Exxon Chemical Patents Inc v the Lubrizol Corporation

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application : No 666346 in the name of EXXON CHEMICAL PATENTS INC

Title: REFRIGERATION WORKING FLUID COMPOSITIONS

Action: Opposition under section 59 of The Patents Act 1990 by THE LUBRIZOL CORPORATION. Objections to an application by the opponent to serve further evidence [regulation 5.10(4)] and request to amend the statement of grounds and particulars. Hearing of the procedural and the substantive matters.

Decision: Issued .
Abstract

The application by the opponent to serve further evidence allowed. The request to amend the statement of grounds and particulars also allowed.

The opposition succeeds on the ground of lack of novelty.

The grounds of "not fairly based" (s. 40), not a manner of manufacture and lack of an inventive step, found not established.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 666346 by EXXON CHEMICAL PATENTS INC, opposition thereto under section 59 of The Patents Act 1990 by THE LUBRIZOL CORPORATION. Objections to an application by the opponent to serve further evidence [regulation 5.10(4)] and request to amend the statement of grounds and particulars. Hearing on the procedural and the substantive matters.

BACKGROUND

Patent application 666346 in the name of Exxon Chemical Patents Inc (hereinafter referred to as "Exxon") was filed on 3 December 1992 as PCT/US92/10408 claiming a convention priority date of 6 December 1991.

666346 was advertised accepted on 8 February 1996. The Lubrizol Corporation (hereinafter referred to as "Lubrizol") filed a notice of opposition on 9 May 1996 followed by a statement of grounds and particulars on 8 August 1996.

The specification was amended after acceptance by a statement of amendments advertised as allowed on 24 September 1998.

The support, answer and reply evidence stages in the opposition were completed on 28 January 1999.

In a decision ([1999] APO 75), I allowed Exxon to serve certain further evidence in response to the evidence-in-reply but refused to allow Exxon to serve certain additional (second) further evidence.

On 21 February 2000, Lubrizol applied to adduce further evidence and requested to amend the statement of grounds and particulars. An amended statement of grounds and particulars was filed on 21 February 2000 (followed by another on 2 March 2000 which differed only by correction to a typographical error). On 13 March 2000, Exxon filed notice of objection to the application to adduce further evidence.

At a hearing held in Canberra on 29 November, 30 November and 1 December 2000, Exxon was represented by Mr Richard McCormack of counsel instructed by Mr Richard Baddeley, patent attorney of Watermark, Perth. Lubrizol was represented by Mr Justin Gleeson, senior counsel, instructed by Dr Elizabeth Sutherland, patent attorney of Callinan Lawrie, Melbourne.

THE APPLICATION TO SERVE FURTHER EVIDENCE

The application to adduce further evidence made on 21 February 2000 stated that the nature of the further evidence and the grounds for making the application were set forth in an accompanying statutory declaration by Michael Houlihan, patent attorney of Callinan Lawrie. In that declaration Mr Houlihan said that Lubrizol's US instructing patent attorney, Mr Samuel Laferty, had advised that the two references (US 4851144 and Australian Patent 653570) had only come to light following a search by Lubrizol in the gathering of evidence in respect of the appeal against "the ICI 685005 case". That is, the references had not come to light through an active search for references in the present opposition but in respect of another matter against another party in the same area of technology. Further elaboration of the details of how those references came to light and of the circumstances surrounding the declaration by Dr Jolley dated 21 February 2000 were provided in a statutory declaration dated 2 November 2000 by Samuel Laferty. At the hearing, Mr Gleeson elaborated on the relevance of the new material.

By letter dated 13 March 2000, Exxon objected to the application made by Lubrizol on 21 February 2000 to adduce further evidence. Submissions in support of the objection filed on 14 March 2000 and at the hearing made the following points:

- the material filed on 21 February 2000 by Lubrizol goes considerably beyond merely responding to the further evidence allowed to be served by Exxon in a decision of a delegate of the Commissioner issued 3 December 1999;
- the new material could have been uncovered at a much earlier stage by any reasonably diligent search;

- new factual issues will require reply;

- A newly introduced document is relied upon for alleged lack of “whole of contents” novelty but copies have not been supplied of the basic applications from which that document derives its priority dates.

DECISION (on the application to serve further evidence)

Subregulations 5.10(4) and (5) of the Patent Regulations 1991 provide the statutory basis for the Commissioner to allow further evidence to be served. These subregulations are as follows:

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

(5) The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:
(a)    if he or she proposes to grant an application by a party – is reasonably satisfied that the other party has been notified of the application; and
(b)   if he or she proposes to act on his or her own motion – ensures that the parties are notified of the proposed action; and
(c)    in either case:
(i)gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and
(ii)is reasonably satisfied that a direction, an extension of time or the serving of further evidence is appropriate in all the circumstances.”

I note that I can only allow an application to serve further evidence if I am reasonably satisfied that it is appropriate in all the circumstances. That the Commissioner has a broad discretion in this regard is apparent from Ferocem Pty Ltd v Commissioner of Patents, (1994) 28 IPR 243. From Imperial Chemical Industries PLC v Mitsubishi Gas Chemical Co, 29 IPR 285, considerations which inter alia may be relevant to exercising such discretion include:

Has the party applying to serve further evidence shown that the evidence could not have been obtained with reasonable diligence at an earlier stage?

Is the evidence such that, if given, it would probably have an important influence on the result of the case?

Is the evidence such as is presumably to be believed, i.e. is it apparently credible, though not necessarily incontrovertible?

Would allowance of the application to serve further evidence cause unnecessary protraction of the opposition?

Would there be an injustice done to either party?

There may also be other relevant factors, such as the public interest not only in having a serious opposition determined on its merits but also that a matter in a state of uncertainty be resolved as expeditiously as possible.

Would granting of the application made by Lubrizol on 21 February 2000 to serve further evidence be appropriate in all the circumstances?

The further evidence sought to be adduced comprises a 5-page statutory declaration dated 21 February 2000 by Dr Scott T Jolley (the “Jolley 3” declaration) together with the following exhibits:

STJ-9: US 4851144 (“Dow patent”)
STJ-10: AU 10243/92 (“CPI specification”)

I note that not only is Exhibit STJ-9 the same as Exhibit STJ-5 to the “Jolley 2” declaration dated 27 January 1999 but also that reference is made to US patent 4851144 at page 4 of the specification of presently opposed 666346.

Copies of the 2 basic applications from which AU 10243/92 derives its priority were handed up at the hearing. Following an adjournment, Mr McCormack advised that Exxon did not dispute the priority dates claimed for AU 10243/92.

On the face of it, the “Jolley 3” declaration constitutes:

-     response to the “Krevalis 2” declaration;
-     comment on US 4851144 additional to that already provided in “Jolley 2”, and;
-     allegation of lack of “whole of contents” novelty on the basis of not previously referred to document AU 10243/92.

I consider that:

-     Lubrizol has indicated how new material came to light but has not shown that it could not have been obtained with reasonable diligence at an earlier stage;
-     AU 10243/92 is sufficiently relevant to the subject matter of 666346 such as to be potentially likely to have an important influence on the outcome of the present proceedings;
-     There is nothing to suggest that any of the further evidence is other than apparently credible but not necessarily incontrovertible;
-     Allowance of the application to serve further evidence will not cause significant protraction of the opposition or injustice to either party;
-     The public interest in having the opposition determined on its merits would best be served by allowing the further evidence to be adduced.

My assessment of the relative weightings attributable to the above considerations is that I believe that the balance is in favour of allowing the request. I so advised the parties at the hearing and further advised that I would allow Exxon to serve evidence in response to that further evidence. In response to that invitation, Exxon handed up a statutory declaration by Dr Martin A Krevalis dated 20 September 2000 (“Krevalis 3”). Copies of that declaration had already been supplied “without prejudice” to Lubrizol and the Commissioner prior to the hearing. Mr Gleeson indicated no objection and, being satisfied that it was solely in response to “Jolley 3”, I allowed “Krevalis 3” to be served.

THE REQUEST TO AMEND THE STATEMENT OF GROUNDS AND PARTICULARS

Following my decision that I allowed the service (in February 2000) of further evidence, Exxon advised at the hearing that they would not be pursuing their objection to the request by Lubrizol to file the amended statement of grounds and particulars dated 2 March 2000.

A further amended statement of grounds and particulars was filed on behalf of Lubrizol on 11 December 2000. The Commissioner gave a copy of that amended statement to the patent applicant and invited representations thereon but none were received within the time allowed.

I note that the amendments are reflective of the service of further evidence and consider that there is no impediment to their allowance in accordance with the provisions of regulation 5.9.

I allow the amendments filed in March 2000 and December 2000 to the statement of grounds and particulars.

I turn now to the substantive issues of the section 59 opposition.

THE GROUNDS OF OPPOSITION

Since the patent application was filed under the Patents Act 1990, the present opposition is proceeding under the provisions of section 59 of that Act and Chapter 5 of the Regulations. The grounds identified in the statement of grounds and particulars are that 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.

THE SPECIFICATION

The specification indicates that the invention relates to refrigeration working fluid compositions comprising mixtures of fluorocarbon refrigerant and certain polyol ester lubricants having suitable viscosities and which are miscible with the refrigerant at low temperatures.

The specification describes the background to the invention thus:

"Cooling systems of the mechanical vapour recompression type, including refrigerators, freezers, heat pumps, air conditioning systems, and the like, are well known. In such devices, a refrigerant of suitable boiling point evaporates at low pressure, taking heat from the surrounding zone. The resulting vapour is then compressed and passed to a condenser where it condenses and gives off heat to a second zone. The condensate is then returned through an expansion valve to the evaporator, so completing the cycle.
It is recognised that currently used refrigerants which contain chlorine, such as dichlorodifluoromethane, will be replaced by chlorine-free refrigerant fluids because of the adverse effect of the chlorinated materials upon the atmospheric ozone layer. Tetrafluoroethane isomers and in particular 'Refrigerant 134a', which is 1,1,1,2-tetrafluoroethane, are now considered desirable fluids for use in refrigeration systems.
Refrigeration working fluids are required to have a lubricant which is compatible and miscible with the refrigerant so that moving parts of the system are properly lubricated. Heretofore, such lubricants have been composed of hydrocarbon mineral oils which are miscible with the chlorine-containing refrigerant fluids and which provide effective lubrication.
The use of tetrafluoroethane refrigerants has created a need for new lubricants, since mineral oils are not compatible with these materials. This need is well recognised in the art and there are numerous recent publications and patents disclosing various types of synthetic lubricants which are said to be compatible with tetrafluoroethane refrigerant fluids. Esters of polyols are being particularly emphasised as being suitable for use with the tetrafluoroethane refrigerants, especially Refrigerant 134a."

The specification goes on to refer to a number of patents dealing with the problem of R134a lubricant compatibility, and then states:

"The prior art summarised above presents a conflicting picture of which lubricants are suitable for use with tetrafluoroethane refrigerants. The present inventors have found that, with respect to polyol esters of alkanoic acids, their suitability for use as compatible lubricants with tetrafluoroethane refrigerants, in particular R134a, is governed by certain parameters related to the structure and chain length of acids used to esterify the polyols and that these parameters have not been recognised by the extensive prior art teachings in the field."

The specification continues:

"The present invention is based on the discovery that esters of monopentaerythritol, technical grade pentaerythritol (which contains 7-14% by weight dipentaerythritol, up to 2% tripentaerythritol and the balance monopentaerythritol), and trimethylolpropane will provide esters having suitable viscosity ranges and miscibility values of -20ºC when used with certain C₇-C₁₀ branched monoalkanoic acids or mixtures of C₇-C₁₀ branched and linear monoalkanoic acids, provided the acid mixture has a certain effective carbon chain length and, when esters of mono, di-, or tri-pentaerythritol are used, a minimum amount of methyl branching as defined below. The allowed maximum value for the effective carbon chain length varies with the particular polyol used. The selection of a particular polyol is dependant upon the ester lubricant viscosity which one needs to obtain, and the viscosity depends upon the end use application for the refrigerant lubricant composition, which mixtures are referred to herein as refrigeration working fluids, i.e., admixtures of refrigerant, e.g., R134a, and polyol ester lubricant.
This invention is further based on the discovery that the use of branched C₇-C₁₀ monocarboxylic acids having a certain effective carbon chain length and, except for trimethylolpropane esters, a degree of methyl branchiness is required and provides to the ester lubricant both the desired viscosity range at 40ºC and suitable miscibility with tetrafluoroethane refrigerants, preferably R134a, at low temperatures, i.e., -20ºC or less. While R134a is the preferred refrigerant for use in this invention, the term "tetrafluoroethane" as used herein is meant to apply to both CF₃CH₂F and CHF₂CHF₂. Effective carbon chain length as used herein refers to the length of the longest continuous carbon chain in the acid molecule. …. For mixtures of acids, average effective carbon chain length (AECL) is the weighted average of the individual effective carbon chain lengths for every acid in the mixture of acids.
An essential aspect of this invention is that the branched C₇-C₁₀ alkyl monocarboxylic or monoalkanoic acid have at least 50% or more methyl branches based on the total number of branched alkyl groups, when the acid is esterified with monopentaerythritol, technical grade pentaerythritol or dipentaerythritol. …. For trimethylolpropane esters, other alkyl branched acids are satisfactory, but 50% or more methyl branching is preferred.
…. Thus it is not the total number of carbon atoms in the acid or the relative amounts of branched acids or linear acids which provide esters which, when admixed with R134a, have satisfactory miscibility values, rather it is the effective carbon chain length of the acid or the average effective carbon chain length of a mixture of acids which are the key parameters, and the effective carbon chain length parameter will vary somewhat depending upon the polyol which is being employed to form the ester."

The compositions of the invention are then described in relation to 4 specific Examples:

Example 1: Esters of monopentaerythritol with various acids and mixed with R134a;
Example 2: Esters of trimethylolpropane with various acids mixed with R134a;
Example 3: Esters of technical grade pentaerythritol with various acids mixed with R134a;
Example 4: Esters of dipentaerythritol with various acids mixed with R134a.
The ester viscosity, miscibility temperatures, miscibility value and AECL values are given in Tables 1 to 4.

THE CLAIMS

The specification, as amended after acceptance by statement of amendments advertised as allowed on 24 September 1998, has 4 independent claims (numbers 1, 4, 7 and 11), there being 12 claims altogether:

"1. A refrigeration working fluid comprising 5-55 parts by weight of a synthetic ester lubricant and about 95-45 parts by weight of a tetrafluoroethane refrigerant, the ester having a viscosity range of from 26 cSt. to 114 cSt. at 40ºC and the working fluid having a miscibility value of -20ºC or less, said miscibility value being the highest temperature at which immiscibility occurs over the composition range of said working fluid, wherein said ester is prepared by reacting monopentaerythritol with an acid mixture consisting of up to 73% by weight of a linear C₇-C₁₀ alkyl monocarboxylic acid and 27% by weight or more of a branched C₇-C₁₀ alkyl monocarboxylic acid, said branched acid containing 50% or more of branched methyl groups based on the total number of branched alkyl groups which are pendant to the longest linear carbon chain in said branched acid and said acid mixture having an average effective carbon chain length equal to or less than 6.2.
2. The fluid of claim 1 wherein the branched chain acid in the mixture is 3,5,5-trimethylhexanoic acid.
3. The fluid of claim 1 wherein said linear C₇-C₁₀ alkyl monocarboxylic acid is present in an amount of between 4.25 to 73% by weight of the total acid mixture and said branched C₇-C₁₀ alkyl monocarboxylic acid is present in an amount of between 27 to 95.75% by weight of the total acid mixture.
4. A refrigeration working fluid comprising 5-55 parts by weight of a synthetic ester lubricant and 95-45 parts by weight of a tetrafluoroethane refrigerant, the ester having a viscosity range of from 26 cSt. to 130 cSt. at 40ºC and the working fluid having a miscibility value of -20ºC or less, said miscibility value being the highest temperature at which immiscibility occurs over the composition range of said working fluid, wherein said ester is prepared by reacting technical grade pentaerythritol with an acid mixture consisting of up to 67% by weight of a linear C₇-C₁₀ alkyl monocarboxylic acid and 33% by weight or more of a branched C₇-C₁₀ alkyl monocarboxylic acid, said branched acid containing 50% or more of branched methyl groups based on the total number of branched alkyl groups which are pendant to the longest linear carbon chain in said branched acid and said acid mixture having an average effective carbon chain length equal to or less than 6.0, and said technical grade pentaerythritol containing 85-92% by weight monopentaerythritol, 14-7% by weight dipentaerythritol and up to 2% by weight tripentaerythritol.

5. The fluid of claim 4 wherein the branched chain acid in the mixture is 3,5,5-trimethylhexanoic acid.
6. The fluid of claim 4 wherein said linear C₇-C₁₀ alkyl monocarboxylic acid is present in an amount of between 4.25 to 67% by weight of the total acid mixture and said branched C₇-C₁₀ alkyl monocarboxylic acid is present in an amount of between 33 to 95.75% by weight of the total acid mixture.
7. A refrigeration working fluid comprising 5-55 parts by weight of a synthetic ester lubricant and 95-45 parts by weight of a tetrafluoroethane refrigerant, the ester having a viscosity range of from 10 cSt. to 55 cSt. at 40ºC and the working fluid having a miscibility value of -20ºC or less, said miscibility value being the highest temperature at which immiscibility occurs over the composition range of said working fluid, wherein said ester is prepared by reacting trimethylolpropane with an acid mixture consisting of up to 85% by weight of a linear C₇-C₁₀ alkyl monocarboxylic acid and 15% by weight or more of a branched C₇-C₁₀ alkyl monocarboxylic acid, and said acid mixture having an average effective carbon chain length equal to or less than 7.0 with the proviso that said acid mixture excludes 2-ethylhexanoic acid when viscosity of said ester is less than 20cSt.
8. The fluid of claim 7 wherein the branched chain acid in the mixture is 3,5,5-trimethylhexanoic acid.
9. The fluid of claim 7 wherein said linear C₇-C₁₀ alkyl monocarboxylic acid is present in an amount of between 5 to 85% by weight of the total acid mixture and said branched C₇-C₁₀ alkyl monocarboxylic acid is present in an amount of between 15 to 95% by weight of the total acid mixture.
10. The fluid of claim 7 wherein the acid mixture is C₇ acids composed of 60-75 wt.% n-heptanoic acid, 18-30 wt.% 2-methylhexanoic acid, 5-10 wt.% 2-ethylpentanoic acid and 0-5 wt.% other heptanoic acid isomers.
11. A refrigeration working fluid comprising 5-55 parts by weight of a synthetic ester lubricant and 95-45 parts by weight of a tetrafluoroethane refrigerant, the ester having a viscosity range of from 80 cSt. to 120 cSt. at 40ºC and the working fluid having a miscibility value of -15ºC or less, said miscibility value being the highest temperature at which immiscibility occurs over the composition range of said working fluid, wherein said ester is prepared by reacting dipentaerythritol with an acid mixture consisting of up to 90% by weight of a linear C₇-C₁₀ alkyl monocarboxylic acid and 10% by weight or more of a branched C₇-C₁₀ alkyl monocarboxylic acid, said branched acid containing 50% or more of branched methyl groups based on the total number of branched alkyl groups which are pendant to the longest linear carbon chain in said branched acid and said acid mixture having an average effective carbon chain length equal to or less than 5.7.
12. The fluid of claim 11 wherein said linear C₇-C₁₀ alkyl monocarboxylic acid is present in an amount of between 4.25 to 90% by weight of the total acid mixture and said branched C₇-C₁₀ alkyl monocarboxylic acid is present in an amount of between 10 to 95.75% by weight of the total acid mixture."

EVIDENCE

The evidence in support consists of statutory declarations by:

- Dr Scott T. JOLLEY (with Exhibit STJ-1) a resident of USA who states that he is employed by Lubrizol as a research chemist; and

- (in relation only to the publication of documents) Elizabeth EADIE (with Exhibits EE1 to EE5).

The evidence in answer consists of statutory declarations by:

- Dr Martin A. KREVALIS (with Exhibit MAK) a resident of USA who states that he is employed by Exxon as a senior staff chemist; and

- Dr Dietrich F. HUTTENLOCHER (with Exhibit DFH-1) a resident of USA who states that he is a consultant specialising in the chemistry and lubrication of refrigerant systems.

The evidence in reply is a statutory declaration by:

Dr Scott T. JOLLEY (the second Jolley declaration, with Exhibits STJ-1 to STJ-8).

The further evidence adduced by Exxon, which I allowed to be served in my decision issued 3 December 1999, is a statutory declaration dated 27 August 1999 by Dr Martin A. KREVALIS (the second Krevalis declaration, with Exhibits MAK-2 to MAK-8).

The further evidence adduced by Lubrizol, which I have allowed to be served in the course of the present decision, is a statutory declaration by Dr Scott T. JOLLEY dated 21 February 2000 (the third Jolley declaration, with Exhibits STJ-9 and STJ-10);

The evidence in response (to the third Jolley declaration), again which I have allowed to be served in the course of this decision, is a statutory declaration dated 20 September 2000 by Dr Martin A. KREVALIS (the third Krevalis declaration).

SUBMISSIONS

I summarise Mr Gleeson's main submissions on behalf of the opponent as follows:

Section 40

- The term “fluorocarbon refrigerant” is speculative and not fairly based since the invention has not been described in relation to any refrigerant other than R134a.

- It is not clear whether the "acid mixture" defined in claims 1, 4, 7 and 11 necessarily consists of both components identified or whether the so-called "mixture" can consist of one component only, i.e., 100% branched C₇-C₁₀ alkyl monocarboxylic acid component. On this point, note that there is no exemplification in 666346 of a branched C9 acid being mixed with another acid. Also, Examples 1 to 4 of 666346 refer to Tables 1 to 4 which show the acid component of the ester as being 100% of 3,5,5-trimethylhexanoic acid.

Manner of Manufacture

- It is apparent on the face of the specification of 666346 that the claimed subject matter lacks the necessary quality of inventiveness to constitute a manner of manufacture: Phillips v Mirabella 183 CLR 655.

- Pages 1 and 2 of 666346 disclose that it was already known that polyol esters were a suitable class of lubricants for use with the refrigerant R134a.

- Pages 2 to 4 of 666346 describe ten prior specifications which teach suitable types of polyol esters for the purpose.

- At page 5 of 666346 the esters are limited to those derived from four specified alcohols. The prior art cited in 666346 shows that each of those alcohols is well known for the purpose.

- At page 11 of 666346 there are disclosed 3 preferred acids/acid mixtures. The first is directly disclosed in the prior art, the second and third are minor variants on acids directly disclosed in the prior art.

- What 666346 discloses as an invention amounts to no more than a use of known alcohols together with known acids to produce known esters which have known properties when used with known refrigerants. As such the necessary quality of inventiveness is lacking on the face of the specification.

- Even to the extent that 666346 provides a description of parameters which may lead to the choice of various esters which cannot be specifically identified in the prior art, those esters still fall within more general classes clearly identified by the prior art. The parameters constitute a mere discovery or mere optimisation of previous known combinations.

Novelty

- The ground of lack of novelty is pressed in the light of the disclosures of the following patent documents:

(a) US 5021179 (ZEHLER);
(b) EP 435353 ( NIPPON OIL);
(c) EP 458584 (UNICHEMA CHEMIE);
(d) US 4851144 ((DOW);
(e) AU 653572 (CPI ENGINEERING SERVICES);
(f) AU 638710 (LUBRIZOL). Save for that narrow range of compositions where the refrigerant is 50% - 55% (and the lubricant 45% - 50%), every acid, and therefore every ester and working fluid within 666346 would necessarily fall within the disclosure of 638710. While values of miscibility, viscosity and AECL are not specifically provided in 638710, compositions made up according to the Examples of 666346 will always have these values. Therefore they are inherent to those specific compositions and need not be specified in 638710 since they already exist.

- It appears that Exxon may seek to suggest that the subject matter of 666346 constitutes a "selection". In response to that:

(a) If the compositions disclosed in 666346 (or some of them) have been disclosed before, then novelty is lacking and it is no answer that there is a selection (see IG Farbenindustrie AG's Patents (1930) 47 RPC 289 at 321, and EI Du Pont De Nemours & Co (Witsiepe's)Application [1982] FSR 303).
(b) The so-called "IG Farben criteria" for a valid selection patent are not met:
·    even if the Lubrizol patent (638710), or the other prior art, described the compatible lubricants broadly and even if (which is denied) 666346 correctly defines a narrower class, there is still no special advantage or unexpected property which characterises that defined class; the "suitable" viscosity and miscibility values were matters which were clearly appreciated in 638710 and generally in the art as being desirable features of the lubricant and the working fluid.
·    The 4 independent claims define the boundaries of the so-called selection in significantly varying ways such that there is no unifying inventive concept (because which of the 4 alcohols is chosen may have a dramatic influence on the miscibility and viscosity of the ester, the chosen AECL and branchiness cannot be a unifying "special technical feature"). There is no "solution" that has been hit on. At best 4 patents should have been applied for;
·    The first Jolley declaration and pages 9 and 10 and Exhibit STJ-8 to the second Jolley declaration show that there are disclosures in a number of prior art patent documents of polyol esters outside the claims of 666346 which would meet the specifications of 666346 for miscibility and viscosity and, in the reverse, that there are some polyol esters within the claims of 666346 which would not meet those specifications.

Inventive Step

- Pages 1 to 4 of 666346 contains admissions that that the following were part of the common general knowledge (CGK);

(a) mechanical vapour recompression cooling systems;
(b) chlorine refrigerants would be replaced by chlorine-free refrigerants;
(c) hydrocarbon mineral oils, although suitable for use with chlorine-containing refrigerants, would not be suitable with R134a;
(d) polyol esters were known as a class of lubricants suitable for use with R134a;
(e) there were a number of patent documents in the field discussing the types of and parameters of polyol esters suitable for use as lubricants with R134a.

- In the light of that CGK, there was no inventive step involved in specifying the particular acids and the very broad parameters contained in 666346. It was, as described by expert witness Jolley, a mere optimisation by scientific trial and error of parameters and classes of acids already well recognised in the art.

- Particularly there is no inventive step in the light of:

· the disclosures in AU 638710 (Lubrizol) of the right alcohols, the importance of branched acids and in particular 3,5,5-trimethylhexanoic acid;

- At least the "worth trying" test is met.

- It is sufficient that, without any inventive step, compositions within the claims of 666346 could have been made.

I summarise Mr McCormack's main submissions on behalf of the patent applicant as follows:

Section 40

- In the claims the term "tetrafluoroethane refrigerant" is fairly based on the description wherein it is stated at page 6 lines 7 to 10:

"While R134a is the preferred refrigerant for use in this invention, the term 'tetrafluoroethane' as used herein is meant to apply to CF₃ CH₂F and CHF₂CHF₂."

See the comments, relating to paragraph 32 of the first Jolley declaration, at page 12 of the first Krevalis declaration and page 9 of the Huttenlocher declaration.

Manner of Manufacture

- the opponent has not demonstrated that the claims are directed to a mere new use of a known product.

- it is evident on the face of the specification that the particular combinations of specified lubricants and specified refrigerants defined in the claims meet the threshold of invention and quality of invention requirements prescribed in such cases as Philips v Mirabella (1995)(supra) and Advanced Building Systems v Ramset Fasteners (1998) 40 IPR 243.

Novelty

- The following features of the fluids of the invention (see the first and second Krevalis declarations and the Huttenlocher declaration) are all of equal importance:

·    the acid/alcohol combinations to produce the esters,
·    the miscibility determination,
·    the AECL criterion,
·    the viscosity criterion,
·    the methyl branching criterion (in the case of the pentaerythritol esters - claims 1 to 6, 11 and 12).

- None of the documents cited by the opponent disclose all of the above features of any of the particular working fluids the subject of the invention of 666346. For a composition claim to be anticipated it is not enough that the subject matter be within the scope of a broad prior disclosure; there must be a specific disclosure of the combination of each and every element.

- Jolley relies upon his Australian Patent No 638710 but that document, which defines a genera of esters of "breathtaking scope", provides no disclosure of the working fluids of the invention of 666346 and no guidance for determining which esters disclosed therein would be sufficiently miscible with fluorine-containing hydrocarbons to be useful as lubricating oils and which would not.

- None of the documents cited by the opponent provide an enabling disclosure [see Merrell Dow Pharmaceuticals v HN Norton (1996) 33 IPR 1] of the subject matter of the claims of 666346. There is then no need to consider whether the invention is one of selection.

- Even if selection had to be relied upon, the claims of 666346 would remain novel because the so-called "IG Farben criteria" are met. Thus, Drs Krevalis and Huttenlocher, as well as the opposed specification, have shown that the substantial advantages gained by the use of the refrigeration working fluids of the invention of 666346 are:

(a) miscibility over the compositional range;
(b) relatively low viscosity at 40⁰C; and
(c) avoidance of undesirable light acids (with less than 7 carbon atoms) which cause problems such as odour, inferior chemical stability, increased hygroscopicity, and inferior thermal stability.

All refrigeration working fluids recited in the present claims have these advantages by definition (see exhibit STJ-5 to the second Jolley declaration, which exemplifies acids outside the scope of the claims of 666346). Re "all members of the selected subclass possessing the advantage" see also:

·    Huttenlocher declaration, page 4 (C.1);
·    The reference to "undesirable C5 acids" at paras 61-63 at page 16 of the first Krevalis declaration
·    Paras 58,59 at pages 22,23 of the second Krevalis declaration;
·    The paragraph bridging pages 10 and 11 of 666346.

The quality of a special character peculiar to the selected group of refrigeration fluids resides in the acid structure and chain length being important to the achievement of the advantages.

Inventive Step

- ICI v Lubrizol, (1999) 45 IPR 577-616 is the decision of a single judge of the Federal Court relating to Australian patent No 638710 to Lubrizol. That patent has a priority date of 25 April 1989 and is in the same field of art as the invention of 666346. Some of Emmett J.'s findings are particularly relevant to the matters presently at issue. In that decision at page 583:

"The American Society of Heating Refrigeration and Air Conditioning Engineers (ASHRAE) is the peak professional association for the refrigeration industry in the United States. ASHRAE regularly publishes a handbook for the benefit of its members."

At page 600, "the knowledge contained in the 1986 ASHRAE handbook" is included in a list of the common general knowledge (CGK) in Australia at the relevant date in the field of refrigeration engineering.

At page 605:

"The 1986 ASHRAE handbook was the last published before the priority date for the patent. Chapter 8 of the 1986 ASHRAE handbook contained a warning that 'extreme caution must be exercised in considering a synthetic oil for refrigeration purposes'. The chapter went on to say that while, in mineral oils, certain characteristics are taken for granted, and are only cursorily examined, within the same chemical class, the properties of industrial synthetic compounds can vary widely depending on the compound's structure. Hence, every conceivable property should be determined for each formulation and extensive accelerated system tests should be made prior to actual field use.
It is significant that chapter 8 referred only to HCFC's and made no reference to HFC's. The warnings contained in the chapter are hardly consistent with a conclusion that the choice of particular synthetic lubricants with HFC's generally and R134a in particular was obvious at the time of publication of the 1986 edition of the ASHRAE handbook.
Further when dealing with the topic "Oil-Refrigerant Solutions", Chapter 8 noted that, as a result of the high solubilities of halogenated refrigerants, the lubricating fluid can no longer be treated as a pure oil, but rather as an oil-refrigerant solution whose properties are markedly different from those of a pure oil. If only oil properties are considered, an erroneous picture of the system is obtained. When the oil circulates through the system and returns from the evaporator to the compressor, a similar situation exists. The highest viscosity does not occur at the lowest temperature, because the oil contains a large amount of dissolved refrigerant. As the temperature increases, the oil loses some of the refrigerant and the viscosity reaches a maximum at a point away from the coldest spot in the system. Similar to the lubricating fluid, the properties of the refrigerant are also affected. The vapour pressure of an oil-refrigerant solution, for example, is markedly lower than that of the pure refrigerant. Those considerations emphasise that the choice of a synthetic lubricant for use with a refrigerant is something less than obvious."

The wording of chapter 8 of the 1990 ASHRAE handbook (Exhibit MAK-6), which was the last edition published before the priority date of the presently opposed application, is the same as Chapter 8 of the 1986 edition (Exhibit MAK-5). Thus at the priority date of 666346, the problems identified in chapter 8 of the ASRAE handbook still existed and their solution was not obvious.

- In both his first and second declarations, Dr Jolley asserts that the invention of 666346 could have been arrived at prior to 6 December 1991 by routine testing. However, his uncorroborated analyses amount to no more than a hindsight review of the exhibited documents and do not establish "obvious to try". Thus:

·    There is neither evidence as to what the motivation for undertaking routine testing would be nor what form such testing would take.
·    The prior art documents exemplify different refrigeration working fluids and different methodologies of measuring miscibility. Nothing is said in any document about the importance of average effective carbon chain length.
·    In their statutory declarations, both Drs Krevalis and Huttenlocher contest and rebut the contention by Dr Jolley that the acid mixtures are arrived at by mere optimisation or routine testing.
·    Dr Jolley contends that testing of miscibility at 10-20% defines properties over the compositional range. In direct contrast, US 5021179 (Exhibit EE-1) at col 7 lines 38-41 accepts that measurement over the entire compositional range is a “very stringent requirement”. As such that reference teaches away from the opposed claims.
·    At page 5 of the second Jolley declaration he refers to US 4851144 (STJ-5) that states on lines 33 to 36: “It is well known in the refrigeration industry that lubricant concentration in the refrigerant is limited to the range of about 10 to 20 % due to thermodynamic considerations”. That statement defines a problem which the invention of 666346 solves by formulating lubricants which are miscible with refrigeration working fluids over the whole compositional range.

· Undue experimentation would have been required by a chemist in the refrigerant oil field as late as 1991 to determine which esters of polyhydroxy compounds are sufficiently miscible with fluorine containing hydrocarbons to be useful as lubricating oils (see the Huttenlocher declaration).
· In American Cyanamid v Berk Pharmaceuticals, [1976] RPC 231, Whitford J. (at 257) found an endeavour involving a complex testing regime that was doubtful of ultimate success to be deserving of a monopoly.

DECISION (on the substantive opposition)

Section 40

(a) 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).

The unqualified term “fluorohydrocarbon” is asserted by the opponent to be speculative since 1,1,1,2 –tetrafluoroethane (R134a) is the only such refrigerant said in 666346 to have been actually tested. In fact the claims are limited to “tetrafluoroethane refrigerant” and there are thus only two possibilities: R134a or the other isomer R134 (1,1,2,2-tetrafluoroethane) both of which are referred to at lines 8 to 10 of page 6 in the description of 666346.

I think that this is hardly an instance of the applicant seeking protection well beyond the consideration given by the specification and I conclude that all of the claims are fairly based having regard to the issue raised by the opponent.

(b) The ambits of claims 1,4, 7 and 11 are asserted by the opponent to be unclear in that those claims are construable as including “a single component mixture” (on the face of it a contradiction in terms). This arises because the amount of the linear acid component of the mixture is defined only in terms of being “up to” a specified percentage, which definition would seem to include the amount of that component being zero.

In my view it is not readily apparent from the wording of the aforementioned claims themselves whether or not the “acid mixture” feature is necessarily characterised by the presence of a linear acid component.

“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.

In relation to this point, I note the following passage in the opposed specification at the top of page 23:

"The ester lubricants of the present invention may also be mixed and used as lubricants with tetrafluoroethane refrigerants to provide useful working fluids. Such mixtures may be desirable when specific viscosity ranges need to be achieved for a particular end use application, since blending esters allows more control in achieving the exact viscosity of the desired product. Blends of esters of the invention may comprise about 1-99 wt% of each ester and said blends will retain their miscibility values of -20⁰C or less, or -15⁰C or less, if dipentaerythritol is a component of the blend."

The use of the term "may" in the context of the above statement suggests that the lubricant can be either a mixture of esters or a single ester. Also from the Examples of 666346, it appears that working fluids of the invention include those where the lubricant is a single ester, e.g. the use 3,5,5-trimethylhexanoic acid (a branched acid) as the sole ester lubricant in the working fluids of the invention disclosed in Tables 1 to 3 relating to Examples 1 to 3.

Given that the body of the specification of 666346 describes refrigeration working fluids of the invention wherein the lubricant can be either a mixture of esters or a single ester, I construe the term "acid mixture" in claims 1,4,7 and 11 as including the case where the amount of linear acid is zero and the lubricant is a single branched acid. That construction is relevant to the ground of novelty which I will come to later.

Before moving on to the issues relating to manner of manufacture, novelty and inventive step, I shall first determine which features of the claimed invention 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 1,4 7 and 11 (the independent claims) can be broken down into the following features:

(A) A refrigerant working fluid;

(B) said working fluid having a miscibility value of -20⁰C or less (claims 1, 4 and 7) or -15⁰C or less (claim 11), said miscibility value being the highest temperature at which immiscibility occurs over the compositional range of said working fluid,

and said working fluid comprising:

(D) 95-45 parts by weight of a tetrafluoroethane refrigerant;

and

(E) wherein the ester:

·    has a viscosity range of 26 to 114 cSt. at 40⁰C and is prepared by reacting monopentaerythritol with an acid mixture consisting of up to 73% by weight of a linear C₇-C₁₀ alkyl monocarboxylic acid and 27% by weight or more of a branched C₇-C₁₀ alkyl monocarboxylic acid, said branched acid containing 50% or more of branched methyl groups based on the total number of branched alkyl groups which are pendant to the longest linear carbon chain in said branched acid and said acid mixture having an average effective carbon chain length equal to or less than 6.2 (claim 1), OR;
·    has a viscosity range of 26 to 130 cSt. at 40⁰C and is prepared by reacting technical grade pentaerythritol with an acid mixture consisting of up to 67% by weight of a linear C₇-C₁₀ alkyl monocarboxylic acid and 33% by weight or more of a branched C₇-C₁₀ alkyl monocarboxylic acid, said branched acid containing 50% or more of branched methyl groups based on the total number of branched alkyl groups which are pendant to the longest linear carbon chain in said branched acid and said acid mixture having an average effective carbon chain length equal to or less than 6.0, and said technical grade pentaerythritol containing 85-92% by weight monopentaerythritol, 14-7% by weight dipentaerythritol and up to 2% by weight tripentaerythritol (claim 4), OR;
·    has a viscosity range of 10 to 55 cSt. at 40⁰C and is prepared by reacting trimethylolpropane with an acid mixture consisting of up to 85% by weight of a linear C₇-C₁₀ alkyl monocarboxylic acid and 15% by weight or more of a branched C₇-C₁₀ alkyl monocarboxylic acid, and said acid mixture having an average effective carbon chain length equal to or less than 7.0 with the proviso that said acid mixture excludes 2-ethylhexanoic acid when viscosity of said ester is less than 20cSt (claim 7), OR;
·    has a viscosity range of 80 to 120 cSt. at 40⁰C and is prepared by reacting dipentaerythritol with an acid mixture consisting of up to 90% by weight of a linear C₇-C₁₀ alkyl monocarboxylic acid and 10% by weight or more of a branched C₇-C₁₀ alkyl monocarboxylic acid, said branched acid containing 50% or more of branched methyl groups based on the total number of branched alkyl groups which are pendant to the longest linear carbon chain in said branched acid and said acid mixture having an average effective carbon chain length equal to or less than 5.7 (claim 11).

I consider that features (A), (B), (C), (D) and (E) are essential in that they all appear to contribute to the way in which the invention works.

Manner of Manufacture

In relation to section 18(1)(a) of the Patents Act 1990, the following was expressed in the statement of grounds and particulars:

"Polyol esters derived from pentaerythritol monopentaerythritol, dipentaerythritol, and trimethyolpropane were known to have lubricant properties which made them useful as lubricants in fluid compositions for use in compression refrigeration which comprise fluorohydrocarbons. Accordingly the use of known polyol esters to provide lubrication in known compositions for the reason that the esters possessed known properties which rendered them useful for that purpose renders the alleged invention not a manner of manufacture."

This was argued as "a matter on the face of the specification" and as "a mere discovery".

The High Court in NV Philips Gloeilampenfabrieken v Mirabella International Ltd (1995) 183 CLR 655 stated that manner of manufacture can be a threshold question:

"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" [page 664]

However, in relation to the question of whether a claimed invention has the necessary quality of inventiveness in the light of the prior body of knowledge discussed in the specification, the Full Bench of the Federal Court in Bristol-Myers Squibb Company v F H Faulding & Co Ltd [2000] FCA 316 at paragraph 45:

"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 grounds 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 s7(3), and about what would or would not have been obvious to persons skilled in 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."

I believe that the issue of inventive step has been addressed adequately in the present proceedings by way of the statement of grounds and particulars, evidence in support, evidence in answer, evidence in reply, further evidences and submissions over the 3-days of the hearing. Consequently I consider it inappropriate for me to determine whether or not there is lack of inventiveness merely on the face of the specification.

In Reynolds v. Herbert Smith & Co. Ltd., 20 RPC 123 at 126, Buckley J. on the distinction between a discovery and an invention:

"Discovery adds only to the amount of human knowledge, but it does so only ... by disclosing something. ... Invention also adds to human knowledge, but not merely by disclosing something. Invention necessarily involves also the suggestion of an act to be done, and it must be an act which results in a new product, or a new result, or a new process, or a new combination for producing an old product or an old result."

In the case of the present invention, on the face of it there is an act ( the identification and manipulation of certain parameters) which produces the new result of being better able than hitherto to identify materials suitable for use as lubricants with terafluoroethane refrigerants. Given that, I find that the present invention cannot be dismissed as a mere discovery.

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 CGK in the art ( if any) in the patent area before the priority date;
(iii) identify information in 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 information in the citation.

The problem-solution approach to the obviousness question has been developed in order to minimise the "benefit of hindsight" issue (see Rhone-Poulenc Rorer S.A.'s Application [1995] APO 50. The problem-solution concept is evident in judicial decisions such as MinnesotaMiningand Manufacturing Co v Beiersdorf ( Australia) (1980) 144 CLR 253 (e.g. at 298: "this solution to the known problem") and Winner v Ammar Holdings (1993) 113 ALR 63 (e.g. at 67: "The problem and the solution were readily apparent"). Once the problem has been formulated, and the common general knowledge or prior art base has been determined, the question of whether the claimed solution is obvious must be addressed. The test for obviousness is whether it would have been a matter of routine to proceed to the claimed invention.

"It is still correct to say that a valid patent may be obtained for something stumbled upon by accident, remembered from a dream or imported from abroad, if it otherwise satisfies the requirements of the legislation. What is important is that the patent itself should involve an inventive step, whether or not it was consciously taken by the patentee and whether or not it appeared obvious to the patentee himself. 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."

[Wellcome Foundation v V.R. Laboratories (Aust.) (1981) 148 CLR 262, 286]

An approach for determining what would be a matter of routine, was enunciated in Beecham Group Ltd's (Amoxycillin) Application, [1980] RPC 261 at 290-291:

"It is clearly established that, for a particular step or process to be obvious .... it is not necessary to establish that its success is clearly predictable: Johns-Manville Corporation's Patent [1967] RPC 479 at 494. It will suffice if it is shown that it would appear to anyone skilled in the art but lacking in inventive capacity that to try the step or process would be worthwhile: Technograph PrintedCircuits v. Mills & Rockley ( Electronics) [1972] RPC 346 per Lord Reid at 355 and 356; Johns- Manville (supra), per Lord Diplock LJ at 493 and 494; Tetra Molelectric v. Japan Imports [1976] RPC 541 at 581, 583-4."

"Worth trying"? ICI v Lubrizol (supra), Emmett J at paragraph 115:

"However, the test of whether something was 'worth trying' involves questions of degree … If the expectation of success is sufficiently predictable, and the effort involved is not going to be very great, it may well be that there is no inventive step. On the other hand, if the expectation of ultimate success is doubtful and the effort involved is great, the person undertaking the work should be entitled to a monopoly."

On the basis of the specification of 666346 and the surrounding facts, the technical problem underlying the present application was that there was a need to identify parameters characteristic of those synthetic lubricants which are suitable across the entire compositional range for use with tetafluoroethane refrigerants in compositions for use in cooling systems of the mechanical vapour recompression type. This problem lies in the art of working fluids comprising a refrigerant and a lubricant for use in mechanical vapour recompression cooling systems.

Although whether or not certain information was CGK in the art in Australia at the priority date was disputed (see below), it was not disputed that the following was part of the relevant CGK:

·    mechanical vapour recompression cooling systems;
·    because of the Montreal Protocol, arising from the perceived threat to the ozone layer, chlorine-containing refrigerants such as R-12 had to be phased out and replaced in the long term by chlorine-free refrigerants such as R-134a;
·    mineral oils were suitable for use with chlorine-containing refrigerants such as R-11 or R-12, but were not suitable for use with chlorine-free refrigerants such as R-134a;
·    there were several classes of synthetic lubricants, and many variations within each class, which were possible for use in a variety of particular applications;
·    the knowledge contained in the 1990 ASHRAE handbook.

More contentiously, the opponent submitted that the disclosures of the prior art in the patent documents referred to in the specification of 666346 were part of the CGK because of the following statement in paragraph 30 of the Bristol-Myers (supra) judgement:

“If a patent application, lodged in Australia, refers to information derived from a number of prior publications referred to in the specification, or generally to matters which are known, in our view the Court – or the Commissioner – would ordinarily proceed upon the basis that the knowledge thus described, is in the language of s 7(2) of the 1990 Act, part of “the common general knowledge as it existed in the patent area”. In other words, what is disclosed in such terms may be taken as an admission to that effect.”

At pages 2 to 4 of the specification of 666346 ten different patents are discussed individually, but the only common learning from those patents identified in the specification is that set out in the paragraph bridging pages 4 and 5:

"The prior art summarised above presents a conflicting picture of which lubricants are suitable for use with tetrafluoroethane refrigerants … ."

In my view that statement is far removed from being an admission of a general principle . Thus the specification does not disclose (in the terms of the passage quoted above from Bristol-Myers) "information derived from a number of prior publications referred to in the specification."

The invention of the presently opposed application lies in the same technical field as the invention the subject of the decision of the Full Bench of the Federal Court in ICI v Lubrizol (supra). In that decision at paragraph 67:

"Undoubtedly the skilled worker, or skilled team, is hypothetical. Nevertheless, we cannot resist the impression that there is a degree of unreality about all this, going well beyond reasonable hypothesis. There was no evidence, as we understand it, of any work in fact done in Australia on the selection of particular lubricants for use with particular kinds of refrigerants."

Similarly, no evidence has been provided on that point in the present proceedings. Given that, I find it hard to envisage that a hypothetical skilled worker in the art in Australia at the priority date would as a matter of course have kept up to date on the latest developments in the art by studying relevant patent literature as it was issued. I therefore cannot agree with the submission by the opponent that the patent documents (mostly published less than 2 years prior to the priority date) referred to in the presently opposed specification were singly or collectively part of the CGK of the skilled worker in Australia at the priority date.

I find that it has not been established that it was part of the CGK in Australia at the priority date that synthetic ester lubricants were suitable for use with tetrafluoroethane refrigerants. That being the case, the assertions of expert witness Dr Jolley of Ohio, USA to the effect that the invention of 666346 was merely the outcome of routine optimisation in the light of such information are not relevant to the determination of the inventive step issue in Australia.

I turn now to the opponent’s submission that the presently claimed invention would have been obvious to the person skilled in the art in the light of the CGK considered together with the information in the cited patent document AU Patent No. 638710 (LUBRIZOL).

At page 5 of the declaration by Dr Huttenlocher he states:

" … the opposed patent application is restricted to the recognition that desirable products over a wide viscosity range can be produced from branched and mixed monobasic acids with seven to ten carbon atoms, by manipulating average effective carbon chain length, thereby avoiding the use of lower molecular weight and high molecular weight polymers with potential lack of solubility and/or miscibility as well as other detrimental properties. The importance of the structure and chain length of acids used to esterify the polyols has been appreciated to advantage by Exxon as distinguished from the documents EE-1 to EE-5, which do not show appreciation of the importance of these factors."

In the passage bridging pages 3 and 4 of the second Jolley declaration he states:

“the average effective carbon chain length issue is simply another way of stating what was disclosed and claimed in Australian Patent No. 638710. For example, see claim 1 and the discussion of the carboxylic acids involved at page 12 and onwards. I note that in one embodiment at the top of page 13, a preferred embodiment is straight chain of 8 to about 11 carbon atoms. Therefore it can be seen from this that it was appreciated prior to the priority date of the opposed patent application that the structure of the monocarboxylic acids, the average effective carbon chain length and the viscosity range and miscibilty value of the esters were of importance. I believe that the opposed patent application is merely an optimisation of the esters claimed in Australian Patent No 638710.”

At paragraphs 10(c) and 11 of the second Krevalis declaration he states:-

“… many of the esters claimed in Patent 638710 show poor to no miscibility (ie limited solubility) in refrigerants such as R134a, and again this is because, to my knowledge, the importance of structure and chain length of the acid used to esterify the polyol was not recognised as important in the refrigerant art, as at 6 December 1991.”
In Patent 638710, for instance, all branched chain acids are claimed to give effective refrigerant oils. However, many polyol esters of branched chain acids will not function as effective lubricants in refrigerant applications, due to poor to no miscibility with HFC refrigerants. For example, in the case of … application no. 666346 … a polyol ester of technical grade pentaerythritol with iso-nonanoic acid (AECL = 7.2), is not miscible with R134a.”

In the third Jolley declaration he refers to certain passages in 638710 as being indicative that the importance of AECL and branchiness was in fact appreciated at the relevant time in the art of refrigerant/lubricant working fluids. In the third Krevalis declaration he responds as follows:

“Overall, I find the statements of the ‘710 patent referred to in the third Jolley declaration too vague to indicate to me that the importance of acid structure and chain length was known in the relevant field of art as at 6 December 1991.”

On that point I find the analysis by Dr Krevalis more worthy of acceptance than that of Dr Jolley, since I am not convinced that there is any explicit or implicit disclosure in the 638710 patent of any particular importance to be attributed to the combination of acid structure and chain length parameters in relation to suitability of lubricants for use with tetrafluoroethane refrigerants.

Mr McCormack directed my attention to the decision by Emmett J relating to Australian patent no. 638710 in ICI v Lubrizol (supra) at paragraph 140 which reads as follows:

"There were numerous possible classes of chemical compounds within which a solution might lie. Further, it was not simply a matter of identifying a relevant class but rather of finding the particular compounds or characters of compounds within the class which might solve the problem. Many classes of compounds contain possible solutions. To reject PAGs and seek a solution from first principles by investigating a whole range of compounds is indicative of an inventive step. There was a degree of trial and error in Dr Jolley's work, much of which can be characterised as routine. However, the breadth of approach to experimentation, the rejection of PAGs as the necessary solution and the deduction of principles from the experimentation are indicative of an inventive step; see WelcomeFoundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR at 280-1 and 286-8; 1A IPR 268."

I agree with Mr McCormack that the situation there set forth by Emmett J appears to be on all fours with the nature of the experimental work carried out and principles derived in relation to the presently opposed application.

I believe that it has not been shown that the non-inventive person skilled in the relevant art, addressing the problem which I have identified above in the light of the CGK and the disclosures of Australian patent no 638710, would have any motivation to consider it worth trying to solve that problem by the particular identification and manipulation of specific parameters relating to the acid structure and chain length of the acid component of polyol ester synthetic lubricants of the claimed invention of 666346 so as to be better able to identify which of such materials are suitable for use as lubricants with tetrafluoroethane refrigerants.

It is for the opponent to make good the ground of obviousness and lack of inventive step. I find that it has not done so.

Novelty

The generally accepted test for anticipation is the "reverse infringement" test as set out in MeyersTaylor v. Vicarr Industries (1977) 137 CLR 228 at 235:

"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."

Infringement of a patent occurs when each and every one of the essential integers of the claim have been taken (Rodi and Wienenberger AG v. Henry Showell Ltd [1969] RPC 367).

To establish anticipation all that is required is to see whether if one is to carry out the teaching of the prior document, that action would inevitably constitute an infringement of the patent in suit. It is not necessary that the prior art be equal in practical utility or disclose the same invention in all respects as the patent in suit. (Decision of the English Court of Appeal in Glaverbel SA v. British Coal Corp. [1995] F.S.R. 254 at 256).

At the hearing , Mr McCormack particularly drew my attention to the statements by Sachs LJ in General Tire and Rubber v Firestone Tyre and Rubber [1972] RPC 457 at 485,486 including:

“To anticipate the patentees claim, the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented … A sign post however clear upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee.”

And the statement by Cooke J in Beecham Group v Bristol Myers, 1 NZLR 192:

“If such a compound has not been made before, its properties often cannot be predicted with any confidence; and where that is the case we do not consider that the invention claimed can fairly or accurately be described as ‘published’, even if a skilled chemist would realise that to make the compounds by routine means would be practicable. A making of the compound and a discovery of its properties is necessary before the “invention” has occurred and can be published.”

Lack of novelty was pressed by the opponent in the light of each of the following documents:

(a) US Patent No. 5021179 (ZEHLER et al), published 4 June 1991 (Exhibit EE-1) (against claim 4 of 666346);
(b) EP 435253 (NIPPON OIL), published 3 July 1991 (Exhibit EE-3) (against claims 1 and 7 of 666346);
(c) EP 458584 (UNICHEMA CHEMIE) published 27 November 1991 (Exhibit EE-5) (against claim 1 of 666346);
(d) US Patent No. 4851144 (DOW CHEMICAL COMPANY) published 25 July 1989 (Exhibit STJ-5, the same as STJ-9) (against claims 1 and 7 of 666346);
(e) AU Patent No. 653572 (CPI ENGINEERING SERVICES) published 23 July 1992, priority dates 17 January 1991 and 3 October 1991, (Exhibit STJ-10) ("whole of contents " novelty against claims 1, 4 and 7 of 666346);

(f) AU Patent No. 638710 (LUBRIZOL) published 1 November 1990 (Exhibit STJ-2) (against claims 1 to 12 of 666346).

(a) US 5021179 (ZEHLER)

Lubrizol submitted that Claims 4 and 5 of the presently opposed application are not novel in the light of the following disclosure of US 5021179:

Example “I-C₉” at Column 9 Table 2 of the citation, wherein there is disclosed a refrigeration working fluid characterised by:

·    R-134a refrigerant (see Column 9 line 23 of US 5021179);
·    I-C₉= > 90% 3,5,5-trimethylhexanoic acid (see Notes for Table 2);
·    The alcohol is 85% pentaerythritol and 15% dipentaerythritol (see Notes for Table 2);
·    AECL of the acid = about 6 (admitted at page 14 of the first Krevalis declaration);
·    Ester viscosity in the range 26 to 130 cSt at 40⁰C (see Column 7 line 60 to Column 8 line 40);
·    Miscibility value of –20⁰C or less over the compositional range (admitted at page 14 of the first Krevalis declaration).

At paragraph 2.3 of the Huttenlocher declaration he concedes that US 5021179 identifies some acids in the range encompassed by 666346 but asserts that none of the examples are directed to the acid mixtures recited in the claims of 666346. However that appears to be a misreading of claim 4 which requires the branched acid be at least 33% but permits it to be up to 100% of the acids, and the linear acid can be up to 67% but can be nil. I find lack of novelty is established since that composition would reverse infringe claims 4 and 5 of 666346.

Lubrizol also pressed lack of novelty in the light of the Example in US 5021179 at Column 9 Table 2 wherein “I-C₇” is said to be about 65% 2-methylhexanoic acid and about 20% 2-ethylpentanoic acid (these are both branched C₇ acids, together making up about 85% branched C₇acids and the first acid making up more than 50% methyl branching) together with about 10% heptanoic acid (which is a linear C₇acid) together with a balance of other C₇ acids. I find lack of novelty is established since that composition would reverse infringe claim 4 of 666346.

(b) EP 435253 (NIPPON OIL)

I have previously construed that the amount of linear acid in claim 1 of 666346 can be zero, the so-called acid mixture can be a single branched acid and that acid can be 3,5,5-trimethylhexanoic acid (see claim 2). Where a preferred ester of 666346 is combined in a refrigeration working fluid with R134a I presume that it follows that the acid structure, viscosity and miscibilty requirements specified in the corresponding claim(s) are met. I find that claims 1 and 2 lack novelty in that they would be reverse infringed by the refrigerant working fluid of Example 2 of EP 435253 wherein the ester of pentaerythritol and 3,5,5-trimethylhexanoic acid is disclosed to be combined with various refrigerants of which R-134a is particularly preferred (see page 8 lines 34-35).

Similarly, because I previously have construed that the amount of linear acid in claim 7 of 666346 can be zero, I find that claims 7 and 8 lack novelty in that they would be reverse infringed by the refrigerant working fluid of Example 9 of EP 435253 wherein the ester of trimethylolpropane and 3,5,5-trimethylhexanoic acid is disclosed to be combined with various refrigerants of which
R-134a is particularly preferred (see page 8 lines 34-35).

Lubrizol submitted that Claim 1 of the presently opposed application is not novel in the light of the following disclosure of EP 458584:

Example 1 of the citation (referring to ester UCN 90034) , wherein there is disclosed a refrigeration working fluid characterised by:

·    R-134a refrigerant (see page 2 line 34 and page 3 line 22 of EP 458584);
·    Branched C₇ carboxylic acid (see Note 7 at the top of page 5);
·    The alcohol is monopentaerythritol (see Note 7 at the top of page 5);
·    Ester viscosity 29.5 cSt at 40⁰C (see page 4 line 14);
·    Miscibility value less than –20⁰C (see page 4 line 14).

However, there is no disclosure of the chain length or % methyl branching of the acid and I therefore find that it has not been established that claim 1 of 666346 would be reverse infringed by that composition.

(d) US Patent No. 4851144 (DOW CHEMICAL COMPANY)

At paragraphs 8 to 10 of the third Jolley declaration he asserts that the Control A Example of US 4851144 falls within claim 1 of 666346 and that the Control B Example falls within claim 7.

In response, at paragraph 21 of the third Krevalis declaration he states:

“ … I do not find the ‘144 patent relevant because:

(i)no information on low temperature miscibility is given;
(ii)no information on the nature of the acids is given; and
(iii)based on viscosity, it is, in my opinion, more likely that the acids used are linear acids and not branched acids.

Thus, given the carbon number range of these acids (C7 or C7-C9) and the fact that the acids are most likely linear with an AECL > 7, these esters would not fall within the scope of the claims of the Opposed Application”

I find that statement by Dr Krevalis to be consistent with the disclosures of US 4851144 and that lack of novelty in the light of that document has not been established.

(e) AU Patent No. 653572 (CPI ENGINEERING SERVICES)

This document was published on 23 July 1992, which date is after the priority date of the presently opposed application which is 6 December 1991. However the priority dates of AU 653572 are 17 January 1991 and 3 October 1991 both of which are earlier than the priority date of the presently opposed application. Copies of both of the basic documents upon which AU 653572 relies to support its priority dates were filed at the hearing. Following an adjournment, Mr McCormack advised that Exxon did not dispute the priority dates claimed for AU 653572. Furthermore, there was no submission to the effect that (what is colloquially known as) “Whole of Contents” novelty could not apply in this instance because of any of the relevant preconditions imposed by the Patents Act and Regulations not being satisfied.

The decision of Burchett J in Alcatel NV v Commissioner of Patents, 35 IPR 255-258, is authority that the authorities on novelty should be followed equally when considering “Whole of Contents” novelty issues.

At paragraph 33 of the third Krevalis declaration he states in relation to the disclosures of AU 653572:

“Two examples which bear more consideration are EXP-0522 which discloses trimethylolpropane (TMP) with branched C9 acid and EXP-0504 which is pentaerythritol (PE) with branched C9 acid. However, neither example discloses or suggests the specific AECL limitation recited in the claims of Exxon’s application.”

I generally agree with that statement by Dr Krevalis, with the exception where the branched C9 acid is 100% 3,5,5-trimethylhexanoic acid (see page 11 lines 17 to 23 of AU 653572), in which case the chain length requirements of claims 1 and 7 of 666346 are of course inherently met.

Because I previously have construed that the amount of linear acid in claim 1 of 666346 can be zero, I find that claims 1 and 2 lack novelty in that they would be reverse infringed by the refrigerant working fluid of Example EXP-0504 of AU 653572 wherein the ester of pentaerythritol and 3,5,5-trimethylhexanoic acid is disclosed to be combined with refrigerant R-134a (page 23 lines 19 to 21).

Similarly, because I previously have construed that the amount of linear acid in claim 7 of 666346 can be zero, I find that claims 7 and 8 lack novelty in that they would be reverse infringed by the refrigerant working fluid of Example EXP-0522 of AU 653572 wherein the ester of trimethylolpropane and 3,5,5-trimethylhexanoic acid is disclosed to be combined with refrigerant R-134a (page 23 lines 19 to 21).

(f) AU Patent No. 638710 (LUBRIZOL)

Mr Gleeson submitted that Examples of this citation specifically disclosed the essential features of the claims of 666346 with the exception of the values of miscibility of the working fluid, viscosity of the ester and AECL of the acid but that those values were inherent to those compositions.

I note that the “inherency of values” asserted by Mr Gleeson (apparently on the basis of statements by Dr Jolley at pages 3 and 4 of his second declaration) is not conceded by Dr Krevalis in his discussion of the disclosures of 639710 at paragraphs 4 to 33 of his second declaration. Furthermore, from a reading of 638710, I am not satisfied that there are “clear and unmistakable directions” to formulate any specific composition which it is unequivocally clear would meet the viscosity of the ester, AECL of the acid and miscibility of the working fluid requirements of any of the claims of 666346.

I find that lack of novelty in the light of AU 638710 has not been established.

CONCLUSION

I have allowed the application made on 21 February 2000 by the opponent to serve further evidence. I have also allowed the amendments filed in March 2000 and December 2000 to the statement of grounds and particulars.

I have found the grounds of "not fairly based" (s. 40), not a manner of manufacture and lack of an inventive step, to be not established.

I have found lack of novelty to have been established against certain claims of the presently opposed application as follows:

Claims 4 and 5 in the light of US 5021179;
Claims 1,2,7,and 8 in the light of EP 435253;
Claims 1,2,7 and 8 in the light of AU 653572.

To overcome that finding I allow Exxon sixty (60) days from the date of this decision to propose amendments to the specification.

If suitable amendments are not proposed within that time the application will be refused.

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.

I have allowed the application by Lubrizol to serve further evidence. However, I have found that evidence could have been obtained with reasonable diligence at an earlier stage. Consequently, in the matter of the further evidence, I award costs against The Lubrizol Corporation in accordance with Schedule 8.

The substantive opposition has succeeded on the ground of lack of novelty and I am not aware of any reason why costs should not follow that event. Consequently, in the matter of the section 59 opposition I award costs in accordance with Schedule 8 against Exxon Chemical Patents Inc.

Alan Moore
Delegate of the Commissioner of Patents

Patent attorneys for the applicant : Watermark, Perth
Patent attorneys for the opponent : Callinan Lawrie, Melbourne

[2001] APO 7

15 February 2001