Exxon Chemical Patents Inc v BP Chemicals Limited
[2002] APO 1
•10 January 2002
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No.681147 in the name of Exxon Chemical Patents Inc
Title: Process for Polymerizing monomers in Fluidised beds
Action: Opposition under Section 59 by BP Chemicals Limited
Decision: Issued .
Abstract
Further evidence was adduced at the hearing by the opponent, with the agreement of the applicant.
Both parties were allowed further time after the hearing to make written submissions in respect of the further evidence.
Despite the further evidence it was determined that the claims of the application are still entitled to their claimed priority.
The claims are all novel. The claims are directed to a manner of manufacture and exhibit an inventive step.
As the opposition has not succeeded, costs were awarded against the opponent.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re: Patent Application No.681147 in the name of Exxon Chemical Patents Inc
and opposition under Section 59 by BP Chemicals Limited
BACKGROUND
Patent Application No.681147 in the name of Exxon Chemical Patents Inc [Exxon],
was filed on 25 April 1994 as PCT/US94/04513 claiming priority from two earlier applications, PCT/US93/03946 which was filed on 26 April 1993 and US 08/065,250 which was filed on 20 May 1993. The patent application was advertised accepted on 21 August 1997.
BP Chemicals Limited [BP] filed a notice of opposition under section 59 on 21 November 1997 followed by a statement of grounds and particulars on 23 February 1998. The opponent sought to amend this statement under regulation 5.9 and the amendment was allowed on 26 June 1998. In short, the amended statement alleges that the specification does not comply with the following provisions of the Patents Act 1990: paragraph 18(1)(a)(non-patentable invention), sub paragraph 18(1)(b)(i)(novelty), sub paragraph 18(1)(b)(ii) (inventive step) and section 40.
After a number of extensions of time, service of all the evidence was completed on 19 January 2001.
The matter was heard on 18 and 19 July in Canberra. The applicant was represented by Mr Richard Baddeley and Mr Matthew English patent attorneys of the firm of Watermark, Perth, and the opponent was represented by Mr Peter Williams, patent attorney of the firm of Griffith Hack, Brisbane.
THE SPECIFICATION
The invention generally relates to a continuous process for the gas phase polymerization of olefins in a fluidized bed reactor. In particular the invention is directed to a gas phase polymerization process for polymerizing monomers when the reactor is operating in a condensed mode. Generally fluidized bed reactors operate with a proportion of un-reacted material being recycled. The reactor feed and recycle streams are generally gaseous, however if the recycle gas stream is at a temperature below the dew point of the gas, then some condensation occurs and the reactor is then said to operate in the condensed mode. This is admitted well known and disclosed in a number of earlier US Patents to Jenkins et al which are referred to in the patent application in suit. The polymerisation reaction is highly exothermic and the production rate from a given reactor is determined by the rate at which heat can be removed. The purpose of running the reactor in condensed mode is twofold, firstly cooling the recycle product so that it liquifies, results in a colder feed into the reactor and secondly when the liquid is introduced it vapourises and thus causes further cooling.
In this particular application this condensed mode is specifically defined as when the recycle gas stream has greater than 2.0 weight percent of liquid in it. The preferred olefins are alpha-olefins.
The preferred catalyst is said to be a bulky ligand transition metal composition with the most preferred catalyst said to be a metallocene. However a skilled addressee on a fair reading of the specification would appreciate that the invention really resides in the unexpected discovery that a metallocene catalyst can be successfully used in a reactor operating in condensed mode. Even though the specification only states that most preferred catalyst is a metallocene catalyst it is in fact the only one claimed.
This view of what the true invention really is, is supported by the statement at page 4 lines 3 to 5 that states:
“Surprisingly, a metallocene catalyst, being soluble in hydrocarbon solvents, polymerised olefins in a condensed mode process which utilizes a hydrocarbon solvent as the preferred condensable inert.”
The stated general objective of the invention is to provide a process of operating the reactor at higher production rates than previously known. In addition the process of the invention is said to produce polymers having a broader range of densities than before. This appears to be a function of the catalyst that is able to be used, it being alleged that it has previously not been possible to use a metallocene catalyst when operating a reactor in condensed mode.
Thus the invention resides in using a metallocene catalyst known to produce polymers of a particular molecular weight range and properties, in combination with a known condensed mode reactor. This combination is said to be surprising because the liquid in the recycle stream of the reactor would have been expected to dissolve the catalyst from its support. This, it is said, would disrupt the smooth operation of the reactor, by allowing the catalyst to be transferred to the various pipes outside of the reactor, and allow polymer to form in them, thus blocking or fouling them. This is reflected in the claims that are listed below.
The specification ends with 39 claims. The independent claims are listed below.
Claim 1 A continuous gas phase polymerization process for polymerizing alpha-olefin(s) utilising a metallocene catalyst in a gas phase fluidized bed reactor wherein a recycle stream having a liquid and a gas phase is introduced to the reactor such that the weight percent of a liquid based on the total weight of the recycle stream is greater than 2.0 weight percent, and the recycle stream comprises a dew point increasing component in an amount greater than 2.0 mole percent.
Claim 28. A continuous process for the polymerization of ethylene and at least one copolymerizable alpha-olefin comonomer in a gas phase fluidized bed reactor operating in a condensed mode, said process comprising the steps of:
a) passing a recycle stream through a fluidized bed in said reactor, said recycle stream comprising a ratio of Cx/C2 of less than 0.2, a dew point increasing component in an amount greater than 2.0 mole percent and optionally non-condensable inerts making up the balance of said recycle stream, where Cx and C2 are the mole percent respectively of comonomer and ethylene;
b) introducing a metallocene catalyst under reactive conditions into said reactor to polymerize said recycle stream into polymer product;
c) withdrawing said recycle stream containing unreacted monomers from the reactor;
d) introducing into said recycle stream additional monomers to replace monomers polymerized to maintain said ratio of said recycle stream;
e) reintroducing said recycle stream into said reactor; and
f) withdrawing said polymer product from said reactor.
Claim 35 A continuous process for the polymerization of ethylene and at least one copolymerizable alpha-olefin comonomer in a gas phase fluidized bed reactor operating in a condensed mode, said process comprising the steps of:
a) passing a recycle stream through a fluidized bed in said reactor, said recycle stream comprising a ratio of (Cx + H2)/C2 of less than 0.2, a dew point increasing component in an amount greater than 2.0 mole percent and optionally non-condensable inerts making up the balance of said recycle stream, where Cx, H2 and C2 are the mole percent respectively of comonomer, hydrogen and ethylene;
b) introducing a metallocene catalyst under reactive conditions into said reactor to polymerize said recycle stream into polymer product;
c) withdrawing said recycle stream containing unreacted monomers from the reactor;
d) compressing and cooling said recycle stream to form a liquid phase and a gas phase such that the weight percent of liquid based on the total weight of the liquid in the recycle stream is greater than 2.0 and reintroducing said recycle stream into said reactor;
e) introducing into said recycle stream additional monomers to replace monomers polymerized to maintain said ratio of said recycle stream; and
f) withdrawing said polymer product from said reactor.
THE EVIDENCE
The evidence in support consists of these statutory declarations:
A declaration by Peter John Williams (patent attorney for the opponent) comprised principally of copies of a number of patent documents plus various actions in the USPTO in respect of the US family member of the opposed application.
A declaration by Kingsley John Cavell (Deputy Head of the School of Chemistry at the University of Tasmania) accompanied by two exhibits (his CV and the opposed specification).
Declarations by Margaret Pratt, Elizabeth Swan and Ngaire Ann Petitt-Young all librarians merely attesting to publication dates of certain documents.
A declaration by Brendan John Nugent (patent attorney for the opponent) comprised principally of copies of a number of patent documents plus technical papers.
The evidence in answer consists of these statutory declarations:
A declaration by Joseph C Floyd (A retired employee of Exxon) accompanied by eight exhibits.
A declaration by Michael E Muhle ( A senior employee of Exxon).
A declaration by Anthony N Speca.
The evidence in reply consists of these statutory declarations:
A declaration by Patrick W. Leaney ( Group Leader , Process Technology Development at BP Amoco Chemicals).
A further declaration by Peter John Williams (patent attorney for the opponent) accompanied by a number of exhibits.
Further Evidence
At the hearing Mr Williams sought to adduce further evidence. This further evidence consists of two US patent applications 07/854041 and 08/053067, US patent 5352749 and European patent 336593 all to Exxon the applicant in the present matter. US 07/854041 in particular casts doubt on the priority date of the application in suit, as the opponent has alleged that some of the claims of the specification in suit are fairly based on this application and are thus not entitled to their claimed priority date. US 08/053067 is a continuation in part of US 07/854041 and US patent 5352749 is the patent granted on it.
Mr Baddeley did not object to this further evidence being adduced so long as he was given sufficient time to reply. In fact, he commented that it was in his client's interest to have all relevant documents considered. US patent application 07/854041 was a document that had been abandoned and at the hearing Mr Baddeley undertook to provide evidence from the US patent office as to the official date of its abandonment.
I allowed the applicant one-month from the date of the hearing to respond to the further evidence. If the applicant wished to rely on section 96 to have an earlier basic document disregarded I asked them to provide evidence from the USPTO of the date of abandonment of US application 07/854041.
I also allowed the opponent one-month after the applicant's response to make any further responses to that response.
DECISION
Priority date of the claims
Since the opponent has raised the issue of "whole of contents " novelty based on the premise that some of the claims of the opposed application are not entitled to their claimed priority date, I must determine whether that is indeed the case. In their submissions made after the hearing the applicant indicated that they did not intend relying on section 96 to disregard US 07/854041. This means that I must now determine if any claims of the opposed application are in fact fairly based on US 07/854041. The law and practice in Australia on fair basis may be summarised as:
The general principle underlying fair basis is that in order for a claim to be fairly based, there must have been a "real and reasonably clear disclosure of its subject matter in the specification" - see CCOM Pty Ltd v Jiejing Pty Ltd, 28 IPR 481 and (1994) AIPC 91-079, and Sartas No. 1 Pty Ltd v Koukourou & Partners Pty Ltd and Nicola Leonardis, 30 IPR 479 and (1995) AIPC 91-121. The question of whether there has been a "real and reasonably clear disclosure" must be approached through the eyes of the person skilled in the art and bearing in mind the common general knowledge.
Earlier US application 07/854041 is directed to a process for polymerising monomers in fluidised beds and it clearly contemplates running the reactor in condensed mode but specifies that the percent liquid in the recycle stream is greater than 15 percent. This is very much higher than generally contemplated by the specification in suit, or the prior art processes of Jenkins et al. This earlier specification is specifically directed to the use of so called Ziegler-Natta catalysts but it does state at page 7 lines 20 and 21 “…not to exclude …or a metallocene component”. This in my view is a throwaway line in an application predominantly dealing with conventional Ziegler-Natta catalysts.
This application also exemplifies the same dew point increasing compounds as in the opposed application, particularly isopentane. These are exemplified in the range 8 to 15%. Overall the specification is directed to the discovery that a significantly increased polymer production rate can be achieved in a fluidised bed reactor by running in a condensed mode where the liquid content in the recycle stream is very much higher then previously thought possible. The choice of catalyst appears to be very much a secondary issue depending on what polymer molecular weights are required. [My emphasis]
In essence US 07/854041 is directed to the use of a reactor in condensed mode with conventional Ziegler-Natta catalysts. It suggests much higher recycle liquid percentages than some of the claims of the opposed application and does not show the combination of metallocene catalysts with condensed mode reactors. Therefore in my view it does not give real and reasonably clear disclosure to use a metallocene catalyst with a reactor operating in condensed mode with a dew point increasing additive in the recycle stream.
I therefore consider that the claims of the opposed specification are entitled to their claimed priority dates of 26 April 1993 and 20 May 1993 respectively.
NOVELTY
The basic test for anticipation and lack of novelty is the "reverse infringement" test - see General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited [1972] RPC 457 and Meyers Taylor Pty. Ltd. v Vicarr Industries Ltd. (1977) 137 CLR 228 at 235. In applying this test I must ascertain whether each and every one of the essential features of the claimed invention is provided by the prior disclosure (Rodi and Wienenberger AG v Henry Showell Ltd. [1969] RPC 367, Flour Oxidising Co. Ltd. v Carr & Co. Ltd. (1908) 25 RPC 428).
I do not think there is any doubt that every feature of claim 1 is essential. A feature is essential if the applicant for the patent has made it an essential feature by the terms of the claim, properly construed (Catnic Components v Hill and Smith Ltd [1982] RPC 183), and this seems to me to be the case here.
The opponent relied on:
EP 593083 published on 20 April 1994.
This publication date, which is after the priority dates of any of the claims, means that this document has no relevance. Consequently this citation does not deprive any of the claims of the opposed specification of novelty.
WHOLE OF CONTENTS NOVELTY
Paragraph (b) of the meaning of “prior art base” in schedule 1 of the Patents Act 1990 relates to the so-called “whole of contents” information.
I have already determined that the claims are entitled to their claimed priority dates. However the two documents below do still have to be considered, as their priority dates are both before 20 May 1993 which is the latest of the two claimed priority dates of the claims of the opposed specification.
Australian Patent Application 42930/93 filed 26 April 1993 published 21 November 1994.
This is the application which directly derives from WO 94/25495 (PCT/US93/03946 which is one of the claimed priority documents. In its published form it is identical to WO 94/25495. Consequently any claims of the opposed specification fairly based on it have an identical priority date and are therefore novel.
In any event this specification is directed to how to control the operation of a fluidised bed reactor in condensed mode. It describes and claims a method of measurement and control of the reactor. It does not give clear and unmistakable directions for a process combining a condensed mode reactor with a metallocene catalyst.
Consequently it does not render any of the claims of the opposed specification not novel
Australian Patent Application 69112/94 filed on 11 May 1994 with a priority date of 13 May 1993.
This document merely discloses the use of metallocene catalysts to polymerise alpha-olefins. I can see no reference to condensed mode operation of the reactor or the use of a dew point increasing component in the recycle stream. I therefore do not believe that the opposed specification lacks novelty in the light of this document.
INVENTIVE STEP
According to subsections 7(2) and 7(3) of the Patents Act, a claimed invention will lack an inventive step if it is obvious in the light of:
(a) common general knowledge; or
(b) common general knowledge considered together with information in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
A finding of lack of inventive step thus requires, as a precursor, that the state of the common general knowledge in the art in Australia be established.
A widely accepted definition of common general knowledge is that provided by Aickin J in Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited 144 CLR 253 at 292:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
The state of the common general knowledge is a question of fact which must, in general, be determined on the basis of evidence from persons whose background enables them to testify authoritatively as to the common general knowledge in the particular art. Indirect evidence, such as widespread publication or admissions made in patent specifications may also serve to indicate that something is common general knowledge.
In this particular instance both parties agree that condensed mode operation of polymerisation reactors is common general knowledge. Indeed it is referred to at length in the specification in particular the Jenkins series of patents. It seems to me that the use of supported metallocene catalysts is also agreed as common general knowledge. What is at issue is whether the combination of the two together is obvious and so lacks an inventive step.
In order to assist me I have the following statutory declarations filed in evidence. I do not propose to dwell on them in so far as they reinforce the view that condensed mode operation of polymerisation reactors and the use of metallocene catalysts is each is common general knowledge. I propose rather to concentrate on whether they assert that the combination of the two integers together was obvious.
The Cavell Declaration
Dr Cavell is the Deputy Head of the School of Chemistry at the University of Tasmania. He is somebody who has no direct connection with either the applicant or the opponent.
He states that he has a long-standing industrial collaboration with a company using the condensed mode fluidised bed reactor polymerisation process [the so-called UNIPOL process]. He states that this process, which is described in US Patents 4543399 and 4588790, and which is referred to in the opposed specification, is used under licence by many companies around the world and first came on stream in 1977. It is a condensed mode continuous gas fluidised bed polymerisation process for the production of polyolefins. Dr Cavell states that in his view the term “condensed mode” is understood by those in the art to mean a process wherein a dew point increasing component is present in the reactor.
He also states that metallocene catalysts have been known since the late 1950s but had poor activity due to the co catalyst used. The field was revisited and revitalised in the 1970s by the use of alumoxane cocatalysts. The catalyst chosen depends very much on the type of polymer required from the reactor. The properties of metallocenes namely that a broad range of polymers generally having a narrow molecular weight distribution and a narrow composition distribution can be prepared are well known and are even admitted by the applicant in the opposed specification at page 4 lines 24-27. He considers that the use of condensed mode operations with a metallocene catalyst would have an additive effect.
He asserts that it would have been obvious for a polymer chemist to have attempted to use metallocene catalysts in condensed mode operation
The Floyd Declaration
Dr Floyd is a retired Exxon employee with extensive experience in operating and managing polymer manufacturing plants in the USA. He also has had direct experience with developing metallocene catalysts for olefin polymerisation. He asserts in his declaration that fluidised bed gas reactors have been in operation since the 1970s. He also states in simple terms that their main problems have been sheeting [a product build up in the reactor usually caused by static electricity in the reactor ] and fouling [product build up in the recycle stream outside the reactor]. This last problem is typically caused by catalyst fines escaping from the reactor. To overcome this the Ziegler-Natta catalysts in use were supported on silica.
When condensed mode operations were developed in the mid 1980s production from the reactors improved. However Dr Floyd asserts that so-called dry [i.e. not run in condensed mode] fluidised bed reactors are still the most common and that all test equipment is still not capable of being operated in condensed mode. He also asserts that when metallocene catalysts began to be developed they could only be experimented on in the so-called dry mode of operation and the same problems of sheeting and fouling occurred. This is why in the early 1990s mention starts to be made of supported metallocene catalysts in conjunction with dry processes.
He asserts that the use of supported metallocene catalysts with condensed mode operation would not generally have been contemplated as the liquid hydrocarbon in the recycle would be assumed to cause the catalyst to be leached off its support. [Metallocene catalysts are known to be soluble in some of the liquid hydrocarbons present in the recycle stream of a fluidised bed reactor operating in condensed mode]. This would lead to sheeting and also allow catalyst to enter the recycle stream and cause fouling problems. Thus in his view it would not have been obvious to combine known metallocene catalyst technology with known condensed mode reactor operation.
The Muhle Declaration
Dr Muhle has been an employee of Exxon since 1980 having previously worked for Mobil and Union Carbide. He states that he played a key role in the UNIPOL process, he is also a co inventor of the opposed application. He states that he would have expected the use of supported metallocene catalysts in a condensed mode reactor to have caused fouling and was surprised when they did not
The Speca declaration
Dr Speca is currently employed by Exxon. He has extensive experience in catalyst preparation. He asserts that metallocene catalysts can be leached from their silica supports by hexane which is one of the dew point increasing hydrocarbons in the recycle stream of the present invention. I note that this point is to some extent admitted in the specification in suit at page 9 lines 14 and 15 where a catalyst having low hexane extractability is said to be preferred.
The Leaney declarations
Dr Leaney is currently employed by BP and has had extensive experience in process development in polymer manufacture and in particular in metallocene catalyst research. Before joining BP in 1999 he worked for the Chevron Corporation in various process-engineering roles. He basically refutes the Speca declaration that metallocene catalysts of the type specified in the opposed specification are easily soluble in hexane. He also asserts that Dr Muhle's declaration is flawed in asserting that the solubility of the catalyst in hexane would necessarily teach away from using it in a condensed mode fluidised bed reactor. He specifically quotes from US 4588790 [one of the original Jenkins' patents, which first disclosed condensed mode operation of reactors, and which is directly referred to in the opposed specification] where excess liquid in the recycle stream is said to prevent accumulation of solids at any point in the system, where they might otherwise build up. This is in direct contradiction to Dr Muhle's assertion that the excess liquid would dissolve out catalyst and that this escaped catalyst would cause reactor fouling.
Dr Leaney in his second declaration also questions the Floyd declaration in respect of how specialised or otherwise condensed mode reactor operation was as of the priority date of the claims. Firstly he directly contradicts Dr Floyd on the issue of pilot plants clearly stating that BP actually has pilot plants capable of condensed mode operation. He also states that they are often operated in a non-condensed mode as this is considered a more severe form of testing. He also states that the UNIPOL process [as outlined in the two Jenkins' patents] has been available for licensing for well over a decade and that they operated on a wide range of recycle liquid percentages. Dr Leaney also refutes Dr Floyd's assertion that those in the art did not consider the use of supported metallocene catalysts in condensed mode operation of reactors, because of the fear of reactor fouling. He asserts that the main reason for this is that although Union Carbide owned the condensed mode operation patents, their competitors owned the metallocene catalyst patents.
In addition to these declarations I have a number of documents that may be of value.
European Chemical News 6 April 1992
This only teaches the suitability of metallocene catalysts for the then existing Unipol gas phase process without giving any detail.
European Chemical News 8 March 1993
This only discloses information about Union Carbides new Unipol II plant designed to use super-high activity Ziegler catalysts as well as newly emerging single site catalysts. There is then an off the cuff comment that “industry observers are in little doubt that these catalysts are metallocene based”. Hardly a concrete disclosure!
Chemical Week 13 May 1992 pages 52-53
This merely discloses new catalysts that have the capability for extending the molecular weight range of polymers obtainable from existing processes. It only refers to metallocene catalysts and the Unipol process operating in condensed mode in very general terms.
US 4808561 published 28 February 1989
This citation merely discloses the preparation of supported metallocene alumoxane catalyst of the opposed specification. Indeed there is direct reference to this specification at page 6 line 36 as a known method of catalyst preparation. It also teaches that silica supported metallocene catalysts of the type used in the opposed specification are not soluble in the hydrocarbons used as dewpoint increasing component in condensed mode reactor operation. However there is no suggestion that this information was common general knowledge in Australia. Nor is there sufficient disclosure to establish that the present application lacks an inventive step in the light of this document alone.
EP 336593 published 11 October 1989
This patent relates to the use of a supported metallocene alumoxane catalysts in a process for polymerising olefins. It discusses reactor fouling problems and how they are avoided using a supported catalyst. Although the catalyst is deposited on its silica gel support using hexane, it is said not to then be soluble in hexane once deposited. The reactor is operated as a gas phase fluidised bed not in the condensed mode. There is not sufficient disclosure to establish that the present specification lacks an inventive step in the light of this document alone.
On the evidence before me I am able to conclude that condensed mode operation of polymerisation reactors, and metallocene catalysts were each by themselves common general knowledge. I have conflicting evidence as to whether the combination would have been obvious to a skilled addressee as of the priority date. The three journal articles merely seem to indicate that it would be desirable to combine the two features without giving any details of how it might be done. Dr Cavell asserts that merely because both were known, he thinks it would have been obvious to combine them. Again in my view wishful thinking along the lines of “wouldn’t it be good if we could combine the two and gain the advantages”.
On the other hand there is evidence from Dr Muhle and Dr Floyd that there would be some difficulty expected with liquid in the recycle stream leaching the catalyst from its support. This would be expected to cause the catalyst to migrate out of the reactor causing polymer to form where it was not intended to, which would lead to sheeting and fouling. Dr Speca’s declaration also supports this view.
Dr Leaney on the other hand is of the view that leaching of metallocene catalyst from its support by recycle liquid would not in itself teach away from using it in condensed mode reactor operations. He argues that on the contrary excess liquid in the recycle stream would tend prevented a build up of solids in the system. He argued that the fact that the condensed mode operation patents were owned by one company and the metallocene catalysts by another was the real reason why people did not think to combine the two. I cannot agree, I feel certain that if the process had been discovered earlier and did realise the promise claimed for it the two companies would of commercial necessity have entered into some kind of cross licensing arrangement.
To my mind the opponent has failed to show that it would have been obvious to combine the condense mode of operating the reactor with a metallocene catalyst. Consequently all the claims exhibit an inventive step.
MANNER OF MANUFACTURE
Mr Williams argued that the opposed specification and claims were directed to a mere collocation of known integers and as such were not patentable. He submitted that, since both condensed mode polymerisation reactor operation and metallocene catalysts were both known, a patent claim to them both together was only a collocation and hence not patentable
However this is at odds with the various submissions that a supported metallocene catalyst might be expected to dissolve in the hydrocarbon used as the dew point increasing component in the recycle stream. This would be expected to foul the reactor. The applicant seems to have established that this is not the case. Thus in the legal sense the metallocene catalyst was not truly “known” in the sense that all its properties were known. Hence in my view the application is not a mere collocation of known integers.
Mr Williams also argued that the application was a new use of an old contrivance, namely the use of a known contrivance the condensed mode operation of a known reactor with a known catalyst.
However the law on new use of old contrivances is set down in Gadd & Mason v. The Mayor etc. of Manchester, (1892) 9 RPC 516 at page 524, and was adopted by the High Court of Australia in Willmann v. Petersen, 2 CLR 1 at page 17. In the former case Lindley LJ stated
“1. A patent for the mere use of a known contrivance, without any additional ingenuity in overcoming fresh difficulties, is bad and cannot be supported. If the new use involved no ingenuity but is in manner and purpose analogous to the old use, although not quite the same, there is no invention; no manner of new manufacture within the meaning of the Statute of James.
2. On the other hand a patent for a new use of a known contrivance is good and can be supported if the new use involves practical difficulties which the patentee has been first to see and overcome by some ingenuity of his own.”
It is clear to me that the present application is for the new use as outlined in point 2 above. Namely that the use involves some practical difficulties that the patentee has overcome. Namely the use of a metallocene catalyst which determines the molecular weight range of the polymers produced, coupled with condensed mode operation which gives a greater production rate of polymer.
Mr Williams further submitted that the claims failed the so-called “threshold test” of patentability in that there was no invention on the face of the specification.
See NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd 32 IPR 449
The majority of the High Court concluded that “newness” was imported into sec 18(1)(a) to the extent that sec 18(1)(a) should be interpreted as retaining the threshold requirement of “an invention” as excluding from a “patentable invention” any claimed process, method or use which was not, on the face of the specification, a proper subject of letters patent according to traditional principles. The court also expressed the (obiter) view that “it would border on the irrational” if something could only be unpatentable according to traditional principles if, but only if, the facts that lead to that conclusion were disclosed by the specification itself.
Mr Williams alleged that because the specification described the earlier Jenkins’ patents which showed operating a polymerisation reactor in condensed mode plus disclosing the other patents showing how metallocene catalysts are made, there is therefore no invention on the face of the specification.
However the opposed specification has discovered a way of combining these two disclosures such that the reactor may be operated in condensed mode, using the supported metallocene catalysts, without causing the fouling and sheeting of the reactor, that might otherwise have been expected. It therefore passes the “threshold test”.
I have already dealt with this matter when I considered inventive step. The alleged invention is an inherently patentable combination, the real issue is whether that combination is novel and exhibits an inventive step. Since I have already concluded that it is novel and does exhibit an inventive step I am satisfied that the specification and claims are directed to a manner of manufacture.
SECTION 40
None of the Section 40 matters raised in the statement of grounds and particulars were pursued in the opponents submissions and none of these matters appear likely to render the patent invalid and so I will not consider them further in this decision.
CONCLUSION
I have found that the opposition fails on the grounds of manner of manufacture and that the application accords with Section 40 and is novel and inventive. Accordingly I direct the application be sealed after 30days from this decision. If the Commissioner has been served with a notice of appeal before this time, I direct that sealing not occur until the appeal has been decided or discontinued.
COSTS
In proceeding such as these it is usually the case that costs follow the event.
Mr Baddeley submitted, for the applicant, that if I were to find against the applicant solely on the basis of the further evidence adduced at the hearing, then the applicant should not have to bear the costs as there were trying to defend something of which they were previously unaware.
However this opposition has failed and I see no reason to depart from normal principles. Consequently I award costs against the opponent BP Chemicals Limited.
R.A Melvin
Delegate of the Commissioner of Patents
Patent attorneys for the applicant: Watermark, Perth
Patent attorneys for the opponent: Griffith Hack, Brisbane
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