Environmental and Resource Technology Holdings Pty Ltd v Debco Pty Ltd
[1999] APO 31
•18 May 1999
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 675882 in the name of ENVIRONMENTAL AND RESOURCE TECHNOLOGY HOLDINGS PTY LTD
Title: A FORMULATION AND PRODUCTION OF GROWING MEDIA FROM GREEN ORGANIC MATERIAL
Action: Opposition by DEBCO PTY LTD
Decision: Issued .
Abstract
Inventiveness considered where integers substituted in a combination process wherein the mutual relation between the steps of that process already known (decision of the Federal Court in Fallshaw Holdings v Flexello Castors (1993) discussed). Whether technical inventiveness or commercial risk discussed. Ground of lack of inventive step found to be established.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 675882 by ENVIRONMENTAL AND RESOURCE TECHNOLOGY HOLDINGS PTY LTD and opposition thereto by DEBCO PTY LTD.
BACKGROUND
Patent application no. 675882 was filed in the name of Environmental and Resource Technology Holdings Pty Ltd (hereinafter referred to as “EARTH”) as application no. 78026/94 and claimed priority from provisional application no. PM1495 filed on 28 September 1993.
675882 was advertised accepted on 20 February 1997. Debco Pty Ltd (hereinafter referred to as “Debco”) filed notice of opposition on 7 April 1997.
The support, answer and reply evidence stages in the opposition were completed on 3 September 1998.
The matter was heard in Melbourne on 11 February 1999. The patent applicant was represented by Mr Graham Clarke of Counsel, assisted by patent attorney Mr Stephen Plymin of Watermark. The opponent was represented by Mr Bruce Caine of Counsel, assisted by patent attorney Mr Geoff Mansfield of Griffith Hack.
The opposition is proceeding under the provisions of the Patents Act 1990 and Chapter 5 of the Patents Regulations 1991.
THE SPECIFICATION
The specification indicates that the invention relates to treatment of green organic material for use in the production of growing mixtures or soil substitutes.
"Green organic material" is defined as plant material having been discarded as non-putrescible waste and includes tree and shrub cuttings and prunings, grass clippings, leaves, garden waste, natural (untreated) timber waste and weeds. A major exception is said to be treated timbers or treated waste which may not be in a condition to undergo natural chemical reaction or would be likely to adversely affect any natural chemical reaction during treatment of the green organic material according to the invention.
Municipal solid waste streams are said to contain green organic material as a substantial component, which is processable for recycling by grinding or shredding into mulch. However in that case, parasitic fungi and pathogens can multiply at a great rate because of the supply of additional nutrient brought about through the breaking down of the plant material. The specification continues that it is accordingly essential that the processed green organic material is treated in some way to destroy the pathogens, insects, fungi and weed seeds to enable use of the mulch in other areas without the spreading of disease and weed infestation and retarding existing plant growth. Attempts have been made to compost green organic material and market the treated product as mulch but the market potential at a cost recovery price is said to be low.
The invention is then described as comprising the steps of grinding specified ranges of proportions of green organic material to specified ranges of dimensions, adding moisture and nutrients, mixing thoroughly, forming into a triangular windrow of a specified height range, the amounts of moisture and nutrients being such that microbial activity is achieved within inner portions of the windrow giving rise to an increase in temperature, said temperature passing through 3 distinct phases; and turning the outer layer of the windrow to regenerate microbial activity giving rise to further heating into at least said third temperature range phase.
At page 4 of the specification it is stated that:
"Conveniently the nutrient is obtained from ammonium nitrate mixed in with the green organic material and during the operation of the process the ammonium nitrate breaks down to nitrate nutrients and ammonium and ammonia gas such that any residue is expelled as gas.
The stabilisation process operates over a three step procedure of three different temperature ranges and only ambient to about 200C for a first group of bacteria (mesophilic), about 20-500C for a second group of bacteria (mesophilic) and about 50-700C for the third group of bacteria (thermophilic) such that when the temperature of the windrow reaches 700C, the population of all bacterial groups are significantly reduced through a combination of temperature increases, reduction in moisture and a reduction in nutrient supply.
As soon as the bacterial groups have declined, the internal temperature of the windrow cannot be maintained and it quickly falls back to ambient temperature. According to the invention this internal temperature is closely monitored to ascertain the completion or at least part completion of the process. According to the invention after completion of the process the stabilized mixture is screened, preferably through four separate screen sizes: 25 mm, 19mm, 10mm, and 6mm to allow the formulation of a growing medium employing the stabilized mixture made according to the invention as the core component of the growing medium."
The process of the invention is then described in relation to 3 specific examples.
THE CLAIMS
The specification as accepted ends with the following 4 claims:
“1. A process of pasteurizing, treatment and stabilization of green organic material comprising the steps of grinding any type of natural green organic material to a maximum dimension of less than about 65 mm including between 0 to 50% of material having a maximum dimension in the range of 40-25 mm, between 20 to 40% of material having a maximum dimension in the range of 25-15 mm, between 20-40% of material having a maximum dimension of 15-6 mm and 10-40% of material having a maximum dimension of less than 6 mm, adding moisture and nutrients to the mixture, the amount of moisture being between 50% and 60% of the total blended content weight, thoroughly mixing the material and forming it into a windrow or windrows having a substantially triangular cross-section and a height in the range of 1.5 – 2.5 metres, the amount of said moisture and nutrients in the mixture being such that microbial activity is achieved within inner portions at least of the windrow(s) giving rise to an increase in temperature in said inner portions, said temperature passing through three distinct phases of ambient to about 200C, from about 200C to 500C and from 500C to a maximum temperature of about 700C; and turning the outer layers of the windrow(s) to the inner portion of the windrow(s) to regenerate microbial activity giving rise to further heating into at least said third phase of 500C to about 700C.
2. A method as claimed in claim 1 wherein the nutrient is obtained from ammonium nitrate fertilizer, ferrous sulphate and calcium sulphate.
3. A method as claimed in claim 1 or claim 2 claim including the steps as described in any one of Examples 1,2,3 herein.
4. A plant propagation mixture or soil made in accordance with the method steps as claimed in any one of claims 1 to 3.”
THE GROUNDS OF OPPOSITION
The grounds identified in the statement of grounds and particulars are that the nominated person is not entitled to a grant of a patent for the invention, the specification does not comply with section 40, and that the invention is not novel, does not involve an inventive step, and is not a manner of manufacture.
EVIDENCE
The evidence in support consists of statutory declarations by:
- Kevin A. HANDRECK (with Exhibits KAH-1 to KAH-12), a resident of Australia who states that he is the Managing Director of Netherwood Horticultural Consultants Pty Ltd, a company which provides advice and information to the horticultural industry.
- Robin DEBERNARDI (with Exhibits RD-1 to RD-5) a resident of Australia who states that he was the founder of Debco.
- Christopher J. DRYSDALE (the first Drysdale declaration) a resident of Australia who states that he currently holds the position of National Product and Market Development Manager with Debco.
- Patrick N. SOARS (the first Soars declaration with Exhibits PNS-1 and PNS-2) a resident of Australia who states that he is the Managing Director of Australian Native Landscapes Pty Ltd.
- (in relation only to the publication of documents) Ngaire PETTIT-YOUNG (2 declarations), Elizabeth G. DOLBY, Elizabeth SWAN and Geoffrey MANSFIELD (2 declarations).
The evidence in answer consists of statutory declarations by:
- Howard John MITCHELL (with Exhibits HM-1 to HM-3) a resident of Australia who is the inventor of the subject of 675882 and who states that he is the Managing Director of EARTH.
- Dr Barry J. MACAULEY (with Exhibit BJM1) a resident of Australia who states that he is a Consultant to the compost and mushroom industries.
The evidence in reply consists of statutory declarations by:
- Christopher John DRYSDALE (the second Drysdale declaration with Exhibits CJD-1 and CJD-2).
- Patrick Noel SOARS (the second Soars declaration with Exhibit PJN-1).
SUBMISSIONS
I summarise Mr Caine’s main submissions, including references to the statement of grounds and particulars, on behalf of the opponent as follows:
Mr Caine advised that the opponent would not be pursuing the ground that the nominated person is not entitled to a grant of a patent for the invention.
Section 40
- Claim 1 is avariciously drawn in that it is not limited according to features indicated to be essential in the applicant’s evidence in answer, viz.:
(i)the use in combination of the three specified nutrients as defined in claim 2 and indicated in each of the Examples in the specification of 675882, see paragraphs 2.4, 4.5 and 5.3 of the Mitchell declaration and paragraphs 3 and 11 of the MaCauley declaration.
(ii)the fact that the windrow is turned only once throughout the process, see paragraphs 3.3 and 5.2 of the Mitchell declaration and paragraph 3 of the MaCauley declaration.
(iii)The fact that the duration of the process is approximately 14 days, see paragraph 3.3 of the Mitchell declaration and paragraphs 3, 5 and 17 of the MaCauley declaration.
Novelty (prior use)
Exhibit KAH-7 to the Handreck declaration:
“Growing Media for Ornamental Plants and Turf”
Handreck K.A. and Black N.D.
University of New South Wales Press, pages 101 to 110 (1984).
is the closest documentary prior art and discloses all of the features of the method claimed in 675882 except that it does not specifically disclose the claimed particle size distribution of the ground green organic material. Although Exhibit KAH-7 thus cannot of itself constitute an anticipatory publication, that document is said by expert witness Handreck (at paragraph 3.4 of his declaration) to set out methods which had been in common use by 1984.
KAH-7 is therefore evidence of prior use before the priority date of all of the features claimed save for particle size distribution. This feature is dealt with separately at paragraph 3.6 of the Handreck declaration. Accordingly the claims are robbed of novelty by prior use.
Inventive Step
- Each of the individual elements of the claimed method of the opposed application was well known as at the priority date, see in particular the Handreck declaration and exhibits thereto.
- The invention as claimed would have been obvious to the non-inventive person skilled in the art at the priority date as a solution to the problem addressed in 675882. The only reason that Exhibit KAH-7 is not a complete anticipation is that the particular size distribution claimed is not reported in that publication. However, Mr Handreck’s evidence is that the claimed particle size distribution was in common use before the priority date. Moreover, it was well known that the claimed proportions would produce the desired rate of decomposition (see paragraphs 3.6 and 3.8 of Handreck’s declaration).
- Nowhere in the specification is it shown that what is indicated in the specification to be the promise of the invention (pathogens etc. destroyed) is in fact achieved by the practice of the process of the invention.
- Declarants Mitchell and Macauley say that the ranges specified for the process of the invention of particle size of the starting material from which the windrow is to be made are important, but do not say why that should be particularly so in relation to the invention as distinct from the importance already accorded in the prior art. The very fact that the ranges overlap with corresponding ranges which are common general knowledge (CGK) in the art is clearly indicative of an absence of inventiveness.
- There is no actual data, comparative or otherwise, set forth in the specification which can be identified as confirming that a surprising result has been achieved.
- There has been neither a difficulty overcome nor a barrier crossed, see R D Werner & Co Inc vBailey Aluminium Products (1989) 85 ALR 679 at 688-689.
Manner of Manufacture
- In order to be patentable a manner of manufacture must not only be new, it must also be something which would not suggest itself in the ordinary course to anyone using an invention already known, see W R Grace & Co v Asahi Kasei Kogyo KK (1993) 25 IPR 481 at 497.
I summarise Mr Clarke’s main submissions on behalf of the patent applicant as follows:
Section 40
- In the context of claim 1 the plain meaning of the reference to “turning” of the windrow denotes one turning only. There is no reason for the skilled addressee to construe claim 1 as defining more than one turning. However if ambiguity were to be found on this point, resort to the body of the specification clearly resolves the matter in favour of the fact that the invention features one turning only.
- It is an advantage of the process of the invention defined in claim 1 that it is of relatively short duration. That does not need to be specified in claim 1 since it is the inherent result of carrying out the steps which define the method of the claim.
Novelty (prior use)
- There is no basis to support such a ground since no evidence has been presented to support the allegation that the particular combination of features which characterises the method of the invention had been carried out in Australia, in public or otherwise, prior to the priority date.
Inventive Step
- The allegation that all of the individual elements of the combination process of the invention were known at the priority date is incorrect. The “single (rather than multiple) turning” feature is new. Repeated windrow turning was standard industry practice – turning a windrow but once and once only was not an obvious thing to do.
- It is a surprising result that an economically advantageous product is obtainable in less than two weeks by the single-turn process of the invention.
- Assertions are made in the opponent's evidence that certain aspects of the present invention are standard practice in the art. Such assertions do not stand up to inspection where such processes have been described in relation to pine bark starting material which has not been discarded as waste material. The only type of bark which has been described for use as a component of the starting material for the present process is that which has been discarded as waste.
- The particular ranges of particle size and windrow height and moisture content not only distinguish the present invention from the prior art but are in themselves important individually and in combination in relation to the achievement of the promise of the invention.
Manner of Manufacture
The claimed invention is a patentable combination.
DECISION
Section 40
When considering the issue of fair basis, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is claimed in the claims (CCOM Pty Ltd v Jiejing Pty Ltd (1994) 122 ALR 415; 28 IPR 481). And in Shell Development Co's Application, (1947) 64 RPC 151 the claims were held to be speculative because of the use therein of the broad term "organic mixtures", whereas the examples in the specification were all restricted to "hydrocarbon mixtures".
(i) The unqualified term “nutrients” in claim 1 is asserted by the opponent to be speculative.
Not only are no other specific nutrients or combination thereof mentioned in the specification but also in each of the three examples of the opposed specification, the nutrients are restricted to the combination of ammonium nitrate, ferrous sulphate and calcium sulphate.
I conclude that claim1 is not fairly based in so far as it is not limited according to the combination of specific nutrients defined in claim 2.
(ii) The ambit of claim 1 is asserted by the opponent to be too broad in that the claim is construable as including repeated turning of the windrow whereas only a single turning is described in the body of the specification.
In my view it is not readily apparent from the wording of the claim itself whether the “turning” feature of claim 1 is limited to a single turn or includes two or more turns.
“If an expression in a claim is not clear then it is permissible to resort to the body of the specification to define or clarify the meaning of the words used in the claim”, InterlegoAG v Toltoys Pty Ltd (1972-1973) 130 CLR 461 at 479, per Barwick CJ., Mason J.
Given that only single turning is described in the body of the specification in relation to the process of the invention, I construe claim 1 to define once-only turning and to consequently be fairly based in that respect.
(iii) The opponent asserts that claim 1 is too broad in that whereas the relatively short duration of the process of the invention is indicated to be a key feature in the body of the specification, there is no limitation on the duration of the process in the claim.
I agree with Mr Clarke’s submission on this point. The duration of the process does not need to be defined in the claim since it is inherent upon the parameters of the process already defined in the claim.
Before considering the issues relating to novelty, inventive step and manner of manufacture, I shall first determine which features of the claimed invention that I consider to be essential.
Essential Features
A feature can be regarded as not essential if it does not have a material effect on the way in which the invention works. However, claims are to be given a purposive construction and initially it is to be assumed that all features of independent claims are essential (Catnic Components v Hill &Smith, [1982] RPC 183).
Claims 1 and 2 of 675882 can be broken down into the following features:
(A)A process of treatment of
(B)green organic material (as defined),
which comprises:
(C)grinding the material,
(D)to a maximum dimension of < about 65 mm, including:
0 to 50% of maximum dimension of 40 to 25 mm,
10 to 40% of maximum dimension of 25 to 15 mm,
20 to 40 % of maximum dimension of 15 to 6 mm,
10 to 40% of maximum dimension < 6 mm,(E)adding moisture and nutrients to the mixture,
(F)the nutrients being a mixture of ammonium nitrate, ferrous sulphate and calcium sulphate,
(G)the moisture being 50 to 60% of the total blended content weight,
(H)thoroughly mixing the material,
forming the material into a triangular windrow or windrows of height 1.5 to 2.5 metres,
(J)the amount of moisture and nutrients being such that microbial activity is achieved within inner portions of the windrow(s) giving rise to an increase in temperature in said inner portions,
(K)the temperature passing through ambient to about 200C, from about 200C to 500C, and from 500C to a maximum temperature of about 700C,
(L)once only turning the outer layer(s) of the windrow(s) to the inner portion of the windrow(s) to regenerate microbial activity giving rise to further heating to 500C to about 700C.
Each of features (A) to (L) above appears to have a material effect on the way in which the invention works. Given that and my findings under section 40 above, I find each of features (A) to (L) to be essential features of the process of the invention.
Manner of Manufacture
In the majority decision of the High Court in NV Philips Gloeilampenfabrieken v MirabellaInternational Ltd (1995) 183 CLR 655 at 664:
"if it is apparent on the face of the specification that the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent, one need go no further".
Thus, for the purposes of s 18(1)(b) (novelty and inventiveness) it was unnecessary to adduce evidence of the prior art base and to compare the invention claimed with the prior art base if the absence of inventiveness appeared on the face of the specification. Also in Philips (supra) at 659:
"it would border upon the irrational if a process which was in fact but a new use of an old substance could be a 'patentable invention' under s 18 if, but only if, that fact were not disclosed by the specification".
The above passages from Philips (supra) were reiterated at paragraph 39 of the majority decision of the High Court in Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd 152 ALR 604 at 616.
There is nothing on the face of the specification of 675882 to suggest that this is other than a manner of manufacture. Neither has it been cogently argued that this is a case which is unpatentable in accordance with traditional principles. The applicant claims to having invented a process for treating waste green organic material to produce a growth medium in which pathogens and weed seeds have been destroyed, which is a combination of various parameters which are said to achieve (at least to some extent) that result and that such an outcome has not been previously produced in that way.
Accordingly I find that the ground of not a manner of manufacture has not been made out. This leaves for consideration the issues of novelty (prior use) and inventiveness.
Novelty (Prior Use)
The standard of proof required to establish prior use was dealt with by the UK Appeal Tribunal in Seiller's Application [1970] RPC 103, where at 106 Graham J. stated:
"In my judgement it is necessary that proof of prior user in opposition cases should be very clear. Normally in the absence of cross-examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable. Such corroboration is often best found in documents contemporary with the fact to be proved. Each case, however, must be considered on its own facts, and I say expressly that I am not attempting to lay down any rule as to what is or is not sufficient in any given case."
These comments were approved by the UK Court of Appeal in Dunlop Holdings Limited's Application [1979] RPC 523 at 548.
Even though Graham J. stated that he was not attempting to lay down any rule, I think that his comments on the necessity of corroboration by documents contemporary with the facts to be proved are applicable to the present circumstances.
The standard of proof required is the civil standard, that is the balance of probabilities as set out for example by the Court of Appeal in Dunlop Holdings Application (supra), in which Buckley L.J., referring to the UK Patents Act 1949, stated:
"As to the standard of proof, there is nothing in the statute to suggest that any standard different from the normal standard of proof required in civil litigation - that is to say, the balance of probability - should be adopted. But that standard is not an absolute standard. The nature of the issue may affect the kind and the cogency of the evidence necessary to bring the scales down on one side or the other. If something is inherently improbable, more weighty evidence is required to establish that it probably occurred than if it were inherently probable.”
The standard of proof is also referred to in E.I. Du Pont de Nemours and Company (Holland's) Application [1971] RPC 7 at 21 where Graham J. said:
"The matter is, in my view, sometimes different if the question to be resolved is one of pure fact such as may, for example, arise in cases of prior user. Then if satisfied that the evidence has dealt with the matter comprehensively, so that the tribunal feels it is in a position to come to a correct answer on the question of fact, there seems no reason why it should not resolve the conflict and, in my judgement, is in a proper case under the duty of doing so, and in so doing should act upon the normal principles of proof in civil actions."
Paragraph 12 of the Debernardi declaration commences:
" Claim 1 of the opposed application merely sets out parameters which Debco investigated and used well before the priority date of 28 September 1993. It appears to me that the sole difference is that Debco used a particle size distribution having a higher proportion of fine particulate matter and that this difference is not significant.”
At paragraph 2.2 of the first Drysdale declaration he states:
“I confirm that at the time I became General Manager of Debco, Debco was producing potting mixtures by a windrow composting process as described in the Debernardi declaration at paragraphs 12 and 13.”
I note that corroborative documentation has been exhibited in relation to some of the essential features of 675882 having been incorporated in the prior process. However it is clear that essential features (D) and (L) above (specific particle sizes and once-only turning of the windrow) were not the same in the prior process.
Even if I were to accept that the differences between the prior process and the process of 675882 are “not significant” (whatever that might mean in relation to novelty), there remains the question as to whether the prior use was public use. Thus in accordance with the Patents Act 1990 (section 7), novelty is assessed against prior art information made publicly available in a single document or through doing a single act.
As far as I am aware access to a facility such as for the large-scale production of growth media for horticulture, would not normally be available to the public and the employees in such a facility would be under obligations of confidentiality to their employer. The opponent has not provided any evidence to show that before the priority date any member of the public gained, or was likely to have gained, knowledge of the invention from any prior use of the process of the invention.
It is entirely possible that the process of the opposed application could have been carried out before the priority date. However, there is insufficient evidence before me to establish that, on the balance of probabilities, a process which would have “reverse infringed” the invention as claimed, was carried out in Australia prior to 28 September 1993. I find to be not established lack of novelty by virtue of any prior use, let alone non-secret such use.
Inventive Step
Having regard to the nature of the evidence filed and the submissions made, in order to determine whether or not the invention involves an inventive step, the Patents Act 1990 requires me to:
determine the art in which the invention lies;
determine what has been established as the relevant common general knowledge in the art (if any) in the patent area before the priority date;
(iii) identify a citation (if any) which could have reasonably been expected to have been ascertained, understood and regarded as relevant to work in the art, and;
(iv) determine whether the invention as claimed would have been obvious to the person skilled in the art in the light of the common general knowledge considered separately or together with the citation.
As indicated in the specification of 675882, the problem addressed was that of devising an accelerated process for converting green organic waste material from plants into a product which could be used as a growth medium or mulch for horticultural purposes without the spreading of disease and weed infestation or retarding existing plant growth. This problem lies in the art, well established at the priority date, of production of growth media for horticulture.
In my view the person skilled in the relevant art in which the present invention lies is the large-scale producer of horticultural growth media.
I am satisfied that the declarations of Messrs Handreck, Debernardi, Drysdale and Soars, as corroborated by the disclosures in the chapter headed “Composting” in the standard reference work “Growing Media for Ornamental Plants and Turf”(1984), establish that prior to the priority date it was common general knowledge in the art in Australia for green organic material to be composted by a process characterised by all of the essential features of the invention of 675882 identified above, except features (D) (particle size) and (L) (once only turning of the windrow).
The solution proposed by the patent applicant to “the problem” of devising a process for accelerated composting of green organic material with accompanying destruction of pathogens and weed seeds, was to use a standard windrow-type system but with the material to be made into windrows being of previously unspecified particle sizes and the turning of the windrow to be done only once.
At the hearing Mr Clarke submitted that the invention of 675882 should be viewed as a “combination”.
In Minnesota Mining & Manufacturing Co v. Beiersdorf (Australia) Ltd, (1980) 144 CLR 253, Aickin J at page 293:
"In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of perhaps many possibilities, which must be shown to be obvious."
However, in Fallshaw Holdings Pty Limited v Flexello Castors and Wheels plc, (1993) AIPC 91-018 at 39,555, the Full bench of the Federal Court:
"There can be no subject matter … in a mutual relation which is already well known; inventiveness must lie, if at all, in the improvement which is claimed to have been effected in respect of one of the integers. Only if a change to an integer so transforms the combination as to establish what is truly a new mutual relation in the operation of the integers will it be correct to see the improved result as a new combination.
In our opinion, therefore, it is necessary in this case to consider whether the substitution of a multi-start thread for the previously used single-start thread was obvious".
In the present case the mutual relation between the steps in a composting-in-a-windrow process was already well known at the priority date. Consequently it is necessary for me to consider whether it was obvious for:
the specific proportions and dimensions of the particles (of the starting material to be formed into a windrow) defined in claim1 to be substituted for those previously known , and
the once-only turning of the windrow to be substituted for the previously known multiple-turnings of the windrow.
Paragraph 5 of the declaration of expert witness Macauley (for the patent applicant) reads as follows:
“I believe that the grinding of the starting material into certain predetermined sizes as defined in claim 1 of the opposed patent application together with the mixing of this material with moisture and nutrients permits the process as defined to be carried out with the windrow being turned only once is novel and inventive. The once only turning of the windrow for the purpose of exposing the previously cool outer zones to the high pasteurising temperatures of the inner zones is an important aspect of the invention of the opposed patent application. This exposes the whole of the material in the windrow to pasteurising temperatures lethal to weeds and pathogens to remediate the potentially biologically-contaminated organic material, such that it is safe to use as a plant growth medium. The patent specification of the opposed application indicates the process is complete within about two weeks. For conventional or prior art composting processes of which I am aware, the aim is to produce a stabilised, organic material and care is taken to ensure this by multiple turns of the windrow with such processes normally taking of the order of six to twelve weeks to complete. Generally this turning step is said to be necessary to cool and oxygenate the windrow (see Section 3.4f of Mr. Handreck’s Statutory Declaration), this being a very different aim to the process disclosed in the opposed patent application."
Paragraphs 3.6, 3.7 and 3.8 of the declaration of expert witness Handreck (for the opponent) read:
“It was widely recognised that the particle size distribution of the chipped or ground materials has to be such as to allow good aeration of them after they are formed into a windrow. This means that there must be some proportion of larger particles to maintain both a certain aeration porosity in combination with some smaller particles to retain sufficient moisture to support microbial activity. The opposed application merely specifies proportions of particles of different particle sizes that cover the sorts of proportions which was commonly used in green organics composting industries around the world at the priority date of 28 September 1993. Accordingly there is nothing new in the size range distribution claimed in independent claims 1 and 2.
Now produced and shown to me and marked Exhibit KAH-8 is an extract from a book entitled “Composting, A study of the Process and its Principles” by C G Golueke published in 1972 by Rodale Press. This publication describes the following at page 38 in reference to the grinding or shredding of sorted refuse (i.e. the organic material including garbage and paper see page 37);
‘There are no special size requirements, but the material must not be pulped lest it become too soggy to compost. The ideal particle size would be the minimum size at which undue compaction would not occur. The larger the particle size the slower will be the rate of decomposition. For municipal refuse, a particle size within the range of 1 to 2 inches would be suitable.’
I observe that a range of 1 to 2 inches equates to a range of about 25 to 50 mm.
I am therefore unable to find anything new or unique in the particle size proportions that are listed in the Opposed Application. The proportions simply reflect one or many sets of criteria which through extensive world-wide experience, were well known in Australia at the priority date to be capable of producing the desired rate of decomposition of the windrow materials.”
At paragraph 10 of the second declaration by expert witness Drysdale (for the opponent) he states:
“The question of how much time should be allowed for composting to proceed and the number of times that the windrows are turned must be determined by consideration of pathogen control and whether the product is safe to release. Debco could turn its windrows only once and could release the product after say ten days but we prefer not to because in our judgement we could not be certain that such a truncated composting process would have successfully killed all plant pathogens. Moreover the composted product would at this stage contain residual nitrogen at levels which could be very detrimental in potting mixes.”
At paragraph 12 of the second Drysdale declaration:
“The claims of the opposed application simply specify wide ranges of particle distributions for compostable material and demonstrate how wide a particle distribution it is possible to have and still produce a good compost.”
At paragraph 15 of the second Drysdale declaration:
“… the question of how many times the windrows are turned and for how long composting proceeds is simply a matter of pathogen control and a judgement as to when it is safe to release the produce to the environment. The suggested composting time of two weeks is not unique, but any claim that adequate pathogen control could be achieved in this time is open to conjecture. These points are clearly demonstrated by material exhibited to the Handreck Declaration. For example, the 1974 publication of Golueke (Exhibit KAH-8) refers to even faster composting times but comments that ‘anyone not thoroughly conversant with composting should be highly sceptical of exaggerated claims of high speed composts’ (see page 45 of the publication).”
At paragraphs 18 and 19 of the second Drysdale declaration:
“The critical issue in regard to composting time is to establish the end point of the compost. Various methods have been described to measure compost maturity. In the process defined in the claims of the proposed application the end point is determined by temperature measurement. However, the temperatures specified are higher than those given in other literature as a measure of compost maturity or stability. The Golueke publication of Exhibit KAH-8 and the Gray & Biddlestone publication of Exhibit CJD-6 refer to a final temperature drop as an index that the temperature would not rise again under favourable conditions. The temperatures referred to by Golueke are 450C to 500C which are lower than the range of 500C to 700C specified in the claim. Any suggestion that pathogen control is achieved by accelerated composting is open to conjecture. Golueke makes the comment that ‘when all pathogens are assumed to have been killed in the composting process, prudence dictates a certain amount of caution in the use of compost product. Complete destruction simply cannot be guaranteed’ (see page 170 of the Golueke publication).
Exhibited hereto as exhibit CJD-7 is an extract of the Standards of Australia publication AS4454-1997 being the AUSTRALIAN STANDARD FOR COMPOSTS, SOIL CONDITIONERS AND MULCHES. This publication describes best practice conditions for composting and suggests composting times well in excess of two weeks.”
Firstly, given the material before me, I address the question as to whether the specific ranges and proportions of particle sizes defined in claim 1 of 675882 confer inventiveness?
In Acushnet Co. v. Spalding Australia Pty Ltd 16 IPR 333, the delegate of the Commissioner at page 336:
"Two points emerge. The first is that the fluorescent materials are commercially available. The second is that the amount of material to be used is largely a matter of choice ... In these circumstances the inclusion of percentage ranges of the fluorescent material in the claims is substantially meaningless ... I note that in similar circumstances in Carlton Tyre Saving Co's Application (1973) 43 AOJP 1404, where the applicant claimed a specific wall thickness of a badminton racquet frame, the delegate of the Commissioner found that ... all the applicant had done was to optimise a range of values and some thicknesses must have better results than others ... ."
In the present case, declarants Macauley and Mitchell both suggest that the ranges and proportions of particle sizes of the starting material defined in claim 1 are important and confer inventiveness. The importance is not disputed but it is not apparent to me from either of their declarations, or from the specification of 675882 itself, that the specified ranges of proportions and dimensions of particles defined represent any departure from the CGK criteria that the composting process will be slowed by either too high a proportion of smaller particles (causing soggyness and lack of aeration) or too high a proportion of larger particles (more resistant to breakdown and insufficient retention of moisture to support microbial activity). It may well be that there is some variability in the ideal ranges of proportions and dimensions of the particles of the starting material to be formed into a windrow depending on the nature of the material to be composted. However, none of the evidence before me is persuasively indicative that the determination of such ideal ranges for a given compostable material is other than routine optimisation and as such would have been obvious to the person skilled in the art as a way of speeding-up the decomposition of a given compostable material.
Secondly, given the material before me, I address the question as to whether once-only turning of the windrow confers inventiveness?
It appears that as a result of carrying out the process of 675882 including once-only turning of the windrow, it is likely that at least some of the pathogens and weed seeds will be destroyed. However, there would seem to be considerable doubt as to whether, after turning only once, the composted product would be suitable for its intended use, as a horticultural growth medium or mulch, in terms of safety (level of residual pathogens) or effectiveness (level of residual nitrogen). In any event, it would appear that the decision to designate the process as completed at a point in time after but one turn of the windrow is a step characterised not by any level of technical inventiveness but rather by a certain level of commercial risk. In my view once-only turning, rather than multiple turning, of the windrow would have been considered by the person skilled in the art as an obvious means to solve the problem of achieving accelerated composting.
Looked at another way, I have come to the opinion, on the basis of the evidence and the above reasoning that, in terms of the approach expressed in Werner v Bailey (supra), “there has been neither a difficulty overcome nor a barrier crossed”.
I find that the invention defined by claims 1 and 2 does not involve an inventive step. The remaining dependent claims (3 and 4) do not add any features which might confer inventiveness and by the same reasoning also do not involve an inventive step.
CONCLUSION
I find that the opposition succeeds in that the invention, so far as claimed in all of the claims (1 to 4 inclusive) was obvious and did not involve an inventive step. I am unable to identify anything disclosed in the specification of 675882 that could form the subject of a valid claim. Accordingly I refuse the presently opposed application for a patent.
COSTS
The power to award costs, which is based on section 210 and regulation 22.8, is discretionary and consequently I must take all relevant considerations into account.
The opposition has succeeded on the substantive ground of lack of inventive step. Awarding costs against the patent applicant is appropriate in such a situation.
I award costs in accordance with Schedule 8 against Environmental and Resource Technology Holdings Pty Ltd.
Alan Moore
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Watermark, Melbourne
Patent attorneys for the opponent : Griffith Hack, Melbourne
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