Dominion Mining Limited v WMC Resources Ltd
[2000] APO 59
•21 September 2000
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 663525 in the name of DOMINION MINING LIMITED.
Title: Activation of a Mineral Species.
Action: Opposition by WMC RESOURCES LTD. to allowance of an amendment of the patent specification under Section 104 of the Patents Act.
Decision: Issued .
Abstract
The specification as a result of the amendments, was found to claim matter in substance
disclosed in the specification as filed.
The complete specification (with the proposed amendments incorporated) was found to
describe the invention fully, including the best method known to the applicant of performing
the invention.
The proposed amendments comply with Section 102 of the Patents Act and are allowable.
Costs awarded against the opponent WMC Resources Ltd and in favour of the applicant
Dominion Mining Limited.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent application 663525 by DOMINION MINING LIMITED, and opposition by WMC RESOURCES LTD. to allowance of an amendment of the patent specification under Section 104
BACKGROUND
Dominion Mining Limited (Dominion) filed patent application 27182/92 on 20 October 1992 associated with Australian Provisional Patent applications PK9121 and PL3016 filed 25 October 1991 and 17 June 1992 respectively. The application was advertised as accepted on 12 October 1995 under the No. 663525.
Subsequently four parties filed notices of opposition. One of the parties was WMC Resources Ltd (WMC) which opposed the grant of a patent on the application on 12 January 1996.
Dominion requested leave to amend the specification of patent application 663525 on 10 April 1997, whilst grant of the patent application was under opposition. WMC together with the other independent opponents filed comments with the Patent Office in relation to the allowability of these amendments. WMC submitted their comments on 20 June 1997 and the applicant subsequently commented in relation to the allowability of the amendments on 26 September 1997. The Patent Office granted the request for leave to amend on 29 October 1997 and advertised leave to amend the specification on 13 November 1997. WMC filed a notice of opposition on 11 February 1998 and filed the statement of grounds and particulars on 5 May 1998.
The parties completed the service of evidence in respect of this opposition on 1 October 1999.
The hearing was held in Canberra on 27 June 2000. Ben Fitzpatrick of counsel and Peter Caporn, patent attorney of Wray & Associates, Perth, represented the applicant (Dominion). Also present on behalf of the applicant was Gary Johnson. David Clark, patent attorney of Griffith Hack, Sydney, represented the opponent (WMC).
SPECIFICATION
The invention of the specification is directed to a method for the activation of a mineral species prior to the processing of that mineral species by methods of oxidative hydrometallurgy such as by oxidative leaching. The specification identifies the mineral species as sulphides, arsenides or tellurides or any other like mineral species. The specification identifies the defects of the prior art as follows:
· Oxidative leaching processes usually require severe physico-chemical conditions in order to achieve acceptable rates of oxidation and/or final recoveries of metal,
· Severe physico-chemical conditions often mean temperatures in excess of 200oC and total pressures in excess of 2000kPa,
· Use of large quantities of oxygen, both on stoichiometric considerations and in practice where amounts in excess of stoichiometric requirements are used,
· Costly high maintenance equipment and sophisticated technology.
And then states:
"The present invention seeks to avoid, or at least partly alleviate, the difficulties and expenses referred to above with traditional processing methods of oxidative hydrometallurgy, and in particular with the oxidative leaching of a mineral species."
The consistory statement defines the invention as:
"A method of processing a mineral species which comprises the steps of milling the mineral species to P80 of 30 micron or less, and oxidative leaching of the milled mineral species under relatively mild conditions of pressure and temperature and in the presence of substoichiometric levels of oxidant."
The proposed amendments seek to amend the specification with alteration of the claims, from 2 independent, 5 dependent and 2 omnibus claims, to 1 independent claim, 6 dependent claims and 1 omnibus claim. Corresponding amendments of the consistory statements of the invention in the description pages 4 and 5 were also sought. The opponent focussed on two features raised in the amendments. I shall make a comparison between accepted claim 1 and proposed amended claims 1 and 7.
Accepted claim 1 (specification accepted on 17 August 1995) states:
"A method of processing a mineral species, said method comprising the steps of milling the mineral species to P80 of 30 micron or less, and oxidative leaching the milled mineral species under relatively mild conditions of pressure and temperature and in the presence of substoichiometric levels of oxygen."
Proposed amended (amendments proposed on 10 April 1997) claims 1 and 7 state:
"1. A method of processing a sulphide mineral, said method comprising the steps of:
(i) milling the sulphide mineral in a vertical stirred mill to P80 in the range from 2 to 30 micron to produce an activated sulphide mineral; and
(ii) oxidatively leaching the activated sulphide mineral in oxygen at a temperature less than about 120oC and at an oxygen pressure less than about 1000kPa for a time in the range of from, 15 to 150 minutes, such that elemental sulphur is the predominant sulphur product formed."
"7. A method according to any one of claims 1 to 6, wherein the time of the oxidative leach is from 30 to 120 minutes."
The opponent focussed on the following features in its opposition:
· Oxidative leach time of 15 to 150 minutes.
· Elemental sulphur is the predominant sulphur product formed.
STATEMENT OF GROUNDS AND PARTICULARS
The opponent raised the following grounds:
1. Subsection 102(1), Patents Act 1990:- Amendment of the complete specification is not allowable since, as a result of the amendment, the specification claims matter not in substance disclosed in the specification as filed.
2. Subparagraph 102(2)(b), Patents Act 1990:- Amendment of the complete specification is not allowable since, as a result of the amendment, the specification does not comply with subsection 40(2) or (3).
EVIDENCE
Evidence in support consists of declarations made by:
Frank Lawson, dated 27 July 1998 and exhibits FL1 to FL10. He states that he is currently an Honorary Professorial Fellow at Monash University in the Department of Chemical Engineering. He also states that he has had considerable experience in the general field of sulphide mineral metallurgy including oxidative leaching of sulphide minerals.
David B. Dreisinger, dated 27 October 1998 and exhibits DBD-1 to 6. He states that he is currently employed by the University of British Columbia as Industrial Research Chair in Hydrometallurgy and an Associate Professor. He also states that since 1979 he has had a vast range of working and academic experience in the general field of hydrometallurgy.
Evidence in answer consists of declarations made by:
Rodney D Elvish, dated 21 September 1999 and exhibit RDE-1. He states that he is currently employed as a consultant metallurgist and has had extensive experience in mineral processing and in managerial and commercial aspects of the mineral industry. He also states that since 1974 he has specialised in precious and base metals recovery from complex ores, new process development, differential flotation, liquid/solid separation, gravity separation and bulk sampling and testing of alluvial deposits.
Lynn Geoffrey Bernard Wadley, dated 29 September 1999 and exhibit LGBW-1. He states that he is presently working in a private consultancy. He further states that he has specific experience in extractive metallurgy, minerals beneficiation and hydrometallurgy and in particular that he has gained experience in the treatment of sulphide ores in producing a concentrate, in ultrafine milling, and subsequent hydro-metallurgical processes.
Gary Donald Johnson, dated 17 September 1999 and exhibit GDJ-1. He states that he is presently employed by Western Minerals Technology Pty Ltd as General Manager, Director. He further states that his personal expertise is in the areas of leaching, solvent extraction and metal recovery, in particular relating to gold, uranium, copper, and nickel/cobalt.
I will discuss the relevant parts of the evidence together with the submissions of the parties, where appropriate in my decision.
DECISION
Section 102 of the Patents Act 1990 determines what amendments are not allowable. It states:
"102 What amendments are not allowable?
(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.
(2) An amendment of a complete specification is not allowable after the specification has been accepted if, as a result of the amendment:
(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2) or (3).(3) This section does not apply to an amendment for the purpose of correcting a clerical error or obvious mistake made in, or in relation to, a complete specification."
Subsection 40(2) requires that a complete specification describes the invention fully, including the best method known to the applicant of performing the invention; and end with a claim or claims defining the invention. Subsection 40(3) requires the claim or claims to be clear and succinct and fairly based on the matter described in the specification.
The applicant relied on the High Court's ruling in Ethyl Corporation's Patent [1972] RPC 169 in relation to the allowability of amendments where the High Court had ruled that the section should be construed in "a broad common sense way"; "should be given a liberal interpretation". The applicant stated that the liberal interpretation of s.102(1) has also been approved by the Full Federal Court in RGC Mineral Sands Limited v Wimmera Industrial Minerals Pty Ltd (1998) 42 IPR 353, referring also to the High Court decision in AMP Incorporated v Hellerman [1962] RPC 55.
The opponent relied on the judgement set out in Merck and Co. Inc. v Sankyo Co. Ltd. (1992) 23 IPR 415 stating that "in determining whether matter included by the amendments is "in substance disclosed" in the specification as filed the test of fair basis is to be applied. Case law relating to the "real and reasonably clear disclosure" is then set out.
The Merck case (supra) makes clear reference to the Ethyl Corp case (supra). The Full Federal Court in the RGC case (supra) also approved of the liberal interpretation of s.102(1) as set out in the Ethyl Corp case. Further the Full Federal Court in RGC did not expressly support the view that the test under s.102(1) was identical to the test for fair basis.
The RGC decision (supra) indicates that:
· Firstly one needs to identify precisely what is the amendment. This is done by identifying the difference between the specification as accepted and, as the specification would read if amended in the manner sought.
· Then one reads the specification as a whole (as so amended in the manner sought) to see whether as a result of the amendments sought (which must mean by reason of the amendments sought) the specification would claim matter not in substance disclosed in the specification as filed.
I will adopt this approach in considering the proposed amendments to the present specification.
Matter not in substance disclosed in the specification as filed.
The opponent focussed on the following features:
· Oxidative leach time of 15 to 150 minutes.
· Elemental sulphur is the predominant sulphur product formed.
I shall consider these features, which the applicant sought to introduce via proposed amendments, in the light of the specification as filed.
From Ethyl Corp (supra), "disclosed in substance" means either expressly disclosed or impliedly disclosed. Impliedly disclosed means either disclosed by mathematical information or that it would be implied by the expert reader. Further where the original description and a claim include a term which is indefinite and unillustrated, that term may be accepted as a disclosure in substance of what it would be regarded as meaning (at the priority date of the claim) by a person skilled in the art on the basis of common general knowledge in the art. (Herchel Smith's Applications, (1968) AOJP 774).
There is no explicit disclosure in the specification of the features referred to by the opponent. Hence I have to determine if these features have been impliedly disclosed. There are 2 declarants from the opponent's side and three from the applicant's side. I have to determine if these declarants qualify as the expert reader or person skilled in the art (PSA).
The applicant submitted that the appropriate skilled addressee is a metallurgist who, at the priority date, was working in the mining industry, particularly in relation to the extraction of base metals from mineral species. The opponent did not dispute this statement but submitted that the skilled addressee was not confined to those skilled in the relevant art in Australia.
In the matter of construction of the specification the Courts have indicated that while the addressee of the specification is the person skilled in the art; claims are frequently the province of persons trained in law. Thus a standard of clarity which may be adequate for the body of the specification is not necessarily adequate for the claims. The description in the body of the specification has the practical purpose of instructing the person in the art how to perform the invention when free to do so, i.e. after the patent has expired, while the claims define the monopoly - what must not be done during the life of the patent (see, for example, British United Shoe Machinery Co. Ltd. v A. Fussell and Sons Ltd., (1908) 25 RPC 631).
The current proceedings relate to the Patents Act 1990 and the Patents Regulations 1991. Section 11 of the Act states:
(1) This Act binds the Crown in right of the Commonwealth, of each of the States, of the Australian Capital Territory, of the Northern Territory and of Norfolk Island.
Section 12 of the Act states:
This Act extends to:
(a) each external Territory; and
(b) the Australian continental shelf; and
(c) the waters above the Australian continental shelf; and
(d) the airspace above Australia, each external Territory and the Australian continental shelf.
Section 13(3) of the Act states:
A patent has effect throughout the patent area.
The patent area has been defined in Schedule 1 of the Patents Act 1990 as:
(a) Australia; and
(b) the Australian continental shelf; and
(c) the waters above the Australian continental shelf; and
(d) the airspace above Australia and the Australian continental shelf.
The specification is the basis on which patent protection may be granted for the patent area. The issue I need to address is as to how the description of the specification would strike the instructed reader in Australia in light of the common general knowledge (CGK) prevailing at the relevant date in Australia. In this regard the Australian Patent Office Manual of Practice and Procedure, Volume 2-National, at paragraph 10.5.3 states:
However, where the terms are material to the understanding of the invention or for the definition of its extent, an unsupported assertion that they have a clear and unambiguous meaning to persons other than the examiner need not necessarily be accepted. Thus, for instance, corroboration may be called for when such an assertion is made by a person who has not established that they are skilled in the art, for example, where the applicant is a communicatee or an agent. Equally, assertions may be questioned when they are made by one person under instructions from another, or where they are based on usage overseas rather than in Australia.
I shall now consider the declarants to determine if they constitute the PSA in Australia. In particular I have to determine if they had the skills, knowledge and experience of " a metallurgist who, at the priority date, was working in the mining industry, particularly in relation to the extraction of base metals from mineral species".
Having reviewed the relevance of the qualifications and experience (in Australia) of the various declarants I am of the opinion that Lawson, Elvish, Wadley and Johnson constitute the persons skilled in the relevant art in Australia. Lawson has clearly had a wider range of experience in research and academic fields ( mostly outside the specific art in question) but does not have direct experience in the relevant art, hence I shall give less weight to his submissions. I shall consider Dreisinger's submissions but I do not consider that he can provide relevant expertise in the matter of, either CGK or the state of the art, at the relevant date in Australia.
The opposition to the proposed amendments focussed on the issues of leaching times and predominance of elemental sulphur in the sulphur products formed.
Oxidative Leach Time of 15 to 150 Minutes
The opponent submitted that the specification as filed is wholly silent on the period of oxidative leaching. It indicated that "the only reference to leaching or retention times in the specification as filed is in the context of conventional pressure oxidation such as the Sherritt Process which the present invention teaches away from." The opponent then refers to the submissions of its declarants. It states:
Dreisinger at paragraph 4 of his declaration states that "having read the specifications as filed which merely describes oxidative leaching under relatively mild conditions, I would not ordinarily expect leach times in the range of 15 to 150 minutes." He then indicates that his view is supported by oxidative leach times adopted by INCO Limited and Rustenberg Base Metals in their respective sulphide mineral leaching operations.
Lawson states that the specification as filed does not include any disclosure of leach times of 15 to 150 minutes and would ordinarily expect leach times in excess of that now defined in Claim 1. Lawson relies upon the examples of US 3,637,371 and a paper by Hubli et al entitled "A Ferrous Chloride-Oxygen Leach Process For Nickel-Copper Sulphide Concentrates" which described leach periods of from 2½ to 6 hours and 2 to 10 hours, respectively.
The applicant submitted that the evidence of the relevantly skilled persons, when considered with a number of passages in the specification, clearly indicates that a reaction period of 15 to 150 minutes was disclosed. The applicant then details submissions made by its declarants as follows:
Elvish states that, to a skilled addressee, the specification clearly discloses leach times of less than 150 minutes. Elvish points to a number of passages in the specification which indicate that leach times of 150 minutes and less were contemplated and were therefore disclosed, either expressly or impliedly, to the skilled addressee. These passages include references to faster reaction times as a result of the milling step, and "faster kinetics" as compared to the prior art.
Wadley makes similar submissions. Wadley also refers to the four examples (in the specification) which, by comparative implication, teach a retention time of 60 minutes, being within the time range as limited by the amendment. Further, Wadley points to the fact that the specification (at page 7, lines 7-15) teaches that not all the sulphide sulphur reacts with oxygen, which is also clearly indicative of a reduced reaction time.
Johnson also clearly indicates that the specification in substance disclosed a leach time of between 15 to 150 minutes. Johnson states that the specification discloses that the leach or retention times would be approximately the same as, or less than the leach times taught in the prior art, such as the Sheritt process.
The specification makes the following disclosures directly/indirectly relating to leach times:
· In referring to the Sheritt process which involves pressure oxidation of sulphide minerals to recover gold it states:
"Typically, the conditions for the pressure oxidation step require temperatures in the region of 190oC to 210oC, a total pressure of 2100Kpa, a pulp density equivalent to 20% to 30% solids by mass, and a retention time of two hours."
· Reference is made to fine or ultra fine milling of mineral species to produce activated minerals that react far more readily with oxidants such as oxygen.
· "…fast kinetics of the subsequent reactions make possible the use of low cost pipe reactors."
· "Conventional pressure oxidation of the concentrate was carried out at the following conditions:- ….1 hr retention time."
In addition, the examples, which draw comparison with the prior art processes, show a substantial reduction in oxygen consumption during leaching. The consumption is about 22% to 50% of the prior art oxygen consumption. All these disclosures, taken together, point to reaction times (at worst) equivalent to or (at best) definitely less than disclosed prior art processes.
There is no specific disclosure of leach times for the process described in the patent. There is no specific statement that the times of the process are less than or greater than prior art times. Some of the prior art documents referred to by the opponent's declarants reveal leach times between 2½ to 10 hours. These prior art processes have different reaction conditions and materials for the leaching process and do not provide a solid basis for determining leach times in the specification under attack. In this matter I am inclined to the teachings in Ethyl Corp (supra) which the patentee referred to in its submissions. Lord Parker, LCJ stated at page 186:
"I confess that I am still unconvinced that here the proper approach is not to say that the specification discloses a method of manufacture whereby the hydrocarbon to tetramethyllead percentage can vary infinitely, and that if one analyses this specification, it is providing for every percentage of hydrocarbon to tetramethyllead from nought upwards, and if that is the correct approach, this specification represents the summation of all these percentages, then there could be nothing wrong in restricting the monopoly to a particular range within that summation."
The opponent questioned whether leaching times as low as 15 minutes were encompassed in the leach times of the invention while referring to prior art documents revealing times higher than 2 hours. The patent specification refers to:
· activated sulphides which react far more readily with oxidants such as oxygen
· fast kinetics of subsequent reactions make possible the use of low cost pipe reactors
· 22% to approximately 50% of conventional oxygen consumption during leach
The prior art documentation shows conditions of reaction with larger particle sizes and much higher pressures. Some of the prior art also refers to mixed acidic sulphate-chloride leaches compared with the acidic sulphate leaches of the opposed specification. Given the differences between the prior art and the invention (smaller particle sizes (under 30 micron), temperature below 120oC, fast kinetics, substantial reduction in oxygen consumption) I cannot conclude that leach times of 15 minutes are excluded from the description of the invention. I consider that the leach time of 15 to 150 minutes is in substance disclosed in the specification as filed. Accordingly a leach time of 30 to 120 minutes is also in substance disclosed in the specification as filed.
Elemental Sulphur is the Predominant Sulphur Product Formed
Lawson makes the following submission on the opponent's behalf:
"The presence of elemental sulphur in the solid reaction residue is understood to be as a result of the relatively slow rate of further oxidation to oxy sulphur ions and finally to sulphate ions. However, the specification as amended does not adequately describe the invention in failing to describe or at least teach a suitable pH range and leach time to achieve predominantly elemental sulphur."
Dreisinger states:
"It is not clear to me that, under the process conditions described in the specification as amended, elemental sulphur would in fact be the predominant sulphur product. The specification fails to provide sufficient detail on pH and leach time to ensure that elemental sulphur is the predominant sulphur product."
Elvish, Johnson and Wadley address elemental sulphur formation (as the predominant sulphur product) based on the disclosures of the specification. They contend that the description has disclosed this feature by various statements which point to the feature. In particular reference is made to the following passages in the description (I have emphasised relevant aspects in the disclosure):
"The activation of the mineral species also substantially reduces the oxygen requirements during leaching of the milled product."
"...neutralisation costs are reduced because of the reduced production of sulphuric acid, particularly when the mineral species is a sulphide mineral. Indeed, with use of the present invention in relation to sulphide minerals and with the milder conditions in the oxidation stage, oxidation of all of the sulphides does not proceed to completion. It has been established by X-ray diffraction techniques that the residues produced from the leaching of sulphide minerals in accordance with the present invention contain elemental sulphur, together with various oxides and hydroxides of iron."
Reference was also made to the comparative examples that show a reduction in oxygen consumption in comparison to prior art processes. The examples practising the invention show oxygen consumption of 22% to 50% of prior art oxygen consumption. When comparing the oxygen consumption in the matter of partial oxidation of sulphides to elemental sulphur with the complete oxidation of sulphides to sulphate the description states:
"Thus, there is a potential theoretical saving of oxygen of a factor of four by carrying out partial oxidation, although this theoretical saving generally cannot be achieved since some sulphide sulphur is totally oxidised. However, tests have demonstrated reductions in the usage of oxygen compared to conventional technology of factors of two to three, with the exact reduction being dependent primarily on the mineralogy of the material being oxidised."
Lawson does not indicate the basis on which the disclosures of the description teach against the formation of elemental sulphur as the predominant sulphur product. The description has made clear that the oxygen consumption is restricted when compared with the prior art to primarily convert sulphide of the mineral to elemental sulphur. This is manifested in the consistory statement as the use of substoichiometric levels of oxidant. There was some debate as to the meaning of the term 'substoichiometric'. The opponent sought clarification on this matter and the applicant's response was that this referred to levels of oxygen which would not result in full oxidation of the sulphur in the sulphide mineral. By implication this meant that full oxidation resulting in the production of sulphate from the sulphur in the sulphide mineral referred to stoichiometric levels of oxygen. Thus substoichiometric levels of oxidant in the leaching process would tend to work against production of a sulphate product and favour the production of elemental sulphur. A clear disclosure of this aspect has been provided in the opposed specification at page 7, line 5 onwards. In the passage bridging pages 7 and 8 the specification further states:
"However, tests have demonstrated reductions in the usage of oxygen compared to conventional technology of factors of two to three, with the exact reduction being dependent primarily on the mineralogy of the material being oxidised."
Thus one may conclude from the above that under practical conditions and due to variations in the mineral being leached some sulphide is converted to sulphate but this is minimal compared to the expected sulphur production given the reduced oxygen consumption (22% to 50% of the conventional process). I find that the disclosure in the specification would lead me to conclude that elemental sulphur is the predominant sulphur product formed. I consider that the formation of elemental sulphur as the predominant sulphur product formed is in substance disclosed in the specification as filed.
The opponent also raised matters under section 102(2)(b).
The complete specification must describe the invention fully, including the best method known to the applicant of performing the invention.
Addressing this issue, the opponent stated:
"…by introducing the feature wherein elemental sulphur is the predominant sulphur product formed the specification fails to describe the invention fully, including the best method known to the applicant of performing the invention. The specification does not describe conditions which would cause elemental sulphur to be the predominant reaction product. In particular, the specification does not described (sic) an appropriate pH, leach time, and mineralogy which would yield predominantly elemental sulphur as opposed to sulphate as the sulphur product."
The opponent refers to the following disclosures from
1. Dreisinger:
· The specification fails to provide sufficient detail on pH and leach times to ensure that elemental sulphur is the predominant sulphur product.
· The leaching of chalcopyrite which is an acid consuming reaction wherein the pH rises resulting in extensive oxidation of sulphur to sulphate.
· Extended leach times and acid consuming minerals will similarly result in formation of sulphate and not elemental sulphur.
2. Lawson:
· The pH during oxidative leaching is particularly important as sulphide minerals can be leached under high as well as low pH conditions which will affect the extent to which the sulphide mineral is oxidised.
The opponent proceeds to state that, "It is apparent from the conflicting views of the Applicant(s) declarant(s) in relation to pH control that this should have been included in the specification as filed in order to fully describe the invention now claimed."
The applicant quoted the following teachings of the Courts in the matter of sufficiency:
· The specification must be construed with reference to the relevantly skilled addressee. Accordingly the issue of sufficiency is best determined by reference to the evidence from those skilled in the art (Universal Oil Products Co. v Monsanto Co., (1973) 46 ALR 658).
· Omissions from the specification will not render it insufficient if the skilled addressee would be able to perform the invention without the exercise of inventive ingenuity (No Fume Ltd v Frank Pitchford & Co Ltd (1935) RPC 231).
The applicant further stated that the evidence from their declarants showed that the description disclosed a full description of the invention including the best method of performing the invention known to the applicant. In essence reference was made to pages 7 and 10 of the description which reveals the presence of acid for leaching purposes. The applicant's declarants also indicated that anyone familiar with the art would understand the appropriate pH range for the reaction. Lawson states on behalf of the opponent at paragraph 10 of his declaration:
"…the specification as amended provides no indication of an initial or final pH other than what might be inferred from page 8 of the specification where it is explained that:
Tests carried out under the conditions of the present invention have also indicated that iron is usually selectively precipitated and remains in the leach residue as goethite, haematite or some form of hydrated oxide, whilst valuable minerals like nickel, copper or zinc remain in solution.
The final pH may from this statement be understood as falling anywhere between 2 or 3, or possibly even higher. The chemical reaction represented at page 10 of the specification as amended deals with oxidation of arsenopyrite (FeAsS) which shows sulphuric acid as one of the reactants which may suggest that the pH of the sulphide slurry was low even before oxidation commenced. However there is no clear indication of the actual leach pH."
Lawson merely asserts that there is no clear indication of the leach pH. He does not state that he is unable to perform the invention. I cannot conclude that the amendment has resulted in the specification breaching the requirements of section 40(2) on sufficiency. The proposed amendment would result in the specification specifying leach times of between 15 to 150 minutes and the formation of sulphur as the predominant sulphur product formed. The opponent has indicated that these amendments are inconsistent with the disclosures of the accepted specification. I have previously addressed the features of formation of elemental sulphur as the predominant sulphur product, and leach times between 15 to 150 minutes. I did not find matter in the accepted specification that was inconsistent with or taught against the features in the proposed amendments. I cannot conclude that these proposed amendments would lead to the specification not fully describing the invention.
CONCLUSION
On consideration of all the issues raised by the opponent I have found that the proposed amendments satisfy the requirements of Section 102 of the Patents Act. I do not believe that there are any other issues that may render the proposed amendments non-compliant with Section 102. Consequently the proposed amendments are allowable.
COSTS
The opponent submitted that costs should follow the event. The applicant submitted that if the amendments sought are allowable then costs should follow the event.
In this matter I have found that the proposed amendments are allowable. Accordingly I award costs against the opponent WMC Resources Limited.
Jacob Elijah
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Wray & Associates, Perth
Patent attorneys for the opponent : Griffith Hack, Sydney
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