Dyno Nobel Inc v Orica Explosives Technology Pty Ltd

[2016] APO 36

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Dyno Nobel Inc v Orica Explosives Technology Pty Ltd [2016] APO 36

Patent Application:                2004293486

Title:Method of blasting multiple layers or levels of rock

Patent Applicant:                   Orica Explosives Technology Pty Ltd

Opponent:  Dyno Nobel Inc

Delegate:  O L Haggar

Decision Date:  17 June 2016

Hearing Dates:  18-19 November 2015 and 1-2 March 2016 in Canberra

Catchwords:  PATENTS – opposition to the grant of a patent – applications to file further evidence – balance of considerations –  applications granted – conduct of the opposition – hearing reconvened to consider the further evidence – request to amend the statement of grounds and particulars – new particularised document – amendment allowed – construction – “throw blast” and “stand-up blast” distinguished in respect of blast design and actual outcome –   whether the claims are clear – no lack of clarity when it is understood that the distinction between stand-up and throw blasting is not limited to the amount of thrown material – priority date – onus on opponent to prove a different priority date –  whether the claims are novel – prior publication – whether information publicly available – whether a certain document formed part of the prior art base – impermissible use of mosaicing – whether baby decking disclosed by a certain document was a throw blast or a stand-up blast – implicit disclosure – whether common general knowledge can be used to supplement the disclosure of a document to establish anticipation – whether the claims suffer from parameteritis – minimum blast initiation delay time found to have been deliberately chosen to achieve a technical effect – prior publication not established – prior use – absence of corroborating contemporaneous records – credibility of evidence based on recollection of events many years beforehand – whether the prior art base includes oral disclosures – purposive construction – initiation delay of 435 ms not found to be equivalent to a minimum delay of 500 ms for practical purposes – prior use not established – whether the claims involve an inventive step – the relevant problem – common general knowledge – whether statements made in the specification are indicative of common general knowledge – whether certain documents would have been ascertained – lack of inventive step not established – opposition unsuccessful on all grounds relied on –time allowed to file submissions on costs

Representation:  Patent applicant:  Bruce Caine SC and Warwick Rothnie of counsel instructed by Ian S Pascarl of Davies Collison Cave

Opponent:Anthony Franklin SC instructed by Dr Michael Zammit and Mark Vincent of Shelston IP

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                2004293486

Title:Method of blasting multiple layers or levels of rock

Patent Applicant:                   Orica Explosives Technology Pty Ltd

Date of Decision:                   17 June 2016

DECISION

I grant the applications to file further evidence made by the opponent on 24 October 2015 and 5 February 2016.
I allow the amendment to the statement of grounds and particulars requested by the opponent on 5 February 2016.
I dismiss the opposition.  Subject to any appeal, I direct that the application proceed to grant.
I allow the parties two weeks from the date of this decision to each file submissions in relation to costs, and a further week to file submissions in response. 

THE OPPOSITION

Background

1. Patent application 2004293486 was filed by Orica Explosives Technology Pty Ltd (Orica) on 13 October 2004 under the provisions of the Patent Cooperation Treaty as international application PCT/AU2004/001401 which claims priority from provisional application 2003906600 filed on 28 November 2003 (the provisional application).  The application was advertised as accepted on 2 April 2009.  Orica requested leave to amend the specification on 9 May 2013 and the proposed amendments were advertised as allowed on 24 October 2013.

2. Dyno Nobel Inc (Dyno) filed a notice of opposition to the application on 2 July 2009 and a statement of grounds and particulars on 2 October 2009 which was amended in the first instance on 25 March 2015.  Evidence in support was completed on 2 November 2010, evidence in answer was completed on 25 November 2011, and evidence in reply was completed on 2 January 2013 after both parties had been granted multiple extensions of time. 

3. Four rounds of further evidence then followed:

   1. Orica completed a first round of further evidence on 24 September 2013.  Dyno completed its evidence in response to the first round of further evidence on 25 November 2013.
   2. Orica filed a second round of further evidence on 20 January 2014.  Dyno completed its evidence in response to the second round of further evidence on 28 July 2014.
   3. Dyno filed a third round of further evidence on 8 October 2014.  Orica filed evidence in response to the third round of further evidence on 20 January 2015.
   4. Dyno filed a fourth round of further evidence on 16 January 2015.  Orica filed evidence in response to the fourth round of further evidence on 4 June 2015.

4. The evidentiary stages completed to this point (including the four rounds of further evidence) are set out diagrammatically in a chart which each party has referred to in its outline of written submissions.  A copy of the chart is annexed to this decision from which it can be seen that Dyno had by now adduced evidence from Michael Humphreys, Sarma Kanchibotla, Claude Bruce Cunningham, Rebekah Gay, Michael O’Keefe, David Gribble and Peter Duniam.  Orica had in turn adduced evidence from Timothy N Hagan, Geoffrey Frederick Brent and Peter Dare-Bryan.  

5. At the request of Dyno, on 11 June 2014 the Commissioner issued a notice for the production of documents to Peter Dare-Bryan who, as indicated above, had provided evidence on behalf of Orica.  Dr Dare-Bryan complied with the notice on 11 July 2014.  The material produced included computer simulation results for a number of blast models.

   The conduct of the opposition

   Events preceding the initial hearing

6. A hearing notice issued on 25 September 2015 indicating that the opposition had been set for hearing on 18 and 19 November (the initial hearing).  On 24 October 2015 Dyno applied to file a fifth round of further evidence.  The parties were advised on 26 October that this application to file further evidence would be considered at the initial hearing and, if allowed, Orica would be granted a period of time for filing evidence in response.  Orica objected that this course of action would constitute a breach of procedural fairness and asked that the initial hearing be adjourned until after the application to file further evidence had been finalised.  On 30 October a delegate confirmed that the Commissioner did not intend to vacate the initial hearing as a consequence of which on 5 November Orica made an application under the AD(JR) Act seeking an injunction to prevent the hearing from taking place.  After hearing the application on 9 November (proceeding VID731/2015), Beach J refused to grant the interlocutory injunction sought by Orica.   

7. The initial hearing accordingly took place on 18 and 19 November as scheduled.  I informed the parties at the commencement of the initial hearing that I had decided to grant the application to file the fifth round of further evidence, and that my reasons for this would be provided in the written decision on the opposition.  After discussing a joint proposal put forward by the parties, it was agreed that the opposition would proceed as follows:

   • oral submissions made at the initial hearing would be confined to the evidence already on file, except any part of that evidence which related to an alleged instance of prior use generally referred to as the “Roseneath blast”;
   • Orica had until 18 January 2016 in which to file evidence in response by Timothy N Hagan to the fifth round of further evidence;
   • Orica had until 21 December 2015 in which to file any other evidence in response it wished to adduce; and
   • the hearing would be reconvened once Orica had completed its evidence in response.

8. In the result, Orica filed the totality of its responding evidence on the earlier of the two dates indicated above.  The reconvened hearing was set for 1 and 2 March 2016.

   Events preceding the reconvened hearing

9. On 5 February 2016, and without prior notice, Dyno applied to file a sixth round of further evidence.  After an exchange of correspondence, on 18 February a delegate issued the following direction:

   “The Opponent’s request for leave to file further evidence will be considered at the reconvened hearing on 1 March 2016.  Written submissions on the leave to file further evidence is due for [sic] parties on 29 February 2016.”

10. Dyno duly filed written submissions on 26 February.  On 29 February Orica advised that it did not wish to rely on written submissions in addition to those provided in its letter of 17 February “and otherwise will make oral submissions to the extent permitted at the [reconvened] hearing”.  The reconvened hearing proceeded as scheduled.  As a matter of first business Orica confirmed that it objected to the application to file the sixth round of further evidence, but withdrew its objection consequent upon subsequent developments.  I will have a little more to say on this later.  All that needs to be mentioned now is that once Orica’s objection had been withdrawn I advised the parties of my intention to grant the application to file the sixth round of further evidence.     

    Representations

11. Orica was represented at the initial and reconvened hearings by Bruce Caine SC and Warwick Rothnie of counsel instructed by Ian S Pascarl of Davies Collision Cave.  Edith Hamilton of Davies Collison Cave attended via video conference as an observer.  Dyno was represented at both hearings by Anthony Franklin SC instructed by Dr Michael Zammit and Mark Vincent of Shelston IP.  Also present as observers were Geoffrey Brent of Orica and David Gribble of Dyno.

    Grounds of opposition

12. The statement of grounds and particulars as amended on 25 March 2015 lists all grounds of opposition available under section 59.  However, as foreshadowed in its outline of written submissions, the only grounds pressed by Dyno were that:

    • the claimed invention is not novel;
    • the claimed invention does not involve an inventive step; and
    • the specification does not comply with section 40(3) in that the claims are not clear.

13. Dyno additionally confirmed that its case on alleged anticipatory publication is confined to the following documents:

    • ACARP Report C11051 (the ACARP report);
    • Williams M et al “Simultaneous blasting of multiple overburden seams in surface coal mining”, presented at the 18th Annual Conference of Explosive and Blasting Techniques, Orlando, Florida, 1992 p391, International Society of Explosive Engineers, Cleveland, Ohio (the Williams paper);[1]  and   

    [1] Humphreys#1 MH-17

    • Kanchibotla S “Application of baby deck initiation to reduce cold damage during cast blasting”, International Journal of Surface Mining, Reclamation and Environment 14 (2000) 75-85 (the Kanchibotla paper).[2]

    [2] Kanchibotla#1 SK-3

14. Dyno also asserts two instances of anticipatory use:

    • the “baby deck” blasts referred to in the ACARP report and the Kanchibotla paper; and
    • a blast designed and conducted by Peter Duniam at Roseneath Quarry in Townsville, Queensland (the previously mentioned Roseneath blast).

    Standard of proof

15. Examination of the application was requested on 19 September 2006.  As a result, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment(Raising the Bar) Act 2012 (the RTB Act) do not apply.  This includes the amendment to section 60(3A) that allows the Commissioner to refuse an application if satisfied on the balance of probabilities that a ground of opposition exits.

16. Consequently, the former standard for opposition proceedings applies and Dyno must establish that it is clear or practically certain that a valid patent cannot be granted (F Hoffman La RocheAGv New England Biolabs Inc [2000] FCA 283; 50 IPR 305 at 311, 319; Commissioner of Patents vSherman [2008] FCAFC 182 at [18], [22]; 79 IPR 46; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17]).

17. The primary facts (such as when a document has been published) are to be established on the balance of probabilities, but the ultimate facts – the facts leading directly to a conclusion of a lack of novelty or a conclusion of obviousness – must be proved to the level of practical certainty (Aspiring IP Limited v Vision Systems Ltd [2010] FCA 1061; 88 IPR 52 (Aspirating IP) at [35]).

    THE APPLICATIONS TO FILE FURTHER EVIDENCE

    The application to file the fifth round of further evidence

    Relevant law

18. The Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1) which commenced on 15 April 2013 significantly changed the Patent Regulations 1991 as they apply to patent oppositions.  In the present case the notice of opposition was filed before that date and thus, pursuant to regulation 23.36, item 2, the application to file further evidence is governed by regulations 5.10(4) and 5.10(5) as they existed immediately prior to 15 April 2013.  Regulation 5.10(4) states:

    “(4) The Commissioner may:

    (a) on the application of a party; and
    (b) on such reasonable terms (if any) as the Commissioner specifies;
    permit the party to serve further evidence on the other party.”

19. This provision must be read in conjunction with regulation 5.10(5) which states:

    “(5) The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:
    (a) if he or she proposes to grant an application by a party – is reasonably satisfied that the other party has been notified of the application; and

    (b) if he or she proposes to act on his or her own motion – ensures that the parties are notified of the proposed action; and

    (c) in either case:

    (i)  gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and
    (ii) is reasonably satisfied that a direction, an extension of time or the serving of further evidence is appropriate in all the circumstances.”

20. Both parties have made representations concerning the application to file the fifth round of further evidence.  The only remaining question then is whether it is appropriate to grant the application, and in exercising this discretion I am guided by the decisions of Burchett J in Ferocem Pty Ltd v Commissioner of Patents [1994] FCA 981; 28 IPR 243, Sackville J in AGoninan & Co Ltd v Commissioner of Patents [1997] FCA 424; 38 IPR 213 and Goldberg J in National Starch & Chemical Co v Commissioner of Patents [2001] FCA 33; 50 IPR 398. These decisions relate to the operation of regulation 5.10(5) as it applies to extensions of time, but the principles found in them equally apply to the determination of whether to grant an application to file further evidence.

21. The principles I therefore need to take into account are that the discretionary power conferred by regulation 5.10(4) is broad and is not to be constrained by insistence upon imperative compliance with a particular requirement such as a satisfactory explanation of delay.  Instead the discretion should be exercised if it is appropriate in all the circumstances and thus, even if a satisfactory explanation of delay is not given, this does not foreclose proper consideration of other relevant factors.  These include the public interest in determining a serious opposition on its merits which involves forming a view as to the nature of the further evidence sought to be adduced and its significance.  They also include the respective interests of the parties, and the expeditious disposal of matters before the Commissioner.

22. As stated earlier, the parties were informed at the initial hearing that I had decided to grant Dyno’s application to file further evidence.  My reasons are given below.  I should clarify here that they have to some extent been persuaded by information contained in a letter from Dyno dated 6 November 2015, but which does not appear in the application to file further evidence.

    Nature of the fifth round of further evidence

23. The fifth round of further evidence consists of declarations by:

    • David Kay dated 15 October 2015 (Kay#1); and
    • Peter Duniam dated 14 October 2015 (Duniam#2).

    Significance of the fifth round of further evidence

24. The further evidence that Dyno seeks to adduce is focused on the Roseneath blast which Orica has acknowledged is a “prominent issue” relied on by Dyno in support of its case on invalidity. Details of the Roseneath blast first emerged in Duniam#1. Briefly stated, Dyno relies on Duniam#2 to respond to the criticisms raised in Hagan#5 as to the reliability of this aspect of Mr Duniam’s original evidence. The evidence of Mr Kay is of particular interest. He states that he assisted Mr Duniam in setting up and firing the Roseneath blast in his capacity as “the local ICI (now Orica) technical representative for the Roseneath quarry at the time”,[3] and on this basis attests to the accuracy of Duniam#1. I am therefore of the opinion that on its face the significance of the further evidence is such as would enable a more correct determination of the opposition on its merits.

    [3] Kay#1 at [23]

    Explanation of delay

25. Mr Kay’s role in the Roseneath blast had in fact been identified in Duniam#1,[4] but as an employee of Orica at the time he was not available as a witness for Dyno.  Dyno nevertheless pursued Mr Duniam’s response to Hagan#5, and a report which summarised his comments in this regard was communicated to counsel in “late August” (which is just under three months after Hagan#5 had been filed) for assistance at the hearing of the opposition if required.  However, Dyno became aware during September 2015 that Mr Kay had recently retired and was willing to provide corroborating evidence on its behalf.  In view of this marked, yet totally unexpected, turnaround in circumstances, Dyno decided in early October 2015 to formalise Mr Duniam’s report in declaratory form and to file it concurrently with Kay#1.  As I have said, Dyno applied to file both declarations as further evidence later that month.  In the overall context of the opposition, which to date has been in train for over six years, the delay in filing this evidence is in my opinion far from excessive.  I especially note that only four weeks separated the time Dyno was initially notified of Mr Kay’s potential availability as a witness to the time Kay#1 was executed and filed.   

    [4] Duniam#1 at [31], [32], [40]

    Interests of the parties

26. Given the considerable passage of time that has elapsed since the commencement of the opposition, I think it is fair to say that the interests of both parties lie in its speedy resolution.  However, as to be expected in proceedings of this kind, it is also apparent that opposing yet equally legitimate interests are at play.   In this instance I think the balance of the parties’ interests lies in favour of Dyno.  Dyno has argued that Duniam#2 when read together with Kay#1 forms a complete picture of the events which are alleged to have transpired at the Roseneath blast.  These details are clearly fundamental to Dyno’s case on invalidity.

27. It also bears comment that Orica could hardly claim to have been previously unaware of Mr Kay’s views on the Roseneath blast.  According to the uncontested evidence of Mr Kay, in around March 2015 while still employed by Orica he was shown Duniam#1 by its “legal contractors” and confirmed that Mr Duniam had provided an accurate account of the Roseneath blast.[5]

    [5] Kay#1 at [7], [21], [24]

    Public interest

28. The public interest calls for a balance between the requirements to deal with a serious opposition on its merits while ensuring that the opposition is disposed of expeditiously.

29. There seems little doubt given the volume and complexity of the evidence filed thus far that a serious opposition is on foot, and that the nature of the further evidence sought to be adduced by Dyno may prove determinative of its outcome.  I therefore consider that in the present circumstances a more correct determination of the opposition on its merits outweighs the need for its expeditious disposal, but would make the point with regard to the latter consideration that the fifth round of further evidence is relatively brief and already to hand.

    The balance of considerations

1. I have found that prima facie the fifth round of further evidence will enable a more correct determination of the opposition on its merits.  I have also found that Dyno has provided a satisfactory explanation for the delay in filing this evidence, and that its interests together with those of the public weigh in favour of granting the application to file further evidence.

2. I therefore grant Dyno’s application to file the fifth round of further evidence.  The effect of this is to admit Duniam#2 and Kay#1 into the opposition. 

   Orica’s evidence in response to the fifth round of further evidence

3. In response to the fifth round of further evidence Orica filed declarations dated 21 December 2015 by:

   • Timothy N Hagan (Hagan#6);
   • Geoffrey Frederick Brent (Brent#3);
   • Ian Stanley Pascarl (Pascarl); and
   • Edith Francis Hamilton (Hamilton).

   The application to file the sixth round of further evidence

   Nature of the sixth round of further evidence

4. The sixth round of further evidence consists of declarations by:

   • David Kay dated 29 January 2016 (Kay#2); and
   • Peter Duniam dated 5 February 2016 (Duniam#3)

5. This evidence again relates to the allegation of prior use based on the Roseneath blast.

   The significance of the sixth round of further evidence

6. The sixth round of further evidence has arisen in large part from attempts made by Orica in response to Dyno’s fifth round of further evidence to discredit the evidence of Mr Kay and Mr Duniam.

7. Specifically:

   • Orica’s responding evidence exhibits file notes of a Skype interview (the Skype interview) conducted by its patent attorneys Edith Hamilton and Ian S Pascal with Mr Kay on 28 January 2015 to discuss the content of Duniam#1 and the Roseneath blast.  Orica has argued that the interview file notes expose a number of significant discrepancies between what Mr Kay said during the Skype interview and the evidence later provided by him in Kay#1.[6]

   [6] Hamilton at [7(a)]-[7(c)], EFH-3

   • The responding evidence also exhibits an email that Dr Brent received from Mr Kay on 24 May 2010 (the Kay email).  The Kay email included as an attachment an email sent by Mr Duniam to Mr Kay a few days earlier (the Duniam 2010 email) in which Mr Duniam poses the question of whether his recollection of the details of the Roseneath blast set out by him “sounds about right”.  Dr Brent submits that the Kay email markedly departs from the evidence subsequently given some five years later in Duniam#1 and Duniam#2 (and, due to its concurrence with both declarations, Kay#1).[7]

   [7] Brent#3 GFB-40

8. A formal copy of the interview file notes was initially prepared from handwritten notes taken by Ms Hamilton during the Skype interview, and finalised following verification by Mr Pascal who, incidentally, did not himself make any informal notes of the conversation.[8]

   [8] Hamilton at [4]-[5]; Pascal at [3]

   Consideration

9. Mr Kay has alleged that he was never supplied with a copy of the interview file notes by Orica’s patent attorneys in order to confirm their accuracy, and only became aware of them on reading the Hamilton declaration.[9]  While the reasons for this have been left unexplained, in my opinion nothing of present importance turns on it.  As I have already indicated, in exercising the discretion of whether or not to grant an application to file further evidence the Commissioner principally takes account of the competing considerations of the public interest, the interests of the parties, and the nature and significance of the further evidence.  Given the advanced stage of the opposition at which Dyno has sought to introduce the sixth round of further evidence, I believe the latter factor ultimately prevails.  Neither party argued to the contrary.

   [9] Kay#2 at [6], [24]

10. Orica has raised serious concerns as to the reliability of the evidence tendered by Mr Duniam and Mr Kay in the fifth round of further evidence.  It says that the inconsistencies which have allegedly emerged in and between their various accounts of the Roseneath blast call their professions of recall and hence credibility into question.       

11. Dyno’s justification for the sixth round of further evidence is that it “corrects the record” by showing that these alleged inconsistencies can be logically and reasonably explained.  The importance of the Roseneath blast to Dyno’s case on invalidity is as already stated beyond doubt.  As a consequence, there is a real risk that the opposition will not be correctly determined on its merits if Orica’s attempts to undermine Dyno’s evidence on the Roseneath blast are left unchallenged.  Stated somewhat differently, Dyno would be denied natural justice if deprived of the opportunity to correct or contradict any statement prejudicial to its case.

12. I am therefore satisfied that the application to file the sixth round of further evidence may be appropriately granted in all the circumstances.  This allows Duniam#3 and Kay#2 into the opposition.  However, Mr Franklin conceded at the reconvened hearing that paragraphs 25 to 29 of Duniam#3 improperly sought to introduce new evidence and asked that these paragraphs be consequently struck out.  Mr Caine withdrew Orica’s objection to the application to file the sixth round of further evidence in light of this concession, and indicated that Orica would simply rely on submissions rather than evidence in response to the further evidence.

13. I will refer to the total body of evidence where appropriate.  However, as there is a large amount of evidence, I will attempt to refer to the most relevant piece(s) of evidence on any point.

    REQUEST TO AMEND THE STATEMENT OF GROUNDS AND PARTICULARS

14. On 5 February 2016 Dyno filed a second request to amend the statement of grounds and particulars nominally for the purpose of cancelling those grounds and particulars no longer relied on.  However, another consequence of the amendment would be to add Reisz WJ, “Concepts for Better Blasting”, International Society of Explosive Engineers, 2002G Volume 1 p147 (the Reisz paper) to the documents particularised under the ground of inventive step.

15. The present opposition was commenced before 15 April 2013.  As a result Dyno’s request to amend the statement of grounds and particulars is governed by regulation 5.9 as in force immediately prior to that date.  Regulation 5.9(1) relevantly says: 

    “(1) Subject to subregulation (2), the Commissioner, on the written request of an opponent and subject to such terms as the Commissioner may specify:
    …
    (c) must amend particulars relating to a ground set out in a statement that is served and filed under regulation 5.4” (emphasis added).

16. As is apparent from the outset, regulation 5.9(1) disallows any objection to an amendment to the particulars.  It is also to be noted that despite the lateness of the second request to amend the statement of grounds and particulars, Orica has been given fair notice of Dyno’s intention to rely on the Reisz paper since it was put in evidence at a relatively early stage of the opposition[10] and referred to by Dyno during the initial hearing.  Orica in fact provided supplementary written submissions at the reconvened hearing that were exclusively directed to the Reisz paper.[11]  In these circumstances I believe it is entirely appropriate to allow the second request to amend the statement of grounds and particulars.   

    [10] Humphreys#2 at [36], MH-33

    [11] Reisz paper – Applicant’s Outline

    THE SPECIFICATION

    Background to the invention

17. The specification indicates that the invention relates to a method of blasting, and is particularly concerned with a method of blasting multiple layers or levels of rock within mining operations, including layers that comprise waste material and/or recoverable mineral such as coal seams.

18. The specification explains that in a typical open cut mine there may be one or more layers or seams of recoverable mineral.  The waste material above the uppermost seam is the overburden.  Where there is more than one seam, the waste material between the seams is the interburden.  In mining operations the layer of overburden is typically drilled and blasted separately to the underlying layer of recoverable mineral.  Similarly, subsequent layers of interburden and recoverable mineral are usually drilled and blasted in separate cycles. 

19. In coal mining in particular, the blasting of the overburden may be undertaken as a “throw” or “cast blast”.  The throw blast is designed so that the blast itself moves a proportion of the overburden away from the blast area, to a final spoil position, so that the thrown proportion of overburden does not need further excavation before the coal or other recoverable mineral can be extracted.  Once the remaining overburden is removed, the coal seam is drilled and blasted as a separate event usually with quite different blast design parameters to minimise unwanted crushing, damage and displacement of the coal.

20. The specification next refers to a technique known as “through-seam blasting” typically employed in mines in which the waste material and coal do not occur in regular layers that can be blasted separately with conventional blast designs.  Through-seam blasting involves drilling blast holes through the various layers of waste material and coal in a single cycle, and then charging the holes according to the location of the coal seams with no explosive charges where the holes intersect the coal seams.  Through-seam blasts are specifically designed to minimise lateral movement of all material to avoid disruption of the seam(s) of recoverable mineral and thereby minimise dilution with the waste material.

21. The aim of the invention is to provide a blasting method that enables several layers of material to be blasted together in a single cycle of drilling, loading and blasting in a more productive way than is currently provided by conventional blasting methods including through-seam blasting.

    The description

22. The specification summarises two broad aspects of the invention in terms which essentially correspond to the independent claims.  After further discussion of these broad aspects, the specification goes on to provide a more detailed description of a number of illustrated embodiments.

23. Figure 1 is said to illustrate a generalised concept for blasting two or more layers of material in accordance with the first broad aspect of the invention, while Figure 7 is indicated as showing an example of a blast according to the second.  The invention can be sufficiently understood with reference to Figure 1 alone.  It is therefore instructive to reproduce this figure.

24. Figure 1 shows a first (lower) body 10 of material extending beyond a free face 12 of a second (upper) body 14 of material.  Generally, but not necessarily, the second body 14 will consist of one or more strata of overburden, while the first body 10 will have a stratum of recoverable mineral (such as coal) immediately below the second body 14. 

25. Blast field 16 comprises six rows of blast holes, but any number and arrangement of blast holes may be utilised in order to produce the desired differential outcome of blasts, namely, a throw blast in the second body 14 of material and a stand-up blast in the first body 10 of material.  In this particular instance rows 18, 20, 22 and 24 extend downwardly through both bodies of material, whereas intermediate rows 26 and 28 only extend downwardly through the second body 14. 

26. Each row 18, 20, 22 and 24 of blast holes is loaded with two decks of explosives material 46 (although only one deck is actually shown in row 20).  Blast holes 26 and 28 are also loaded with explosives material 46, with stemming material or air decks 45 being provided between the two decks of explosives in blast holes 18, 20, 22 and 24, and stemming material being provided above the explosives in all of the blast holes.

27. The specification states that the throw blast should be designed to throw at least 10% of the material of the second body 14 forwardly onto the floor 30 of the void 32 in front of the free face 12.  More preferably, at least 15 to 30% or even more of the second body 14 of material is thrown forwardly onto the floor 30 by the throw blast.  The specification makes the point that the more material that is thrown forwardly onto the floor 30, especially to a position of final spoil of waste material, the less mechanical excavation and clearance of the residual material in the second body 14 needs to be performed to expose the first body 10.[12]

    [12] Specification at 22/17-23

28. Conversely, the stand-up blast is designed to break up the first body 10, but with very little (if any) of the material of the first body being thrown forwardly.  Thus any strata of recoverable mineral in the first body 10 of material will be fragmented but not substantially displaced.  As a result, once the blasted second body 14 of material has been cleared from the blast field 16, the exposed first body 10 may be excavated immediately in the same mining cycle.

29. The specification discloses preferences for the delay between initiating the blast in the second body 14 of material and when the blast in the first body 10 is initiated.  The delay is said to be “typically about 40 seconds or less”, but “preferably in the range of about 500 to 25000 ms”.[13]  However, the specification expressly recognises that the extent of the delay will be determined by initiator technology:

    [13] Specification at 12/3-7

    “While a maximum delay of 40 seconds has been identified between the blasts in the first and second bodies in the single cycle (for each blast hole with a respective deck of explosives in each body of material), this is generally only limited by the available initiator technology and may be even longer than this, effectively without limit, in accordance with the invention.  For example, the delay may be several minutes, hours or days, but the blasts in the first and second bodies of material will still occur in the same single cycle of drilling, loading and blasting.”[14]

    [14] Specification at 14/4-10

30. Later the specification says that it is “advantageous to provide some buffering material at the level of and over the first body of material where the first body is to be subjected to a stand-up blast in accordance with the first aspect of the invention”.  The intention is to protect the first body 10 of material from the effect of the throw blast in the second body 14.  The buffering material may comprise previously blasted or imported material positioned as required prior to blasting, that is to say, material brought to the blast site for example by truck and positioned using any suitable earthmoving equipment.

31. Alternatively, the buffering material may comprise material thrown from the second body 14 of material in a throw blast.  This alternative is further described as follows:

    “In this embodiment, the method of the invention may include initially blasting, as part of the single cycle, a front portion of the second body of material adjacent the free face thereof such that material falls in front of and over the first body of material to provide the buffer.  This front portion may have a blast design … that does not throw it too far, but just permits it to fall down from the free face and lie in a suitable position in front of and over the first body of material.  The main throw blast of the second body of material may then follow the initial blast after some delay.  Such a delay may be as great as or, for example, substantially more than 1 second.”[15] 

    [15] Specification at 16/9-17

32. For the sake of completeness I note that in accordance with the second broad aspect of the invention, the drilling, loading and blasting of the blast holes in the first and second bodies of material also take place in a single cycle.  However, the second broad aspect basically differs from the first in that it achieves differential outcomes in the first and second bodies of material other than those arising from throw and stand-up blasting.  For example, it may be desirable to have more finely fragmented material in the second body to facilitate excavation and coarser fragmentation of material in the first body such as “lumpy” coal or iron ore.  To this end the second broad aspect utilises a blast design for the second body of material which is different to that for the first body, and in addition at least some of the blast holes in both bodies have either or both different inter-row blast delay times between adjacent rows and different delay times between holes in the same row resulting in a different blast outcome in the second body compared to the first.

    The claims

33. The specification as amended post-acceptance ends with 66 claims.  There are two independent claims: claim 1 and claim37.  Claims 2 to 36 are directly or indirectly dependent upon claim 1.  Claims 38 to 65 are directly or indirectly dependent upon claim 37.  Claim 66 is an omnibus claim.  The independent claims read as follows:

    “1. In open cut mining for recoverable mineral, a method of blasting plural layers of material in a blast field including a first body of material comprising at least a first layer of material and a second body of material comprising at least a second layer of material over the first body of material, the blast field having at least one free face at the level of the second body of material, the method comprising drilling blast holes in the blast field through the second body of material and, for at least some of the blast holes, at least into the first body of material, loading the blast holes with explosives and then firing the explosives in the blast holes in a single cycle of drilling, loading and blasting at least the first and second bodies of material, wherein the first body of material is subjected to a stand-up blast in said single cycle and said second body of material is subjected to a throw blast in said single cycle whereby at least 10% of the second body of material is thrown clear of the blast field beyond the position of said at least one free face, said throw blast in the second body of material being initiated before initiation of the stand-up blast in the first body of material, wherein for blast holes having at least a respective deck of explosives in the first and second bodies of material the explosives in the second body of material are initiated at least 500 ms before initiation of the explosives in the first body of material, and wherein the first body of material is buffered in the direction of throw defined by the throw blast of the second body of material.

    37. In open cut mining for recoverable mineral, a method of blasting plural layers of material in a blast field including a first body of material comprising at least a first layer of material and a second body of material comprising at least a second layer of material over the first body of material, the method comprising drilling rows of blast holes through the second body of material and, for at least some of the blast holes, at least into the first body of material, loading the blast holes with explosives and then firing the explosives in the blast holes in a single cycle of drilling, loading and blasting at least the first and second bodies of material, wherein the second body of material is subjected to a blast of different design including, for said at least some of the blast holes with a respective deck of explosives in each of the first and second bodies of material, at least different inter-row blast hole delay times between adjacent rows and/or different inter-hole blast hole delay times in any one row to that of the first body of material, resulting in a different blast outcome in the second body of material to that in the first body of material.”

34. The specification indicates that in the context of the first and second broad aspects of the invention (reflected in claims 1 and 37, respectively), the term “layers” and variations thereof is intended to mean a predetermined region or zone within a blast field.[16]  Where the blast field comprises a geological formation of essentially the same material, a layer will correspond to a predetermined region within the material, the boundaries of the region being determined by the intended blast outcomes in the material.  By way of example, in quarry blasting it may be desired to subject an upper region of material to a throw blast with another (underlying) region being subjected to a stand-up blast.  In this case the layers are artificially conceived based on the intended blast outcome rather than corresponding to physically distinct strata of the material being blasted.

    [16] Specification at 4/28-5/13; 8/31-9/1

1. In the situation where the blast field comprises plural strata of material having distinct characteristics, the layers will typically correspond to the strata since the blast outcomes associated with the invention are then usually specific to each individual stratum.  For example, and as described with reference to Figure 1, the blast field may comprise a coal seam (stratum) extending beneath overburden.  In this case the layers correspond respectively to the strata of coal and overburden.

2. It is convenient at this point to mention that the commercial embodiment of the claimed invention is known as the “Stratablast” method.

   CONSTRUCTION OF THE CLAIMS

3. Before proceeding to consider the grounds of opposition pressed by Dyno, it is firstly necessary to deal with the competing views of the parties on what constitutes a “throw blast” as compared to a “stand-up blast”.  A dispute in relation to “buffering” has also arisen.  Resolution of these issues raises questions as to the construction of the claims.  In addition to the basic principle that the words used in a claim are to be given the meaning which the person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification, that is, in the context which they appear, some other principles may be apposite to the issues of construction in these proceedings.  Those principles were succinctly identified by Bennett J in Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282; 91 IPR 209 at [37]:

   • The invention is ascertained from a fair reading of the specification as a whole: Welch Perrinand Co Pty Ltd vWorrel [1961] HCA 91; 106 CLR 588 (Welsh Perrin) at 610.
   • Once the nature of the invention has been appreciated, it is not to be “demolished” by finding that particular phrases used could, out of context, be ambiguous: Welch Perrin at 617.
   • If words are used in a particular way in a specification whether or not by way of a formal dictionary and thereby it is shown that the draftsman used such words to have a particular meaning, that meaning must be given to those words in the claims: Flexible Steel LacingCompany v Beltreco [2000] FCA 890; 49 IPR 331 (Flexible Steel) at [76]-[77]
   • An essential part of the process of construction involves understanding the nature of the invention described and claimed and the way in which the patentee has used words or phrases describing and then claiming the invention.  It is appropriate to try to understand what the patentee seeks to convey by the words used, especially where those words convey matters of technological complexity: Inverness Medical Switzerland GmbH v MDS Diagnostics Pty Ltd [2010] FCA 108; 85 IPR 525 at [115].

4. The task of construction is also to be approached “with a generous measure of common sense” from the perspective of the person skilled in the art (Eli Lilly and Company Limited v Apotex PtyLtd [2013] FCA 214; 100 IPR 451 at [139]).

   “Stand-up” v “throw (or cast)” blasting

5. It will be recalled that as specified by claim 1:

   • the first (lower) body of material is subjected to a stand-up blast; and
   • the second (upper) body of material is subjected to a throw blast, whereby at least 10% of the second body of material is thrown clear of the blast field beyond the position of the at least one free face of the blast field.

6. I pause here to observe that independent claim 37 is not framed in these terms.

7. The evidence from both parties establishes that the nature of and differences between stand-up blasts and throw/cast blasts were well known and understood by those engaged in the field of drilling and blasting at the priority date.[17]  As explained for example by Mr Cunningham:

   [17] For example, Kanchibotla #1 at [15]-[16]; Humphreys #1 at [37], [46]; Hagan #1 TNH-11 at [3.1]-[3.2]; Brent

   “In open cut coal mines, blasting is used to assist in the removal of waste material (overburden) that lies above and between coal seams.  In some cases, the purpose of a blast is to fragment the burden, without causing forward movement of the material, so that it can be more easily removed by mining equipment, such as draglines.  That is, the intended outcome of the blast is vertical displacement (heave) and fragmentation of the rock, rather than lateral displacement.  This is referred to as a “stand-up blast”.  In other cases, the purpose of a blast is to both fragment the burden and throw as much of it as possible clear of the blast field,  and into the spoil position.  This reduces the amount of material that is then required to be excavated by mining equipment, and is referred to as a “cast [or throw] blast”.  

8. Mr Cunningham nevertheless says that a stand-up blast will in practice usually result in at least some burden being projected sideways, while a throw blast may result in a relatively small proportion of material being thrown.  He makes the point that it may therefore be difficult to differentiate between a stand-up blast and a throw blast in terms of the actual outcome of the blast.[18]  Dyno has argued that the evidence consequently establishes that the main distinction between these blast types relates to intention (and then designing a blast to carry out that intention).[19]  Dr Kanchibotla and Dr Humphreys take the matter further in submitting that it is not possible to distinguish a throw/cast blast from a stand-up blast solely by how much material is moved (original emphasis).[20]

   [18] Cunningham at [29]

   [19] Dyno outline of submissions at [37b]

   [20] Kanchibotla #1 at [17]; Humphries #1 at [48]

9. This submission has generated a good deal of debate.  Most notably, Dr Kanchibotla and Dr Humphreys refer to a diagram which compares a standard blast to a throw blast profile.[21]  Dr Kanchibotla asserts that a “standard blast” is a stand-up blast[22] which has not been controverted by Dr Dare-Bryan despite having an ideal opportunity to do so.[23]  Indeed it seems from his reference to “conventional or ‘normal’ blasting” that Dr Brent is of the same view.[24]  Either way, Dyno contends on the basis of the diagram that a stand-up blast throws a “substantial amount” of material forward of the free face.   

   [21] Kanchibotla#2 at [9]; Humphreys#1 at [37]; Humphreys#2 MH-30 Fig 13.1

   [22] Kanchibotla#3 at [19]-[20]

   [23] Dare-Bryan#2 at [31]

   [24] Brent#1 at [16]

10. In challenging this contention Dr Brent refers to a technical article published in 1992 which reported a percentage throw of 2% for a stand-up blast compared to 24.7% for a throw blast.[25]   Similarly, another article from 2001 is said to illustrate that the stand-up blast (Fig 4) clearly threw less than 10% which is in contrast to the throw blast (Fig 5) which threw substantially more than 10%.[26]  Orica submits these very low percentages fairly show what is contemplated by minimal lateral movement in the context of a stand-up blast.  Dr Humphreys has questioned the relevance of Dr Brent’s evidence.  He says that consistent with standard practice, the technical articles relied on by Dr Brent measure the percent thrown as the percentage of material thrown into the final spoil position.  He accordingly argues that the reference in the first article, for example, to a stand-up blast throwing 2% of the blasted material is to be understood as referring to the amount of material thrown into the final spoil position, not to the amount of material thrown clear of the blast field as required by claim 1.  In these circumstances, so the argument continues, significantly more than 2% of material is thrown clear of the free face, that is, clear of the blast field.[27]   

    [25] Brent#1 at [15] GFB-4 Table 1

    [26] Brent#1 at [16] GFB-5

    [27] Humphreys#2 at [31]

11. Although a useful source of background information, much of the evidence relating to this construction issue is beside the point since it is based on the argument put forth by Dyno that in distinguishing stand-up and throw blasting Orica primarily relies on the amount of material moved.  On any view, this argument clearly misrepresents the position advanced by Orica regarding the distinction between these blast types.  Orica in fact says this distinction is characterised by two factors.[28]  The first of these is the design of the blast (including especially the blast timing and sequences), and in this the parties are on common ground.  The second factor, to be read in conjunction with the first, is the actual outcome of the blast. 

    [28] Orica outline of submissions at [67]

12. The principles of construction make it perfectly clear that in ascribing a meaning to the words used in a claim the context in which those words appear is paramount.   In the present case I consider that the distinction drawn by Orica regarding blast type sits squarely within the confines of claim 1.  Claim 1 speaks of “subjecting” the first body of material to a stand-up blast in a single cycle of drilling, loading and blasting, and “subjecting” the second body of material to a throw blast in the same single cycle.  This language is clearly indicative of blast design.  Most notably, though, the import of the wording “whereby at least 10% of the second body of material is thrown clear of the blast field beyond the position of said at least one free face” (emphasis added) is such as to characterise the step of subjecting the second body of material to a throw blast with reference to the actual outcome produced.  These words (as opposed to, for example, “for throwing …”) do not merely signify intention.  Thus, as succinctly put by Mr Caine at the initial hearing, “if it’s greater than 10%, it’s a throw blast” according to claim 1. 

13. It is evident from the foregoing that Orica does not rely solely on the second factor, that is to say, the amount of material thrown, as Dyno has attempted to impress upon me.

14. With further regard to the amount of material thrown, Dr Brent explains that there is considerable divergence in the methodology used across mine sites to calculate the final spoil position.  However, he submits that any uncertainty arising from the consequential wide variations in the quantum of material deemed to be thrown into this position is avoided by the precise convention adopted in claim 1 whereby the amount of material thrown is qualified in terms of the position of the at least one free face of the blast zone.  Orica has argued that this terminology provides a “clear and consistent yardstick” which Dr Brent notes is independent of mine site or even mining type.[29]      

    [29] Brent#2 at [6]-[7]; [9]-[10]

    “Buffering”

15. Claim 1 additionally specifies that the first body of material is buffered in the direction of throw defined by the throw blast of the second body of material.

16. The parties are agreed that buffering is a known technique for protecting a coal seam during throw blasting that involves:

    “material being placed in front of a free face so that the blast will be constrained from moving laterally towards the free face.  It can be achieved by placing material in front of the free face or by using broken rock from a previous blast that has fallen in front of the free face.”[30]

    [30] Dyno outline of submissions at [38a]

17. This technique is described in the body of the specification:

    “… if the second body of material is subjected to a throw blast the first body of material may be buffered in the direction of the throw blast of the second body of material … The buffering may be at least partly provided by material from the second body of material thrown in a throw blast in a single cycle.”[31]

    [31] Specification at 15/26-30

18. The parties are, however, at odds as to the extent to which it was known to use buffering provided by material cast by a throw blast in the same drill and blast cycle as a stand-up blast.  This point of departure has only emerged in the context of Dyno’s invalidity challenge and therefore will be held in abeyance until that challenge is dealt with in due course. 

19. For now, I wish to say something of Dyno’s submission that claim 1 is not necessarily limited to what Dyno has termed as “dynamic” buffering whereby the first body of material is buffered by material thrown from the second body of material, but as a matter of construction also embraces “static” buffering in which previously blasted material, or material imported to the blast site, is positioned as required prior to blasting.  As I have said, the specification contemplates the use of either mode of buffering.  However, for reasons to be later discussed, it has become apparent from reading the totality of claim 1 in the context of the specification that the buffering it provides is at least partially comprised of material thrown from the second body of material.  While not of itself determinative of the proper construction to be placed on claim 1, it is most noticeable that the same point of view is a salient feature of Dyno’s invalidity challenge.        

    CLARITY

20. The requirement for the claims to be clear does not mean that they must be couched in language which is precise or absolute.  As noted for example in Flexible Steel at [81] (and cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi [2008] FCAFC 121; 77 IPR 229):

    “Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suited to the intended use … the consideration is whether, on any reasonable view, the claim has meaning … In determining this, the expressions in question must be understood in a practical, common sense manner … Absurd constructions should be avoided … and mere technicalities should not defeat the grant of protection …”

21. This involves a practical determination, rather than a strictly literal exercise, of whether the skilled person can understand what acts fall within the scope of a claim. 

22. On my understanding, Dyno’s only criticism regarding the clarity of the claims stems from the requirement in claim 1 that “at least 10% of the second body of material is thrown clear of the blast field beyond the position of said at least one free face”.  Dyno says this requirement is problematic because where there is a free face a stand-up blast will almost always throw more than 10% of material clear of the blast field, and that as consequently submitted by Dr Humphreys:

    “… if a blast is, for example, designed as a stand-up blast but there is lateral movement of more than 10% of the material, which would not be an uncommon occurrence, it is not clear to me whether such a blast would be a stand-up blast within the meaning of claim 1 … By way of further example, if a through-seam blast is conducted in which the interburden is blasted after the overburden in a single drill cycle, and there is movement of more than 10% of the overburden towards an available free face, this would appear to satisfy the requirements of claim 1 … even though the intended outcome of the blast in the overburden may have been a stand-up blast.”[32]

    [32] Humphreys#2 at [29]-[30]

23. The fundamental flaw in Dr Humphreys’ analysis is that it is premised on Dyno’s argument that Orica views the amount of material thrown as the sole measure of distinguishing a stand-up blast from a throw blast.  As already discussed in relation to the issue of construction, this argument is misconceived since it overlooks Orica’s clearly stated additional reliance on blast design.  Thus, even if it was supposed that the examples posited by Dr Humphreys threw more than 10% of material clear of the blast field, the fact remains that the blasts in question were designed as stand-up blasts and not throw blasts as required by claim 1. 

24. For these reasons claim 1 does not lack clarity.  This ground of opposition accordingly does not succeed.

    PRIORITY DATE

25. The amended statement of grounds and particulars asserts that the onus falls on Orica to prove that the application is entitled to the priority date claimed.  This assertion is contrary to authority that as an attack on a claim to priority is part of an attack on validity, the onus to prove a different priority date lies with the opponent (Aspirating IP at [82]-[83]). Dyno did not pursue the matter at the initial or reconvened hearings and, as a consequence, I will proceed on the basis that the application is entitled to the priority date claimed, namely, 28 November 2003.

    NOVELTY

    Statutory framework

26. By section 7(1) of the Act an invention is taken to be novel when compared with the prior art base as it existed before the priority date unless it is not novel in the light of certain “kinds of information”, one of which is prior art information “made publicly available in a single document or through doing a single act”.

27. In Schedule 1 to the Act “prior art information” is defined for the purposes of section 7(1) as “information that is part of the prior art base in relation to deciding whether an invention is or is not novel”.

28. “Prior art base” is relevantly defined as including:

    “(a) in relation to deciding whether an invention does or does not involve an inventive step …

    (i) information in a document that is publicly available …

    (ii) information made publicly available through doing an act …

    (b) in relation to deciding whether an invention is or is not novel;

    (i) information of a kind mentioned in paragraph (a) …”

    “Publicly available”

29. In Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd [2008] FCAFC 139; 78 IPR 20 (Insta Image) at [124], it was said that the following principles emerge from the authorities in respect of the issue of whether information was “publicly available” before the priority date (with citations omitted):

    • The information must have been made available to at least one member of the public who, in that capacity, was free, in law and equity, to make use of it.
    • It is immaterial whether or not the invention has become known to many people or a few people.  As long as it was made available to persons as members of the public, the number of those persons is not relevant.  Availability to one or two people as members of the public is sufficient in the absence of any associated obligation of confidentiality.
    • The question is not whether access to an invented product was actually availed of but whether the product was made available to the public without restraint at law or in equity.
    • In order to be “available”, information said to destroy novelty must be of a kind that would disclose to a person skilled in the relevant art all of the essential features or integers of the invention.
    • In order to be “available”, information said to destroy novelty must “enable” the notional person skilled in the art at once to perceive, to understand, and to be able to practically apply the discovery, without the need to carry out further experiments in order to arrive at that point.

30. The Full Court was here concerned with the issue of anticipatory use.  However, as the Full Court had said earlier in Merck & Co Inc v Arrow Pharmaceuticals Limited [2006] FCAFC 91; 154 FCR 31 at [98] in relation to anticipatory publication (with citations again omitted):

    “It was well established that a description in an obscure publication would suffice to destroy novelty, provided that it was a publication, that is to say that the document, whether or not it was read generally by the public, had been available to the public.  It was sufficient that the document or thing alleged to be the anticipation came into the hands of a person in circumstances which left him or her free at law and in equity to do whatever they liked with it.”

    The test for novelty

31. It is well established that the general test for anticipation or want of novelty is the reverse infringement test (Meyers Taylor Pty Ltd v Vicarr Industries Ltd ([1977] HCA 19; 137 CLR 228 at [19]), and this test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co ([1990] FCA 40; 16 IPR 545 (Nicaro) at [19]). 

32. To meet this requirement, the prior art must contain “clear and unmistakable directions” to produce the invention as claimed (Pfizer Overseas Pharmaceuticals v Eli Lilley and Company [2005] FCAFC 224; 68 IPR 1 at [314]). However, if the prior publication contains a direction which is capable of being carried out in a manner which would infringe the invention as claimed, but would at least as likely be carried out in such a way that would not do so, the invention as claimed will not be anticipated (General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 (General Tire) at 485-486; 1A IPR 121 at 138, Novozymes A/S v Danisco A/S [2013] FCAFC 6; 99 IPR 417 at [177]).

1. The same level of disclosure is required of an alleged prior use of the invention as claimed (Damorgold Pty Ltd v JAI Products Pty Ltd [2015] FCAFC 31; 318 ALR 483 (Damorgold) at [33-[34], Old Digger Pty Ltd vAzuko Pty Ltd [2000] FCA 676; 51 IPR 43 (Old Digger) at [152]), noting though that “[d]ifferent considerations apply to assessing an invalidity challenge based on an asserted disclosure in a prior art document by contrast to an asserted disclosure by prior public use” (Britax Childcare Pty Ltd vInfa-Secure Pty Ltd(No 4) [2015] FCA 651 (Britax) at [376]; and see Damorgold at [11]-[12]).

   The meaning of “baby decking”

2. Before turning to consider the documents on which Dyno relies under this ground, I note that the ACARP report and the Kanchibotla paper both refer to a blast technique known as “baby decking”.  It is worthwhile explaining this technique to assist in understanding some of the issues later discussed. 

3. The evidence demonstrates that the concept of baby decking was well known and understood among those working in the relevant art at the priority date, and indeed Orica accepts that this concept had formed part of the common general knowledge.[33]  As described for example by Dr Kanchibotla:

   “A single blasthole is divided into two decks, a small [“baby”] deck under a main deck.  The main deck is initiated before the baby deck, so that overburden material in front of the main deck is cast forward creating broken rock and path of least resistance to the explosion gases in the baby deck.  When the baby deck is subsequently initiated, the explosion gases (which generally take the path of least resistance) move towards the broken rock rather than into the coal seam.  Because the baby deck is relatively small the material around the baby deck is fragmented, not thrown forward, since the baby deck is substantially confined by the main deck above it.”[34]

4. Orica broadly agrees with this description but takes issue with the statement made by Dr Kanchibotla that overburden in the baby deck region is not thrown forward.  I will have more to say on this later.  For now I observe Dyno’s concession that the baby deck blasts do not anticipate claim 37.[35]

   The meaning of “decking”

   [33] Orica outline of submissions at [210]

   [34] Kanchibotla#1 at [10]

   [35] Dyno outline of submissions at [92]

100. An understanding of the broader concept of “decking” may also assist.  As conveniently summarised by Dr Humphreys:

“Decking is a technique of dividing the explosive column within a single blast hole into two or more charges.  The charges are separated by an inert material, such as drill cuttings, crushed rock, or sand, which is referred to as ‘stemming’.  Decks may also be separated by water or air within the hole.”[36] 

[36] Humphreys#1 at [52]

THE ACARP REPORT

101. The ACARP Project C11051 was a project awarded by the Australian Coal Association Research Program to DynoConsult (the consulting arm of Dyno) with the objectives of understanding the mechanisms of block movement of coal during overburden blasting, especially cast/throw blasting, and the development of practical solutions to minimise this movement which was the known cause of damage and loss of coal.  The project commenced with an industry review in February 2002 and continued over a two and a half year period.  Dr Kanchibotla participated in the project in his capacity as Senior Technical Consultant with DynoConsult.[37] 

[37] Kanchibotla#1 at [1], [11]

102. There are two separate reports:

• an Interim Report;[38] and
• a Final Report.[39]

[38] Humphreys#1 MH-12

[39] Brent#1 GFB-11

Both reports were co-authored by Dr Kanchibotla.  For reasons I will give, neither document is of assistance to Dyno.

The Interim Report

103. The Interim Report details two blasts conducted at Rix’s Creek Mine in the Hunter Valley region of New South Wales: the MG01 blast and the MG03 blast which the report states were monitored in June and September 2002 respectively.[40]  Both blasts involved an upper main deck and a lower baby deck.  With the MG01 blast, the main deck and the baby deck were initiated simultaneously.  With the MG03 blast, the distance of the explosive charge from the coal seam (the “stand-off”) was increased and initiation of the baby deck was delayed by 25 ms.  According to the Interim Report, the MG03 blast resulted in a 34% increase in potential coal recovery over MG01.  There is also a very brief mention of another blast, the MH01 blast, where although a 95 ms delay between the baby deck and main deck initiation had been considered, 65 ms was used as a compromise.  Dr Kanchibotla claims this was “due to the restrictions of pyrotechnic delays available at that time”.[41]  The Interim Report nevertheless recommended that “longer delay times should be considered and trailed [sic] in the future”.[42]

[40] Humphreys#1 MH-12 Executive Summary

[41] Kanchibotla#2 at [25]

[42] Humphreys#1 MH-12 at 58

104. The Interim Report is dated March 2003 (in other words, before the priority date), but the evidence does not establish when, if at all, it was published.  Dr Kanchibotla seemingly relies on Exhibit SK-5 to demonstrate dissemination of information about the Rix’s Creek Mine blasts which he states was “published after publication of the ACARP Interim Report C11051”.[43]  However, he does not say what the date of either publication was.  I note in this regard that exhibit SK-5 itself bears a copyright notice “© 2012 Dyno Nobel” which is well after the priority date.  Furthermore, Dr Kanchibotla has described exhibit SK-5 as a “marketing document” which is mirrored by the complete absence in this document of any technical details such as drill or blast design.  Aside from the unresolved issue of publication date, the Interim Report is labelled “Confidential” thus clearly indicating that the recipients of the report, whose distribution was confined to Rix’s Creek Mine, ACARP and Dyno, were not free in law and equity to make use of the information it disclosed. 

[43] Kanchibotla#2 at [22]

105. In light of the foregoing I consider that Orica has justifiably questioned whether the Interim Report was publicly available before the priority date.  However, this is not a question that needs to be resolved since Mr Franklin advised during the initial hearing that Dyno had abandoned all reliance on the Interim Report.

The Final Report

106. The Final Report details a number of blasts conducted at two different mine sites: the Goonyella Riverside Mine in the Bowen Basin region of Queensland, and the Rix’s Creek Mine.  The Final Report explains that following the industry survey undertaken during the initial phase of the ACARP project, two full-scale production blasts at the Goonyella Riverside Mine and one full-scale production blast at the Rix’s Creek Mine were monitored as part of a benchmarking exercise.  The benchmarking blast conducted at the Rix’s Creek Mine is the MG01 blast referred to in the Interim Report.  A number of recommendations based on the benchmarking results were implemented following computer modelling in one validation blast at the Goonyella Riverside Mine and in two validation blasts at the Rix’s Creek Mine.

107. The first of the latter validation blasts is the MG03 blast which was likewise referred to in the Interim Report.  However, and contrary to the Interim Report, the Final Report states that this blast was conducted in September 2003, not September 2002.[44]  The second validation blast conducted at the Rix’s Creek Mine is the MI04 blast which, similarly to the MH01 blast briefly mentioned in the Interim Report, involved a 65 ms delay between initiation of the main deck and the baby deck.  A longer delay of 100 ms was modelled but never actually trialled.  The Final Report notes that while this delay produced the lowest coal loss, a “65 ms delay is optimal” to avoid possible disruption of the baby deck explosive charge.[45]    

[44] Brent#1 GFB-11 at 96, 115

[45] Brent#1 GFB-11 at 102

108. The Final Report summarises the outcomes of the validation blasts at the Rix’s Creek Mine as follows:

“… even though the coal losses in MI04 are more than the MG03, the recoveries are better than MG01 … Overall the design changes implemented in the two validation blasts improved the recoveries by 42% compared to the benchmark.”[46] 

[46] GFB-11 at 135

109. The Final Report concludes with a number of recommendations for both mine sites to reduce the block movement of coal in future throw blasting, including the suggestion to “delay the baby deck with respect to the main explosive charge so that the explosive gases from the baby deck will find a path of least resistance toward the blasted rock on top rather than the coal seam below”.[47]    

[47] GFB-11 at 149

The nature of the baby deck blasts – reported results

110. It is not contested that the main deck blasts conducted at the Rix’s Creek Mine were throw blasts.  However, the parties are diametrically opposed as regards the intended outcome of the baby deck blasts.  Dyno has argued that the Final Report leaves no doubt that the sole purpose of baby decking was to reduce coal loss by limiting lateral movement of overburden immediately above the coal seam, that is, in the region of the baby deck.  Dyno therefore submits that the baby deck blast was a stand-up blast.  As further elaborated by Dr Kanchibotla:

“Overall, the results obtained in MG01, MG03 and MI04 showed that introducing a delay between the main deck and baby deck reduced the amount of forward movement of the burden immediately above the coal seam, and reduced the movement of the coal seam itself at the free face of the blast.  As with the work reported in ACARP Report C5005, it is clear that there is still forward movement of the burden in the area of the baby deck.  However, it is significantly less than the movement of the burden caused by the main deck.

… It is apparent from the ACARP reports to which I have referred above that baby decking is undertaken as part of a single cycle of drilling and blasting, in which the intention is to cast a percentage of the overburden from the highwall to the spoil pile.  However, it is also clear from these papers that a key aim of baby decking is to use the baby deck to achieve differential movement of material in the area of the baby deck versus material in the area of the main deck.  In particular, the purpose of using a baby deck is to minimise the forward movement of burden in the region immediately above the coal seam so as to protect the coal seam … Therefore, while baby decking is used in conjunction with cast blasting [in the main deck], the rock mass surrounding the baby deck does not contribute to the percentage cast.

I therefore consider that the rock mass movement surrounding the baby deck produces a result consistent with a stand-up blast where there is little horizontal movement.”[48]         

[48] Kanchibotla#2 at [28]-[31]

111. Orica disputes that the baby deck blasts reported in the Final Report were designed as, or to effect, a stand-up blast.  It firstly complains that Dyno has again attempted to proceed from the false premise that a blast is characterised by its intended outcome.  I have already dealt with this issue under the heading of construction where I found that in distinguishing throw and stand-up blasts, account needs to be taken of blast design as well as the actual outcome.  Orica then says that as admitted by Dr Kanchibotla himself, material in the baby deck region was in fact thrown forward clear of the free face of the blast field.  It submits that in terms of actual outcomes the baby deck blasts were consequentially throw, not stand-up, blasts. 

The nature of the baby deck blasts - computer simulations

112. Each party has presented a considerable body of evidence to prove their case on the nature of the baby deck blasts.  Much of this evidence concerns computer simulations conducted in the first instance by Dr Dare-Bryan to demonstrate that the baby deck blasts (in particular the MI04 blast), were not stand-up blasts, and subsequently by Dr Kanchibotla to substantiate his criticisms of the modelling employed by Dr Dare-Bryan.

113. In short, Dr Dare-Bryan used the proprietary SoH heave model to prepare a number of blast simulations including simulations of the MI04 baby deck blast (the “MI04 simulation”[49]) and the MI04 blast if conducted in accordance with an embodiment of the claimed invention (the “MI04-inv simulation”[50]).  The MI04 simulation showed that the percentage of material cast forward from the free face was 16% of the baby deck region.[51]  Dr Dare-Bryan asserts that the MI04 simulation accordingly demonstrated that the baby deck blast “casts substantial material forward of the free face” and is thus a throw blast.[52] 

[49] Dare-Bryan#1 at [5]-[22], [27]-[28], PDB-8

[50] Dare-Bryan#1 at [23]-[26], PDB-9

[51] Dare-Bryan#1 at [27]; Dare-Bryan#2 at [8]

[52] Brent#2 at [12]

114. Dr Humphreys and Dr Kanchibotla are both highly critical of what they see as the “artificial constraints” introduced by Dr Dare-Bryan into his simulations, most notably the selection of a 6000 ms delay (compared with the claimed limitation of at least 500 ms) between initiation of the main deck and the baby deck blasts in the MI04-inv simulation.  Dr Kanchibotla additionally conducted his own computer simulations using the Hybrid Stress Blasting Model (HSBM) in which the delay between initiation of the main deck and the baby deck ranged from 25 to 6000 ms.  These simulations are submitted to confirm that even with a 200 ms delay there is significant burden movement in the main deck but little movement in the bottom (baby) deck.[53]  Increasing the delay beyond 500 ms is said to have had very little impact on the reduction of movement of the baby deck layer.[54]

[53] Kanchibotla#6 at [34]-[38]

[54] Kanchibotla#6 at [50]-[51]

115. Dr Dare-Bryan has responded to this criticism by using Orica’s Mechanistic Blast Model (MBM) to prepare a simulation for a blast hole in the front row of the design adopted for the MI04 simulation.  Dr Dare-Bryan contends that the MBM simulation verified the results of the MI04 simulation using the SoH heave model.[55]     

[55] Dare-Bryan#2 at [24]-[25]

Is the Final Report relevant to Dyno’s novelty challenge?

116. Dyno has submitted that “[n]o doubt there can be criticisms of both the SoH and HSBM modelling done by the respective experts – they are after all simulations”.[56]  There is some substance to this submission, but of far greater relevance is that the body of evidence in question ignores the fact that the MI04 blast, on which this evidence is founded, did not precede the priority date.  The MI04 blast was not conducted until some 4 months later on 25 March 2004.[57]  The evidence is also crucially deficient in its apparent failure to recognise that the Final Report is dated “September 2004”.  Dyno has not attempted to establish whether the Final Report was ever published, but in any event what is clear is that even if the Final Report had made information regarding the MI04 blast (or, for that matter, the MG03 blast) publicly available, this would not have occurred until September 2004 at the earliest which post-dates the priority date by almost 12 months.  The requirement for disclosure before the priority date is fundamental to the statutory mandate of section 7(1).

[56] Dyno outline of written submissions at [89]

[57] Brent#1 GFB-11 at 115, GFB-13 at 10

117. I accordingly find that the Final Report does not form part of the prior art base.  It is therefore not available to Dyno to support its case on anticipatory publication or use.

THE WILLIAMS PAPER

118. The Williams paper was presented at the International Society of Explosives Engineers (ISEE) annual conference in 1992.[58]   It does not involve baby decking and instead describes through-seam blasts employed at a coal mine in Illinois, USA, which had three main coal seams: the #5 coal at the bottom, the #6 coal above the #5 coal (separated by the #5 overburden), and the #7 coal above the #6 coal (separated by the #6 overburden).  The #7 coal was beneath the surface, covered by the #7 overburden.    

[58] Humphreys#1 at [85]

119. In the late 1980s management was looking for ways to streamline the drilling, blasting and stripping of the overburden to make recovery of the #7 coal cost effective without slowing down the stripping operation.  Rather than adopting the costly and time-consuming method of blasting each layer of overburden separately and then removing each coal seam in turn:

“… [management]  decided to move the drill in only once and drill both seams of overburden at the same time.  The problem was that the #7 coal was in between the two seams of overburden and to shoot the material between the #6 coal and the #7 coal would have to be done in a manner to protect the #7 coal from damage.”[59]   

[59] Humphreys#1 MH-17 at 3

120. A pattern of deep holes was drilled through the #7 coal down to the #6 coal.  The overburden above the #7 coal was only 12 feet deep and could be shot without worry to the #7 coal.  The recommended pattern for the holes that were drilled was too large for these depths and so pilot holes between the deep holes were used in order to fragment the rock in the #7 overburden sufficiently to enable its removal by mining equipment.  Explosive charges were placed in each hole in the #7 overburden and in the holes penetrating the #6 overburden.  The explosive in the #6 overburden was on a 5000 ms delay compared to the explosive in the #7 overburden:

“The extra velocity and lower volume of gasses produced by this blend would fracture the rock with as little movement as necessary, thereby protecting the #7 coal.  The timing was set up to let the #7 overburden shoot and set back in place to contain the #7 coal, so the movement of the #6 overburden would not contaminate the #7 coal … [t]hese numbers show that the rock was shot much to the same degree before using the procedure and after changing over to simultaneous blasting.  The #7 coal was not budgeted to be recovered during the box cut operation but due to the innovative blasting procedures used, the coal could be saved making the operation more cost effective.”[60]    

[60] Humphreys#1 MH-17 at 4

121. Dr Brent submits that the reference to the “box cut” operation in the above passage means that the blasts reported by the Williams paper did not, and by definition could not, involve a free face to enable throw.  He says the fact that the blasts were stand-up blasts only is exemplified by the statement that “The timing was set up to let the #7 overburden shoot and set back in place to contain the #7 coal …” (original emphasis).  According to Dr Brent:

“This means it swelled up vertically when shot and then set back in place.  There was thus no lateral “movement”, let alone any significant lateral or forward displacement that might constitute throw.  As stated above, this is the only possibility for such a box cut blast as there is no free face.” (original emphasis)[61] 

[61] Brent#1 at [49], [51]

122. Dr Hagan has also submitted that when box cutting there is never a free face and no part of the blast is a cast blast[62] and, although not made with reference to a box cut blast, I note with interest the view expressed by Mr Cunningham’s that “it would not have been possible to design this blast to cast the #7 overburden.”[63]  Mr O’Keefe was heavily involved in the blasts reported in the Williams paper.[64]  He confirms that the purpose of introducing a delay between the firing of the #7 and #6 overburden seams was to avoid contamination of the #7 coal by movement of the #6 overburden.[65]  Mr O’Keefe states that the technique described in the Williams paper “worked very well and increased productivity during the production phase”.  Consistent with the description appearing on page 6 of the Williams paper, Mr O’Keefe deposes that during the production phase:

“… the wheel excavator would dig a section of the #7 overburden … all the way down to the rock.  This created a bench, on which the drill would sit, in order to drill through the #7 overburden rock, the #7 coal and the #6 overburden.  The decks in the #7 and #6 overburdens were then fired with a 5 second delay … The 5700 shovel would then strip the fragmented #7 overburden and throw it onto the parting [material] between the #5 and #6 overburden, and remove the #7 coal.  After that, the 6360 shovel removed the #5 overburden, together with the #7 overburden that has been thrown onto it.  This uncovered both the #5 and #6 coal seams at the same time.  When the #6 coal was removed, it left a new bench for the wheel excavator.”[66]

• “With reference to the claims of the Orica patent, what is important is the intention/design of the Roseneath blast.”[218]

• “The end result [segregation] is some justification that the intended blast mechanism that I designed worked as intended.  I reiterate previous comments that I have made that it was the intention of the Roseneath blast to cast the upper layer and stand up the lower layer, and that the delay times would have caused the lower layer to be buffered in situ.”[219]   

• “Intention is how the claims of the Orica patent are drafted, i.e. ‘… subjecting a blast to …’  This is also what I intended to do in the Roseneath blast.  I query what is ‘actual buffering’ as described by Hagan.  I prefer to return to the intention of the blast, which was to throw over stand up with a delay to allow the thrown material to buffer the lower layer.  As I have already described in Duniam#1, this is the same as the claims of the Orica patent.”[220] 

[218] PD-4 at [10]

[219] PD-4 at [20]

[220] Duniam#2 PD-4 at [22]

304. I also note that Mr Duniam has restated his opinion that there is no practical difference between a delay of 435 ms as compared to 500 ms.  It seems the inference he seeks to draw is that if a delay of 500 ms will achieve an in situ buffer, there is no evidence or reason to believe that the same result would not be achieved using a shorter delay which differs by only 65 ms.  I have already rejected this line of argument under the heading of alternative considerations. 

305. Given my overall misgivings about the reliability of Mr Duniam’s unaided recall of events, which in this instance is based solely on observations purportedly made by him, and hence what hypothetically would have been observed by Mr Kay, I cannot be practically certain that the results of the Roseneath blast were as he has alleged.

Summary of findings

306. I have found that the evidence is insufficient to support the conclusion that the Roseneath blast disclosed (i) a minimum delay of 500 ms, (ii) a throw blast over a stand-up blast (or, in terms of claim 37, different blast outcomes in the upper and lower layers) or (iii) buffering.

307. Dyno’s challenge to the novelty of the claimed invention based on the Roseneath blast accordingly does not succeed.

INVENTIVE STEP

Statutory framework

308. According to sections 7(2) and 7(3) as they were before the commencement of the RTB Act, an invention is taken to involve an inventive step, when compared to the prior art base, unless the invention would have been obvious to the person skilled in the relevant art in the light of common general knowledge within Australia either considered alone or together with the information specified in section (3). This information includes one or a combination of two or more pieces of prior art information being information that the person skilled in the art could be reasonably expected to have ascertained, understood and regarded as relevant by the person skilled in the relevant art.

The test for inventive step

309. The test for whether an invention is obvious (non-inventive) is to ask if it would have been a matter of routine to proceed to the claimed invention.  In Wellcome Foundation Ltd v V.R. Laboratories (Aust) PtyLtd [1981] HCA 12 at [45]; 148 CLR 262 (Welcome) at 286, it was stated:

“The test is whether the hypothetical addressee faced with the same problem would have taken as matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”

310. The High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; 212 CLR 411 (Alphapharm) at 433 stated that it is also permissible to use the reformulated “Cripps question”:

“Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art and the facts, directly be led as a matter of course to try the invention as claimed in the expectation that it might well produce a solution to the problem.”

311. It has since been accepted that the Cripps question is not of universal application.  As stated in Generic Health Pty Ltd v Bayer Pharma Aktiengsellschaft [2014] FCAFC 73 at [71]:

“We do not think that the plurality in Alphapharm were saying that the reformulated Cripps question was the test to be applied in every case.  Rather, it is a reformulation of the test which will be of assistance in cases, particularly those of a similar nature to Alphapharm.  The plurality did not reject as an alternative expression of the test the question whether experiments were of a routine character to be tried as a matter of course (Welcome at 286, per Aickin J). We do not think there is a divide here in terms of whether an expectation of success is relevant between a test which refers to routine steps to be tried as a matter of course and the reformulated Cripps question. It is difficult to think of a case where an expectation that an experiment might well succeed is not implicit in the characterisation of steps as routine and to be tried as a matter of course.”

312. It is also important to remember that where, as in the present case, the claimed invention involves a combination of features, what must be shown to be obvious is that combination. Thus, as stated in Alphapharm in [41]:

“… The claim is for a combination, the interaction between the integers of which is the essential requirement for the presence of an inventive step.  It is the selection of the integers out of ‘perhaps many possibilities’ which must be shown by Alphapharm to be obvious, bearing in mind that the selection of the integers in which the invention lies can be expected to be a process necessarily involving rejection of other possible integers …”

313. As becomes clear from the foregoing, the test for inventive step is in terms of obviousness.  It is also clear that any potential solution to a problem will not be obvious unless it would have been a matter of routine to try that solution, but with the significant caveat that there must be an expectation that the potential solution “might well” solve the problem.  It is not necessary that success is guaranteed. 

The misuse of hindsight

314. The authorities have consistently warned against approaching the question of obviousness with the benefit of hindsight.  As said for example in Colgate-Palmolive Company and Colgate-Palmolive Limited v Cussons Pty Limited [1993] FCA 224; 26 IPR 311 at [156]:

“The important thing to remember and to keep steadily in mind is the danger of applying hindsight.  When the court comes to consider whether a claimed invention is obvious, it comes to the question with the benefit (in one sense the disadvantage) of then existing knowledge and practice.  It is most difficult to go back, but that is what one must endeavour to do.  One therefore needs to take the greatest care to endeavour to see that hindsight plays not part in the decision making process.”

315. The High Court in Alphapharm also warned against the misuse of hindsight, noting that the danger of such misuse will be “particularly acute where what is claimed is a new and inventive combination for the interaction of integers, some or all of which are known”.  In that regard, the High Court referred with approval to Lord Diplock’s comments in Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd at [1972] RPC 346 at 362:

“Once an invention has been made it is generally possible to postulate a combination of steps by which the inventor might have arrived at the invention that he claims in his specification if he started from something that was already known. But it is only because the invention has been made and has proved successful that it is possible to postulate from what starting point and by what particular combination of steps the inventor could have arrived at his invention. It may be that taken in isolation none of the steps which it is now possible to postulate, if taken in isolation, appears to call for any inventive ingenuity. It is improbable that this reconstruction a posteriori represents the mental process by which the inventor in fact arrived at his invention, but, even if it were, inventive ingenuity lay in perceiving that the final result which it was the object of the inventor to achieve was attainable from the particular starting point and in his selection of the particular combination of steps which would lead to that result.”

The relevant problem

316. As the High Court explained in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) 2007 HCA 21; 235 CLR 173 at [127], the prior disclosures to be taken into account for the purposes of an enquiry as to obviousness are being considered for a particular purpose:

“That purpose is the purpose of looking forward from the prior art base to see what a person skilled in the relevant art is likely to have done when faced with a similar problem which the patentee claims to have solved with the invention.”

317. Dyno relies on an adaption of the modified Cripps question on which to found its case.  Dyno says that it bears the onus of establishing that, in relation to methods of blasting plural layers of material in open cast mining, before the priority date, the following question would be answered in the affirmative:

“Would the person skilled in the art, in all the circumstances, which include a knowledge of all relevant prior art, directly be led as a matter of course to try, in a single cycle of drilling loading and blasting, a throw blast over a stand-up blast such that at least 10% of the top layer subjected to the throw blast is thrown clear of the blast face, in which the stand-up blast is initiated at least 500 ms after the throw blast and the bottom layer subjected to the stand-up blast is buffered, in the expectation that a method with these features might well prove useful to address the deficiencies in productivity of separate cast and stand-up blasts?” (original emphasis).[221] 

[221] Dyno outline of submissions at [104]

318. Orica submits that before that approach can legitimately be taken, the problem posited in the question must be shown itself to be common general knowledge or otherwise ascertained through a permissible section 7(3) reference.[222]   I agree with this submission.

[222] Orica outline of submissions at [235]

319. In AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [202]-[203], the approach to be taken in determining the problem or “starting point” for assessing inventive step was stated as follows:

“If the problem addressed by a patent specification is itself common general knowledge, of if knowledge of the problem is s 7(3) information, then such knowledge or information will be attributed to the hypothetical person skilled in the art for the purpose of assessing obviousness.  But if the problem cannot be attributed to the hypothetical person skilled in the art in either of these ways then it is not permissible to attribute a knowledge of the problem on the basis of the inventor’s ‘starting point’ such as might be gleaned from a reading of the specification as a whole.”

320. The evidence does not establish that the problem posited by Dyno was either common general knowledge or section 7(3) information.  Indeed, it seems to me that it has been formulated with the benefit of hindsight.  The present specification states that the aim of the invention is to provide a method of blasting that can increase overall mining productivity by comparison with conventional blasting methods, including through-seam blasting, by allowing several layers of material to be blasted together within a single drill, load and blast cycle.[223]  I am satisfied from the evidence that this need was well understood by those engaged in the industry.  

[223] Specification at 4/1-5

The person skilled in the relevant art

321. The question of whether a claimed invention involves an inventive step is to be determined through the eyes of the person skilled in the relevant art.

322. The notional “person skilled in the art” is an artificial construct that is used as a tool of analysis “which guides the court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step” (AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30; 89 ALJR 798 at [23]). In general, the skilled person or addressee is the person who works in the art or science with which the invention is connected. He or she is a person, or team, likely to have a practical interest in the subject matter of the invention. While the skilled person may be assumed to be well-versed in the relevant art, such a person must be taken to be non-inventive (Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; 49 IPR 225 at [71] referring to Catnic at 242 and General Tire at 485; Minnesota Mining at 293).

323. The parties are generally agreed that for present purposes the skilled person is someone having knowledge of drill and blast design in mining operations.  Further, I note that there is no real dispute between the parties as to the expertise of any of the declarants, and I accept that in view of their particular background and experience all of them are knowledgeable of the matters on which they have commented.

Common general knowledge

324. The notion of common general knowledge was described in Minnesota Mining at 292 as involving:

“… the use of that which is known or used by those in the relevant trade.  It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of making improvements in old, and it must be treated as being used by an individual as a general body of knowledge.”

325. The common general knowledge will encompass not only material that is retained in the memory of the skilled person, but also material that the person knows of, and to which they might refer as a matter of course, or habitually consult.  This material could include, for example, standard texts and handbooks (ICI Chemicals & Polymers Ltd v Lubrizol Corporation Inc [1999] FCA 345; 45 IPR 577 at [112]).

326. The parties are agreed that the following matters may be regarded as commonly known by those working in the relevant art:

·throw blasts;

·stand-up blasts;

·buffering; and

·baby decking.

327. There appears to be some dispute as to whether the concept of “decking” had also assimilated into common general knowledge, but I do not see this as being of present significance.  However, there are some other points of dispute which warrant closer consideration. 

Through-seam blasting

328. The evidence for Dyno is that through-seam blasting is a commonly used technique.[224]  Dr Brent has criticised some aspects of the evidence given by Dr Humphreys and Dr Kanchibotla in this matter,[225] but does not go so far as to express a contrary view on the extent to which through-seam blasting was known in the art.  The present specification itself refers to through-seam blasting.  In Bristol-Myers Squibb Co v F H FauldingLimited [2000] FCA 316; 46 IPR 553 at [30] it was held that indirect evidence such as admissions made in patent specifications may serve as indicators of common general knowledge:

“If a patent application, lodged in Australia, refers to information derived from a number of prior publications referred to in the specification or, generally, to matters which are known, in our view the Court - or the Commissioner - would ordinarily proceed upon the basis that that the knowledge thus described is, in the language of s 7(2) of the 1990 Act, part of 'the common general knowledge as it existed in the patent area’.”

[224] Kanchibotla#1 at [19]; Humphreys#1 at [64]-[65]; Cunningham at [39]-[40]

[225] Brent#1 at [39], [94]

329. In the present case the information contained in the specification in relation to through-seam blasting has apparently been derived from a number of documents.  I am therefore satisfied that through-seam blasting can be regarded as common general knowledge.

Electronic detonators

330. The evidence clearly shows that although commercially available at the priority date, the suitability of electronic detonators was not widely accepted.

331. The evidence of Mr Cunningham is that by 2002 electronic detonators had only “just begun to be accepted”.[226]   Dr Humphrey’s evidence (citing a number of reasons) is that electronic detonators: “… were not widely used in open-cut mining and were still regarded as experimental and unproven technology, or for specific ‘niche’ applications, until well after 2000.”[227]  Dr Kanchibotla’s evidence is to like effect.  His says that “As at 2003, electronic detonators were commercially available but I did not consider them sufficiently robust for use in the field”.[228]  He further states that “as of November 2003, in my experience many mines (who are responsible for the ultimate purchasing decision) were reluctant to replace existing pyrotechnic technology [with electronic detonators]”.  Even by 2007, he and his colleagues were “having difficulty” implementing the use of electronic detonators.[229]

[226] Cunningham at [15]

[227] Humphreys#2 at [59]

[228] Kanchibotla#1 at [12]

[229] Kanchibotla#2 at [49]-[50]

332. I am therefore not satisfied from Dyno’s own evidence that electronic detonators, while available, formed part of the common general knowledge at the priority date.  For the same reasons, I accept Orica’s alternative submission that:

“… if electronic detonators can be considered to be well known, so was the understanding that they were not suitable for use for the claimed method.  In either case, the skilled addressee would not consider them as suitable for use in the claimed method.  Accordingly, Orica submits that the Commissioner should not find that electronic detonators formed part of the background knowledge of drill and blast engineers who were considering how to improve blasting methods.  They were not ‘generally accepted without question’ or ‘generally regarded as a good basis for further action’ by the bulk of those in the art [per Lindgren J in Aktiebolaget Hassle v Alphapharm Pty Ltd [1999] FCA 628; 44 IPR 593 at [221].”[230]  

[230] Orica outline of submissions at [219]

The Williams paper, the Kanchibotla paper and the ACARP report

333. Dyno says these documents all appear to have been common general knowledge.[231]  I am not convinced of this.  As stated in British Acoustic Films Ld v Nettlefold Productions 53 RPC 221 at 250 (and affirmed in General Tire):

"… it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or a series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less merely because it is widely circulated. Such a piece of knowledge only becomes common general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art."

[231] Dyno outline of submissions at [47]

334. In the present case there is no evidence that any of the documents in question had been widely circulated, let alone read, before the priority date.  Dyno has therefore failed to establish that their disclosures had become part of the “common stock of knowledge relating to the art”.

335. Dyno has argued that even if these documents are not common general knowledge, they are clearly section 7(3) information.

Section 7(3) information

The ACARP report

336. I have found that the Final Report does not form part of the prior art base.  The inevitable consequence of this finding is that it is not available for the purposes of section 7(3).  As said earlier, Dyno has abandoned all reliance on the Interim Report.

The Williams paper

337. In order to qualify under section 7(3), it must firstly be shown that the Williams paper could be reasonably expected to have been ascertained (i.e. found) by the person skilled in the art.  Orica submits that the evidence does not support such a finding.  I am inclined to agree.  So far as the evidence goes, Dyno’s witnesses came to consider the Williams paper only on being provided with copies of it by Dyno’s patent attorneys.[232]  Apart from Mr O’Keefe who participated in the blasts reported in the Williams paper, none say that they had read it before the priority date or were otherwise aware of its content.

[232] Humphreys#1 at [84]; Cunningham at [42]; O’Keefe at [6]; Gribble at [7]

338. Mr Humphreys does give evidence that he has discovered that a copy of the Williams paper can be purchased through the ISEE website, but this occurred after he was supplied with a copy of it.  He also gives evidence that he and his colleagues would regularly undertake literature searches using a number of sources to identify technical papers relevant to their work.[233]  However, Dr Humphreys does not go so far as to say that he would have located the Williams paper through a search carried out by him, and nor does he set out reasoning to support a conclusion that the skilled person could reasonably be expected to find it.  It is an issue for comment that the courts have warned that little to no weight should be given to an assertion that a document would be found if it is not supported with an explanation involving some precision as to how this would have been achieved (for example, Aspirating IP at [463]).

[233] Humphreys#1 at [20]

The Kanchibotla paper

339. The evidence here is even less helpful to Dyno.  Dr Humphreys says that the Kanchibotla paper was published in a technical journal in 2000.[234]  However, he does not explain the circumstances under which he acquired a copy of the journal or why the Kanchibotla paper may have been of particular interest to him.  He certainly does not suggest that he located it during a literature search.  If this was in fact the case, there is no evidence of what precise steps he took which led him to the Kanchibotla paper.

[234] Humphreys#1 at [57]

340. Mr Cunningham deposes that he had previously seen the Kanchibotla paper before being provided with a copy by Dyno’s patent attorneys.[235]  However, he does not give evidence as to how the Kanchibotla paper had come to his attention on this earlier occasion.  Thus, as is the case with Dr Humphreys, Mr Cunningham’s evidence fails to demonstrate that the skilled person could reasonably be expected to find it.

[235] Cunningham at [49]

341. For completeness I note that there is no dispute that the skilled person would have understood the Williams paper and the Kanchibotla paper.  However, even if it is assumed that the skilled person could reasonably be expected to have ascertained these papers, Dyno’s evidence does not explain why the skilled person would regard either of them as relevant.

IS THE CLAIMED INVENTION OBVIOUS?

Conventional practice

342. Dr Brent claims that at the priority date conventional practice was to drill, load and fire overburden throw blasts separately to any subsequent blasts, such as in a coal seam underneath the overburden or in interburden.  This practice incurred a number of drawbacks.  Dr Brent points out that throw blasting created an “unacceptable coal loss problem” for “over 20 years”.[236]   He then says that various attempts were made unsuccessfully to solve this problem, including baby decking.  However, despite these attempts, none of them combined the features of the claimed invention in a single drill, load and blast cycle.[237]  Furthermore, Dr Brent’s evidence is that even his colleagues (including experienced mining engineers) at Orica were doubtful of the merits of the invention when it was first presented to them.[238]

[236] Brent#1 at [102]

[237] Brent#1 at [96]-[98]

[238] Brent#1 at [105]

The Hagan exercise

343. Dr Hagan was asked by Orica’s patent attorneys to address the following question on the basis of his knowledge at the priority date:

“.. assume that you were asked by a client on or before [the priority date] to devise a method of blasting that would increase overall mining productivity by allowing several layers of material to be blasted together within one drill, load and blast cycle in a more productive way than was at [the priority date] provided by conventional blasting methods including through-seam blasting.

Based on that assumption, we ask you:

1. Advise what steps you would have taken on or before [the priority date] in order to attempt to devise the requested method.

[239] Hagan#1 TNH-3 at 2; TNH-9 at [2]

2. Implement those steps and outline for us any solution you would have recommended to the client on or before [the priority date].”[239]

344. Dr Hagan then sets out a detailed explanation of how he would have approached the question posed to him and the solution he would have proposed.  Importantly, Dr Hagan has provided this evidence without knowledge of the present application or the Stratablast method.[240]

[240] Orica outline of submissions at [243]; Dyno outline of submissions at [113]

345. Dyno seeks to counter this evidence by arguing that Dr Hagan’s instructions were too vague and misleading.[241]  It submits that the exercise undertaken by Dr Hagan is consequently of no assistance in assessing what the skilled person “would have been directly led as a matter of course to try before the priority date to address the deficiencies in productivity of separate cast and stand-up blasts (with knowledge of the technique of through-seam blasting)”.  I have some difficulty in understanding this submission since, as pointed out by Orica, the question posed to Dr Hagan presupposes a “starting point” that is essentially the same form of the problem identified by the specification.  As I have indicated, that problem provides the background said by Dyno to be missing from the instructions given to Dr Hagan.

[241] Dyno outline of submissions at [116], [119-[121]

346. The solution proposed by Dr Hagan does not involve the claimed invention.  Dr Humphreys says this is unsurprising “as it has been developed for use in an entirely different context and to achieve entirely different goals.”[242]  He does, however, acknowledge that the basic principles applied by Dr Hagan are consistent with his own evidence.  Whatever the case may be, what I think is most important in the present context is that, having proposed a particular solution, Dr Hagan notes that “it was just one of an extremely large number of possible situations.”[243]  This highlights the wide range of potential avenues of enquiry open to the skilled person at the priority date which is entirely consistent with the other evidence before me.[244] 

[242] Humphreys#2 at [84]

[243] Hagan#1 TNH-9 at [7]

[244] For example, Kanchibotla#1 at [22]-[23]; Brent#1 at [95]; Cunningham at [30]-[32], [34]-[35]

Obviousness and through-seam blasting

347. Dyno seeks to combine common general knowledge (which includes throw blasting) with long delay electronic detonators and “any document description of through seam blast” to arrive at the invention defined by claim 1.  It refers in particular to two documents: the Edwards paper and the Laybourne paper.  With regard to claim 37, Dyno submits that it is clear from the Edwards paper, for example, that through-seam blasts were conducted with differential blast results across a shot and at different levels within the shot.[245]  However, as Orica has submitted, there is insufficient proof that the Edwards paper or the Laybourne paper would have been ascertained or regarded as relevant.  Furthermore, Dyno has not demonstrated that the skilled person would as a matter of routine have significantly altered the essential character of a through-seam blast by incorporating a throw blast, and then further incorporating electronic detonators which the evidence has shown were not “generally accepted without question” within the industry. 

[245] Dyno outline of submissions at [132]

348. In attempting to show that the concept of throw blasting one layer and stand-up blasting another in a single cycle was well known before the priority date, Dyno refers to evidence given by Mr Cunningham.  Dyno submits that the same evidence supports the view that it was also well known to design blasts to achieve different blast results in different layers of strata.  Mr Cunningham refers to work done in South Africa before the priority date (in the 1990s and late 1980s).  Two papers exhibited by him describe, in one blast sequence, throw blasting waste material and stand-up blasting valuable reef material (in one case platinum and the other gold).[246]   However, as with the other purported section 7(3) references, there is no evidence that the skilled person could reasonably be expected to have ascertained either of the papers relied on by Mr Cunningham.  This aside, their relevance is highly questionable: both relate to underground mining.   

[246] Cunningham at [36]-[37]

Obviousness and baby decking

349. Dyno contends that claim 1 is obvious in light of baby decking because “it is clear from the evidence that longer delays were considered, and in particular that if electronic detonators had been considered suitable much longer delays might have been used”.[247]  However, the evidence shows that at the priority date electronic detonators were not considered sufficiently reliable and robust for use.  There is also an issue as to which baby deck publication Dyno relies on.  Dyno then argues that the Williams paper could be combined with baby decking to produce the desired outcome.  Dyno also seeks to supply differential inter-row and inter-hole timing by adding the patent document WO 02/057707 to baby decking.  It seems to me that Dyno’s case is an exercise in hindsight reasoning.  In any event, I have already found that the Williams paper is not section 7(3) information, and Mr Franklin conceded at the initial hearing that there is no evidence that the skilled person would have consulted patent documents.   

[247] Dyno outline of submissions at [128]

Obviousness and the Roseneath blast

350. Dyno has conceded that the Roseneath blast was not common general knowledge and also that it is not available as section 7(3) information.  This of course directly follows from the idiosyncratic nature of the Roseneath blast: it was a one-off event.  Nevertheless, Dyno relies on the Roseneath blast to demonstrate:

“ … what a skilled addressee [in this case, Mr Duniam], using his common general knowledge, was in fact directly led as a matter of course to try given the conditions that he faced in the Roseneath Quarry at the time.”[248]   

[248] Dyno outline of supplementary submissions at [11]

351. However, even if this approach is accepted, all that the evidence shows is what the skilled person would do when faced with the prevailing conditions at the Roseneath Quarry; it says nothing about what the skilled person would do when faced with the problem identified by the present application.  And even if it is assumed that the Roseneath blast is something that the skilled person would do when faced with this problem, the evidence shows that it did not lead to the claimed solution. 

Obviousness and the Reitz paper

352. The Reitz paper reports on a blasting method used by United Minerals Co at its Somerville North Pit No 5 mine in Indiana, USA.  The method being reported was the combination of “angle drilling” with a staggered blast pattern.  Two kinds of blast are discussed in the Reisz paper: (a) production blasts and (b) ramp blasts.

353. The only evidence about the Reisz paper comes from Dr Humphreys who relies on it to illustrate the point that buffering can be used to restrict lateral movement of a blast (and goes on to make his claim that the upper deck must have been a throw blast).[249]  However, for the reasons already discussed in relation to the Williams paper and the Kanchibotla paper, there is no evidence that the Reitz paper was prior art information that the skilled person could be reasonably expected to have ascertained.  There is also no evidence of why, given its Abstract identifies the Reitz paper as addressing the combination of angle drilling with staggered blast patterns, the skilled person would even regard the Reitz paper as relevant if it had been located.

[249] Humphreys#2 at [36], MH-33

354. Orica submits that even if the Reitz paper were available as section 7(3) information, there is no basis to support a finding that the claimed invention is obvious in light of its addition to common general knowledge.  I agree.

355. While using different blast patterns for the production and ramp blasts, the Reitz paper used the same blast pattern in both the upper and lower decks for each type of blast.  Therefore in terms of claim 37, it does not disclose the requirement that there be different blast hole delays between the two decks for at least some adjacent inter-row delays and/or different inter-deck delays between holes in a row.

356. Furthermore, the Reitz paper is not directed to the problem of coal loss.  Nor is it directed to blasting multiple layers in a single cycle.  Rather, the problem was that the cast was blasting rock too far for efficient ramp construction.  The object was therefore to minimise cast, while retaining good fragmentation, to reduce the need for tractors to push the blasted material back in place or for more material to be trucked in.[250]  There is no evidence why the skilled person would link this teaching to the objective of the claimed invention.

[250] MH-33 at 152/29-34

357. As a final point, the Reitz paper teaches delaying the blast in the lower deck by 50 ms.  There is no suggestion that the inter-deck delay should be any longer, nor any evidence of why the skilled person would extend that teaching to a delay of at least 500 ms.    

Summary of findings

358. I have found that none of the evidence relied on by Dyno establishes that the claimed invention lacks an inventive step.  This ground consequently does not succeed.

CONCLUSION        

359. I have found that the opposition does not succeed on any of the grounds relied on.  The opposition is therefore dismissed.

COSTS

360. Although agreeing in principle that costs should follow the event, the parties requested that they be allowed to defer making submissions on costs until after this decision has issued.  Due to the complexity of the opposition I consider this request to be entirely reasonable.  I therefore allow the parties two weeks from the date of this decision to each file submissions in relation to costs, and a further week to respond to those submissions.  I will make a separate decision on costs after the completion of submissions. 

O L Haggar
Delegate of the Commissioner of Patents

    #1 at [20]-[22]; Cunningham at [28]; Kanchibotla#2 at [7]-[10]; Duniam#1 at [15]