Exxon Chemical Patents Inc v the Associated Octel Company Limited
[2003] APO 42
•24 September 2003
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 714453 in the name of EXXON CHEMICAL PATENTS INC.
Title: Additives and Fuel Oil Compositions
Action: Opposition by THE ASSOCIATED OCTEL COMPANY LIMITED under Section 59 of the Patents Act 1990
Decision: Issued 24 September 2003
Abstract
The opponent raised the grounds of novelty, inventive step, manner of manufacture and section 40/fair basis.
Under section 40/fair basis the opponent identified lack of clarity in claim 1 with particular regard to the expression "… the weight ratio of (a):(b) is greater than 1:4 to 2:1…". This apparent lack of clarity was resolved after application of the appropriate rules of construction (see Decor Corp v Dart Industries 13 IPR 385 at page 400). On a proper construction, the expression indicates that the weight ratio of (a):(b) is greater than 1:4 but does not exceed 2:1. The opponent also raised grounds of sufficiency, which were not proven.
In the matter of lack of novelty the opponent had raised 7 citations against the opposed claims. Only six citations were published before the relevant priority date. None of the citations showed the opposed claims to be lacking in novelty.
The six citations mentioned above were also considered individually when combined with the established common general knowledge for inventive step. The ground of lack of inventive step was not established.
The opponent was also unsuccessful on the ground of manner of manufacture.
Costs awarded against the opponent, The Associated Octel Company Limited and in favour of the applicant, Exxon Chemical Patents Inc.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 714453 by EXXON CHEMICAL PATENTS INC. and an opposition under Section 59 of the Patents Act 1990 by THE ASSOCIATED OCTEL COMPANY LIMITED.
BACKGROUND
Exxon Chemical Patents Inc. (hereafter Exxon) filed patent application No. 714453 on 2 February 1996 under the Patent Cooperation Treaty. The application claims convention priority from GB 9502041.8 filed in the United Kingdom on 2 February 1995. The application was examined and advertised accepted on 6 January 2000. The specification was amended after acceptance, the allowance of the amendments being advertised accepted on 28 August 2003.
The Associated Octel Company Limited (hereafter Octel) filed a notice of opposition on 4 April 2000. A statement of grounds and particulars was filed on 6 July 2000. The service of evidence in support, evidence in answer and evidence in reply was completed on 18 March 2003.
The hearing to deal with the substantive opposition was held in Canberra on 24 and 25 June 2003. Mr. Richard McCormack of Counsel assisted by Mr. Richard Baddeley patent attorney of Watermark, Perth represented the applicant. Mr. Michael Houlihan assisted by Dr. Elizabeth Houlihan, both patent attorneys of Houlihan2, Melbourne represented the opponent.
EVIDENCE
Evidence in support consists of declarations made by:
· David Lawrence Trimm, dated 1 October 2001 and exhibit DLT-1. He states that he is currently a Scientia Professor and Professor Emeritus of the University of New South Wales. He further states that he has a B.Sc. (honours) degree in Chemistry and a PhD from the University of Exeter, United Kingdom and has held the position of Professor of Chemical Technology at the University of New South Wales from 1979-2001. He indicates that his declaration is based on his own knowledge and experience in the petroleum industry which he says has been gained through his professional conduct and reading of scientific literature and other relevant publications as well as discussions with colleagues in Australia and around the world.
· Anthony Michael Cooney, dated 4 January 2001. He states that he obtained a BSc (Hons) Chemistry in 1985 and a PhD in Physical Chemistry in 1988 both from Leicester University. He further states that since 1988 he has been involved in research on fuel additives for Octel.
· Christopher Paul Granby, dated 5 October 2000. He states that he obtained a BSc (Hons) Applied Chemistry in 1996 from Liverpool John Moores University. He further states that since that time he has been involved in research on fuel additives and is currently employed by Octel.
· Elizabeth Eadie, dated 3 October 2000 and 6 October 2000 and exhibits EE-1 to 10 and EE-11 respectively. She states that she is a patent attorney employed by Callinan Lawrie, Melbourne who were the attorneys for the opponent at that time.
· Ngaire Pettit-Young, dated 18 October 2000. She states that she is employed as Senior Librarian at the University of New South Wales.
Evidence in answer consists of declarations made by:
· Rinaldo Caprotti, dated 1 July 2002. He states that he has a PhD in Industrial Chemistry from the University of Milan and has been employed by Exxon Chemical Ltd since 1978 in a variety of marketing, technical service and formulation science assignments relating to additives for fuels and lubricating oils. He further states that in the formulation science area he was engaged in lubricant additives from 1981 to 1984 and in fuel additives from 1987 to date. He currently holds the position of Principal Technologist within Infineum UK Ltd.
· Iain More, dated 1 July 2002 and 1 November 2002 respectively. He states that he has a BSc in chemistry and a PhD in polymer chemistry from Aberdeen University. He further states that he has been employed by Exxon Chemical Ltd and, latterly, by Infineum UK Ltd since 1984 in a variety of Technology-related assignments relating to additives for fuels, in particular cold flow and lubricity additives for middle distillate fuels and additive formulations for gasoline fuels.
Evidence in reply consists of declarations made by:
· David Lawrence Trimm, dated 18 March 2003 and exhibits DLT-2 and 3.
· Ngaire Pettit-Young, dated 19 February 2003.
Further Evidence (allowed by a decision of the delegate of the Commissioner of Patents on 6 February 2003) filed by Exxon consisting of declarations made by:
· Richard Hiram Baddeley, dated 15 October 2002, 16 December 2002 and 17 December 2002 and exhibits RHB-5 to 6, nil, and RHB-7 to 14 respectively. He states that he is a patent attorney employed by Watermark, Perth attorneys for Exxon.
THE SPECIFICATION
The specification under consideration is the specification as amended after acceptance. It commences by stating that the invention relates to additives for improving lubricity of fuel oils such as diesel fuel oil. It asserts that diesel fuel oil compositions including the additives exhibit improved lubricity and reduced engine wear. The specification indicates that the defects of the prior art arise from environmental concerns which call for low sulphur fuels and reduction in high-boiling components of fuel oils. It teaches:
· Reducing the level of one or more of the sulphur, polynucleararomatic or polar components of diesel fuel oil can reduce the ability of the oil to lubricate the injection system of the engine so that, for example, the fuel injection pump of the engine fails relatively early in the life of the engine,
· Reduction in high-boiling components has the result of limiting or excluding the presence of some naturally occurring heavy n-alkanes from fuel oils. Lowering the levels of both polynucleararomatic compounds and some heavy n-alkanes can alter the physical properties of the resulting fuel oils. It has now been found that lubricity additives hitherto used in the art, and particularly those which are esters, are poorly soluble in such fuel oils, particularly at low temperatures, leading to partial precipitation of these additives. As a result, the lubricity additives may not reach their intended sites of action further along the fuel system.
The specification then discusses some prior art followed by a consistory statement of the invention, which is similar to claim 1. This is followed by a detailed description of the invention including examples. The specification ends with 10 claims of which claim 1 is an independent claim directed to a fuel composition. Claim 1 reads as follows:
1. A fuel oil composition containing a major amount of a fuel oil containing not more than 0.05% by weight of sulfur and having a 95% distillation point of not greater than 350oC, and a minor amount of an additive composition including (a) an ashless dispersant including an acylated nitrogen compound and (b) at least one of (i) a monocarboxylic acid, (ii) a polycarboxylic acid, each having from 2 to 50 carbon atoms, or (iii) an ester of either (i) or (ii) with either a monohydroxyl alcohol or a polyhydroxyl alcohol, providing that the weight ratio of (a):(b) must be in the range from 1:100 to 2:1 when (b) is one of a polycarboxylic acid, an ester of a polycarboxylic acid or an ester of a monocarboxylic acid and a polyhydroxyalcohol (sic) and when (b) is a monocarboxylic acid, the weight ratio of (a):(b) is greater than 1:4 to 2:1 and the concentration of the additive composition in the fuel oil is in the range of 100 to 500 ppm (active ingredient) by weight per weight of fuel oil.
STATEMENT OF GROUNDS AND PARTICULARS
Octel raised grounds of novelty, inventive step, manner of manufacture and section 40/fair basis. At the hearing Octel stated that they would pursue all the grounds listed in the statement of grounds and particulars.
DECISION
Both parties made their oral submissions at the hearing and the applicant also provided a written copy of the outline of their submissions. I shall refer to these submissions wherever relevant in my decision.
Priority Date of Claims of the Opposed Application
The opponent contended that the opposed application should have a priority date of 2 February 1996 (filing date of the application) and not 2 February 1995 (filing date of the basic document).
In support of this contention they submitted that the claimed invention was not fairly based on the disclosure of the basic document. They identified several differences between the basic document and the accepted specification. The independent claim of the opposed specification is the one set out previously under THE SPECIFICATION as claim 1.
Based on the submissions from both parties I am satisfied prima facie that the independent claim of the opposed specification is entitled to a priority date of 2 February 1996, which is the filing date of the application. I note that this priority date does not impact on either novelty or inventive step considerations for this particular case as six of the citations raised have been published before the earliest possible priority date of 2 February 1995 and one citation has been published well after (made available to the public on 8 March 1999) the filing date of 2 February 1996.
Claims Construction, Section 40/Fair Basis
The opponent raised the following issues in the statement of grounds and particulars:
1. The opposed patent attempts to justify an inventive step by means of an unexpected synergy between the two components (a) and (b) as demonstrated by examples using PIBSI (polyisobutenylsuccinimide) and an ester formed between ethylene glycol and dilinoleic acid. The opponent has carried out trials on alternative acids and esters as defined in Section (b) of claim 1 of the opposed patent and has detected no unexpected synergy. As claim 1 covers combinations of PIBSIs and this alternative ester it is not fairly based and is speculative since it does not teach how to make these combinations synergistic and or because the claim covers combinations of components (a) and (b) which are not synergistic.
2. The disclosure of the specification is insufficient in that it is not sufficiently clear and complete for it to be carried out by a person skilled in the art. It is clear that for a significant portion of claim 1 of the opposed application there is no teaching of how to achieve the promised synergy. Tests carried out by the opponent, a company long involved in the manufacture and sale of fuel additives and whose scientists are indisputably skilled in the relevant art, have failed to show any synergy between certain combinations of components (a) and (b).
At the hearing the opponent raised a clarity matter in regard to claim 1 of the opposed specification as follows:
3. Amended claim 1 as filed on 2 July 2002 has a portion which states, "…and when (b) is a monocarboxylic acid, the weight ratio of (a):(b) is greater than 1:4 to 2:1…". This lacks clarity and if a range is intended it should read as "… the weight ratio of (a):(b) is within the range 1:4 to 2:1…".
I shall consider the above matters in serial number order. Items 1 & 2 essentially raise matters of utility and sufficiency.
The applicant disputed these assertions and referred to the teaching of Virbac S.A. v American Home Products Corporation and Merial Australia Pty Limited [2002] APO 48 (12 December 2002), where at paragraph 17 the delegate stated:
"A large number of comments are made in the evidence about the quality of the data in the specification, and whether it would have been accepted for publication in a scientific journal. The data in a patent specification is assessed solely against the standard imposed by the Patents Act - is it sufficient to provide full description of the invention, a best method of performance and fair basis for the claims. If an applicant decides to omit technical information from their patent specification, they accept the risk that their application may be refused if it results in the failure to meet one of the criteria.'
I am in agreement with the above teaching and shall assess the opposed specification solely against the criteria set out in the Patents Act.
The claims are directed to a composition and the additive part of the composition has two components (a) and (b). The description at page 4, lines 9 and 10 states, " The combination of (a) and (b) can provide unexpected enhancements in lubricity performance." Various examples are provided embodying the invention and giving various compositions with (a) and (b).
The submissions of the opponent indicate that they were able to make the composition claimed but that once they made it, it did not work. The opponent is raising grounds of inutility, which is not a ground of opposition. In Tetra Molectric Ltd.'s Application, (1977) RPC 290 at page 297, the Court of Appeal distinguished inutility and insufficiency simply, by saying that "If you cannot achieve the promised result because of deficiencies in the information given in the specification, there is insufficiency. But if, following that information and having achieved mechanically that which the specification promises you will achieve by so following it, the end product will not of itself achieve that promise, then that is inutility (my emphasis)."
At no stage has the opponent stated that; (i) they were unable to make the composition claimed and (ii) also the deficiencies if any in the instructions for making that composition. Therefore I do not consider that the specification is insufficient. Further the opponent has not indicated any discrepancies between the claims and description, nor have they pointed out any features of the clams, which lack a real and reasonable disclosure 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. Hence, I do not consider that the claims lack fair basis.
I shall now consider item 3, which relates to the clarity of claim 1. The offending portion states, "…and when (b) is a monocarboxylic acid, the weight ratio of (a):(b) is greater than 1:4 to 2:1…" (my emphasis). One of the rules of claims construction states that "Where a claim is capable of more than one construction, then an absurd construction should be rejected in favour of an alternative construction" (Henriksen v Tallon (1965) RPC 434). See also Lord Russell in EMI v Lissen, 56 RPC 23:"if possible, a specification should be construed so as not to lead to a foolish result or one which the patentee could not have contemplated."
Thus the offending portion of claim 1 could be construed as follows:- "the weight ratio of (a):(b) is greater than (1:4 to 2:1)" - the implication being that the ratio is greater than a range, which is absurd because a statement of the lower limit would suffice to show the ratio that was to be exceeded. There is conflict in indicating two limits which the ratio should exceed. The skilled addressee is unable to determine the desired limit from a reading of the claim. As the claim clearly states, "… is greater than…" there is no indication that an upper limit is being set.
The rules of construction have been set out in Decor Corp v Dart Industries 13 IPR 385. With particular reference to claims construction in that case, Sheppard J has referred to the teaching of Barwick CJ and Mason J in Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 478-9:
"…However, the settled rule is that in ascertaining the width of a particular claim it is not permissible to vary or qualify the plain and unambiguous meaning of the claim by reference to the body of the specification (Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588.
If the expression is not clear it is then permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim without infringing the rule that clear and unambiguous words in the claim cannot be varied or qualified by reference to the body of the specification: see Electric & Musical Industries Ltd v Lissen (1938) 56 RPC 23; Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69."
The relevant rule of construction as set out by Sheppard J in Decor Corp v Dart Industries (supra) at page 400 states:
"(5) If a claim be clear, it is not to be made obscure because obscurities can be found in particular sentences in other parts of the document. But if an expression is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim."
Applying the above rule of construction I shall refer to the body of the specification to clarify the meaning of, "the weight ratio of (a):(b) is greater than 1:4 to 2:1". The consistory clause at page 3 of the specification repeats this feature without any change. The description at page 12 states:
"The ratio of component (a):component (b), calculated on a weight:weight basis, is advantageously greater than 1:100, preferably greater than 1:50, more preferably greater than 1:25, and most favourably greater than 1:4. The greater the ratio of (a):(b), the more soluble the resulting additive composition appears in the fuel oil.
For optimum lubricity enhancement, the ratio of component (a):component (b), calculated on a weight:weight basis, is preferably in the range 1:2 to 2:1."
This disclosure indicates that the weight ratio in claim 1 is greater than 1:4 ("most favourably greater than 1:4") but does not exceed 2:1 ("is preferably in the range 1:2 to 2:1"). Thus I conclude that the apparent lack of clarity of claim 1 in reference to the weight ratio can be resolved by application of the rules of construction. I do not consider that claim 1 of the opposed application has been shown to be lacking in clarity on a proper construction of the specification.
Novelty
The opponent contended that the invention as defined in all the claims lacked novelty. They also submitted that if I found the compositions lacking in novelty the applicant would claim that they had a selection patent based on the synergistic effect of the composition. The opponent stated that they would also show that the patent application in question did not satisfy the criteria for a selection patent. I shall first consider the issue of traditional novelty and if I find against the applicant I shall then consider the issue of selection.
At the hearing the opponent raised seven documents in support of the ground of lack of novelty. Five of these are patent documents and two are non-patent literature publications. The non-patent literature publications are:
· Harm Free Use of Diesel Additives, R. Caprotti, Exxon Chemical Ltd., International Fall Fuel and Lubricants Meeting and Exposition San Francisco, California October 19-22, 1998; exhibit EE-9, referred to as Caprotti document hereafter and publicly available in Australia on 8 March 1999.
· Diesel Fuel Additives to Meet Worldwide Performance and Emissions Requirements, Kulinowski et al, Fuels and Lubricants Meeting and Exposition Philadelphia, Pennsylvania October 18-21 1993 (exhibit EE-10, referred to Kulinowski et al hereafter and publicly available in Australia on 27 May 1994)
The Caprotti document has been published well after the earliest possible priority date as well as the filing date of the opposed application and will not be considered for the grounds of novelty and inventive step. Consequently for the purposes of novelty and inventive step I shall only consider the six documents set out below.
The applicant's submissions were that:
· None of the references filed in the opponent's evidence provide an enabling disclosure of the subject matter of the claims.
· No prior publication referred to in the opponent's evidence gives a requisite direction; or makes a recommendation or suggestion which would result in the claimed invention, if it is followed by the reader, or addressee skilled in the relevant area of science or technology
· The opponent's evidence does not establish anticipation - a prior publication only anticipates an invention claimed as a combination, if it discloses all of the essential integers of that combination.
The reverse infringement test from Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1976) 137 CLR 228 at 235 sets out the basic test for anticipation or want of novelty:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
It follows from the reverse infringement test that if a citation discloses all the features of the claim, the claim will lack novelty. If the citation does not disclose all the features of the claim, the claim will still lack novelty provided the citation discloses all the essential features of the claim; but if the essential features are not disclosed in the citation, the claim is novel (Nicaro Holdings v Martin Engineering 16 IPR 545 and Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183).
I shall begin by assuming that all features of the independent claim are essential (Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183).
1. A fuel oil composition containing
2. a major amount of a fuel oil containing not more than 0.05% by weight of sulfur and having a 95% distillation point of not greater than 350oC, and
3. a minor amount of an additive composition including:
(a) an ashless dispersant including an acylated nitrogen compound and
(b) at least one of
(i) a monocarboxylic acid, having from 2 to 50 carbon atoms
(ii) a polycarboxylic acid, having from 2 to 50 carbon atoms, or
(iii) an ester of either (i) or (ii) with either a monohydroxyl alcohol or a polyhydroxyl alcohol,
providing that the weight ratio of (a):(b) must be in the range from 1:100 to 2:1 when (b) is one of a polycarboxylic acid, an ester of a polycarboxylic acid or an ester of a monocarboxylic acid and a polyhydroxyl alcohol and
when (b) is a monocarboxylic acid, the weight ratio of (a):(b) is greater than 1:4 to 2:1 and
the concentration of the additive composition in the fuel oil is in the range of 100 to 500 ppm (active ingredient) by weight per weight of fuel oil.
I shall now consider the issue of novelty of claims 1 to 10 against each of the prior art documents pursued at the hearing. Before I consider the citations I shall deal with the definition of the terms detergent and dispersant. The opponent stated that these terms could be used interchangeably. The applicant countered that this was not the case and that there was a difference. In support of their argument the applicant referred to Kulinowski et al - Exhibit EE-10. This document at page 6, column 2, line 3 onwards states:
"…High-molecular weight detergents (more accurately, dispersants) solubilize deposit precursors by incorporating them into micelles,…"
This document has indicated that dispersants are high-molecular weight detergents but no indication of the relevant weights is given. I shall consider each document on the disclosures therein and compare them with the dispersants disclosed in the opposed application. In particular the opposed description at pages 5 to 8 give some idea of the desired structure of the dispersant and specific reference is made to several US patents and a couple of EP patents exemplifying ashless dispersants suitable for use in the opposed invention. The opposed application also makes some disclosures of these dispersants (particularly polyisobutyl succinic anhydride -PIBSA- based succinimides) in the examples. I shall use the above teachings as a base for determining disclosure of the ashless dispersant of the invention.
WO 93/20170 - Exhibit EE-4, published 14 October 1993
This document discloses multi-functional detergent-containing additive compositions for hydrocarbon fuels and in particular relates to alkenylsuccinimide-based detergent compositions. The claimed invention relates to a composition containing polyisobutenyl succinimide detergent, a carrier oil composed of a mono end-capped polypropylene glycol and a hydrocarbon solvent. There is no indication of suitability for use in a low sulphur fuel having a 95% distillation point of not greater than 350oC. There is no mention of the specific requirements of component (b) and the requirements to be fulfilled in respect of the ratio ranges between the ashless dispersant (a) and component (b). The opponent referred to various features appearing in disclosures of cited art in the document. However there is no clear disclosure of the combination of features of opposed claim 1. The opponent also referred to the disclosure of component (b) at page 13. This disclosure relates to minor ingredients including corrosion inhibitors which includes fatty acids. Several features have been disclosed in isolation across various documents and in the citation, but this does not constitute a teaching of the claimed combination of features of opposed claim 1. I do not consider that WO 93/20170 has rendered any of the opposed claims as lacking in novelty.
EP 0 634 472 - Exhibit EE-5, published 18 January 1995
The invention described relates to fuel additives and fuels containing such additives for minimising induction system deposits and for controlling exhaust emissions from an internal combustion engine. The additive claimed contains:
(a) at least one fuel-soluble succinimide detergent/dispersant,
(b) a fuel-soluble mineral oil with a specified viscosity,
(c) unhydrogenated poly-a-olefin oligomer with a specified viscosity, and
(d) an aromatic hydrocarbon with a specified boiling range and viscosity.The invention further specifies weight ratios for (d) to (a), (c) to (a), (b) to (c), and (b)+(c) to (a). The description discloses a fuel oil composition with a low sulphur fuel (less than 0.05 wt %) having a final boiling point of 199oC, concentration of additive in the fuel oil at 400 ppm and an ashless dispersant (polyisobutenyl succinimide). Thus features 1 to 3 (a) and the additive concentration of the opposed invention have been disclosed. However there is no disclosure of component (b) (feature 3 (b)) and the ratios of (a) to (b) specified in opposed claim 1. The opponent referred to compounds similar to component (b) disclosed as corrosion inhibitors in the citation. The citation does not teach that they are required for the working of the described invention nor is there any indication of the relation if any of the quantities to be used with component (a) (of the opposed invention). Further the invention of the citation has several constituents other than the fuel and additives (a) and (b) of the opposed invention and also specified weight ratios amongst the several constituents. I do not consider that this citation renders claim 1 and dependent claims 2 to 10 of the opposed application as lacking in novelty.
WO 94/17160 - Exhibit EE-6, published 4 August 1994
This document indicates that the invention it describes relates to fuel compositions useful to improve lubricity and reduce wear in diesel engines. This object is also stated in the opposed specification. The description discloses a fuel oil composition with:
· a low sulphur fuel (0.2% by weight or less)
· fuel boiling within the range 100oC to 500oC,
· the quantity of additive in fuel oil lying between 10 to 500 ppm
· the additive comprising an ester of a carboxylic acid and an alcohol wherein the acid has from 2 to 50 carbon atoms and the alcohol has one or more carbon atoms
Thus this document discloses the following features of opposed claim 1:- features 1, 2, 3 (b) and the quantity of additive in the fuel. However the feature of the ashless dispersant (3 (a)) has not been disclosed. I consider therefore, that the composition of opposed claim1 has not been disclosed in the citation. Hence WO 94/17160 does not render claims 1 to 10 of the opposed application as lacking in novelty.
US 3,273,981 - Exhibit EE-7, published 20 September 1966
This citation discloses lubricity additives and additive mixtures concerned with improving lubricity of hydrocarbon liquids, such as gasolines, aviation turbo fuel, kerosene, diesel fuel, lubricating oil and mineral lubricating oils. Also disclosed are distillate fuels boiling in the range 50 to 750oF (10oC to 398.88oC) and possessing sulphur content below 0.01% by weight. The additives consist of a mixture comprising:
· a polycarboxylic acid of between about 9 and about 42 carbon atoms per molecule between the carboxylic acid groups,
· a partial ester of a polyhydric alcohol of between about 3 and about 8 carbon atoms per molecule and containing between about 3 and about 6 hydroxyl groups per molecule, and
· a C12 to C22 fatty acid
The quantity of additive in fuel has been set at between .001 and 1.0 weight percent (equating to 10 to 10,000 ppm). Further the opponent indicates that the citation also refers to the use of other known additives (such as detergents, dispersants, corrosion inhibitors, etc.) in conjunction with the additives of the invention.
On comparing the disclosure of the citation with the opposed application I find that features 1, 2, 3 (b) and the quantity of additive in the fuel have been disclosed. The feature 3 (a), which is the ashless dispersant has not been disclosed. Though general references are made to detergents, dispersants, and corrosion inhibitors, there is no clear and unmistakable direction teaching the use of the ashless dispersant of the opposed invention in the claimed composition. Further the weight ratios of component (a) to component (b) of the opposed claim are not disclosed in the citation. I consider that this citation does not render opposed claim 1 and appended claims 2 to 10 as lacking in novelty.
US 3,287,273 - Exhibit EE-8, published 22 November 1966
This citation discloses lubricity additives/additive concentrates concerned with improving lubricity of hydrocarbon liquids, such as gasolines, aviation turbo fuel, kerosene, diesel fuel, lubricating oil and mineral lubricating oils. Amongst the fuels used are disclosed distillate fuels boiling in the range 50 to 750oF (10oC to 398.88oC) and possessing sulphur content below 0.01% by weight. The additives comprise a reaction product between a dicarboxylic acid and an oil insoluble glycol, wherein the dicarboxylic acid is preferably characterised by having at least 9 carbon atoms between the respective carboxylic groups. It is also preferred that the number of carbon atoms between the respective carboxylic groups of the dicarboxylic acid be in the range from 12 to 42. The additives also have molecular weights below about 1700. The citation also discloses that the additives of the invention may be employed in conjunction with a variety of other additives commonly used in fuels. Typical additives being:
· oxidation inhibitors such as phenothiazine or phenyl-a-naphthylamine;
· rust inhibitors such as lecithin or petroleum sulfonates;
· sorbitan monooleate;
· detergents such as the barium salt of isonoyl phenol sulfide;
· pour point depressants such as copolymers of vinyl acetate with fumaric acid esters of coconut oil alcohols;
· viscosity index improvers such as polymethacrylates;
· dispersants, dyes, dye stabilizers, haze inhibitors, antistatic agents, and the like.
The quantity of additive in fuel has been set at between 0.001 and 0.4 weight percent (equating to 10 to 4,000 ppm).
On comparing the disclosure of the citation with the opposed application I find that features 1, 2, 3 (b) and the quantity of additive in the fuel have been disclosed. The feature 3 (a), which is the ashless dispersant has not been disclosed. Though general references are made to detergents, dispersants, corrosion inhibitors, and other additives, there is no specific teaching of the ashless dispersant of the opposed invention, nor is there any direction or suggestion that this ashless dispersant must be present in the claimed composition. Further the weight ratios of component (a) to component (b) of the opposed claim are not disclosed in the citation. I consider that this citation does not render opposed claim 1 and hence also appended claims 2 to 10 as lacking in novelty.
Kulinowski et al - Exhibit EE-10, publicly available in Australia on 27 May 1994
This document compares the performance and emission requirements of various diesel fuels (including low sulfur fuels) with and without additives. The performance of a number of additives, including lubricity additives, is discussed but no specific additive is disclosed. Reference is made to commercially available additives but no specific chemical composition is disclosed. I do not consider that this document renders claims 1 to 10 of the opposed application as lacking in novelty.
Inventive Step/Obviousness
Subsections 7(2) and 7(3) of the Patents Act 1990 indicate that a claimed invention will lack an inventive step if it is obvious to a person skilled in the relevant art in the light of:
(a) common general knowledge in the art; or
(b) common general knowledge considered together with information publicly available 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.
Aickin J set out the following test for obviousness in Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at page 286:
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
Application of this test in light of Subsections 7(2) and 7(3) of the Patents Act 1990, would require:
· a determination of the problem sought to be solved by the opposed patent specification
· a determination of the non-inventive worker in the field (or the person skilled in the relevant art) in Australia
· a determination of the common general knowledge in Australia at the priority date (4 May 1994)
The problem identified in the opposed patent specification relates to issues arising from the requirement to use low sulphur fuels. The specification identifies loss of lubricity of the fuels and increased wear on engines using the fuel. The specification further indicates that certain prior art additives also suffered from poor solubility in fuel oils at low temperatures leading to partial precipitation of the additives.
The problem lies in the area of fuel additives. The hypothetical skilled, non-inventive worker in the field would constitute a team of workers such as chemists/ chemical engineers with expertise in the fields of fuels and fuel additives.
The common general knowledge (hereinafter also referred to as cgk) relevant to the question of obviousness was described by Aickin J. in Minnesota Mining& Manufacturing Co v Beiersdorf (Australia) Limited, (1980) 144 CLR 253 at 292 as:
"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 first step to applying the tests set out above for determining inventive step would involve the determination of those declarants who were persons skilled in the relevant art as set out above.
The opponent relied mainly on the submissions of professor Trimm for the ground of lack of inventive step. He indicates that his declaration is based on his own knowledge and experience in the petroleum industry which he says has been gained through his professional conduct and reading of scientific literature and other relevant publications as well as discussions with colleagues in Australia and around the world. I note that Professor Trimm has not worked directly in the field of additives nor does he have any publications/papers in that field. Hence I consider that he could provide background knowledge in the art or point to relevant publications or conferences/papers which could provide evidence as to what constituted cgk in the art in Australia. The other declarants for the opponent, with skills in the relevant art, do not have Australian experience and though they can provide some background art I do not consider them to be skilled addressees in the art in Australia.
The applicant relied on the declarations of Rinaldo Caprotti and Iain More. However as these declarants have not worked in Australia I cannot consider them as skilled addressees of the art in Australia. However Rinaldo Caprotti is the inventor of the opposed application and I shall consider his submissions with regard to the background art prior to the invention.
The opponent submitted in the statement of grounds and particulars that the documents raised against the ground of novelty formed part of the common general knowledge in Australia. They also referred to specific disclosures in those documents as constituting part of the cgk in Australia. Further they submitted that certain disclosures made in the opposed specification indicated that certain features of the claimed invention constituted part of the cgk in Australia.
I shall now consider the documents raised by the opponent against novelty to determine if they constituted part of the cgk in Australia. The Caprotti document - Exhibit EE-9 shall not be considered as this document was published well after the priority date of the opposed application. The remaining documents consist of 5 patent specifications and a technical publication. There is no evidence to show that these documents had become part of the cgk in Australia at the relevant priority date. In particular the courts have taught:
1. In general
"... it is clear that individual patent specifications and their contents do not normally form part of the relevant common general knowledge .."
General Tire & Rubber Company v Firestone Tyre and Rubber Company Ltd (1972) RPC 457 at page 4822. However, as was stated in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at page 294:
"There may be some fields of endeavour in which those who work therein study and make themselves familiar with all patent specifications as they become available for inspection in one or in many countries so that what was contained therein becomes common general knowledge in that particular trade or field of manufacture in the country in question." Examples are provided by Vidal Dyes Syndicate Ltd v Levinstein Ltd. (1912) 29 RPC 245 at pages 279-280 and British Celanese Ltd v Courtaulds Ltd. (1933) 50 RPC 259 at page 280.
None of the declarants have indicated that any of the above documents were considered to be part of the cgk. Also no evidence has been provided to show that the skilled addressee in Australia had studied and made themselves familiar with the teachings of the documents in question. I consider that these documents did not form part of the cgk in Australia at the relevant date.
The courts have taught that common general knowledge is “the background knowledge and experience which is available to all in that field in considering the making of new products or making of improvements in old products” (ICI Chemicals and Polymers Ltd v Lubrizol Corporation Inc (1999) 45 IPR 577 at 599). The common general knowledge is not restricted to matters that the skilled worker would carry around in their head, but extends to information that is habitually consulted by the skilled worker in the field:
“That is not to say that the whole of the content of ‘common general knowledge’ need be within the conscious awareness of the hypothetical non-inventive skilled worker. For example, there may be publications of technical and detailed information that are habitually consulted by the hypothetical skilled worker. Notwithstanding that the hypothetical skilled worker would not have the whole of the contents of such reference material in his or her mind, such information should be regarded as part of common general knowledge.”
Aktiebolaget Hässle v Alphapharm Pty Ltd (2000) 51 IPR 375 at 391,The opponents relied on Bristol-Myers Squibb Co v F.H. Faulding & Co Ltd (2000) 97 FCR 524, 46 IPR 553 at 564, to argue that the admitted prior art in the specification is part of the common general knowledge. In essence the teaching of this decision indicates that if the specification asserts a matter is common general knowledge, then the Commissioner can accept that assertion without independent verification.
The present application refers to three prior art documents. The description at page 2 of the specification refers to the three documents individually with each disclosure giving a brief description of their invention. At no stage does the opposed application assert that the teaching of these documents or the documents themselves form part of the common general knowledge in the art. I do not consider that the specification is asserting that any one of these documents is part of the common general knowledge.
I will now look to the evidence of the declarants to establish what information is part of the common general knowledge. The opponent's declarant, Professor Trimm says he possessed the following knowledge at the priority date:
1. I and others in the petroleum industry in Australia at the priority date, were well aware that sulphur levels in diesel fuel were being reduced in order to reduce diesel engine exhaust emissions.
2. I was well aware though that a reduction in sulphur levels in diesel fuel sometimes lead to unacceptably low levels of fuel lubricity, which adversely affects engine durability.
3. I was further well aware that lubricity improvers could be added to restore acceptable levels of fuel lubricity and that such additives could be used in conjunction with other additives to produce additive packages that gave desired fuel improvements without significant adverse impact on other fuel characteristics.
4. In my experience, lubricity improvers have been shown to be effective over a range of fuels including aviation turbine fuels, gasoline and diesel fuels. It would seem obvious to me that other lubricity improvers shown to be effective in one of those (para ends here).
5. I was also aware at the priority date that lubricity improvers, such as esters of the type disclosed in component (b) (iii) of the opposed application were useful for this purpose. These have been disclosed in a number of the documents discussed above.
6. I have concluded from my reading of the documents and from my own knowledge that it was known to use ashless dispersants together with lubricity improvers. In my opinion, this combination is therefore not novel and does not involve invention.
The applicant attacked the above statements raising the following matters:
· No indication of the extent to which sulphur content is being reduced and the specific level to which it is being reduced
· The lubricity improvers referred to have not been specified
· The documents referred to have not been specified
· It is the Hearing Officer who decides on matters of novelty and inventive step not Professor Trimm
I have previously stated that none of the declarants have indicated which documents constituted the cgk in Australia. Professor Trimm has only spoken of the move to reduce the sulphur levels in diesel fuel being known amongst those involved in the petroleum industry. All other matters are raised as personal knowledge. Further his final conclusion is based on a reading of the documents and his own knowledge. There is no indication that his own knowledge was part of the cgk and possessed by others working in the field of fuel additives. Further there is no indication of how the cgk (if any) when combined with any of the cited documents taught towards the invention thus rendering the opposed invention as lacking inventiveness. Thus I can consider that the only cgk in Australia at the relevant date was, "the move to reduce the sulphur levels in diesel fuel."
I consider that the documents cited would 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. I will now consider whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.
The problem identified in the opposed patent specification relates to issues arising from the requirement to use low sulphur fuels. The specification identifies loss of lubricity of the fuels and increased wear on engines using the fuel. The specification further indicates that certain prior art additives also suffered from poor solubility in fuel oils at low temperatures leading to partial precipitation of the additives.
I have considered the citations raised under novelty and determined that none of them rendered the opposed invention as lacking in novelty. I have also determined that none of these documents were part of the common general knowledge in Australia. The only cgk in Australia at the relevant date was established as, "the move to reduce the sulphur levels in diesel fuel." Given the problem identified in the opposed application and the cgk set out above I do not consider that the skilled addressee when looking at each citation individually and combining it with the cgk would arrive at the claimed invention as a mater of routine. In particular there is no suggestion or teaching towards the combination of additive components (a) and (b) in the suggested ratios for further combination with the specified low sulfur fuel. Hence I conclude that the opponent has not shown that the claims of the opposed application lack an inventive step.
Manner of Manufacture
The opponent submitted the following in the statement of grounds and particulars:
(a) This invention as claimed is not a manner of manufacture within the meaning of Section 6 of the Statute of Monopolies because the specification of the Opposed Application (the "specification") does not disclose an inventive idea or step, having regard to any one or more of:
1. The disclosure of the specification; and
2. The common general knowledge in Australia before the earliest priority date of each claim of the specification referred to in the particulars of Ground 3 hereof.
(b) Claims are directed towards a mere collocation of known integers having no new working interrelationship. The opposed application states that there is an unexpected synergy between the two components (a) and (b) as demonstrated by Examples using a PIBSI and an ester formed between ethylene glycol and dilinoleic acid. The alleged synergy does not extend across all the alternatives in the claims. The Opponent has carried our (sic) trials of alternative acids and esters as defined in Section (b) of Claim 1 of the Opposed Application and will show in the evidence-in-support that no unexpected synergy was detected. Insofar as Claim 1 and dependent claims cover combinations of components (a) and (b) which are non-synergistic then the claims are not directed towards a manner of manufacture.
(c) Ashless dispersants as defined in Section (a) of Claim 1 of the Opposed Application were well known for use in diesel fuels at the priority date. Likewise lubricity additives and/or corrosion inhibitors comprising an acid or an ester of a carboxylic acid and an alcohol as defined in Section (b) of Claim 1 of the Opposed Application well known for use in diesel fuels including, including low-sulphur diesel fuels, at the priority date. Therefore the use of (a) and (b) does not constitute a new use of a known substance but merely takes advantage of previously known properties and therefore the claims are not directed towards a manner of manufacture.
I will consider the issues in the order in which they have been raised. Looking at item (a); the opponent has failed to show that the claims are lacking in novelty. They have been unable to establish the opposed invention as being obvious in light of the compositions disclosed in the citations raised when combined with the established cgk. Thus the opponent has relied on novelty and inventive step issues to support raising a ground of manner of manufacture. The teaching of the courts in Bristol Meyers v FH Faulding 46 IPR 553 at paragraph 45, Black CJ and Lehane J (Finkelstein J concurring) are pertinent:
Indeed, there is in our view an element of unreality, in a case such as the present, even in posing the question in that form. Although Philips suggests that there may be such cases (it does not decide the question, because obviousness was not pressed), it is not easy to envisage circumstances in which a claimed invention may lack the threshold requirement of inventiveness, but yet involve (for the purposes of s 18(1)(b)(ii)) an inventive step. This is not a case, like Philips, where there was no attack on the patents on the ground of obviousness. It was, instead, a case where expert evidence, including evidence as to common general knowledge, was available (and was given). Where the Court has evidence on the basis of which it can make a finding about common general knowledge, and the other information referred to in s 7(2) and s 7(3), and about what would or would not have been obvious to persons skilled in the relevant art, it must be only rarely that it will be appropriate to find (by resort to a "threshold test") lack of inventiveness on the face of a specification. In our opinion this is not a case where such a finding is justified.
If this ground is consequential upon a finding of want of novelty or inventive step, it is fully encompassed by those other grounds – and a finding of lack of inventiveness on the face of the specification would not be justified. For the above reasons I consider that the opponent has been unable to show that the opposed invention does not constitute a manner of manufacture.
Item (b) refers to the opposed composition being a mere collocation of integers. The opposed specification has provided some examples showing how the described composition gives a better performance than prior art compositions. The opponent contends that there are some instances where compositions falling within the ambit of the claimed composition do not provide a synergistic effect. I consider that the working of the invention once the composition has been made is an issue of utility. As utility is not a ground of opposition I cannot address this issue under the grounds of opposition as currently set out. I do not find that the claimed composition is a mere collocation of integers. Hence I cannot conclude that the claimed composition does not constitute a manner of manufacture.
Item (c) refers to the use of ashless dispersants and lubricity additives being well known in the art for use in low sulphur diesel fuels. The opponent has shown that these uses were individually disclosed in patent documents and hence are part of the public knowledge. However they have not shown that use of these additives in combination constituted part of the common general knowledge and hence were well known in Australia. The opponents have not established that the claimed composition could be arrived at via the cgk or combination of cgk and relevant citations. I do not consider that the present opposed composition is merely a new use of a known substance. I conclude that the opponent has not established that the opposed composition does not constitute a manner of manufacture.
SUMMARY
The opponent has been unsuccessful on the grounds of fair basis/section 40, novelty, inventive step and manner of manufacture.
COSTS
Both parties submitted that costs should follow the event. The opponent has been unsuccessful on all grounds. The opponent has established that the claims of the opposed accepted application are not entitled to priority from the basic document. However this has not impacted adversely on any of my findings on the grounds of opposition raised by the opponent.
Consequently I find in favour of the applicant and award costs against the opponent, The Associated Octel Company Limited.
Jacob Elijah
Delegate of the Commissioner of PatentsPatent attorneys for the applicant : Watermark, Perth
Patent attorneys for the opponent : Houlihan2, Melbourne
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