E.I. Du Pont De Nemours and Company v ICI Chemicals & Polymers Limited and Atofina S.A
[2002] APO 21
•5 June 2002
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No 686434 in the name of in the name of E.I Du Pont De Nemours and Company
Title: Constant boiling composition
Action: Oppositions under Section 59 of the Patents Act 1990 by
(1) ICI Chemicals & Polymers Limited and (2) Atofina S.A.
Decision: Issued .
Abstract
Joint hearing with respect to this matter and co-pending application 686433.
All evidence in both matters considered in respect of each application. As a result some evidence
was not mentioned in the statement of grounds and particulars in respect to both matters.
All parties allowed time after the hearing to propose amendments to their statements of grounds
and particulars in order to formalise matters of evidence.
At the hearing witnesses appeared for all parties to be cross-examined on their statutory
declarations.
At the hearing both opponents only relied on lack of novelty and lack of inventive step.
Further evidence filed and served at the hearing. All parties were allowed time after the hearing to
make submissions in respect of the further evidence.
All claims found to lack “whole of contents” novelty.
All claims found to exhibit an inventive step.
Applicant given 60 days to propose suitable amendments.
Because of the complexity of the two matters being heard together the parties allowed 60 days
after the issuing of the decision to make submissions on costs.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re: Patent Application No.686434 by E.I. Du Pont De Nemours and Company and oppositions under s.59 by ICI Chemicals & Polymers Limited and Atofina S.A.
BACKGROUND
Patent Application 686434by E.I. Du Pont De Nemours and Company (Du Pont) was filed on 10 October 1995 as a divisional application of application number 91738/91. This parent application was filed on 12 December, (under the provisions of the PCT) as PCT/US91/09144. It claimed priority from two earlier US applications namely US62800 filed 17 December 1990 and US 659210 filed 22 February 1991. The present application therefore claims priority from this parent application and thus from the two earlier US Applications. ( I note that the parent application was advertised lapsed on 14 December 1995.)
Acceptance of the present application was advertised on 5 February 1998. ICI Chemicals and Polymers Limited (ICI) filed a notice of opposition on 5 May 1998 and a statement of grounds and particulars on 5 August 1998. Following a number of unopposed extensions of time, serving of all ICI’s evidence was finally completed on 29 June 2001. Atofina S.A. (Atofina) also filed a notice of opposition on 5 May 1998 and a statement of ground and particulars on 5 August 1998. Following a number of unopposed extensions of time, serving of all Atofina’s evidence was finally completed on 31 May 2001.
The hearing was held in Melbourne on 6,7 and 8 February 2002. It was conducted concurrently with the hearing on the co-pending case of Patent Application No.686433 also to Dupont. (Atofina was not a party to the 686433 matter). ICI was represented by Mr David Catterns QC, and Mr David Tadgell and Mr Chris Schlicht, patent attorneys of Phillips Ormonde & Fitzpatrick. Altofina was also represented by Mr David Catterns QC, and Ms Shahnaz Irani patent attorney of Spruson and Ferguson. The applicant was represented by Mr Justin Gleeson SC, assisted by Mr Cameron Moore and Dr Elizabeth Houlihan and Mr Michael Houlihan, patent attorneys of Callinan Lawrie. Dr Stuart Corr of ICI and Mr Ian Dee (UK patent attorney) attended as observers.
THE SPECIFICATION
The application describes and claims a substantially constant boiling mixture composition of at least two hydrofluorocarbons that is low boiling and non-flammable. This composition is said to be useful as a refrigerant, aerosol propellant, a heat transfer medium, a gaseous dielectric, a fire extinguishing agent, an expansion or blowing agent for polymers and as a power cycle working fluid.
Prior art chlorofluorocarbons (CFCs) are believed by many scientists to damage the ozone layer in the stratosphere, which allows harmful ultra-violet radiation to penetrate it. Thus the entire thrust of the specification in suit is to provide a substitute for these CFCs, which are currently employed for the purposes outlined above. The specification indicates that current refrigeration equipment uses a refrigerant composition known as Refrigerant 502 (R502), this is a commercial binary azeotrope of chlorodifluoromethane (HCFC-22) and chloropentafluoroethane(CFC-115). However the specification adds that CFC-115 is a compound which was due to be phased out by the year 2000 and the industry would have to replace it with environmentally safer refrigerant compositions before than.
The specification then goes on to describe how tetrafluoroethanes (HFC-134 and its isomer HCFC-134a) have been proposed as a substitute for R502 but that they are unsuitable for use in currently existing equipment as they have relatively high boiling points limiting their refrigeration capacity.
The specification then states that the main objective of the invention is to provide a new refrigerant composition that is both CFC free and able to be used in existing commercial refrigeration equipment.
To this end it proposes a constant boiling composition of 10-90 weight percent pentafluoroethane, (HFC-125) and 90-10 weight percent difluoromethane (HFC-32). An azeotropic composition of 18.5% HFC-125 and 81.5% HFC-32 is one of the most preferred compositions. Since all these compounds are well known as refrigerants, the industry conveniently refers to them using the nomenclature R followed by their number regardless of whether they are HFCs, HCFCs or CFCs. For convenience I will adopt this nomenclature throughout this decision and I have inserted a table which gives the chemical names along with the R Number, along with some boiling points, boiling point differences from R502 and some comments on flammability.
Compound Refrigerant number Boiling point degreesC Boiling point difference from R502 Comments pentafluoroethane, R-125 -48.5 -3.06 difluoromethane R-32 -51.6 -6.1 slightly flammable chloro-difluoromethane R-22 -40.6 4.68 ozone depleting 1,2,2,2-tetrafluoroethane R-134a -26.5 12.94 R22/R115 azeotrope R-502 -45.44 0 Ozone depleting 1,1,2,2-tetrafluoroethane R-134 -19.9 25.5 1,1,1-trifluoroethane R-143a -47.6 -2.7 Slightly flammable fluoroethane R-161 -37.22 8.22 Flammable and toxic octafluoropropane R-218 -39 6.44 propane, R-290 -42.07 3.37 flammable trifluoromethane R-23 -82.1 -36.66 1,1,1,2,3,3,3-heptafluoropropane R-227ca
Additionally the inventors have discovered that a composition far away from the azeotropic one remains constantly boiling and is much less flammable than the azeotrope itself. As it is the R32 that is by far the more flammable of the two components, it is most useful that in particular a mixture having the composition of only 20-30% R-32 and 70-80% R-125 will operate successfully in currently existing low temperature refrigeration equipment.
The specification goes on to relate how some of the compositions of the invention are particularly useful in low temperature refrigeration applications since they maintain their stability and azeotrope like properties at temperatures of -30°F and 115°F and pressure of 24psia and 415psia.
The specification then goes on to describe and claim compositions where one or more additional components are added to the binary mixture to make ternary or higher mixtures. These claims are specifically drafted to exclude the subject matter of Patent application 686433 [the opposition to which co-pending application was heard concurrently with the present application]. The additional components added are drawn from one or more of R-22, R-134a, R-134, R-161, R-218, R-290, R-23, R-227ca.
The specification ends with 18 claims:
1. A substantially constant boiling mixture comprising about 10-90 weight percent pentafluorethane and about 90-10 weight percent difluoromethane.
2. A substantially constant boiling mixture as in claim 1 which also contains at least one compound selected from the group consisting of chloro-difluoromethane, 1,2,2,2-tetrafluoroethane, 1,1,2,2-tetrafluoroethane, 1,1,1-trifluoroethane, fluoroethane, octafluoropropane, propane, trifluoromethane and 1,1,1,2,3,3,3-heptafluoropropane but excluding a ternary fluorocarbon mixture comprising about 5-90 weight percent pentafluoroethane, about 5-90 weight percent difluoromethane and 5-90 weight percent of at least one of 1,1,1,2-tetrafluoroethane or 1,1,2,2-tetrafluoroethane.
3 A substantially constant boiling mixture as claimed in claim 1 comprising about 13-23 weight percent pentafluorethane and about 77-87 weight percent difluoromethane.
4. An azeotropic mixture of about 18.5 weight percent pentafluorethane and about 81.5 weight percent difluoromethane having a boiling point of about 15.3°C at 70.2 psia.
5. A substantially constant boiling mixture of about 60.6 weight percent pentafluorethane and about 39.4 weight percent difluoromethane.
6. A substantially constant boiling mixture comprising about 55-90 weight percent pentafluorethane and about 45-10 weight percent difluoromethane.
7. A substantially constant boiling mixture as in claim 6 which also contains at least one compound selected from the group consisting of chloro-difluoromethane, 1,2,2,2-tetrafluoroethane, 1,1,2,2-tetrafluoroethane, 1,1,1-trifluoroethane, fluoroethane, octafluoropropane, propane, trifluoromethane and 1,1,1,2,3,3,3-heptafluoropropane but excluding a ternary fluorocarbon mixture comprising about 5-90 weight percent pentafluoroethane, about 5-90 weight percent difluoromethane and 5-90 weight percent of at least one of 1,1,1,2-tetrafluoroethane or 1,1,2,2-tetrafluoroethane.
8. A substantially constant boiling mixture as claimed in claim 6 comprising about 60-85 weight percent pentafluorethane and about 15-40 weight percent difluoromethane.
9. A substantially constant boiling mixture of about 70-80 weight percent pentafluorethane and about 20-30 weight percent difluoromethane.
10. A process for producing refrigeration comprising the steps of condensing the mixture as claimed in any one of claims 1 to 9 and thereafter evaporating said mixture in the vicinity of the body to be cooled.
11. A process for producing heat comprising the steps of condensing the mixture as claimed in any one of claims 1 to 9 in the vicinity of the body to be heated and thereafter evaporating said mixture.
12. A process for heating or cooling comprising the step of using the mixture as claimed in any one of claims 1 to 9 as a heat transfer media.
13. A process for atomizing a fluid comprising the step of using the mixture as claimed in any one of claims 1 to 9 as an aerosol propellant.
14. A process for electrically insulating comprising the step of using the mixture as claimed in any one of claims 1 to 9 as a gaseous dielectric.
15. A process for suppressing a fire comprising the step of using the mixture as claimed in any one of claims 1 to 9 as a fire extinguishing agent.
16. A process for producing a foamed polymer comprising the step of using the mixture as claimed in any one of claims 1 to 9 as a foam expansion agent.
17. A process for delivering power comprising the step of using the mixture as claimed in any one of claims 1 to 9 as a power cycle working fluid.
18. A substantially constant boiling mixture according to any one of claims 1 to 9 or a process according to any one of claims 10 to 17, substantially as hereinbefore described with reference to any one of the examples.
STATEMENT OF GROUNDS AND PARTICULARS
ICI’s opposition under section 59 referred to:
(i) novelty
(ii) inventive step
(iii) manner of manufacture
(iv) fair basis
(v) clarity
(vi) full description.ICI’s grounds were supported by particulars.
Atofina’s opposition under section 59 referred to :
(i) novelty
(ii) inventive step
(iii) manner of manufacture
(iv) fair basis
(v) clarity
(vi) full description
(vii) obtaining.Atofina’s grounds were supported by particulars.
At the hearing both opponents decided to only rely on the grounds of lack of novelty and lack of an inventive step.
EXPERTS AND EVIDENCE
Professor Geoffrey Stevens. Currently Professor of Chemical Engineering at Melbourne University and has held this position since 1998. He worked briefly for ICI Australia from 1981 to 1983. He has extensive, mainly academic, experience in the chemical engineering field. He states that he has a particular area of interest in refrigerants and constant boiling mixtures. He has acted and continues to act as a consultant with several chemical and mining companies. His evidence consisted of:
(i) Statutory declaration, dated 17 September 1999 together with exhibits GWS 1- 11 filed in evidence in support.
(ii) Statutory declaration, dated 27 June 2001 together with exhibits GWS 11A-17 filed in evidence in reply.David John Tadgell, Patent attorney of Phillips Ormonde & Fitzpatrick, Melbourne.
His evidence consisted of:
Statutory declaration, dated 29 September 1999, and exhibits DJT 1-7 filed in evidence in support.
Dr Donald Bivens. Currently employed as a Senior Technology Fellow of Du Pont Fluoroproducts Division. He has been employed by Dupont since 1966 and has worked exclusively in the fluorochemicals field since 1986. He therefore has extensive experience in both the manufacture of and research into fluorochemical products. He is one of the inventors of the application in suit. His evidence consisted of:
(i) A statutory declaration, dated 20 October 2000, and exhibits DBB1-4 filed in evidence in answer. [For ICI]
(ii) A second statutory declaration, dated 20 October 2000, and exhibits DBB1-2 filed in evidence in answer. [For Atofina]Professor Kenneth Marsh: Currently Professor of Chemical and Process Engineering, at the University of Canterbury New Zealand. He has extensive academic research experience in Australia, the USA and now New Zealand. His area of speciality is refrigerants. He has also been the editor of the Journal of Chemical and Engineering Data, published by the American Chemical Society, since 1991. This is a journal that publishes much of the new data on refrigerants. His evidence consisted of:
(i) A statutory declaration, dated 27 September 2000, and exhibits KNM1-7 filed in evidence in answer.[For ICI]
(ii) A second statutory declaration, also dated 27 September 2000, and exhibit KNM1 filed in evidence in answer. [For Atofina]Dr David Morton. Currently a Lecturer at La Trobe University, Bendigo. He has been employed by the university since 1989 and has extensive research experience in constant boiling compositions. His evidence consisted of:
(i) A statutory declaration, dated 2 October 2000, and exhibits DM1-5 filed in evidence in answer. [For ICI]
(ii) A second statutory declaration, also dated 2 October 2000, and exhibits DM1-2 filed in evidence in answer. [For Atofina]Saskia Jahn, an information researcher employed by Phillips Ormonde & Fitzpatrick.
She is able to testify to the publication dates of certain documents. Her evidence consisted of:
A statutory declaration, dated 28 June 2001, and exhibits SAJ 1-3 filed in evidence in reply.
Shahnaz Irani, patent attorney of Spruson and Ferguson. Her evidence consisted of:
A statutory declaration, dated 4 November 1998, and exhibits SI 1-12 filed in evidence in support.
Mr Bertrand Harrington. Retired as general manager from Akzo chemicals in 1994 and consulted for them for two years afterwards. Prior to that he has had extensive experience in Australia of manufacturing, selling and conducting research and consulting in fluorocarbon chemicals, since 1957. His evidence consisted of:
A statutory declaration, dated 26 August 1999, and exhibits BH 1-2 filed in evidence in support.
SUBPOENAS AND CROSS EXAMINATION
At the request of the parties the commissioner issued subpoenas to be served on:
· Mr Harrington
· Professor Stevens
· Dr Bivens
· Professor Marsh
· Dr Morton.
These were all duly served. However the applicant sought to withdraw Dr Bivens’ evidence, and
when with agreement of the opponents this evidence was withdrawn, it was not necessary for Dr
Bivens to appear to be cross-examined on it. In the light of this it would not be proper for me to
place any weight on this material nor for me to draw any inferences from its withdrawal.
The other witnesses all appeared and were duly sworn in and cross examined on their statutory
declarations.
I was impressed by both the quality of the oral disclosures and candour of all of the witnesses. It soon became apparent that Mr Harrington, having been a senior manager in the refrigerant manufacturing industry in Australia before the priority date of the claims, was best placed to comment on the state of the common general knowledge of the manufacturing side of the industry. The other witnesses, all being academics, were better placed to comment on such research as might or might not have been being conducted in Australia at the relevant date.
FURTHER EVIDENCE
Before the hearing the applicant submitted further material in support of their application for a subpoena, and in order to justify their need to cross-examine witnesses. This material consisted of a number of affidavits, including one from Professor Marsh. It was part of the evidence before the Federal Court in matter No.1248 and 1249 of 1999 also between Dupont and ICI and concerning opposition to patent application 658005 to ICI. At the hearing Mr Catterns suggested that this material was slightly incomplete and that a complete set of affidavits be served and filed as further evidence in this matter. On the agreement of both parties I allowed that material to be served and filed. It consists of:
1. Affidavit of Kenneth Neil Marsh dated 30 March 2001, together with exhibits KNM-1 to KNM-5 (and corresponding affidavit in 1249 of 1999 proceedings)
2. Supplementary affidavit of Kenneth Neil Marsh dated 25 July 2001, together with exhibits
3. Affidavit of Roger Symons dated 20 July together with exhibits RS-1 to RS-6; (and corresponding affidavit in 1249 of 1999 proceedings)
4. Affidavit of John Ball dated 26 July 2001, together with exhibits JB-1 and JB-2; (and corresponding affidavit in 1249 of 1999 proceedings).
5. Affidavit of Terry Lawrence dated 18 July 2001 together with exhibits TL-1 to TL-3 (and corresponding affidavit in 1249 of 1999 proceedings).
6. Court transcript of cross-examination of Terry Lawrence.
7. Court transcript of cross-examination of William Dobney
8. Court transcript of cross-examination of Roger Symons
9. Court transcript of cross-examination of John M. Ball
10. Court transcript of cross-examination of Professor Kenneth Marsh.
11. Court transcript of cross-examination of Professor Solomon.
12. Affidavit of David Solomon of 5 April 2001 in 1248 of 1999 proceedings.
13. Affidavit of David Solomon of 4 April 2001 in 1249 of 1999 proceedings.
14. Exhibit A. An extract from the journal “Celsius” June 1989 editionAMENDMENT TO STATEMENTS OF GROUNDS AND PARTICULARS.
As a result of both oppositions being heard together, I considered it appropriate to consider all of the evidence served in both cases in relation to this application. Consequently, at the time of the hearing, some of the evidence was not formally particularised in respect of this application. In the circumstances I gave all parties appropriate time after the hearing to propose formal amendments to the statements of grounds and particulars so that all the evidence actually considered at the hearing was now formally particularised.
ICI amended their statement of grounds and particulars to include reference to 5 documents which were in evidence but which had not been particularised.
Atofina did not amend their statement of grounds and particulars.
DECISION
Novelty
A test for determining whether an invention lacks novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Viccar Industries (1977) 137 CLR 228 at page 235 where Judge Aickin stated:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged invention would if the patent were valid, constitute an infringement."
Infringement is said to occur where "each and every one of the essential features of that claim have been taken" (Rodi and Wienenberger AG v. Henry Showell Ltd (1969) RPC 367)
In this case there appears to be no suggestion that any of the features of claim 1 are not essential features.
One of the first issues to be decided is the limitation placed on the claims by the terms “comprising” and “substantially constant boiling mixture”.
In the specification itself at page 10 we are told:
“Where the terms “comprise”, “comprises”, “comprised” or “comprising” are used in this specification, they are to be interpreted as specifying the presence of stated features, integers, steps or components referred to, but not to preclude the presence or addition of one or more other features, integer, step or component or group thereof.”
The specification also states that other materials such as lubricants, corrosion inhibitors, stabilisers and dyes may be added to the composition of the invention provided they do not have an adverse influence on the substantially constant boiling nature of the composition. By all accounts this was normal practice in the industry.
Mr Harrington in his statutory declaration stated that a constant boiling mixture is NOT in his view quite the same thing as an azeotrope. A constant boiling mixture is one in which for practical purposes the temperature of the boiling vapour does not change from the first drop of distillate until all the boiling liquid has been distilled. It may be due to two reasons. One is that the boiling points of the components are so close that even the most exacting distillation is unable to produce any significant separation of the two components. The second is that even though the boiling points of the components are separated by several degrees, the practical conditions of distillation are such that no visible change in boiling temperature occurs.
An azeotrope on the other hand is a very particular form of constant boiling mixture. Its boiling point differs from that of the individual components commonly being lower [but sometimes higher]. It usually has a very precise and narrow range of the ratio of one component to the other, often compositions outside the azeotropic range are not even constant boiling. Thus to equate “substantially constant boiling mixtures” with a true azeotrope is not strictly accurate.
However the term “substantially constant boiling mixture” is defined, for the purposes of this invention, in the specification at pages 3, 4 and 5 and in particular table 1 teaches what the applicant intends. At page 3 lines 21 onwards
“The novel azeotrope and substantially constant boiling compositions of the invention exhibit dew and bubble points with virtually no pressure differentials. As is well known in the art, the difference between dew points and bubble point pressures is an indication of the constant boiling behaviour of mixtures…. These data, which are shown in table 1, confirm the azeotrope-like behaviour of the compositions claimed in this invention.”
The specification then has a table showing binary mixtures of R-32 and R-125 covering the range 10% R-125 to 90% R-32 through to 90%R-125 to 10% R-32. These all show a difference between dew point and bubble point pressure of less than 2.7%. This would indicate to me that all the compositions in this range may be fairly said to exhibit so called “azeotropic or near azeotropic properties”, and thus all fall within the definition of a “substantially constant boiling mixture”. What this means, of course, is any prior art disclosure of mixtures of R-125 and R-32 within these ranges will as a matter of scientific fact also be a “substantially constant boiling mixture”. This view is supported by the evidence of Mr Harrington. He states in his statutory declaration
“It should be noted that people in the refrigeration industry knew at the priority date of the opposed specification that the use of the term “constant boiling mixture” in fact covered “substantially constant boiling mixtures” because a slight temperature glide due to the small difference in boiling points between the boiling points of the components of such mixtures, did not present great difficulties in practice.”
[NB Glide is the term used by those in the industry to describe the slight difference between the dew point and bubble point of a refrigerant mixture. It is a small temperature difference, which is generally of little practical consequence in the performance of the refrigeration system, which would theoretically prefer a true constant boiling mixture as the refrigerant mixture.]
This is also true of the ternary mixtures of claims 2 and 7. In fact the most useful mixture is alleged to be the one having the composition of only 20-30% R32 and 70-80% R-125, rather than the azeotropic composition, because it will operate successfully in currently existing low temperature refrigeration equipment. In view of this I see no particular merit in discovering an azeotrope.
Mr Gleeson also argued at the hearing that the composition of the present invention was somehow limited to being a refrigerant especially adapted for low temperature applications such as open supermarket deep freezes. I see no such limitation in the claims. On the contrary the claims as well as claiming mere compositions and their use as a refrigerant, are also directed to the use of the mixture as a heating agent, a fire suppressant and as a foam blowing agent. [Indeed I note with some surprise that claim 15 claims a fire suppressing process which can include the step of using a mixture which itself appears to be flammable.]
The opponents relied on the following documents to demonstrate that the application lacks novelty:
Research disclosure by E.I Dupont (1976) [Exhibit SI 6]
This merely discloses a number of pairs of refrigerants that might be useful. It tabulates them indicating the difference between their boiling points. Admittedly the pair of R-125 and R-32 is amongst those on the list. However the list contains 36 possible pairings and really does not indicate which pair is to be preferred. Although it might be argued that the R-125/R-32 pair exhibits a low boiling point differential between the two components, at least 7 other pairs exhibit a difference that is as low or lower. It does not disclose the constant boiling mixture of R-125 and R-32 nor the proportions of components required to achieve this. There is absolutely no indication that the disclosure is anything more than a wish list of pairs of refrigerants that it might be nice to try. I am not of the view that it destroys the novelty of any of the claims.
NIST Workshop Summary October 1988 [Exhibit SI 4]
This workshop summary discusses the need to replace CFC refrigerants. The paper is very much along the lines of what topics should be discussed at the workshop, not any indication that any of the refrigerants discussed had actually been made or tested. There are a number of so called “discussion sessions”. The first is called “What refrigerants should be considered?” It lists 3 refrigerants under active development (R-134a, R-123 and R-141b) and then goes on to list 7 others as proposed (R-32, R-124, R-125, R-134, R-142b, R-152a and R-23). It then goes on to describe specifically the need to replace R-502 in supermarket refrigeration systems and states that R-32 and R-125 (or mixtures thereof) were considered likely candidates. [My emphasis.]
There is then a second discussion session “Should mixtures be planned for, and if so which ones?” This lists 7 mixtures including 5 near azeotropic mixtures including R-32/R-125. It then goes on to state that the difficulties presently encountered in modelling highly polar mixtures could be reduced significantly given an accurate set of thermophysical property data for a reference mixture.
The next two “discussion sessions” relate to measuring the properties discussed above and which organisations have the experimental expertise. There was no indication that any Australian organisations had such expertise.
To me what this paper discloses is that on a theoretical level only, mixtures of R-32 and R-125 were being considered the most likely replacement for R-502 in supermarket refrigeration cases. It does not disclose that any mixture of the two would be substantially constant boiling, neither does it disclose the proportions of components required to achieve this. To my mind this is not a clear and unmistakable direction to make the mixture, indeed there is no suggestion that the mixture had ever been made or tested, and as such in my view it does not destroy the novelty of the claims.
European Patent Application EP 0 4000 894 (published 5 December 1990) [exhibit SI 1]
This application was published 12 days before the earliest priority date of the present application. Whilst it is mainly directed at lubricants suitable for inclusion in refrigerants it does at the foot of page 3 concede that mixtures of R-125 and R-32 [amongst many others] are not excluded. However this is with the caveat that only those blends which are miscible with the lubricants of that invention, at specified temperatures are included. There is really no teaching of what ratios these are and indeed no real teaching of the blend of the present invention. In my view there is insufficient disclosure to render the claims of the opposed specification not novel.
Australian Patent application 641740 (Daikin) (having a priority date of 4 April 1990 and a publication date of 10 October 1991 [exhibit BH 2].
This being an Australian patent application having an earlier priority date than the opposed specification but published after that priority date then the provisions of section 7(1)(c) applies. This is colloquially known as “whole of contents” novelty.
The basis of the “whole of contents” objection exists in the definition of the “prior art base”, which provides that, for the purpose of assessing novelty, the prior art base includes:
“ information contained in a published specification filed in respect of a complete application where:
(A) if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
(B) the specification was published after the priority date of the claim under consideration; and
(C) the information was contained in the specification on its filing date and when it was published”.So long as a document satisfies these criteria, the citation can be considered for the purpose of lack of novelty. The considerations for such a novelty objection are otherwise exactly the same as for documents published before the priority date of the claim under consideration.
This Daikin document is directed to refrigerant compositions utilising mixtures of known compounds and the claims are specifically directed to ternary refrigerant compositions. However in the body of the specification there are a number of diagrams illustrating refrigerant compositions. They are divided off into 20% increments and are triangular in nature, with 100% of each component at each of the three points of the diagram. Consequently along each of the three edges of the diagram they define a binary [rather than ternary] system, only defining a ternary system within the triangle itself. The diagrams show pairs of measured values, the upper one the coefficient of performance and the lower figure being the refrigeration capacity. The values within the triangle are said to be from the examples in the patent. The values along the edges are for comparison but clearly those binary mixtures must have actually been made in order for the coefficient of performance and the refrigeration capacity to have been measured and plotted. In my view they constitute a proper disclosure of binary mixtures. Diagrams 3, 7 and 8 are the ones that disclose binary mixtures of R-32 and R-125.
Mr Gleeson, for the applicant, argued that the whole thrust of this citation was ternary refrigerant mixtures and not binary ones and therefore it did not anticipate the claims. In my view this argument has no foundation. There is clear disclosure of both binary and ternary mixtures [as indeed there is in the opposed specification]. Whether they are actually claimed is not the point.
Mr Gleeson also argued that in Professor Marsh’s cross examination that the professor said that he could not ascertain whether the diagrams in the Daikin patent were expressed in mole percentage or weight percentage and that consequently the Daikin disclosure was not clear. He also argued that it was not clear whether the Daikin diagrams showed a continuum or merely a series of isolated points.
However the Daikin specification is not totally silent on whether the percentages of components are molar or weight percentages. At page 4 line 7 it teaches how to add stabiliser on a weight percentage basis. I believe this would lead a skilled addressee [whom I believe to be a practical engineer working in the field of manufacturing refrigerants rather than an academic] to read the whole specification as being in weight percentages. Indeed Mr Harrington, as such a man skilled in making refrigerants in Australia, seems to have had no difficulty at all in construing the Daikin specification as being expressed in weight percent. He also had no difficulty in reading the diagrams as a continuum rather than as just a discrete series of points. On this point I prefer his evidence to that of Professor Marsh who at the priority date was Director of the Thermodynamics Research Centre in Texas in the USA.
Consequently I am of the view that claims 1, 3, 4, 5, 6, 8 and 9 are not novel in the light of this citation. Likewise claims 10 and 12 are not novel since they merely disclose the use of the binary composition for cooling or refrigeration which is also clearly disclosed in the citation. Since it is well known that all refrigeration systems must by their very nature also have a heating system, placed away from the area to be cooled, claim 11 also lacks novelty.
Claims 2 and 7 of the opposed specification claim ternary refrigeration compositions. These are clearly disclosed in Figure 3 of Daikin [R-32, R-125 and R-134a] and Figure 8 of Daikin [R-32, R-125 and R-143a]. The teaching of Daikin is of using these blends in refrigeration and air-conditioning systems and as such they will be “substantially constantly boiling” as defined in the specification in suit. Consequently claims 2 and 7 in so far as they claim the ternary mixtures of Daikin are not novel.
Likewise omnibus claim 18 is not novel as it refers back to earlier claims that lack novelty but limits it to the examples, which themselves also lack novelty.
PCT Application WO91/09090 (having a priority date of 19 December 1989 and published 27 June 1991) [exhibit SI 2]
This application is published after the priority date of the claims but has an earlier priority date. It is a family member of Australian application 71419/91, and so it is this Australian application that is available for consideration for lack of novelty in a so-called “whole of contents situation”. This citation at page 8 lines 10-21 disclose a blend of R-134, R-125 and R-32 an any proportions and teaches that it can be used in refrigeration and air conditioning systems. The opponent argued that such a blend would be a substantially constant boiling compositions. I agree with this argument. The citation also goes on to state “ However only those blends of the tetrafluorethanes with other refrigerants which are miscible with the lubricants of this invention in the range -45°C to about +20°C are included.” Thus in my view this is a disclosure only of refrigerant mixtures with lubricant not of refrigerant mixtures alone. Since none of the claims of the specification in suit include a lubricant they are all novel in the light of this document.
INVENTIVE STEP
Subsections 7(2) and 7(3) of the Patents Act of 1990, when read in the light of the definition of "prior art base" provided in schedule 1 of the Act, relevantly indicate that a claimed invention will lack an inventive step when compared with the prior art base, if it is obvious in the light of:
· common general knowledge existing in the art before the priority date considered alone; or
· common general knowledge when considered with information in a single document, provided that document could be reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area before the priority date by the person skilled in the art.
A frequently used approach by the courts and the Patent Office to the determination of an inventive step is the so called "problem/solution" approach.
“…the test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have lead from the prior art to the invention whether they be the steps of the inventor or not.”
Aickin J in Wellcome v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 286”.
COMMON GENERAL KNOWLEDGE
The first step in my deliberation is to try to establish the state of the common general knowledge, as it existed in Australia as of the priority date of the claims of the patent in suit. To this end I will first refer to the statutory declarations and cross-examination of Mr Harrington, Dr. Morton, Professor Marsh and Professor Stevens.
Mr Harrington, who was working in the industry in Australia making refrigerants just before the priority dates, has told how he was not involved in any research in Australia, to develop new refrigerants, to replace the CFC containing refrigerant R-502. Also he was not aware of any such research being carried out anywhere else in Australia, before the priority date of the claims. In fact he stated orally that he basically made refrigerants of the formula as decided by the overseas parent company. Whilst he was well aware of the need to phase out refrigerants containing CFCs, he was of the view that the company he worked for would follow the new world standard. He said that any research into what this new standard was likely to be, was probably being carried overseas by the parent company or one of its rivals.
In particular he said that he was aware of the Montreal protocol of 1987 calling for a 50% reduction in the production of CFC-11, CFC-12, CFC-113, CFC-114 and CFC-115 by 1998. This was because of these chemicals being known to be ozone depleting. He was also aware that the industry had reacted rapidly to this and that HCFCs were strongly researched as bridging compounds. This is because they were less ozone depleting than CFCs and their use would allow the more rapid replacement of CFCs, whilst substances that did not deplete the earth’s ozone layer at all were developed. From his own point of view this interim solution was attractive as his company manufactured R-22 [an HCFC] which was one of the more widely used CFC replacements, although he was aware that this too would ultimately have to be phased out.
He was also aware that R-502 was itself an azeotropic mixture of R-22 [an HCFC interim solution refrigerant] and R-115 [a CFC which had to be replaced]. Consequently he knew that R-502 had to be replaced. He said that he would himself have expected single component refrigerants to be tried first followed by binary mixtures of components having similar boiling points. He was of the view that accurately predicting the performance of refrigerant mixtures by using known data about the individual components was an unreliable process. He also clearly stated that in his view predicting the existence of an azeotrope was in his view well nigh impossible. He then stated that if he had been faced with the problem of finding a replacement refrigerant he would have to do empirical tests on known refrigerants and mixtures to establish how they would behave by measuring their boiling points versus compositions. He was of the view that such testing would be difficult and far from routine. He did not have a suitable testing apparatus within his company at the priority date and was not aware of one in Australia at that time either.
Professor Stevens on the other hand stated that such testing apparatus was available at Melbourne University as of the priority date that could have been used to measure the boiling points of refrigerant mixtures. However under cross examination he admitted that the testing apparatus had not actually been used to measure the boiling points of refrigerants having low boiling points but rather had been used to determine the boiling points of hydrocarbons having boiling points above ambient temperature. He also conceded that to adapt this existing apparatus, to make it suitable for determining the boiling points of refrigerants, would have taken a good deal of work.
Professor Stevens had also indicated in his statutory declaration that the performance of binary mixtures could have been modelled using existing knowledge of boiling points. He thus argued that the binary mixtures claimed were obvious. He did also concede that no mathematical model known at the priority date of the claims could predict the existence of an azeotrope.
Professor Marsh on the other hand argued firstly about which theoretical equations were to be used for this mathematical modelling. He also stated in his cross examination that in reality all of these equations only worked if the two components exhibited so called ideal behaviour. He argued that most of these refrigerants did not exhibit this behaviour and that the mathematical modelling of the behaviour of mixtures was consequently not particularly accurate. He also stated that at the priority date of the claims, that although he was not resident in Australia, he was the head of the research Institute in the USA that was responsible for collecting and collating data from around the world relating to refrigerants. He stated that in many cases the boiling point information so glibly bandied round as fact, was not all that accurate. In other words even if Professor Stevens was to use the right equation to mathematically model the behaviour of refrigerant mixtures, the data available to put into the equations was not completely accurate and consequently the results of the modelling would also have been inaccurate. Consequently if it was not possible to accurately predict the behaviour of the refrigerant mixtures of the claims how could they have been obvious.
Professor Stevens under cross examination had conceded that although the results obtained from the mathematical modelling equations might not have been 100% accurate they were a very good guide and would have led you towards the mixtures of the invention. He submitted that any shortfall in data could easily have been overcome by routine experimentation and this was not inventive.
Dr Morton in his statutory declaration pointed out that the boiling point of a refrigerant or refrigerant mixture will vary with pressure. For example the boiling points of R-32 and R-125 at one atmosphere are -51.6°C and -48.5°C a difference of 3.1°C whereas at 14 atmospheres the temperatures and difference are 18.7°C, 26.1°C and 7.4°C respectively. Thus predicting properties depending on boiling point information rather depends on the pressures being contemplated. He thus believed that it was not possible to predict the refrigerant compositions of the invention using mathematical modelling and the data available at the priority date. He felt that al this was likely to be able to do was give a starting point of the sort of things to try.
To actually arrive at the claimed invention would take some degree of experimentation. He also reiterated the point made by Professor Marsh that this empirical testing of so called likely replacements for R-502 required specialist testing equipment not actually available in Australia as of the priority date of the claims. He also expressed the view that even if the equipment had been available the testing would have been difficult, lengthy and costly, and in his view hardly mere routine experimentation not requiring inventiveness.
I will now consider the further evidence filed during and after the hearing.
This further evidence is mainly the affidavits and cross-examination of witnesses in a Federal Court case on a pair of patent applications of similar subject matter to the patent in suit. It bears to some degree on the credibility of one of the witnesses in the present case Professor Marsh. He is the only witness common to both matters. However in my view it does not add anything except to reinforce Professor Marsh’s credibility as a learned academic in the refrigeration field.
As Dr Houlihan so accurately states in her submission after the hearing, Professor Solomon [one of the other witnesses in the Federal Court case] does not make any comment as to the state of the common general knowledge in Australia on refrigerants as of the priority date of the claims. He is by his own admission a lubricant specialist rather than an expert in refrigerant compositions. The other witnesses were all attesting to the state of the common general knowledge in Australia as of the priority date of the claims of the two patent applications being litigated in that instance. Since both of these have priority dates later than the two patent applications in suit, the evidence of the various witnesses as to common general knowledge, is directed to a date that is too late to be relevant to this case. In any event, in my view, the further evidence does not add anything to the information I have already considered and I do not intend going in to it in any detail.
My attention was also drawn to exhibit A in the Federal Court matter, the Journal “Celsius” June 1989 edition page 19. This is an Australian journal of refrigeration and air conditioning. Mr Harrington in his cross-examination was of the view that it was a journal that could be reasonably expected to be widely read, by those in the art in Australia. The particular article entitled “The CFC /Ozone issue and the impact on the industry” discusses the effect of the Montreal protocol on the industry with respect to phasing out of ozone depleting refrigerants in Australia and specifically discusses the Australian legislation relating to it. In particular at page 19 the article has a table suggesting that R-125 alone or something vaguely labelled as “blends” might be an alternative refrigerant for R-502 for low and medium temperature applications in the time period 1994 -2000. To my mind, even if this article were to be considered common general knowledge, it is not in any way a sufficient disclosure to deprive the R-32, R-125 mixture of the opposed specification of an inventive step, either alone or combined with any of the other documents already considered.
Thus from all the evidence before me I conclude that the common general knowledge in Australia as of the priority date of the claims was as follows:
· CFC refrigerants had to be phased out;
· HCFC refrigerants were a possible interim replacement but they too would also have to be phased out, although later than the CFCs;
· Since R-502, one of the most popular refrigerants, was an azeotropic mixture containing a CFC and an HCFC a replacement for it would have to be found;
· A number of refrigerants used in either air conditioners or heat pumps applications were either single component or azeotropic mixtures, both of which are characterised by constant boiling;
· Replacement refrigerants were preferred as pure components, azeotropes or constant boiling mixtures;
· R-125 alone might be one such replacement for R-502;
· Whilst it is possible to predict whether a refrigerant mixture is likely to form a constant boiling mixture using mathematical modelling techniques, the results are not likely to be very accurate. It is not therefore going to be a reliable tool except to predict which mixtures should be tried in empirical experimentation to determine useful refrigerant mixtures;
· The formation of true azeotropes cannot be readily predicted;
· The empirical experimentation that would be required to determine which one of many possible mixtures is a suitable CFC and HCFC free refrigerant is so difficult and lengthy that it is by no means routine to prepare and test binary or ternary mixtures, especially as there was no suitable apparatus in Australia as of the priority date of the claims;
· The individual refrigerants described and claimed as mixtures, in the specification in suit were all known as ozone friendly refrigerants before the priority date, along with their boiling point data;
· It was also considered likely that replacement refrigerants for R-502 would come from these known refrigerants either singly or in some kind of mixture.
Whilst all this information was common general knowledge in Australia, what was not in my view common general knowledge was which if any of all these possible combinations of mixtures was likely to provide a suitable replacement refrigerant for R-502. Further, the evidence before me does not suggest that a skilled person in the art possessed with the common general knowledge would have arrived at the specific mixture claimed. Indeed one suggestion of a replacement refrigerant for R-502 suggested was R-125 alone. In this case, if a single component refrigerant was believed to be effective, there would have been no particular reason to complicate matters by trying a mixture. Given the difficulty of the experimentation required it would not be obvious to try any binary or ternary refrigerant mixtures, much less those particular ones claimed in the claims.
Thus in my view none of the claims lack an inventive step in the light of the common general knowledge alone.
Counsel for the opponent submitted that all the documents relied on for novelty are documents that meet the requirements for Section 7(3), with the exception of the Daikin patent (Australian Patent application 641740) and PCT Application WO91/09090 (Australian Patent application 71419/91) which were not published in time. That is that they are documents that could be reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area before the priority date by the person skilled in the art. I agree with this, so the question I must now consider is whether each of these documents when combined with the common general knowledge is sufficient to find that the claims lack an inventive step.
When the common general knowledge is considered with Research disclosure by E.I Dupont (1976) [Exhibit SI 6] it does not point the way any more clearly to the R-32, R-125 mixture than the document alone. The common general knowledge is that the empirical testing of pairs of refrigerants is difficult and non-routine. Consequently there is no indication that it would be obvious to work your way down the wish list in the citation, testing combinations of refrigerants, in order to find a replacement for R-502, as there was no way you would have reasonable expectation of success. In my view this combination of the citation plus common general knowledge does not deprive the claims of an inventive step.
When common general knowledge is considered with NIST Workshop Summary October 1988 [Exhibit SI 4] it merely reinforces the disclosure to the degree that it might be useful to consider a number of refrigerant combinations as likely replacements for R-502. It does not amount to any suggestion that it would be obvious to carry out any kind of routine non-inventive testing of refrigerants to find an R-502 replacement. On the contrary it just reinforces that any testing would be difficult and expensive and very much non-routine and therefore inventive. Consequently there is nothing that points to the claims of the invention being obvious. Thus the combination of this citation and the common general knowledge does not deprive the claims of an inventive step.
When common general knowledge is considered with European Patent Application EP 0 4000 894 it again merely reinforces the disclosure to the degree that the R-32, R-125 combination with lubricants is “not excluded”, but then neither are many other combinations. Consequently there is nothing that points to the claims of the invention as being obvious. Thus the combination of this citation and the common general knowledge does not deprive the claims of an inventive step.
Therefore I have come to the view that considering the common general knowledge with the disclosures of any of these documents already cited for novelty does not deprive the claims of an inventive step.
CONCLUSION
All the claims as presently drafted lack novelty. None of the claims lack an inventive step. However I believe there is still patentable subject matter present, particularly in respect of some of the ternary mixtures of refrigerants. I therefore allow the applicant 60 days from the date of this decision to propose suitable amendments to overcome the lack of novelty finding.
COSTS
At the hearing all the parties, having the belief that the outcome of both the oppositions was not likely to be straightforward, asked if they might make further submissions on the matter of costs after the decision had been made. In particular they were concerned that some of the evidence that had been on file in respect of one of the oppositions might well be pertinent to both. This would be formally addressed by seeking to both amend the relevant grounds and particulars and also to formally file the material as further evidence where appropriate. This could well have a bearing on costs. In the event I agreed at the hearing that their request to make further submissions after the event in relation to costs, was an appropriate thing to do taking into account all the circumstances. I therefore allow the parties 60 days from the date of this decision to make submissions on costs.
R.A Melvin
Delegate of the Commissioner of PatentsPatent attorneys for the applicant: Callinan Lawri,e Melbourne
Patent attorneys for the opponents: Spruson and Ferguson, Sydney, Phillips Ormonde & Fitzpatrick, Melbourne
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