ExxonMobil Chemical Company v Norsk Hydro ASA

Case •

[2004] APO 32

•

30 November 2004

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 714771 in the name of NORSK HYDRO ASA

Title:          A Microporous Crystalline Silico-Alumino-Phosphate Composition, Catalytic Material Comprising said Composition and Use of These for Production of Olefins from Methanol

Action:          Opposition by EXXONMOBIL CHEMICAL COMPANY under section 59 of the Patent Act 1990

Decision:          Issued  30 November 2004.

Abstract

The opponent raised grounds of manner of manufacture, novelty, inventive step and section 40/fair basis.  At the hearings the opponent pursued grounds of inventive step and section 40/fair basis only.

The invention is a microporous crystalline silico-alumino-phosphate (SAPO) composition, wherein the composition is a mixed phase product comprising silico-alumino-phosphates of AEI (SAPO-18) and CHA (SAPO-34) structure prepared in one batch crystallisation, not including mere physical mixtures.  The product after calcination in air at 550oC for 4 hours produces a characteristic X-ray diffractogram having at least the reflections as specified.  Under section 40 issues of fair basis, lack of clarity and sufficiency were raised.  The key issue raised by the opponent was that the claimed composition (for certain composition ranges) did not provide reflections within a specified range of angles in an X-ray diffractogram for SAPO-34/SAPO-18 intergrowths.  In particular the opponent claimed that the reflections did not appear across the entire range 4:1 to 1:4 of SAPO-34/SAPO-18 ratios.  Also claim 8 was said to lack clarity.  After a proper construction of the specification and claims and review of the evidence, the opposed application was found to comply with the requirements of section 40.  The opponent had been unable to show conclusively that the claimed composition did not provide the claimed reflections in the X-ray diffractogram.  Further, no laboratory results were provided to show that the invention did not provide the results claimed.

Five citations were raised against inventive step but none of them either individually or in combination with the common general knowledge disclosed or taught the composition as claimed in the opposed application.  The opposed invention was found not to be lacking an inventive step in light of either one of the citations when considered individually or when combined with the common general knowledge.

The opponent was unsuccessful on all grounds.  The power of the Commissioner to award costs is based on section 210 and regulation 22.8.  Subsequent to the filing of the notice of opposition (13 April 2000) and a statement of grounds and particulars (12 July 2000) amendments were proposed to the accepted specification whose allowance was advertised on 29 August 2002.  These amendments partially addressed some of the issues raised (including novelty) in the statement of grounds and particulars.  Accordingly costs were awarded in accordance with Schedule 8 against the applicant Norsk Hydro ASA and in favour of the opponent ExxonMobil Chemical Company until 29 August 2002.  Subsequent to 29 August 2002 including the hearing of 2 December 2003, costs were awarded in accordance with Schedule 8 against the opponent ExxonMobil Chemical Company and in favour of the applicant Norsk Hydro ASA.  As the request to file further evidence by the applicant at the first hearing led to filing of further evidence by both parties as well as the need for a second hearing; from 3 December 2003 onwards (including the second hearing) no award of costs were made and each party was directed to bear their own costs.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 714771 by NORSK HYDRO ASA and an opposition under section 59 of the Patents Act 1990 by EXXONMOBIL CHEMICAL COMPANY.

BACKGROUND

  1. Norsk Hydro ASA filed patent application No. 714771 under the provisions of the Patent Cooperation Treaty (PCT) on 8 October 1997.  The application claims priority from a Norwegian basic application 964276 filed on 9 October 1996.  The application was examined and advertised accepted on 13 January 2000.

  2. ExxonMobil Chemical Company filed a notice of opposition on 13 April 2000. A statement of grounds and particulars was filed on 12 July 2000. The statement of grounds and particulars was subsequently amended and the amendments allowed on 6 August 2001.  The service of evidence in support, evidence in answer and evidence in reply was completed on 26 June 2003.

  3. A hearing to deal with the substantive opposition was held in Melbourne on 2 December 2003.  David MacBeth, patent attorney, Phillips Ormonde & Fitzpatrick, Melbourne, represented the applicant.  Richard Baddeley, patent attorney, Watermark, Perth, represented the opponent.  The hearing was adjourned as the applicant sought to introduce further evidence.  After allowance of the request, the filing of further evidence and responses from both parties was completed on 5 April 2004.  The Hearing was reconvened in Melbourne on 3 August 2004.   David Tadgell assisted by Virginia Beniac Brooks, patent attorneys, Phillips Ormonde & Fitzpatrick, Melbourne, represented the applicant.  Richard McCormack of counsel assisted by Richard Baddeley, patent attorney, Watermark, Perth, represented the opponent.  Both parties were unable to complete their oral submissions.  The applicant was given two weeks from 3 August 2004 to file their remaining submissions relating to section 40 and submissions on costs.  Subsequent to receipt of the applicant’s submissions the opponent was granted two weeks from the receipt of those submissions to file their submissions in reply.  Finally the applicant was granted two weeks from receipt of submissions in reply to respond to any new matter.  Filing of all submissions was completed on 2 September 2004.  A request to amend the statement of grounds and particulars was filed on 28 July 2004.  The amendments were subsequently allowed on 24 September 2004.

    EVIDENCE

  4. Evidence in support consists of declarations made by:

    ·     An Verberckmoes, dated 26 June 2001 and exhibits AV-1 to 4.  She states that she is currently employed by the opponent company in Belgium as a chemist working in the field of zeolite synthesis and has held that position from June 1998.  She further states that she has a PhD (May 1998) in Applied Biological Science from the Katholieke Universiteit Leuven (Center for Surface Chemistry and Catalysis).  She also has a Masters Degree in Bio-engineering in Chemistry from the same university (October 1989-July 1994) where she majored in interphase chemistry.  She further claims that she received much of her training in the field of molecular sieves and zeolites at the Center for Surface Chemistry and Catalysis at the Katholieke Universiteit Leuven.

    ·     Richard Hiram Baddeley, dated 31 July 2000 and exhibits RHB-1 to 11.  He states that he is registered patent attorney and is responsible for prosecution of the opposition on behalf of the opponent.  He provides a list of documents attached as exhibits.

  5. Evidence in answer consists of a declaration made by:

    ·     Ase Slagtern, dated 27 November 2002 and exhibits AS-1 to 6.  She states that she is currently employed by the applicant as a Senior Research Scientist and Research Director, Hydrocarbon Process Chemistry since September 1996.  She further indicates that she possesses tertiary qualifications from the University of Oslo (1986) in physical chemistry and has worked as a research scientist from 1986 onwards and has authored several publications in international journals.

  6. Evidence in reply consists of declarations made by:

    ·     An Verberckmoes, dated 18 June 2003 and exhibits AV-5, 6.

    ·     Wilfried Jozef Mortier, dated 18 June 2003 and exhibits WJM-1 to 4.  He states that he is currently employed (since November 1987) by the Exxon Mobil Chemical company as a Senior Research Associate working in the field of zeolite synthesis.  He further states that he possesses a PhD in Agricultural Sciences and spent a post doctoral year researching in the field of zeolite crystallography.  He also indicates that he has extensive experience in the field of zeolite-based, molecular sieve-based and oxide-based catalysts for chemical and petrochemical processes.   He has been a Member of the Structure Commission of the International Zeolite Association since its foundation in 1977.  

  7. Further evidence consists of declarations made by:

    ·     Ase Slagtern, dated 7 March 2004 and exhibits AS-7 to 11.

  8. Evidence in response to the further evidence consists of declarations made by:

    ·     An Verberckmoes, dated 30 March 2004 and exhibits AV-7 to 9.

    ·     Wilfried Jozef Mortier, dated 30 March 2004 and exhibits WJM-5 to 19.

    ·     Michael Matthew John Treacy, dated 31 March 2004 and exhibits MMJT-1 to 7.  He states that he is currently (from June 2003 onwards) Professor, Department of Physics and Astronomy, Arizona State University and holds a PhD from Cambridge University (UK).  From 1982 to 1990 he has served as a Senior/Staff Physicist in a couple of Exxon companies and from 1990 to 2002 he has served as a Senior Research Scientist at the NEC Research Institute Inc, Princeton, NJ, United States.  He also indicates that he has extensive research experience in the area of zeolites.

    THE SPECIFICATION

  9. The specification under consideration is the specification as amended after acceptance.  Proposed amendments were filed on 7 January 2002.  The allowance was advertised on 29 August 2002.  The specification commences stating, “The invention concerns catalysts for methanol to olefins comprising silico-alumino-phosphate (SAPO) materials with AEI/CHA*-mixed phase composition.”  (*Note that AEI/CHA refer to zeolite structures.  The basis for AEI is AlPO4-18 [Al24P24O96] type structure.  The basis for CHA is a chabazite (|Ca2+6 (H2O)40| [Al12Si24 O72]) type structure).  The specification then describes the prior art and its deficiencies.  A major deficiency is identified as, “…the lifetime of the catalysts is limited.”  The main object of the invention is set out as,

    “…to produce a catalyst with prolonged life compared to those belonging to the prior art.”

  10. This is followed by the consistory statement of the invention, detailed description of the invention and examples 1 to 6.  The specification ends with thirteen claims.  The independent claim, claim 1 reads as follows:

    1.A microporous crystalline silico-alumino-phosphate composition, the theoretical composition of which, on a water-free base after synthesis and calcination, is:

    HwSixAlyPzO2

    Where w and x have a value between 0.01 and 0.05 and y and z are values between 0.4 and 0.6, wherein the composition is a mixed phase product comprising silico-alumino-phosphates of AEI and CHA structure prepared in one batch crystallisation, not including mere physical mixtures, the product after calcination in air at 550oC for 4 hours, produces a characteristic X-ray diffractogram having at least the reflections as shown in Table 1:

2θ      d(Ao)
9.3-9.5 9.3-9.4
10.4-10.6 8.3-8.5
12.7-12.9 6.8-7.0
13.8-14.0 6.3-6.4
15.9-16.1 5.5-5.6
16.7-16.9 5.2-5.3
18.9-19.0 4.6-4.7
20.5-20.7 4.3-4.4
21.0-21.3 4.1-4.3
23.7-24.0 3.7-3.8
25.7-26.0 3.4-3.5
30.9-31.1 2.8-2.9

and having XRD-profiles with only one broad feature in the region between 16.6 and 18 degrees 2 theta as marked with an asterisk in Figure 1. (Note: “2θ” used in Table 1, is the angle of incident X-ray plus reflected X-ray used in X-ray diffraction; “d(Ao)” used in Table 1, is the distance in angstrom between crystal planes of the structure and is calculated, based on the wavelength of the X-ray and the angle where a reflection is produced.)

Claim 7, which defines a catalyst, and the omnibus claims read as follows:

7.Catalytic material comprising silico-alumino-phosphates, wherein the material comprises a mixed phase composition of SAPO-materials according to those defined in claim 1, with AEI and CHA structure in ratios between 4:1 and 1:4, preferably between 2:1 And 1:2.

12.A composition according to claim 1 substantially as hereinbefore described with reference to any of the examples and/or figures.

13.A catalytic material according to claim 7 substantially as hereinbefore described with reference to any of the examples and/or figures.

STATEMENT OF GROUNDS AND PARTICULARS

  1. The opponent raised grounds of manner of manufacture, novelty, inventive step and section 40/fair basis.  At the hearings the opponent pursued grounds of inventive step and section 40/fair basis only.

    The opponent filed an application under Regulation 5.9 to amend the statement of grounds and particulars on 28 July 2004.  The amendment sought to include particulars arising from the filing of further evidence and evidence consequential thereon.  The applicant was given up to 19 August 2004 to object to the regulation 5.9 application.  As no objection was filed the amendment of the statement of grounds and particulars was allowed on 24 September 2004.

    DECISION

  2. Both parties made written and oral submissions at the hearings and I shall refer to those submissions wherever relevant in my decision.

    Claims Construction, Section 40/Fair Basis

  3. The opponent raised four issues under section 40/fair basis and I shall address them individually.

  4. Issue 1.  Claim 3 lacks clarity in that, if a reflection between 10.4 and 10.6 degrees 2 theta is “very essential”, as contended by Norsk Hydro, a SAPO-34/SAPO-18 intergrowth cannot have a ratio throughout the range 4:1 and 1:4.  Reference to Lillerud’s simulations (exhibit AV-5, WJM-3, Fig 4, 548) shows that SAPO-18/SAPO-34 intergrowths with SAPO-34(CHA)/SAPO-18(AEI) ratios within this range (see 50/50 or 1:1 AEI/CHA simulation for example) have no reflection at 10.4 to 10.6 degrees 2 theta.  As claim 1 includes this anomalous situation within its scope, claim 1 likewise lacks clarity.

    The key issue here is whether or not the claimed composition provides reflections at 10.4 to 10.6 degrees 2 theta in an X-ray diffractogram for SAPO-34/SAPO-18 intergrowths with SAPO-34/SAPO-18 ratios within the entire range 4:1 to 1:4.  Looking at the relevant claims 2 and 3, they define:

    2.A silico-alumino-phosphate composition according to claim 1, wherein the composition comprises at least SAPO-18/SAPO-34 intergrowths.

    3.A silico-alumino-phosphate composition according to claim 1, wherein the ratios of SAPO-34 and SAPO-18 is between 4:1 and 1:4 preferably between 2:1 and 1:2.

    The applicant raised a number of points related to this matter:

    1.   They submitted that the Lillerud simulation did not show SAPO-18/SAPO-34 intergrowths, rather they showed computer generated simulated profiles of CHA (SAPO-34)/AlPO4-18 intergrowths.

    2.   Also the scale used in Lillerud (the DIFFaX* scale) is different to the scale (termed “the patent quantification method” by Mortier) used in the opposed application.  Both Mortier and Verberckmoes state that there is no inconsistency in the scales used, they are just different scales.  There is nothing to indicate that the opponent’s declarants had any difficulty in applying the scale set out in the opposed application.  In fact Mortier estimated that a 50/50 (or 1:1) CHA/AEI ratio according to DIFFaX equates to approximately 3:1 (40/13) of CHA/AEI according to the scale in the opposed application. (* Dr Treacy in his declaration dated 31 March 2004 states, “I am the primary author of the computer program DIFFaX, which has now become a standard tool for simulation of diffraction in planar faulted crystals, and has been used widely by other researchers since 1991.”)

    3.   Looking at Fig 4 in the Lillerud document a shoulder is evident at 80CHA:20AEI according to the DIFFaX scale.  A ratio of 80:20 in favour of CHA according to Lillerud (DIFFaX scale) would of course be considerably more in favour of CHA according to the scale of the opposed application, given Mortier’s calculation that 50:50 ratio according to the DIFFaX scale equates to about a 3:1 ratio in favour of CHA according to the scale used in the opposed application.

    The opponent countered submission 3 above stating that, “Mortier had never indicated that a material having 80:20 CHA:AEI ratio in the DIFFaX scale has peak at 10.4 to 10.6 degrees 2 theta.  Mortier has consistently stated that a peak at 10.4 to 10.6 degrees 2 theta is only seen for materials that have 40:60 CHA/AEI or lower as seen in the Lillerud article (exhibit WJM-3)”.

    The applicant and opponent agree that different scales are being used to measure the ratios of the intergrowths.  However the disagreement lies in whether a peak exists in the 10.4 to 10.6 degrees 2 theta for the full range from 1:4 to 4:1 ratios of CHA(SAPO-34)/AEI (SAPO-18) intergrowths or that the peak is only existent for a part of the range.  The opponent has raised a clarity issue but the claims under attack read clearly in that they define a range with clearly defined end points.  The issue raised here clearly relates to speculative claiming.

    The applicant stated that the issue of speculative claiming had been addressed by the courts in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd (1970) RPC 157, where Graham J. held that:

    “If it is possible for a patentee to make a sound prediction and to frame a claim which does not go beyond the limits within which the prediction remains sound, then he is entitled to do so.”

    And that the applicant in making the prediction runs the risk that:

    “…a defendant may be able to show that his prediction is unsound or that some bodies falling within the words he has used have no utility or are old or obvious or that some promise he has made in his specification is false in a material respect.

    This would suggest that once an applicant has made a reasonable prediction as to the scope of the monopoly being sought, the onus shifts to the Opponent to prove that the applicant’s prediction is unsound/incorrect.  This decision was subsequently followed in Asahi Kogyo Kabushiki Kaisha v WR Grace & Co (1991) 22 IPR 491 at 520 where Heerey J stated:

    “A further objection was that the accuracy of the upper and lower limits of the specified range are not shown for either butene or octene, so that the specified weight range of comonomer was merely speculative and lacked scientific foundation.

    But the applicant has not shown that the claimed invention is in a field of science where relevant properties suddenly emerge or disappear as a precise numerical point is reached.  The boundary marked out by the claims includes only films of the invention.  If the test of the specification is satisfied - viz improved combination of properties - it is irrelevant that the claims might have been slightly broader or narrower.”

    From the submissions it is evident that the opponent has questioned if the invention provides a peak in the range 10.4 to 10.6 degrees 2 theta for the full range of ratios of 4:1 to 1:4 for SAPO-34:SAPO-18 components of the microporous crystalline composition.  Thus the issue is one of speculative claims as the opponent has agreed that the examples 1 to 3 of the opposed application show peaks for the ratio range (SAPO-34:SAPO-18) 1.47:1 to 1:1.9.  I shall apply the teaching of Olin Mathieson v Biorex (supra) as confirmed by Asahi v WR Grace (supra).  From the opponent’s declarant (Mortier) it is clear that the ratios of SAPO-34 to SAPO-18 are calculated differently in the specification as compared to the DIFFaX method for the Lillerud paper (WJM-3).  Mortier has also provided a rough comparison of the two ratios.  However one issue I note is that the Figure 4 of the Lillerud paper (WJM-3) does not show a SAPO-34 to SAPO-18 comparison but a SAPO-34 to AlPO4-18 comparison.  Also, I note that in one of the documents raised by the opponent, the Chen et al paper (exhibit RHB-10), Figure 2 shows that the X-ray diffraction pattern for AlPO4-18 is different from the pattern for SAPO-18.

    The object of the invention is quite clearly stated at page 2 of the opposed specification as, “…to produce a catalyst with a prolonged life compared to those belonging to the prior art.”  The applicant indicates that this object is achieved by the microporous crystalline composition defined in claim 1.  The onus is clearly on the opponent to prove their case.  They have provided comparison with a graph that is not based on the composition being claimed.  The Chen et al paper shows that the X-ray diffraction pattern for AlPO4-18 is different from the pattern for SAPO-18.  Thus the comparison of the X-ray diffraction pattern of the Lillerud paper (uncalcined SAPO-34 to AlPO4-18 intergrowth comparison) with the opposed invention (calcined SAPO-34 to SAPO-18 intergrowth comparison) to assert that the claimed composition does not provide reflections at 10.4 to 10.6 degrees 2 theta in an X-ray diffractogram for SAPO-34/SAPO-18 intergrowths with SAPO-34/SAPO-18 ratios across part of the range 4:1 to 1:4 would not appear to have a sound basis.  Both parties are agreed that AlPO4 and SAPO-18 have an AEI type crystal structure, but the Chen et al paper (not challenged by either party) clearly shows that they have a different X-ray diffractogram.  I do not consider that the use of the Lillerud paper to show lack of reflection at 10.4 to 10.6 degrees 2 theta for the opposed composition is well supported by the Chen et al paper.  Also Dr Mortier (the opponent’s declarant) has indicated that the quantification method DIFFaX used in the Lillerud paper differs from that of the opposed application (1:1 in DIFFaX equates to 3:1 in the opposed invention).  The opponent has provided theoretical calculations based on similar materials but not the same materials as set out in the opposed claims.  Further the evidence the opponent has provided are theoretical simulations for similar uncalcined materials.  They have not provided X-ray diffraction patterns of the calcined form of the actual claimed composition (for example, in terms of results of laboratory experiments) to show that the structure does not have a peak in the range 10.4 to 10.6 degrees 2 theta for at least some of the ratio range 4:1 to 1:4 of SAPO-34:SAPO-18.  In the circumstances I do not find that the opponent has established that the claims are speculative in terms of the ratio range set out in claim 3.

  1. Issue 2.  Further to Issue 1, it was also argued that claims 1 and 3 are not fairly based because the specification does not provide support for claims to SAPO-34/SAPO-18 intergrowths with SAPO-34/SAPO-18 ratios within the entire range 4:1 to 1:4 while having a reflection at 10.4 to 10.6 degrees 2 theta.

    I note that the feature referred to is only existent in claim 3 which is appended to claim 1.  I shall test claim 3 for fair basis.  The issue of fair basis has been addressed by the Full court of the Federal Court in CCOM Pty Ltd v Jiejing Pty Ltd, 28 IPR 481 and (1994) AIPC 91-079 and recently by the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 (18 November 2004). In CCOM (supra), at 501 the Court stated:

    “…Fullagar J emphasised that disclosure without claim is enough.  Hence, it is wrong to proceed as if testing for infringement and to seek to isolate in the body of the complete specification, or in the provisional specification, “essential integers” or “essential features” of an invention disclosed therein and to ask whether they correspond with the essential integers of the claim in question;…

    Fullagar J also pointed out that the requirement of “fair basing” on matter disclosed in an earlier specification would be senseless if what was required was that the subject matter of the claim must have been actually claimed in the earlier specification; rather, there must be “a real and reasonably clear disclosure”.

    This view was adopted by the Full Court of the Federal Court in determining the issue of fair basing in CCOM v Jeijing (supra).  Thus I have to determine if there has been a real and reasonably clear disclosure of the matter defined in claim 3 within the description.  The opponent has not shown that any of the matter claimed in claim 3 goes beyond what is described.  The ratio of SAPO-34(CHA)/SAPO-18(AEI) which is under attack is disclosed at page 5 of the description.  The relevant portion of the description states:

    “RUW-19 comprises as major constituents at least the two silico-alumino-phosphate phases with AEI- and CHA- structures, and the material is not well defined regarding the ratios between the different phases.  Any silico-alumino-phosphate prepared in one batch crystallisation exhibiting x-ray reflections characteristic of both phases AEI and CHA are defined as RUW-19 catalytic material.  This means in practice that the ratio between the two phases are always between 0.1 and 10, because otherwise the identification of the minor constituent becomes uncertain.  Physical mixtures of the two phases AEI and CHA prepared by mixing samples of the two pure materials are not defined as RUW-19.”

    Here RUW-19 refers to the claimed composition of the invention and AEI and CHA refer to SAPO-18 and SAPO-34 respectively.  The ratio is disclosed as between 1:10 and 10:1 (for AEI to CHA) which covers the range of 1:4 and 4:1 (for AEI to CHA) defined in claim 3.  I do not find that Claim 3 lack fair basis.

  2. Issue 3. Further to Issue 1, the specification of the Opposed Patent Application does not show how to make a SAPO-34/SAPO-18 intergrowth having a SAPO-34/SAPO-18 ratio throughout the range 1:4 to 4:1 while maintaining a “very essential “ reflection at 10.4 to 10.6 degrees 2 theta. The examples, even in accordance with the Opposed Patent Application, only cover the SAPO-34/SAPO-18 ratio range 1.47:1 to 1:1.9. The specification therefore fails to comply with Patents Act 1990, s 40(2)(a).

    The Patent s Act 1990 requires that the specification shall describe "the best method known to the applicant of performing the invention" (sec 40(2)(a)).  Thus in American Cyanamid Company v Ethicon Limited, (1979) RPC 215 at page 269, it was stated:

    "The Act is intending to protect the public against a patentee who deliberately keeps to himself something novel and not previously published which he knows of or has found out gives the best results, with a view to getting the benefit of a monopoly without giving to the public the corresponding consideration of knowledge of the best method of performing the invention."

    The question of sufficiency is one of fact, and whether a specification is sufficient to disclose the method of carrying out the invention is a matter which can best be determined by receiving evidence from persons skilled in the art - Universal Oil Products Co. v Monsanto Co., (1973) 46 ALJR 658. In Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 (15 February 2001) the High Court addressed the issue thus:

    “The question is, will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?”

    In this case the opponent’s declarant has clearly stated that the invention works across the ratio ranges as set out in the examples.  However the opponent has not provided firm evidence to show that the invention does not show a peak at 10.4 to 10.6 degrees 2 theta across parts of the ratio range 4:1 to 1:4 of SAPO-34:SAPO-18.  The opponent has based their arguments on disclosure of Fig. 4 of exhibit WJM-3.  They have acknowledged that there is no direct comparison and that the ratios are calculated on a different basis when compared with the opposed application.  The relevant graph also does not show SAPO-34: SAPO-18 but shows SAPO-34:AlPO4-18.  There is no obligation on the applicant to describe more than a single preferred embodiment, see Ethyl Corporation v California Research Corp., (1970) AOJP 562.  The applicant has provided examples which cover parts of the range claimed (where peaks are displayed at 10.4 to 10.6 degrees 2 theta), thus satisfying the requirement of providing a best method of performance.  If the opponent is contending that the invention does not work across the full range then the onus is on the opponent to show that this is the case.  None of the declarants have shown that they were unable to work the invention based on the teaching provided in the opposed specification.

  3. Issue 4.  Claim 8 lacks clarity in that there is no antecedent for “total sample”.

    Claim 8 and related claim 7 read as follows:

    Claim 7: Catalytic material comprising silico-alumino-phosphates, wherein the material comprises a mixed phase composition of SAPO-materials according to those defined in claim 1, with AEI and CHA structure in ratios between 4:1 and 1:4, preferably between 2:1 and 1:2.

    Claim 8: Catalytic material according to claim 7, wherein the material comprises a mixed phase composition of SAPO-34 and SAPO-18, and the sum of SAPO-34 and SAPO-18 comprises at least 40 % of the total sample.

    The issue is to determine what is meant by “the total sample”.  Reference may be had to the body of the specification to resolve this lack of clarity.  The specification is to be read as a whole. Consequently, the description is an aid to construing the claims, and vice versa.  In Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69,

    "It is clearly ... legitimate and appropriate in approaching the construction of claims to read the specification as a whole. Thereby the necessary background is obtained and in some cases the meaning of the words used in the claims may be affected or defined by what is said in the body of the specification"

    The description at page 7 when referring to catalytic material and comparing it with the prior art materials states:

    “A characteristic of these mixed phase samples in general is that they contain more than one crystalline phase which can be identified by XRD.  Not all such mixed phases are as good MTO-catalysts as the mixed phase samples described in the present invention.  The best samples, i.e. the samples with the longest catalytic lifetime (defined as described in Example 1-3) and the lowest overall coke selectivity have certain characteristics in common, that other mixed phase samples do not have.  One such characteristic is that they contain at least the phases SAPO-18 and SAPO-34, and may also contain other phases such as SAPO-5 having the AFI-structure, or dense phases in limited amounts.”

    Also at page 12, example 2 and page 14, example 3 respectively, the description discloses:

    “The X-ray diffraction analysis revealed that the crystalline product was composed of approximately 33% SAPO-5, 22% SAPO-34 and 28% SAPO-18, and an additional 17% of other phases.”

    “The X-ray diffraction analysis revealed that the crystalline product was composed of approximately 63% SAPO-18, 33% SAPO-34, and 3% SAPO-5.”   

    Thus, reading claim 8 in light of the description it is evident that the term, “the total sample” is referring to the catalytic material.  Thus the part of claim 8 which states, “…and the sum of SAPO-34 and SAPO-18 comprises at least 40 % of the total sample.” is in effect stating that at least 40% of the catalytic material is made up of SAPO-34 and SAPO-18.  I do not find that claim 8 lacks clarity by use of the term, “the total sample”.

    I have found that the specification does not suffer from any of the Section40/fair basis defects raised by the opponent in issues 1 to 4.

  4. Inventive Step

    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 of ordinary skill in the relevant art) in Australia

    ·a determination of the common general knowledge in Australia at the priority date (5 January 1994)

  5. The problem of the prior art identified in the opposed specification relates to catalysts, which convert methanol to olefins, having a limited lifetime.  The catalysts are identified as silico-alumino-phosphate (SAPO) materials (commonly known as zeolites).  The main object of the opposed invention is to produce a catalyst with prolonged life compared to those belonging to the prior art.

  6. The hypothetical non-inventive skilled worker in the field would be an industrial/research chemist with specialist expertise in the field of silico-alumino-phosphates (zeolites) and their manufacture with particular reference to their catalytic abilities to convert methanol to olefins.

  7. The common general knowledge (henceforth 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."

  8. In order to determine the cgk in Australia I shall have regard to the submissions of the various declarants in this matter.  I shall also have to consider their experience in the relevant art in Australia and whether that would provide them with the relevant cgk.  Dr Verberckmoes (opponent’s declarant from Belgium) has carried out research in the field of zeolites for about two to three years prior to the earliest priority date of the opposed application (9 October 1996).  She has listed several publications of which three were published before 1996 and three were published in 1996.  Looking at the publications they are connected to zeolites but none of them seem to have direct reference to the zeolites of the invention, related prior art zeolites and their catalytic properties.  I note that she has not worked in Australia or visited for study or research/industrial purposes in the relevant field prior to the relevant priority date.  I do not consider that Dr. Verberckmoes can determine the state of the cgk in Australia in the relevant field at the relevant date. 

  9. Ms Slagtern (applicant’s declarant from Norway) has worked on projects dealing with catalytic conversion of methanol to olefins, separation of alcohol from water using microporous materials and has detailed knowledge of characterisation techniques such as X-ray diffraction.  She has published several papers prior to 1996 relating to catalytic conversion of methane.   There is no evidence of her having worked or studied in Australia or visited for study or research/industrial purposes in the relevant field prior to the relevant priority date.   I do not consider that Ms Slagtern will be able to comment on what constitutes the cgk in Australia in the field of the opposed invention at its priority date. 

  10. Dr Mortier (opponent’s declarant from Belgium) has carried out research in the field of zeolites for several years prior to the opposed invention’s priority date.  He has published several papers and presented several conferences on zeolites.  He has been named inventor or co-inventor of several patents on zeolites.  Quite clearly Dr Mortier is not the ordinary non-inventive skilled worker in the field.  I do not consider that he could determine what would be the cgk available to the non-inventive skilled worker in the art in Australia.  However I believe that Dr Mortier could provide technical information to explain various aspects of the prior art and the opposed invention. 

  11. Dr Treacy (opponent’s declarant from USA) has extensive experience in the area of zeolites include their structural simulation.  He states that he was the primary author of the DIFFaX computer program used for computing diffraction from faulted crystals.  He has published several papers, presented papers at conferences, been a co-author for several books, presented several lectures/seminars, and been a co-inventor for a patent granted in 1992.  Looking at Dr. Treacy’s extensive knowledge and experience I am of the view that he can provide information on the technical background of the invention, but I do not find that he is the non-inventive worker of ordinary skill in the art.  Also, there is no indication of his having worked/taught in Australia and hence I find that he will not be able to establish the cgk in Australia at the relevant date.       

  12. The opponent stated that the following documents formed part of the common general knowledge:

    1.   Chen et al, “Silicoaluminophosphate number eighteen (SAPO-18): a new microporous solid acid catalyst”, Catalysis Letters 28 (1994) 241-248 (exhibit RHB-10, hereafter referred to as Chen et al).

    2.   Xu et al, “The Synthesis of SAPO-34 and CoSAPO-34 from a Triethyamine-Hydrofluoric Acid-Water System”, J. Chem. Soc. Faraday Trans. 1990, 86(2), 425-429 (exhibit WJM-2, AV-4, hereafter referred to as Xu et al).

    3.   Lillerud et al, “Systematic Relationships Between the Structures of CHA, AEI and KFI”, Studies in Surface Science and Catalysis, Vol. 84, 543-550 (exhibit AV-5, WJM-3, MMJT-5) hereafter referred to as Lillerud et al).

    4.   MMJ Treacy et al, “A general recursion method for calculating diffracted intensities from crystals containing planar faults”, Proc. Royal. Chem. Soc. London (1991), Vol. 433, 499-520 (exhibit WJM-7, hereafter referred to as Treacy et al).

    5.   US Patent 5116590, published 26 May 1992 (exhibit AS-6).

    The applicant contended that the teaching of the above documents had not been shown as forming part of the common general knowledge in Australia.

  13. The citations raised by the opponent consist of research publications, and a patent.  I shall apply the tests set out by the courts to determine if these disclosures form part of the common general knowledge in the art.  In ICI Chemicals & Polymers Ltd v Lubrizol Corp, 45 IPR 577, Emmett J stated:

    "The common general knowledge is the technical background to the hypothetical skilled worker in the relevant art. It is not limited to material which might be memorised and retained at the front of the skilled workers mind but also includes material in the field in which he is working which he knows exists and to which he would refer as a matter of course. It might, for example, include:

    standard texts and handbooks;
    standard English dictionaries;
    technical dictionaries relevant to the field;
    magazines and other publications specific to the field"

  14. I note that most of the documents raised by the opponent are journal articles/publications and I shall address these at first.  The material disclosed in such publications does not necessarily constitute common general knowledge in the art. Thus, the courts have taught:

    "In my judgement it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or a series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less merely because it is widely circulated. Such a piece of knowledge only becomes common general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art."

    and

    "It is certainly difficult to appreciate how the use of something which has in fact never been used in a particular art can ever be held to be common general knowledge in the art."

    British Acoustic Films Ld v Nettlefold Productions (1936) 53 RPC 221 at page 250, and affirmed in General Tire & Rubber Company v Firestone Tyre and Rubber Company Ltd (1972) RPC 457, with the qualification that "without question" should read "generally regarded as a good basis for further action". The opponent submitted that the teaching of Dowsett J in Dyno Nobel Asia Pacific Ltd v Orica Australia Pty Ltd 47 IPR 257 was pertinent to the international nature of the art in question and that the publications and teachings of the International Zeolite Association (IZA) should be considered part of the cgk in Australia. The teaching of Dyno v Orica (supra) was based on a finding of a clear link being shown between the US and Australia in terms of activity in the art (The applicants and the respondent were component companies of international enterprises.  The parties dominated the Australian market, and associated companies were substantial players in the American market), sharing of information between the countries and Australian experts being generally aware of material from the US Bureau of Mines.

  15. The situation I have before me is somewhat different as I have no expert Australian declarants.  There is no evidence before me of publications of the International Zeolite Association being available in Australia.  Also I have no indication if the zeolite products of the opposing parties have a market share in Australia.  Looking at the documents raised by the opponent, there is no evidence before me which establishes that they were generally known and regarded both in Australia and overseas as a good basis for further action.  There is no indication if these documents were available in Australia, were read by those skilled in the art and generally accepted as a teaching of common general knowledge in the art of zeolite catalysts (specific to conversion of methanol to olefins) manufacture.  I do not consider that documents 1 to 4 above formed part of the common general knowledge in Australia at the relevant date.

  1. Regarding the single patent specification (document No. 5) which the opponent alleges constitutes part of the cgk in Australia, the Courts (see General Tire & Rubber Company v Firestone Tyre and Rubber Company Ltd (1972) RPC 457 at page 482) have stated that in general:

    "... it is clear that individual patent specifications and their contents do not normally form part of the relevant common general knowledge  ..."

    The opponent has not shown that those working and studying in the field of zeolites in Australia would make themselves familiar with all relevant patent specifications as they became available for inspection in Australia so that what was contained therein became common general knowledge in Australia.  I do not find that US 5116950 has been established as part of the common general knowledge in Australia. 

  2. In the matter of what is the cgk in Australia, from the opposed specification and the declarants of both parties it is clear that the skilled addressee would be aware that silico-alumino-phosphates (SAPO) type zeolites were suitable for use as catalysts in the conversion of methanol to olefins.

  3. I shall now determine if the teaching of the listed documents, either individually or in combination with the cgk in Australia, would render the opposed invention as lacking an inventive step.  Before I proceed to do this I have to establish if the listed documents would have been ascertained understood and regarded as relevant by the non-inventive skilled worker in the art.  All the documents relate to the art of the opposed application and I consider that they would have ascertained and understood and regarded as relevant by the skilled worker.  I shall consider each document individually to determine lack of inventive step.

    Chen et al (exhibit RHB-10) 

  4. Synthesis of SAPO-18 is disclosed and compared with SAPO-34 and AlPO4-18 in terms of catalytic activity.  The document teaches that the content of Bronsted acid sites (Si-OH-Al bridging groups) in SAPO-18 is considerably less than that in SAPO-34.  Consequently, the more the Bronsted acid sites, the faster the coke formation during methanol conversion reaction, and therefore, the faster the deactivation for the corresponding catalyst.  Thus as catalysts for methanol conversion to light olefins, the lifetime of SAPO-18 is distinctly superior to that of SAPO-34.  I consider that this teaching is relevant to the problem at hand.  Given the problem to be solved and having this teaching at hand would the skilled addressee have decided on manufacturing a microporous catalyst with an intergrowth of SAPO-18 (AEI) and SAPO-34 (CHA) satisfying the diffraction peaks and other conditions as set out in claim 1.  This teaching shows that SAPO-18 has a catalyst performance superior to SAPO-34.  Thus the skilled addressee would seek to use SAPO-18 in preference to SAPO-34 as a catalyst.  There is no indication in the document (or the document when combined with the cgk) of what would persuade the skilled addressee to move to an intergrowth of SAPO-18 and SAPO-34 to solve the problem.  I do not find that Chen et al renders the opposed invention as lacking an inventive step.

    Xu et al (exhibit WJM-2, AV-4)

  5. Synthesis of highly selective methanol-to-olefin catalysts SAPO-34 and CoSAPO-34, using a unique combination of triethylamine templating agent and a fluoride ion mineralizer, is reported.  The document also plots the X-ray diffraction patterns of the catalysts and notes that it shows both sharp and broad peaks.  The authors consider that the broad peaks are a result of intergrowths.  There is no indication of the impact of intergrowths on the catalytic ability of SAPO-34 and CoSAPO-34.  The skilled addressee when faced with the problem of the prior art would find no guide or assistance which would show them how to increase the catalytic life of these materials, nor is there any suggestion that intergrowth with SAPO-18 would provide a solution.  Thus the teaching of Xu et al, either individually or in combination with the cgk, has not caused the opposed claims to lack an inventive step.

    Lillerud et al (exhibit AV-5, WJM-3, MMJT-5)

  6. This document teaches identification of families of zeolite structure types and the systematic way the structures are related.  The investigation carried out shows that there is a systematic relationship between the known structures chabazite (CHA), AlPO4-18 (AEI), ZK-5 (KFI) and a fourth closely related theoretical variant.  Given the problem to be solved and having this teaching at hand would the skilled addressee have decided on manufacturing a microporous catalyst with and intergrowth of SAPO-18 and SAPO-34 satisfying the diffraction peaks and other conditions as set out in claim 1.  This teaching shows intergrowth between chabazite and AlPO4-18.  There is no indication in the document (or in combination with the cgk) of what would persuade the skilled addressee to move to an intergrowth of SAPO-18 and SAPO-34 to solve the problem.  I do not find that Lillerud et al renders the opposed invention as lacking an inventive step.

    Treacy et al (exhibit WJM-7, MMJT-6)

  7. As the title indicates this document provides a general recursion method for calculating diffracted intensities from crystals containing planar faults.  This method is applied to zeolite structures including intergrowths.  There is no teaching of the specific intergrowth of SAPO-18 and SAPO-34 of the opposed claims.  Further when faced with the problem of limited catalytic lifetimes of the prior art there is no indication of the teachings of the document (or document combined with the cgk) that would persuade the skilled addressee to provide an intergrowth composition of SAPO-18 and SAPO-34 which displays specific X-ray diffraction patterns as set out in claim 1 of the opposed application.  I find that, the teachings of Treacy et al either, alone or when combined with the cgk, does not render the opposed invention as lacking in inventiveness.

    US 5116590 (exhibit AS-6)

  8. A synthetic large pore crystalline metalsilicate zeolite composition, designated ECR-35 and a method for its preparation is disclosed.  This document also states that, “Intergrowths are well known in zeolite mineralogy…”  Also, there is a reference to use of the material as a catalyst.  No indication is given of the particular intergrowths being referred to.  Also there is no indication of which particular intergrowths perform better (or possess the potential to perform better) as catalysts.  Given the problem of the prior art, I do not see the teaching in the document (or when combined with the cgk) that would persuade the skilled addressee to provide an intergrowth composition of SAPO-18 and SAPO-34 with the specified X-ray diffractogram reflections and specified profiles.  The teaching of US 5116590 either alone or in combination with the cgk does not show the opposed invention to be lacking in inventiveness.

    I have determined that the claims of the opposed application do not lack inventiveness in light of documents 1 to 5 above either when taken individually or when combined with the cgk.

    CONCLUSION

  9. The opponent pursued grounds of inventive step and section 40/fair basis.  The opponent has been unsuccessful on all grounds.

    I direct that the application be sealed after twenty-eight (28) days from the date of this decision.

    If the Commissioner of Patents is served with a notice of appeal from this decision before that time, I direct that sealing not occur until the appeal has been decided or discontinued.

    COSTS

  10. The opponent sought that costs should follow the event at the first hearing.  Subsequently the opponent sought:

    ·Costs following the event

    ·Costs due to amendments of the specification by the applicant

    ·Reserved costs of 3 December 2003

    ·Proper recovery of the extraordinary costs as have been incurred by the Opponent including retention of Counsel.

    The applicant submitted that costs should follow the event.  They responded to the request for extraordinary costs by the opponent by stating that “It was the opponent’s decision to engage Counsel and we see no reason for the scale to be lifted.”  They also requested that the applicant should be entitled to claim costs for the attendance of two patent attorneys similar to the manner in which the opponent is entitled to claim costs for the attendance of both the patent attorney and counsel.  The applicant also sought costs for patent attorney attendance at the 3 December 2003 hearing as well as recovery of the hearing fee.

  11. In the present case the opponent has requested that extraordinary costs, including retention of Counsel, be taken into account, but there is no indication/evidence of any unusual or extraordinary circumstance that would justify expenses out of the ordinary.  Both parties have a choice in the matter of engaging Counsel or a Solicitor/Patent attorney or both to prosecute their case.  Schedule 8 of the Patents Regulations allows for costs for retention of counsel.  The opponent has not provided any material to show that the case was exceptionally difficult to prosecute, or required special expertise over and above the normal requirements of a substantive opposition.  There is no circumstance or situation that has been put before me which justifies a variation from the scale of costs.

  12. The applicant sought costs for the attendance of two patent attorneys.  This matter has been addressed previously by the Patent Office in The Government of the United States of America as represented by the Secretary, Department of Human Services and Health v University of Queensland and CSL Ltd [2001] APO 51 (3 October 2001). In that case the delegate stated:

    “Mr Slattery requested that the applicant be given costs for both patent attorneys in attendance at the hearing on behalf of the applicant.  He submitted that it would have been reasonable to employ counsel in these proceedings and schedule 8 of the patent regulations allowed costs for a patent attorney instructing counsel.  He argued that, by analogy, it would be reasonable to allow costs for two patent attorneys.

    I agree that it would have been reasonable for the parties to employ counsel in this case.  However, the applicant did not do so.  The schedule of fees appears to recognise the different roles provided by counsel and by a registered patent attorney or solicitor instructing counsel.  The schedule also recognises the case where a registered patent attorney assumes both roles, by providing an increased allowance over that for an attorney instructing counsel.  I do not think the analogy provided by Mr Slattery stands up to close scrutiny and therefore do not agree to his request for costs for two patent attorneys.”

    I am in agreement with the delegate’s reasoning and find that it is applicable to the present situation.  Also, I do not have any evidence before me which persuades me to award costs for the attendance of two patent attorneys by the one party.

  13. The power of the Commissioner to award costs is based on section 210 and regulation 22.8.  The opponent has been unsuccessful in this matter.  However I note that subsequent to the filing of the notice of opposition (13 April 2000) and a statement of grounds and particulars (12 July 2000) amendments were proposed to the accepted specification whose allowance was advertised on 29 August 2002.  As noted by the applicant’s declarant Ms Slagtern in her declaration, the amendments did overcome some of the issues (including novelty) raised in the statement of grounds and particulars.  Hence I consider that costs should be awarded against the applicant until the allowance of the amendments.  Further, the request to file further evidence by the applicant at the first hearing led to filing of further evidence by both parties as well as the need for a second hearing.  This further evidence did not play a pivotal role in the final outcome of the hearing, and the opponent was unsuccessful on all grounds.  Hence the opponent should bear costs for the applicant from the allowance of the amendments up until and including the first hearing.  As the filing of further evidence was initiated by the applicant and did not play a major role in the outcome of the opposition, I am of the opinion that each party should bear their own costs subsequent to the first hearing.

    Accordingly I award costs in accordance with Schedule 8 against the applicant Norsk Hydro ASA and in favour of the opponent ExxonMobil Chemical Company until 29 August 2002.  Subsequent to 29 August 2002 including the hearing of 2 December 2003, I award costs in accordance with Schedule 8 against the opponent ExxonMobil Chemical Company and in favour of the applicant Norsk Hydro ASA.  From 3 December 2003 onwards (including the second hearing) I make no award of costs and direct that each party bear their own costs.

    Jacob Elijah
    Delegate of the Commissioner of Patents

    30 November 2004

    Patent attorneys for the applicant  :  Phillips Ormonde & Fitzpatrick, Melbourne

    Patent attorneys for the opponent    :  Watermark, Perth

Cases Citing This Decision

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