
         Thus the opposition has failed on all grounds; and unless an appeal is lodged within the permissible period, I will direct that the application be sealed.
         On the question of costs, Mr. Thomson submitted that Penarroya should be awarded all costs at least up to and finalisation of the section 77 request made by Dextec irrespective of the outcome of the section 59 action.   Mr. Pickering disagreed and said that the section 77 request was made independently of the section 59 evidence and was for the purpose of bringing the specific‑
ation into line with equivalent specifications lodged by Dextec overseas.   Mr. Pickering may well be right, however he presented no evidence to support his submission, and it seems to me that the purpose of the section 77 request (which deleted one of the two embodiments described and claimed) was to avoid any prior claiming by the Penarroya patent No. 490140, the evidence for which constituted the declaration in support of this opposition.
         Therefore, in dismissing the opposition, I award costs against the applicant up to the time of finalisation of the section 77 request, and against the opponent from that time to the finalisation of the section 59 action.

(J.L. ROVETA)