Dyno Nobel Inc v Orica Australia Pty Limited
[2003] APO 13
•21 March 2003
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 690398 in the name of DYNO NOBEL INC
Title: Method of Reducing Nitrogen Oxide Fumes in Blasting
Action: Opposition under Section 59 of the Patents Act by ORICA AUSTRALIA PTY LIMITED
Decision: Issued .
Abstract
The claimed invention is directed to a method for reducing the formation of nitrogen oxides (NOx) in after-blast fumes resulting from the detonation of an emulsion blasting agent in which urea is added to the discontinuous oxidiser salt solution phase of the emulsion. The rock conditions in which detonation occurs are characterised as "non-reactive soft or well fractured rock of the kind susceptible to producing such after-blast fumes."
Findings
Admissibility of evidence
Evidence in reply
An administrative decision-maker is entitled to act on any material that is logically probative, and thus the Commissioner is not as a matter of law compelled to exclude evidence which is not properly in reply. The key question to consider is "how relevant is this material?" rather than "is it strictly in reply?" (Snap-On Technologies Inc v Beissbarth GmbH [2000] APO 52). On this basis the opponent's evidence in reply was admitted into the proceedings.
Further evidence
The relevance of the applicant's further evidence together with the balance of the parties' interests weighed in favour of permitting that evidence into the proceedings.
Section 40
The specification does not fail on the grounds of insufficiency or ambiguity. Although the words characterising the rock conditions in which the method according to the invention is used cause some difficulty to the extent that they do not bear a clear meaning in ordinary language, when the task of construing the specification is approached in the practical way that the authorities command the meaning of these words is readily ascertainable by the skilled addressee.
Priority Date
Nothing turned on whether the claims were entitled to an "earlier" priority date derived from the filing date of the basic application, or a "later" priority date being the date on which they were amended so as to refer to the rock conditions in which the claimed invention is used.
Novelty
None of the prior art documents or instances of prior use relied on by the opponent take all the essential features of the claimed invention
Inventive Step
The evidence left no doubt that urea had been used in emulsion explosives for a number of different purposes, but did not reveal the existence of common general knowledge or prior art information that would point persons skilled in the art to urea as a solution to the NOx fume problem. Although the Chemtech article may have suggested to the applicant that urea was "worth a try", the opponent has failed to demonstrate to the requisite level of certainty that the article directly led the applicant as a matter of course to try urea in the expectation that it might well provide a solution (Aktiebolaget Hässel v Alphapharm Pty Ltd [2002] HCA 59)
Manner of Manufacture
There was nothing on the face of the specification to suggest that the ability of urea to reduce the formation of NOx in after-blast fumes was known in the relevant sense. In view of the findings on inventive step the result was the same even if the range of enquiry extended outside the specification.
Costs
Costs were awarded against the opponent. However, there are no costs in relation to further evidence.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 690398 in the name of DYNO NOBEL INC and opposition under section 59 by ORICA AUSTRALIA PTY LIMITED
BACKGROUND
Patent application 690398 in the name of Dyno Nobel Inc (Dyno) was filed on 16 January 1996 claiming priority from US application 381500 filed on 31 January 1995. The present application was advertised accepted on 23 April 1998.
Orica Australia Pty Limited (Orica) filed a notice of opposition to the application on 14 July 1998 followed by a statement of grounds and particulars on 14 October 1998. On 21 January 1999 the Commissioner issued a notice requiring the production of certain documents by Dyno who in turn sought to have the notice set aside on a number of grounds which in the opinion of the Commissioner constituted a prima facie lawful excuse for not complying with the notice. The matter was as a consequence set down for hearing which in the event did not proceed due to the withdrawal by Dyno of their objections to the notice for production on the basis of a confidentiality regime established between the parties. Dyno completed their response to the notice on 1 March 2000.
The service of evidence was finalised on 13 November 2001 and after a number of deferrals the matter eventually came to hearing in Sydney on 3 June 2002. Dyno was represented by Dr Annabelle Bennett SC and Mr Stephen Burley, instructed by Mr Denis Tuffery of Baldwin Shelston Waters. Orica was represented by Mr Phillip Kerr and Ms Sabiene Heindl, solicitors of Allens Arthur Robinson. Ms Lea Lewin of Baldwin Shelston Waters was also present.
ABBREVIATONS
In this decision I will use the following abbreviations for convenience:
AN: Ammonium Nitrate
FO: Fuel Oil
ANFO: Ammonium Nitrate Fuel Oil
NOx: Nitrogen oxides
THE SPECIFICATION
The specification indicates that the invention is concerned with a method of blasting with water-in-oil emulsion blasting agents (hereafter referred to as emulsion blasting agents).
Emulsion blasting agents are commonly mixed with AN prills (granules) and/or ANFO and reduced in density by the addition of air voids in the form of hollow microspheres, other solid air entraining agents or gas bubbles which materially sensitise the emulsion to detonation.
A problem associated with the use of emulsion blasting agents in mining operations is the formation of NOx (most commonly nitrogen dioxide and nitrogen oxide) in the after-blast gases or fumes resulting from detonation which are toxic and moreover unsightly due to their "yellow" colour. According to the specification, it is commonly known in the art that certain ground conditions are susceptible to producing high levels of after-blast fumes although the reasons for this are not well understood. Many efforts have been made to eliminate or reduce the formation of after-blast NOx fumes which have been typically directed at improving the quality of the emulsion blasting agent to enhance the reactivity of its ingredients upon initiation such as by the addition of aluminium particles.
The invention also seeks to reduce the formation of NOx in after-blast fumes and is defined by claim 1 in the following terms:
A method for reducing the formation of nitrogen oxides in after-blast fumes resulting from the detonation of an emulsion blasting agent in a non-reactive soft or well fractured rock of the kind susceptible to producing such after-blast fumes, said method comprising using an emulsion blasting agent having an emulsifier; a continuous organic fuel phase; and a discontinuous oxidiser salt solution phase that comprises inorganic oxidiser salt, water or a water-miscible liquid and urea in an amount of from 5% to 30% by weight of the blasting agent.
The organic fuels forming the continuous phase of the blasting agent can be aliphatic, alicyclic and/or aromatic and can be saturated and/or unsaturated, so long as they are liquid at the formulation temperature. Preferred fuels include tall oil, mineral oil, waxes, paraffin oils, benzene, toluene, xylenes, mixtures of liquid hydrocarbons generally referred to as petroleum distillates such as gasoline, kerosene and diesel fuels, and vegetable oils such as corn oil, cotton seed oil, peanut oil and soybean oil.
Typical emulsifiers include sorbitan fatty esters, glycol esters, substituted oxazolines and alkylamines or their salts. Certain polymeric emulsifiers, such as a bis-alkanolamine or bis-polyol derivatives of a bis-carboxylated or anhydride derivatised olefinic or vinyl addition polyer have more recently been found to impart better stability to emulsions under certain conditions.
The oxidiser salt of the discontinuous phase preferably is primarily AN, but other salts selected from the group consisting of ammonium, alkali and alkaline earth metal nitrates, chlorates and perchlorates may be used. Of these, sodium nitrate and calcium nitrate are preferred.
The specification states that the addition of urea to the emulsion blasting agent has been found to considerably reduce the formation of NOx fumes apparently as a result of a chemical reaction in which the urea converts any NOx produced by the detonation reaction to nitrogen, water and carbon dioxide.
The addition of urea has also been found to reduce the reactivity of the emulsion blasting agent with down-hole detonating cord and thereby lessen the likelihood of a pre-detonation reaction which itself can contribute to the formation of NOx in the after-blast fumes.
THE STATEMENT OF GROUNDS AND PARTICULARS
The statement of grounds and particulars lists four grounds of opposition available under section 59: non-compliance with paragraph 18(1)(a) (manner of manufacture), paragraphs 18(1)(b)(i) (novelty) and (ii) (inventive step), and section 40. The accompanying particulars in support of the grounds of opposition relating to subsection 18(1) contend that:
The claimed invention is not a manner of new manufacture since it:
comprises the use of a known material (urea) in the manufacture of known articles (emulsion explosives) for the purpose of reducing the formation of NOx in fumes after detonation which is a property inherent in such compositions
comprises the use of a known material (urea) in the manufacture of known articles (emulsion explosives containing AN) in blasting operations in a non-reactive soft or well fractured rock of the kind susceptible to producing after-blast fumes, the use of such compositions in such operations being known
The claimed invention is not novel by reason of the prior use of an emulsion explosive containing urea in non-reactive soft or well fractured rock of the kind susceptible to producing after-blast fumes at:
Mt Isa, Queensland;
Stawell, Victoria;
Kalgoorlie and Mount Pleasant, Western Australia;
Hellyer and Mount Lyell, Tasmania; and
Broken Hill, New South Wales
The claimed invention is not novel when compared with the prior art information disclosed by:
Australian patent application nos 77278/91, 53082/90 and 24257/84;
United States patent nos 5271779, 5159153, 4931110, 4872929, 4500369 and 4338146; and
WO application no 88/03522
The claimed invention does not involve an inventive step when compared with the common general knowledge in Australia as evidenced inter alia by:
the patent documents referred to above;
Encyclopedia of Chemical Technology, 4th edition, John Wiley& Sons 1993, Vol 10 page 13;
Kirk Othmer Encyclopedia of Chemical Technology (Fourth Edition) Vol 6, pages 1084-1086 which discloses the use of urea as one of the most common chemical agents for the reduction of NOx; and
Chemistry & Industry pages 917-920 published 16 December 1991 which discloses the use of urea for reducing NOx emissions.
The particulars also set out a number of deficiencies said to exist in the specification and claims in support of the ground of non-compliance with section 40.
THE EVIDENCE
Evidence in Support
The evidence in support of the opposition consists of statutory declarations by:
Gwyn Harries together with exhibit GH1
Joy Horton
Mr Harries is a qualified chemist who has had extensive experience in the explosives industry in Australia, including a period of four years with a subsidiary of what is now known as the Rio Tinto group of mining companies, and has been an independent consultant on explosives and blasting since 1993.
Mr Harries begins by explaining that prior to 1860 the only explosive used in commercial applications was black powder. This is a finely ground mixture of potassium nitrate, sulphur and charcoal (carbon). In the 1860s Alfred Nobel invented dynamite, which is based on nitroglycerine. He then developed blasting gelatine, using nitrocellulose as a gelatinising agent. Later, fuel and oxidising agents such as sodium nitrate were added. AN subsequently replaced sodium nitrate because it was cheaper and safer. During the late 1950s, ANFO explosives became the preferred explosive in most mining operations in Australia. In this type of explosive the fuel oil "sensitises" the AN by utilising the oxygen produced from its chemical decomposition after detonation.
To overcome the problem of the solubility of ANFO in wet drill holes, a new type of explosive, an emulsion explosive, was developed in 1964. This class of explosive is formed by mixing two immiscible liquids in the presence of an emulsifying agent so that one liquid (the "discontinuous phase") forms droplets in the other (the "continuous phase"). The primary role of the emulsifying agent is to oppose recoalescence of the droplets. In an oil-based emulsion, to which the present invention relates, the discontinuous phase will usually be AN in water dispersed throughout a continuous phase of fuel oil.
Mr Harries then proceeds to outline the properties of urea allegedly known in the field of the invention at the priority date claimed by the present application.
Effect on Oxygen Balance
One of the most common methods of controlling the level of noxious gases produced by explosives relies on the known correlation between oxygen balance (in essence the chemical balance between AN and FO) and NOx formation. Mr Harries asserts that a person skilled in the art would have recognised that increasing the proportion of fuel oil in the explosive so as to produce an oxygen deficient composition would have the effect of reducing NOx generation. He says this effect is demonstrated by the examples of tables "readily available to people skilled in the art" comprising pages 2 and 3 of exhibit GH1 which are said to additionally show that the same result could be achieved by replacing at least some of the fuel oil with urea.
Eutectic Behaviour
Urea may be added to an oil-based emulsion to form a eutectic melt with the ammonium nitrate that has a melting point lower than that of ammonium nitrate itself. Mr Harries explains that one of the principal advantages of eutectic melts is that they produce a more energetic explosive.
Reaction with Nitrogen Oxides
Since at least 1915 it has been known that urea can be used as a stabiliser in explosives and will react with NOx. In support of this contention Mr Harries refers to an extract from a textbook (the Marshall book) published in 1917 which relevantly states (exhibit GH1 at 5):
Basic compounds, to neutralize the acids formed, are not the only substances that have been added to explosives to increase their stability. There are also various other substances, which can react with the oxides of nitrogen to form innocuous compounds. Amongst the substances that have been studied in this connextion are urea and its derivatives …
Mr Harries submits this reactivity of urea is also well known from the following publications:
Kirk-Othmer Encyclopedia of Chemical Technology Fourth Edition (Kirk-Othmer) which refers to the use of urea for reducing the formation of NOx when fuels containing carbon, hydrogen and oxygen are combusted (exhibit GH1 at 9). Mr Harries makes the point that emulsion explosives contain fuels made up of these elements.
An article entitled "The Formation and Control of NOx Emissions" which appeared in Chemistry & Industry on 16 December 1991 (the Chemistry & Industry article) which is directed to the issue of NOx emissions in combustion plants where the reactants are claimed by Mr Harries to be the same as in explosives. At page 920 (exhibit GH1 at 19), the Chemistry & Industry article states:
Ammonia will reduce nitrogen oxides to N2 in the temperature range 800-1000oC in the absence of a catalyst … Alternative additives to NH3 such as urea … have also been evaluated and made commercially available.
An article entitled "The World of NOx Reduction Chemicals" which appeared in a journal published by the American Chemical Society during July 1991 (the Chemtech article) and refers to the effectiveness of urea when utilised to control NOx levels. The article states (exhibit GH1 at 20) that
Urea works well [at reducing NOx] between 1600 and 2100oF …
which Mr Harries submits is well within the range of temperatures experienced during the detonation of explosives.
Mr Harries next asserts that the language used to qualify claim 1 would not be understood by a person skilled in the art. Specifically, he says there is no reliable method of identifying in advance (ie. prior to actual reaction with the blasting agent) whether rock is either "non-reactive" or "susceptible to producing after-blast fumes resulting from the detonation of an emulsion blasting agent" and, furthermore, that "soft or well fractured" is not a recognised term of art.
Mr Harries concludes his evidence with an analysis of the patent specifications particularised under the ground of novelty.
Ms Horton was employed in January 1995 as a reference librarian at the Orica Library Shared Service which she says
served a number of roles including the distribution of recent editions of journals received and the retention of a catalogued reference collection and the carrying out of literature searches. In addition, the Library would circulate updates to different individuals. The updates would summarise developments in a given field, including abstracts of patents.
Ms Horton states that since joining Orica she has regularly consulted the chemical abstracts database when undertaking literature searches on behalf of scientists from the various divisions of Orica, including the explosives division. Her evidence is primarily devoted to explaining the strategy which allegedly would have been adopted when conducting a search in the chemical abstracts database as it existed at the priority date of the present application. Although not identifying the aim of the search, the inference that arises from Ms Horton's evidence is that such a search would have located the Chemtech article discussed by Mr Harries.
Evidence in Answer
The evidence in answer consists of statutory declarations by:
Michael Peter Humphreys
Richard Harold Granholm
Denis Eng Tuffery, the patent attorney for Dyno, together with exhibit DET-1 which comprises a copy of the Lawrence paper referred to by Mr Granholm but inadvertently omitted from his declaration
After a number of years of employment as a mining engineer in South Africa, Dr Humphreys joined BHP in 1990 as a research engineer and in that capacity was responsible for providing technical support to their mining operations, including the monitoring of blasting projects. He joined Dyno in 1992 as a project engineer in the area of blasting technology. From 1992 to 1997 he acquired experience with a range of explosive products and applications in both open cut and underground environments. In 1997 Dr Humphreys joined Ravensworth Mine in NSW where he carried out project work in a number of areas, and since the beginning of 2000 has been working as a contracting and consulting mining engineer, predominantly in the field of drill and blast and the use of explosives.
Dr Humphreys dismisses Mr Harries' criticism of the language used in claim 1 for the following reasons:
Non-reactive rock
According to Dr Humphreys, the converse term "reactive rock" is used to describe those rock types which can, under certain conditions, react directly with the explosive and thereby lead to an increase in temperature and potential premature detonation in the hole. Reactive rock types can be found in a range of mining environments and appropriate testing is carried out where some risk of reactive conditions is suspected. This may be the case, for example, where rock types exist with similar mineralogy to those at sites with known reactive ground problems.
However, where no potential for reactive ground is identified, the presence of "non-reactive" rock is assumed, rather than specifically tested for.
Soft or well-fractured rock
Dr Humphreys states that while these terms do not refer to a specific rock "type", they are widely used in the art to describe ground conditions requiring little or no fragmentation prior to excavation and are thus equivalent to terms such as "weak" or "loose".
Rock of the kind susceptible to producing after-blast fumes
Dr Humphreys' understanding of this term, when applied to blasting in soft or well fractured ground, is that it refers to the situation where the generation of fumes is directly influenced by the ground being blasted. While acknowledging that
the process(es) that result in the generation of these after-blast fumes were (and probably remain) poorly understood …
he submits that soft/weak rock types were well known as being particularly conducive to the formation of after-blast fumes under certain blasting conditions.
Mr Granholm is one of two co-inventors named by the present application. After receiving a master of science degree in physical chemistry, Mr Granholm was employed as an explosives chemist in the United States before joining Dyno in 1987 where he is currently responsible for explosives research, product developments, and testing.
In responding to the evidence of Mr Harries, Mr Granholm agrees that attempts are commonly made to control the level of noxious gases by regulating oxygen balance, but with little or no effect. He says that oxygen balance adjustment is mainly effective in controlling after-blast fumes only if the explosive was otherwise out of balance. He further submits that the technical publications relied on by Mr Harries when arguing the ground of lack of inventive step would not have been ascertained, let alone regarded as relevant, by a person skilled in the art trying to solve the problem of NOx formation in after-blast fumes.
On the question of whether the technical publications could be considered as ascertainable, Mr Granholm says that there were wide-ranging views held at the priority date of the possible causes of NOx production, and consequently potential solutions, a number of which were apparently discussed in a paper (the Lawrence paper) published by the other named co-inventor at an International Society of Explosives Engineers conference in 1996. He therefore contends that the search strategy adopted by Ms Horton was tailored with the benefit of hindsight since none of these diverse contributing factors suggested the solution provided by the claimed invention. Mr Granholm also notes that
the existence of the Chemtech article was not uncovered by the opponent until our company produced documents showing the path to the invention. The question must be asked: If, even given the details of the patent claim which included urea, a search of the literature which was no doubt undertaken by Orica, did not reveal this document, or its pertinence was certainly not appreciated, how could it possibly have been ascertained by a researcher at the priority date, unaware of the potential use of urea?
Regarding the question of relevance, Mr Granholm states that it was not self-evident to him from the Chemtech article that urea would reduce noxious fume production, nor did the remaining technical publications identified by Mr Harries recognise this property of urea or even teach anything about controlling after-blast NOx fumes.
Mr Granholm further contends that the person skilled in the art would have no difficulty in construing claim 1 since
It is, in my view, well known in the industry that certain ground types give rise to a greater degree of NOx post-blast fumes than others. Hard rock mines, for example, seldom have NOx emission problems. The primary problem exists with ground which I believe is aptly identified as "soft or well fractured". One example is the loose, sandy clay shale of Powder River Basin Wyoming coal region. This region has some of the worst NOx emissions known from blasting. Another example is of soft, sandy, wet ground that is more susceptible to NOx generation than other types of ground. I therefore believe that people skilled in the art would understand the term "soft and well-fractured" particularly when qualified as being susceptible to NOx fume production.
The term "of the kind susceptible to producing such after-blast fumes" when used in relation to the ground where blasting is to occur is, in my view, a term that any person skilled in the art would understand and if a particular area to be blasted could not be categorised with confidence, then it would be a simple matter for the blast operator to use trial explosives to assess whether the ground was of this type … people skilled in the art and particularly mine owners will know that certain areas of their mines are more susceptible to fumes than others, e.g. the Powder River Basin in Wyoming. In Australia I am informed mines in the Hunter Valley, particularly Bulga Coal, Mt Thorley and Bengalla also have that propensity. Mine owners, in my experience, can predict with a high degree of reliability that a shot will fume in a particular area.
Evidence in Reply
The evidence in reply consists of statutory declarations by:
Vladimir Sujansky together with exhibit VS1
Gwyn Harries together with exhibit GH2
Mr Sujansky has worked for Orica and its predecessor companies since January 1969 in the field of explosives. He states that emulsion explosives known as "Powergel" and "Energen" (otherwise referred to as "Energan") have been trialled and sold by Orica since the early 1980's. A product known as Energan 2861 was introduced at Mt Isa in 1988. In the late 1980's to early 1990's Orica developed a new range of emulsion explosives marketed under the product name "Impact". Mr Sujansky submits that the formulation of the Energan 2861 and Impact products was in each case in accordance with the claimed invention and, on this basis, hypothesises that if it were possible to clearly identify a rock falling within the category of rock specified by claim 1
it would also be possible to identify examples of that rock type in Australian mines which had been blasted with the Powergel, Energen or Impact emulsion explosives before 31 January 1995 … the use of those [viz. Dyno's] emulsion explosive compositions in those types of rocks would have resulted in a reduction in the formation of nitrogen oxides in the after-blast fumes. The users of the Powergel, Energen and Impact emulsion explosives would thereby have used the applicant's claimed method for the applicant's claimed purpose before 31 January 1995.
Mr Harries for his part refutes Mr Granholm's suggestion that the Chemtech article would have been disregarded by a person skilled in the art. According to Mr Harries, those involved in the blasting industry in Australia would have read the article because "it was, and is, such a widely distributed publication." He also challenges the opinion separately expressed by Dr Humphreys and Mr Granholm that a suitably qualified person would have no difficulty in identifying rock that was "soft or well fractured".
ADMISSIBILITY OF EVIDENCE
It has been argued by Dyno that the Sujansky declaration and parts of the Harries declaration filed as evidence in reply is not properly in reply. Dyno have as a consequence sought to adduce further evidence in the form of statutory declarations by
Michael Peter Humphries together with exhibits MPH1 and MPH2
Richard Harold Granholm
to counter the new evidence allegedly raised in the evidence in reply. Sworn versions of these declarations were served on 31 May 2002. Orica deny that the Sujansky and Harries declarations raise matters not strictly in reply and have therefore objected to the introduction of further evidence by Dyno. I will deal with the admissibility of the evidence in reply and the further evidence in turn.
Evidence in Reply
Phipson on the Law of Evidence states that evidence in reply must be confined to rebutting the applicant's case, and should not merely confirm the case in chief. Additionally, evidence in reply cannot refer to matters that should have been raised in the evidence in support. This was emphasised by Graham J in Ernest Scragg & Sons Ltd's Application [1972] FSR 219 at 223:
To my mind it is quite wrong in these cases that there should be any sort of skirmishing in regard to evidence, and if an opponent has a case he should straight away state what his case is and should put in declarations dealing with any evidence which he thinks may be relevant to that case. The applicant can then deal with the matter in the normal way, and a lot of time is saved, and the Office can get on with deciding the case. If the opponent does not do that and waits until he sees what the applicant says, then obvious difficulties will result and oppositions will inevitably be drawn out and never finished.
The entire Sujansky declaration raises allegations of lack of novelty by reason of prior use. Although listed by the statement of grounds and particulars this issue is not previously alluded to in evidence and, as a consequence, the evidence put forward by Mr Sujansky could hardly be characterised as properly responding to the evidence in answer. On the other hand Mr Harries' declaration addresses issues explicitly raised in the evidence in answer by Dr Humphreys and Mr Granholm particularly as they relate to the meaning of "soft or well fractured rock" and the relevancy of the Chemtech article. Dyno have pointed to exhibit GH2 which they say comprises material appearing in evidence for the first time. The exhibit in dispute is relied on by Mr Harries to rebut an issue raised by Mr Granholm in paragraphs 49 and 52 of his declaration, and the fact that it introduces new material does not necessarily mean it is not in reply. As stated in SonusPharmaceuticals Inc v Alliance Pharmaceutical Corp and Schering Aktiengesellschaft [2001] APO 13:
… reply evidence must raise new information, otherwise it is merely confirming existing evidence (which is inappropriate).
See also The Government of the United States of America as represented by the Secretary, Department of Human Services and Health v University of Queensland and CSL Ltd [2001] APO 51. Nevertheless, an administrative decision-maker is entitled to act on any material which is logically probative (Minister for Immigration and Ethnic Affairs v Pochi 31 ALR 666), and thus the Commissioner is not as a matter of law compelled to exclude evidence which is not properly in reply. This is certainly the approach advocated in Snap-On Technologies Inc v BeissbarthGmbH [2000] APO 52:
… I am concerned that long debates at the substantive hearing about whether evidence is admissible could detract from the substantive issues, and I believe it would be more administratively efficient if both parties come to the substantive opposition with all material. From the decision in RGC v Wimmera[1999] APO 79 (16 December 1999) I note that the Commissioner has an inquisitorial role in an opposition. While she must allow the parties natural justice to reply to evidence, she is not bound by the rules of evidence. Reflective of this, the Commissioner even has the power under regulation 5.11 to consider documents in an opposition that are not part of the evidence. In my view, the key question to consider is "how relevant is this material?" rather than "is it strictly in reply?"
Here the declaration of Mr Harries has been found to be properly in reply, and so logically is prima facie relevant to a determination of the opposition (assuming the evidence it refutes is relevant). Furthermore, although not strictly admissible the Sujansky declaration focuses on the important ground of novelty and is therefore also potentially relevant.
Further Evidence
Turning now to the evidence sought to be adduced by Dyno, Chapter 5 of the Patents Regulations sets out the procedure and time limits governing opposition proceedings. Regulation 5.10(5) relevantly provides that before granting an application to serve further evidence I must be reasonably satisfied that the serving of further evidence is appropriate in all the circumstances, and in this I am guided by the now well known principles set out in Ferocem Pty Ltd v Commissioner ofPatents 28 IPR 243, A Goninan & Co Ltd v Commissioner of Patents 38 IPR 213, and NationalStarch & Chemical Company v Commissioner of Patents 50 IPR 398. These principles do not demand an imperative compliance with particular requirements, but as said by Burchett J in Ferocem involve:
a balancing exercise, in which competing considerations must be taken into account. There are the interests of the persons directly concerned in the application and opposition in question. There are also public interests, which are not necessarily all ranged on the same side. They include the expeditious disposal of matters in the Patents Office, and questions of costs, of efficiency, and of insistence upon the professional standards being maintained by those who deal with the office. But they also include, as Kitto J pointed out in Kaiser Aluminium & Chemical Company v Reynolds Metal Co (1969) 120 CLR 136 at 143, "the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than that it should be shut out in consequence of a failure in procedure, lamentable though the failure may be."
Mr Kerr submitted that Dyno had failed to explain why the further evidence could not have been obtained with reasonable diligence at an earlier stage. In a statutory declaration dated 31 May 2002 Mr Tuffery states that the delay in completing this evidence was "due to difficulties in co-ordinating the availability of the experts, those instructing me and myself". However, activities of this kind have been consistently rejected by the Commissioner as constituting extenuating circumstances in the context of opposition proceedings (see eg. Minproc Technology Pty Ltd vCommonwealth Scientific and Industrial Research Organisation 35 IPR 48) and thus Mr Tuffery's explanation falls well short of justifying the delay of some six months following the service of evidence in reply to prepare and serve the further evidence.
Even so, it is quite clear from Ferocem that the absence of a satisfactory explanation of the delay does not foreclose consideration of other relevant factors.
The further evidence is already to hand thus averting any protraction of proceedings, and Mr Kerr's preparedness to respond to it at short notice strongly suggests to me that Orica would not be unduly prejudiced if I were to admit the further evidence. On the other hand, the interests of Dyno would undoubtedly be compromised if they were denied the opportunity to respond to the allegations of prior use raised for the first time in the evidence in reply. There is also the need to ensure that a serious opposition is dealt with on its merits which, as stated by Sackville J in Goninan at 225-6, requires me to
consider the nature of the evidence the opponent seeks to adduce and the significance of that evidence for the opposition proceedings … unless the delegate forms a view as to the issues addressed by the proposed evidence, and whether that evidence is likely to be important in the opposition proceedings, it is difficult to see how proper consideration can be given to the public interest in having such proceedings being determined on its merits.
The evidence sought to be adduced by Dyno clearly goes to questions that are fundamental to a correct determination of the opposition and, in my opinion, this factor in conjunction with the balance of the parties' interests weighs in favour of permitting the further evidence into the proceedings.
Taking all circumstances into consideration I believe it is appropriate that the evidence in reply together with the further evidence be made available for present purposes. The hearing proceeded on that basis with the consent of both parties.
ONUS OF PROOF
As correctly noted by Dr Bennett, in proceedings before the Commissioner the onus of proof lies on the opponent who must establish that it is clear that a valid patent cannot be granted (Stamp v W.J. Powell Pty Ltd 24 CLR 339 at 343). It is also settled in law that the standard of that proof is the civil standard on the balance of probabilities (Dunlop Holdings Ltd's Application [1979] RPC 523 at 543).
DECISION
Section 40
The main criticism levelled against the specification under this ground revolves around the meaning of the words "non-reactive soft or well fractured rock of the kind susceptible to producing such after-blast fumes" used in claim 1. As it turns out this wording is relied upon by Dyno as the major defining feature of the claims.
The essence of the claimed invention lies in the addition of urea to emulsion blasting agents to reduce the formation of NOx in after-blast fumes. The evidence before me demonstrates that AN-based emulsion explosives were well known in the art before the priority date including those to which urea had been added. Most notably, the emulsion blasting agent as presently claimed is identical in composition to that disclosed in Dyno's earlier patent 639562 which was found to be invalid by the Federal Court (Dyno NobleAsia Pacific Ltd v Orica Australia Pty Ltd [1999] FCA 1369). However, the earlier patent goes no further than teaching the use of urea in emulsion explosives to inhibit exothermic reaction between AN and certain sulphides present in reactive ore which Dyno say has nothing whatsoever to do with NOx reduction. As stated for example by Dr Humphreys in his evidence in answer:
I understand the term "non-reactive" to have been used to simply differentiate from "reactive" rock conditions, since urea is used in the formulation of emulsion explosives to prevent their premature detonation in reactive rock (a different application to that discussed in the patent). Hence the term "non-reactive" rock has been used to identify this alternative application of urea.
I will have more to say on this later. So far as the matter of section 40 is concerned, Orica have asserted that the specification does not instruct the skilled reader how to identify whether geological conditions fall within the ambit of "non-reactive soft or well fractured rock of the kind susceptible to producing such after-blast fumes", and is therefore insufficient and ambiguous. A distinction between the twin concepts of insufficiency and ambiguity was drawn in No-Fume Ltdv Frank Pitchford & Co, Ltd 52 RPC 231 at 236 as follows:
Insufficiency is directed to the issue whether the description is sufficient to enable those persons to whom the specification is addressed to understand how the subject-matter of the patent, if it is an article to be manufactured, has to be made, or if it is a process or method, how it is to be worked. Ambiguity is directed to the issue whether the invention is sufficiently described and ascertained so as to enable the public to understand the scope of the monopoly granted by the Letters Patent.
Thus, insufficiency arises where the specification does not teach the addressee how to perform the invention and ambiguity is exhibited where the language used introduces an element of uncertainty which would "cause difficulty for the skilled addressee or manufacturer wishing to satisfy himself that what he proposes to do will not infringe that patent" (Glaverbel SA v British Coal Corp [1994] RPC 443 at 495).
Resolution of these grounds of opposition raises questions of construction. The general principles governing the construction of patent specifications were summarised by Hely J in Flexible Steel Lacing Company v Beltreco Ltd 49 IPR 331 at 347-350. I do not think it necessary to set out that passage in full, except to note Hely J's observation that in determining whether the terms of the claims are clear and unambiguous the specification must be read as a whole. This was confirmed by the High Court in Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 177 ALR 460 at 466:
Where the question concerns infringement of a claim or the sufficiency of a claim to "define" the invention, it has been held in this court … that the plain and unambiguous meaning of a claim cannot be varied or qualified by reference to the body of the specification (Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 610). However, terms in the claim which are unclear may be defined or clarified by reference to the body of the specification (Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 479).
Hely J also noted (at 349) that the hypothetical addressee of the specification is the non-inventive person skilled in the relevant art before the priority date. Accordingly, as Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 said at 476-477:
The complete specification must not be read in the abstract but in the light of common knowledge in the art before the priority date, bearing in mind that what is being construed is a public instrument which must, if it is to be valid, define a monopoly in such a way that it is not reasonably capable of being misunderstood … The essential features of the product or process for which it claims a monopoly are to be determined not as a matter of abstract uninformed construction but by a common sense assessment of what the words used convey in the context of then-existing published knowledge.
Further to this, the authorities have established that it is permissible for an invention to be described in a way which involves matters of degree. The lack of precise definition in a claim is not fatal to its validity, so long as it provides a workable standard suitable to the intended use (Stanway Oyster Cylinders Pty Ltd v Marks (1996) FCR 577 at 585 and Minnesota Mining &Manufacturing Co v Beiersdorf (Aust) Ltd (1980) 144 CLR 253 at 274). The consideration is whether, on any reasonable view, the claim has meaning (Elconnex Pty Ltd v Gerard IndustriesPty Ltd 22 IPR 551 at 575 et seq). In determining this, the expressions in question must be understood in a practical, common sense manner (Nesbit Evans Group Australia Pty Ltd v ImproLtd 39 IPR 56 at 95).
An analysis of present claim 1 does not reveal any plain meaning to be given to the expression "non-reactive soft or well fractured rock" and this difficulty is not resolved through recourse to the body of the specification. Aside from the following passage on page 2
It is common general knowledge in the art that certain ground conditions give rise to a high level of after-blast nitric oxide fumes. Specifically, non-reactive rocks which are soft and/or are highly fractured are susceptible to producing high levels of after-blast fume …
the body of the specification is wholly silent as regards this category of rock and thus does not assist in ascertaining the meaning of the words objected to by Orica. In fact although the specification uses language appropriate to the description of a method of reducing the formation of NOx under certain blasting conditions, the only methodology referred to in the claims teaches loading an explosive into a borehole and detonating same. There is little else in the specification (other than the tables commencing on page 12) which relates to a method of reducing NOx formation as opposed to the composition of a particular blasting agent. I therefore turn to the expert evidence on this point noting, however, that the construction of the specification is ultimately for the Commissioner (cf. Allsop Inc v Bintang Ltd 15 IPR 686 at 697).
Mr Harries presented the attack on the grounds of insufficiency and ambiguity in two ways. First, he submitted that there is no reliable method of identifying whether ground is reactive, except by trial and error. However, Mr Harries does not go so far as saying that the word "reactive" fails to convey any clear meaning which is hardly surprising given that it was found by Dowsett J in Dyno Noble Asia Pacific Ltd to be an accepted term of art. Moreover, it is well established that a specification is not insufficient merely because some trial and error of a routine nature is necessary to carry the invention into effect (Edison &Swan Electric Light Co v Holland 6 RPC 244 at 282) and, according to Dr Humphreys and Mr Granholm, the presence of reactive rock types may be readily determined using known laboratory techniques where some risk of reactive conditions is suspected based on industry knowledge. As explained by Dr Humphreys, the presence of non-reactive rock is assumed, and not specifically tested for, where no potential for reactive ground is identified. This evidence was not challenged by Mr Harries.
In extending the first aspect of his attack, Mr Harries asserted that he is not aware of the expression "soft or well fractured rock" being used in the art. However, this assertion does not sit comfortably with the references to "soft" and "fractured" rock in exhibit MPH1, or "rocks which are soft, weak and/or exhibit a high frequency of natural cracks and planes of weakness" on page 3.15 of his own exhibit GH2. Indeed exhibit MPH2 implies that the term "soft" is used in the blasting industry to denote rock strength. Furthermore, the evidence presented by Dyno in my belief establishes that rock may be categorised as "soft or well fractured" again as a matter of routine practice. Although recognising that such categorisation is not precise, I am satisfied from the undisputed evidence of Dr Humphreys that it is nonetheless based on a defined range of rock conditions. In this light Mr Harries' further assertion that he "could not identify when rock is too hard or not fractured enough to fall without [sic: within] this term" does not suggest that he is "willing or wishing to understand the specification" (per Philpot vHanbury 2 RPC 33 at 38).
Secondly, Mr Harries submitted that it is not possible to determine whether a particular rock is "of the kind susceptible to producing such after-blast fumes" until after the rock had been blasted. As a consequence, so the submission proceeds, a person would not be aware whether they were infringing the claims "until they had already committed the infringing act."
The same issue was considered in No-Fume where it was held (at 246) that a claim is not void for ambiguity if the language it uses would enable a person skilled in the art to see "by making a few experiments … what he could do without infringing the Patent." I think the concern raised by Mr Harries can be similarly answered. The declarants for Dyno have stated that if a particular area to be blasted could not be categorised with certainty, it would be a simple matter to assess whether the ground was susceptible to producing after-blast fumes by trial and error. This position is entirely consistent with the general thrust of exhibit MPH1 that as a result of the variability of blasting performance with rock mass properties, it is conventional practice to evaluate by routine investigation any previously untested blasting environment. Issues of safety alone dictate such an approach. Mr Harries himself seems to have acknowledged as much in Dyno Noble Asia Pacific Ltd (see [49]), and I am fortified in this view by the statement he makes in evidence in support that he is "not aware of any reliable method of identifying rock in advance which is 'susceptible to producing after blast fumes' except by trial and error" (my emphasis).
A number of other matters have arisen under this ground of opposition, particularly in relation to claim 6, which require consideration.
Claim 6 speaks of initiating the emulsion blasting agent of claim 1 by a combination of boosters and detonation cord downline whereby the emulsion blasting agent is less reactive to the energy produced by the detonating cord. Mr Harries has argued that the wording "less reactive" is not capable of a clear construction but to my mind it would be stretching credibility to suggest that the specification contemplates anything other than the reactivity of the presently claimed emulsion blasting agent as compared to emulsion blasting agents not containing urea. This becomes immediately apparent when the specification is read with the comparative examples shown in Table 1. Mr Harries next asserts that in view of the known effects of downlines on the initiation of explosives, the result produced by claim 6 could be achieved regardless of whether urea had been added to the emulsion blasting agent. Specifically, he says that NOx formation can be reduced by using a correctly installed downline to ensure complete detonation of the explosive. However, this assertion totally ignores the fact that when properly construed claim 6 retains the focus of the preceding claims which is the use of emulsion blasting agents containing urea to reduce the generation of NOx in after-blast fumes resulting from detonation in certain ground conditions. It does not, as inferred by Mr Harries, simply teach the use of detonation cord downlines to reduce the formation of noxious fumes, and nor does it seek to monopolise the known inhibiting properties of urea on the reaction between AN and reactive ore.
The final ground of attack advanced by Mr Harries is that the specification
does not describe a method of determining the quantity of nitrogen oxide produced by a particular explosion: it refers to qualitative visual inspections being used to identify differences in nitrogen oxide levels. Visual inspection is a very poor measure of the level of NOx as the colour of nitrogen oxide is dependent on temperature. As a result of this, I do not believe that a person skilled in the art following the instructions of the Patent could be satisfied that the result claimed in the Patent is being attained, ie that the NOx levels are reduced.
This criticism appears to encroach on the ground of inutility which was distinguished from insufficiency in Tetra Molectric Ltd's Application [1977] RPC 290 at 297 as follows:
If you cannot achieve the promised result because of deficiencies in the information given in the specification, there is insufficiency. But if, following the 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.
Lack of utility is not available as a ground of opposition, but in any event it seems to me that Mr Harries' attack is quickly disposed of by the uncontroverted evidence of Mr Granholm that visual inspection is the only currently recognised mechanism for rating NOx levels.
On the basis of the foregoing I conclude that the specification does not fail on the grounds of insufficiency or ambiguity. Although the words "in a non-reactive soft or well fractured rock of the kind susceptible to producing such after-blast fumes" cause some difficulty to the extent that they do not bear a clear meaning in ordinary language, I find on the evidence that when the task of construing the specification is approached in the practical way which the authorities command the meaning of these words is readily ascertainable by the skilled addressee.
Accordingly, I dismiss this ground of opposition.
Priority Date
Mr Kerr submitted that the claims of the present application cannot properly take the date of filing of US application 381500 as their priority date. In particular, he said that as the US application does not disclose the use of the claimed emulsion blasting agent "in a non-reactive soft or well fractured rock of the kind susceptible to producing such after-blast fumes", the priority date should be postdated to the date on which it was proposed to introduce this feature into claim 1, namely, 5 February 1998.
Strictly speaking, Mr Kerr's reliance on the disclosure of US application 381500 is only relevant to the question of whether the present application is entitled to claim Convention priority by operation of regulations 3.12(1)(b) and 3.12(2)(b) which, in short, require the claims to be fairly based on matter disclosed in the US application. On the other hand, the assignment of priority dates where a complete specification has been amended is governed by section 114(1) and regulation 3.14 which require a determination of whether as a consequence of the amendment the specification claims matter that was not in substance disclosed. This in turn calls for the matter resulting from the amendment to be compared with the complete specification as filed (RGCMineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd 42 IPR 353 at 360), and thus the comparison which Mr Kerr has drawn with the disclosure of US application 381500 is misconceived in law.
However, as appears below, nothing turns on the entitlement of the claims of the present application to derive priority from US application 381500 and it is therefore not necessary to consider this ground of attack any further.
Novelty
It is well established that the test for novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at 235:
The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.
This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (Nicaro Holdings Pty Ltdv Martin Engineering Co 16 IPR 545 at 549).
I do not think there is any doubt that every feature of claim 1 should be considered essential. A feature is essential if the applicant has made it an essential feature by the terms of the claim, properly construed (Catnic Components v Hill and Smith Ltd [1982] RPC 183), and this seems to me to be the case here. Neither party put a contrary view.
Section 7(1) provides:
For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:
(a) prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;
(b) prior art information (other than that mentioned in paragraph (c)) made publicly available in two or more related documents, or through doing two or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information;
(c) prior art information contained in a single specification of the kind mentioned in sub-paragraph (b)(ii) of the definition of prior art base in Schedule 1.
As noted earlier, Orica have in essence alleged that the claimed invention is anticipated by prior art information made publicly available in a single document and through doing a single act (traditionally known as "prior use"). Consequently, paragraphs (b) and (c) above are not presently relevant.
Publication in a prior art document
At the hearing Mr Kerr conceded that none of the documents particularised under the ground of novelty taught the use of emulsion blasting agents containing urea in rock of the kind characterised by claim 1. However, in my opinion, this is not the only essential feature of the claimed invention that is not found in these documents.
The document principally relied on by Orica is Australian patent application 24257/84 (the Sujansky patent) which was published well before the priority date claimed by the present application. A copy of the Sujansky patent appears at pages 178-239 of exhibit GH1.
The Sujansky patent is directed to dynamite explosive compositions which are based on liquid explosive nitric ester materials such as nitroglycerine and are therefore relatively expensive and highly sensitive. The invention the subject of the Sujansky patent seeks to address these drawbacks by partially replacing the liquid explosive nitric ester content of dynamite explosive compositions with an emulsion component. Suitable emulsion components are said to include those of the water-in-oil type and the melt-in-oil type (essentially a water-in-oil emulsion that does not contain water). In either case the emulsion component comprises an emulsifier, a continuous organic or fuel phase, and a discontinuous oxygen-releasing salt phase preferably comprising AN. More relevantly, the Sujansky patent teaches the addition of urea to melt-in-oil type emulsion components.
Various advantages of the invention are mentioned, including the surprising discovery that the amount of liquid explosive nitric esters used in dynamite compositions can be reduced by incorporating an emulsion component without adversely affecting either the performance or physical properties of the composition. The Sujansky patent further states (see exhibit GH1 at 198) that the compositions it discloses
also show reduced noxious fumes after detonation, a very important advantage for applications in confined spaces such as found in mines, trenches and tunnels.
There was some debate as to how the person skilled in the art would interpret the expression "noxious fumes", but I accept the evidence of Mr Harries that at the relevant time this expression would have been understood to include NOx. However, Mr Harries goes too far in suggesting that the Sujansky patent instructs the skilled reader that urea reduces NOx production in after-blast fumes.
According to authority, an alleged anticipation must give directions that will inevitably result in something within the claim. This concept of "practical utility" was considered in General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 at 485-6 where Sachs LJ said:
… if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if a patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated.
The directions must be clear and unmistakable. In Flour Oxidizing Co Ltd v Carr & Co Ltd 25 RPC 428 Parker J said (at 457):
But where the question is solely a question of prior publication, it is not, in my opinion, enough to prove that an apparatus described in an earlier specification could have been used to produce this or that result. It must also be shown that the specification contains clear and unmistakable directions so to use it.
The matter was put in this way in General Tire:
If … the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated … To anticipate the patentee's claim the prior publication must contain clear and unmistakable directions as to what the patentee claims to have invented … A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must clearly be shown to have planted his flag at the precise destination before the patentee.
Returning to the present case, the Sujansky patent discloses the addition of urea to the examples of melt-in-oil emulsion components listed in Table 18 (see exhibit GH1 at 224). The reason for adding urea to the emulsion components exemplified is not explained. However, the Sujansky patent earlier states (exhibit GH1 at 190-1) that when of the melt-in-oil type the emulsion component comprises at least one melt-soluble compound, such as urea, which forms a melt with the oxygen-releasing salt having a melting point lower than that of the salt in isolation. In other words, urea is added solely for its eutectic effect and there is no clear and unmistakable recognition by the Sujansky patent that the addition of urea serves the further purpose of reducing the production of NOx after-blast fumes. On the contrary, urea is only one of many alternative melt-soluble compounds disclosed and, in any event, the thrust of the Sujansky patent when read as a whole is to attribute the reduction of noxious fumes after detonation to the incorporation of an emulsion component into dynamite explosive compositions, and not the use of urea. To use the metaphorical language of General Tire, the Sujansky patent does not as a consequence even provide a signpost upon the road to the invention.
At 251 their Honours observed:
We have in truth nothing but a claim for the use of known material in the manufacture of known articles for the purpose of which its known properties make that material suitable. A claim for nothing more than that cannot be subject matter for a patent, and the position cannot be affected either by the fact that nobody thought of doing the thing before, or by the fact that, when somebody did think of doing it, it was found to be a good thing to do.
In National Research Development Corporation v Commissioner of Patents 102 CLR 252 at 262, the Court discussed the concept of a claim which was "nothing but a claim for a new use of an old substance" as follows:
But, as the Microcell Case emphasizes, it must always be remembered how much is wrapped up in the "nothing but".
Lord Buckmaster did not use the words without explanation:- "… when once a substance is known," he said, "its methods of production ascertained, its characteristics and its constituents well defined, you cannot patent the use of that for a purpose which was hitherto unknown." And why? Because in the postulated state of knowledge the new purpose is no more than analagous to the purposes for which the utility of the substance is already known, and therefore your suggestion of the new purpose lacks the quality of inventiveness … Unless invention is found in some new method of using the material or some new adaptation of it so as to serve the new purpose, no valid patent can be granted … If, however, the new use that is proposed consists in taking advantage of a hitherto unknown or unsuspected property of the material, the situation is not that to which Lord Buckmaster's language refers. In that case there may be invention in the suggestion that the substance may be used to serve the new purpose; and then, provided that practical method of so using it is disclosed and that the process comes within the concept of patent law ultimately traceable to the use in the Statute of Monopolies of the words "manner of manufacture", all the elements of a patentable invention are present … It is not necessary that in addition the proposed method should itself be novel or involve any inventive step …
Thus whilst Microcell establishes that the new use of a known substance will not, without more, constitute an invention, NRDC establishes that there may be invention in the idea that a substance may be used for a new purpose, provided that some practical basis for so using it is disclosed in the specification. However, the new use must take advantage of an unknown or unsuspected property of the substance. In the present case, the claimed new idea is the addition of urea to emulsion explosives to reduce the formation of NOx in after-blast fumes.
The third decision is NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd 183 CLR 655 where the following passage appears at 663-4:
In the light of what has been said above about what is involved in an alleged manner of new manufacture, that threshold requirement of "an alleged invention" will, notwithstanding an assertion of "newness", remain unsatisfied if it is apparent on the face of the relevant specification that the subject matter of the claim is, by reason of absence of the necessary quality of inventiveness, not a manner of new manufacture for the purposes of the Statute of Monopolies. That does not mean that the threshold requirement of "an alleged invention" corresponds with or renders otiose the more specific requirements of novelty and inventive step (when compared with the prior art base) contained in s 18(1)(b). It simply means that, if it is apparent on the face of the specification that the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent, one need go no further.
It was common ground in Philips that section 18(1) should be construed "in the wider context of traditional patent law, including the history of patents legislation and practice." Their Honours considered that in accordance with one aspect of "traditional patents law and practice", a claim for a new use of an old substance cannot be subject matter for a patent.
Another case I should mention is Bristol-Myers Squibb Co v FH Faulding & Co Ltd 46 IPR 553 where it was stated at 564:
Philips stands for the proposition (as a matter of construction of the 1990 Act) that if, on the basis of what was known, as revealed on the face of the specification, the invention claimed was obvious or did not involve an inventive step - that is, would be obvious to the hypothetical and unimaginative skilled worker in the field (Minnesota at CLR 260 per Barwick CJ) - then the threshold requirement of inventiveness is not met.
The evidence demonstrates that urea was well known before the priority date. Emulsions containing urea were also known. Emulsions were used in explosives in "wet" holes, and at least some emulsions contained urea for its eutectic effect. However, Dyno assert discovery of a previously unknown quality of urea, namely its effectiveness in reducing the formation of NOx after-blast fumes, and there is nothing on the face of the specification to suggest that this quality was "known" in the relevant sense. Mr Kerr suggested that the range of enquiry permitted by Philips was not limited to the content of the specification. At 655 their Honours referred, with apparent approval, to the approach taken by Wilcox J at first instance where he appears to have considered inter alia the state of knowledge in the industry. However, this is of no assistance to Orica since I have already found that the inclusion of urea in emulsion explosives for the purpose now specified was not common general knowledge or even public knowledge.
Consequently, I find that the claimed invention is in respect of a manner of manufacture.
CONCLUSION
I have found that Orica have not made out any of the grounds relied on in these proceedings, and I therefore dismiss the opposition.
Accordingly, I direct that the application proceed to sealing after thirty (30) days from the date of this decision. If the Commissioner is served with a notice of appeal against this decision before that time, I direct that sealing not occur until the appeal has been decided or is discontinued.
COSTS
Having considered all the circumstances in this case I see no reason to depart from the normal practice that costs follow the event. I therefore award costs against Orica, noting, however, that there are no costs in relation to further evidence (Colin Leslie Young v W Neudorff GmbH KG [2002] APO 7).
O L Haggar
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Baldwin Shelston Waters, Sydney
Patent attorneys for the opponent : Allen Allen & Hemsley, Sydney
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