ExxonMobil 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 ExxonMobil Chemical Patents Inc

Title: Refrigeration Working Fluid Compositions

Action: Opposition under section 59 of the Patents Act 1990 by The Lubrizol Corporation

Decision: Issued .
Abstract

An interim decision found that certain claims lack novelty. That decision is subject to appeal by both parties. Notwithstanding the appeals, the applicant proposed amendments to certain claims. Those amendments were allowed. The opponent requested to be heard in relation to a final determination of the amended specification.
The interim decision, as amended by Court Orders, found that claims 1 to 3 and 7 to 10 lacked novelty in light of AU 653572 and EP 435253. Held that the amendments made by the applicant do not fully address the findings of the interim decision. Found that claims 1 to 3 and 7 to 10 still lack novelty in light of AU 653572 and EP 435253.
The interim decision found that, in the circumstances where the amount of linear acid was zero and the branched acid was 3,5,5-trimethylhexanoic acid, claims 1 and 7 were disclosed by EP 435253 and AU 653572. The interim decision did not find that this disclosure was limited to specific viscosities and molar ratios described in the examples of the prior art.
The opponent submitted that additional grounds under section 40(2)(a) (best method of performance) and novelty arose as a consequence of the amendments made to disclaim a central composition of the described invention. Found that no new grounds of invalidity have arisen under section 40 or novelty as a consequence of the amendments. The interim decision decided all matters that were capable of determination at that time, including dealing with and generally deciding the ground of novelty
There is patentable subject matter and claims 1 and 7 are capable of being amended to overcome the deficiencies identified in the interim decision. Patent applicant has made a genuine attempt to amend the specification to overcome the delegate's findings. Applicant allowed a period of sixty days from the date of this decision to propose amendments overcoming the ground of novelty.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 666346 by ExxonMobil Chemical Patents Inc; and an opposition under section 59 of the Patents Act 1990 by The Lubrizol Corporation.

BACKGROUND

The Lubrizol Corporation are opposing the grant of a patent on patent application 666346 in the name of ExxonMobil Chemical Patents, Inc. (formerly Exxon Chemical Patents, Inc.). A delegate of the Commissioner of Patents (the delegate) heard the parties to the opposition in November and December 2000. The delegate "found the grounds of "not fairly based" (s.40), not a manner of manufacture and lack of an inventive step, to be not established." However, the delegate found that the opposition succeeded on the grounds of lack of novelty against certain claims. The reasons for the delegate's decision ("the first decision") are set out in Exxon Chemical Patents, Inc v The Lubrizol Corporation [2001] APO 7 (15 February 2001).
The opponent filed a Notice of Appeal with the Federal Court against the delegate's decision under section 60(4) of the Patents Act 1990. The opponent also sought judicial review of the decision under the Administrative Decisions (Judicial Review) Act 1977, based on alleged inconsistencies in the delegate's decision. The AD(JR) matter was settled following Court Orders by consent issued by Justice Merkel correcting part of the decision. I understand the appeal to the Federal Court is still on foot.
The patent applicant has filed a Notice of Motion with the Federal Court for an extension of time in which to file a Notice of Cross-Appeal. I understand the extension of time has not been decided yet.
The specification as accepted included 12 claims, including independent claims 1, 4, 7 and 11. The claims as accepted are set out in their entirety in the delegate's decision, cited above. The decision, as corrected by Court Order, found that claims 1 to 10 lack novelty. The delegate allowed the patent applicant sixty days to propose amendments to the specification to overcome the finding of lack of novelty.
The patent applicant proposed amendments to independent claims 1 and 7. The proposed amendments were examined under section 104 and, although the opponent filed comments under regulation 10.2(7), the amendments were allowed unopposed. Claim 4 is subject to the cross-appeal filed by the patent applicant and has not been amended.
Although the delegate's decision of 15 February 2001 is subject to appeal and cross-appeal, and claim 4 remains unamended pending the cross-appeal, the opponent requested the matter be set for a final determination. This was presumably on the basis of the need to determine matters as far as possible and that a final determination may obviate the need for the appeal, at least in so far as it relates to those claims that were amended. The applicant agreed to proceeding with a hearing on the final determination.
I heard the parties in Melbourne on 30 July 2003. Mr Cameron Moore of Counsel, assisted by Dr Elizabeth Houlihan of Houlihan², represented the opponent. Mr Richard Baddely of Watermark Patent and Trade Mark Attorneys, represented the applicant.
"FINAL" DETERMINATION
So-called “interim” and “final” decisions have been considered in a number of decisions issued by the Australian and UK Courts, most recently by the Federal Court in Iluka Midwest Ltd v Technological Resources Pty Limited [2002] FCA 49 (6 February 2002). The High Court decision in Ex parte Mole Engineering Pty. Ltd. (1981) 35 ALR 119 held that the Commissioner does not have the power to re-hear issues arising in an opposition that had been determined by an interim decision. However, Fullager J stated in BHP v American Can Co (cite): “but I see no reason why the opposition proceeding should not be decided by several decisions provided that each of them can be said in a real sense to decide ‘the case’ as presently constituted so far as that case is at the time susceptible of present decision.” It is clear from Iluka that the “case” and the issues decided by the final decision must be distinct from the “case” and the issues decided by the interim decision.
The circumstances in relation to the "final determination" in the present opposition are unusual, given that there is currently an appeal and possible cross-appeal against the delegate's decision of 15 February 2001. Not all claims found to lack novelty have been amended at this stage. The applicant has amended the specification in an attempt to address the delegate's objections in relation to some claims but not others, which are subject to a cross-appeal. Therefore, the "final determination" cannot, in fact, be a final determination of all matters, as at least some of the outstanding matters are subject to appeal and possible cross-appeal. In view of these circumstances, I wrote to the parties on 25 July 2003 in order to clarify the issues open to be determined at the hearing.
"In light of the above, and noting the Commissioner is bound by Ex parte Mole Engineering Pty. Ltd. (1981) 35 ALR 119, there is some uncertainty about what can be resolved by the hearing. Therefore, in order to focus the hearing I think it is useful to identify what matters can be determined at the hearing. I note as follows:
·    The hearing officer found that claims 1 to 10 lack novelty, but dismissed all other grounds of opposition. The applicant has amended independent claims 1 and 7, but not independent claim 4.
·    The hearing officer determined that claims 4 to 6 to lack novelty in light of examples "I-C₉" and "I-C₇" of US 5021179. Claims 4 to 6 have not been amended. In a letter dated 20 November 2001 the applicant stated: "We note that no amendments to claims 4 to 6 are proposed. Findings by the Hearing Officer that claims 4 to 6 are invalid are the subject of a proposed Cross Appeal in the Federal Court."
I understand that the patent applicant has applied to the court for an extension of time to file the cross-appeal. There appears to be some uncertainty regarding the status of that appeal. In any case, the Commissioner has no power to redetermine the hearing officer's finding that claims 4 to 6 lack novelty.

·    The hearing officer found claims 11 and 12 to be novel. These claims are unamended. There is nothing to be determined in relation to claims 11 and 12.
·    The hearing officer's decision, as amended by Court Order, found dependent claims 2, 3, and 8 to 10 to lack novelty. These claims have not been directly amended. It appears to be common ground that the novelty or otherwise of these claims is dependent on the novelty of claims 1 and 7.
·    The hearing officer found that claim 1 (and dependent claims) lack novelty in light of example 2 of EP 435253 and in light of example EXP-0504 of AU 653572. In both cases the decision was in the terms: "I find that claims 1 and 2 lack novelty in that they would be reverse infringed by the refrigerant working fluid of Example … wherein the ester of pentaerythritol and 3,5,5-trimethylhexanoic acid is disclosed to be combined with … R-134a …".
·    The hearing officer also found that claim 7 (and dependent claims) lack novelty in light of example 9 of EP 435253 and in light of example EXP-0522 of AU 653572. In both cases the decision was in the terms: "I find that claims 7 and 8 lack novelty in that they would be reverse infringed by the refrigerant working fluid of Example … wherein the ester of trimethylolpropane and 3,5,5-trimethylhexanoic acid is disclosed to be combined with … R-134a …".
It is clear from the above that, in relation to claims 4 to 6 and 11 to 12, the Commissioner has already determined the opposition to those claims.
Therefore, the sole issue to be considered at the hearing is whether or not the amendments to claims 1 and 7 overcome the hearing officer's findings that claims 1 to 3 and 7 to 10 lack novelty. In this regard, I note that some of the opponent's submissions filed during prosecution of the amendments refer to the criteria for a selection patent. However, the hearing officer does not appear to have decided the issue on the basis of selection. It is apparent that the hearing officer applied the reverse infringement test for novelty. The applicant has attempted to overcome the hearing officer's findings on claims 1 and 7 by incorporating certain "provisos" to exclude the prior art by way of disclaimer. The sole question to be answered is whether or not this attempt has been successful in distinguishing the claims from the prior art to overcome the findings of the hearing officer. In that regard, a key issue appears to be whether the hearing officer decided that the prior art disclosure in the stated examples was a narrow disclosure of the specific parameters in the examples or a broad disclosure of esters of pentaerythritol or trimethylolpropane and 3,5,5-trimethylhexanoic acid."
At the hearing both parties indicated general agreement that I had correctly identified the issues to be determined. The opponent added the proviso that, if the amendments introduce additional problems not present at the first hearing, then this should also be dealt with. The applicant did not dispute this. I agree with the opponent that it is open to them to raise any new problems introduced by the amendments - see Perkin-Elmer Corporation v Varian Technology Pty Limited 5 IPR 321.
At the hearing the opponent argued that claims 4 to 6 should be removed from the specification as these claims were found to lack novelty in the first decision. However, these claims are subject to appeal. If the claims were removed and the applicant was subsequently successful in any appeal, section 102 would operate to prevent the applicant from re-inserting the claims. In these circumstances it not appropriate for me to make any directions regarding amendment of claims 4 to 6 while the appeals are pending.
THE SPECIFICATION
A discussion of the specification as accepted, including a list of all claims, is set out in the first decision. Claims 1 and 7, as amended subsequent to that decision, are as follows (with the parts added by amendment italicised):
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 with the provisos that the ester is not:
(a)       an ester of pentaerythritol and 3,5,5-trimethylhexanoic acid being:
(i) a tetraester of pentaerythritol (1 mol) and 3,5,5-trimethylhexanoic acid (4 mol); or
(ii) an ester having a viscosity of 111.5cSt at 40°C and a viscosity of 12.4cSt at 100°C; and
(b)       a tetraester of pentaerythritol (1 mol), 2-ethyl hexanoic acid (2 mol) and 3,5,5-trimethyl hexanoic acid (2 mol).
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 provisos:
(a)       that the ester is not an ester of trimethylolpropane and 3,5,5-trimethyl hexanoic acid being:
(i) a triester of trimethylolpropane (1 mol) and 3,5,5 trimethyl hexanoic acid (3 mol); or
(ii) an ester having a viscosity of 37.26cSt at 40°C and a viscosity of 7.04 cSt at 100°C; and
(b)       that said acid mixture excludes 2-ethylhexanoic acid when viscosity of said ester is less than 20 cSt
DISCUSSION
Claim 1 defines the ester as being prepared by "reacting pentaerythritol with an acid mixture consisting of up to 73% by weight of a linear … monocarboxylic acid and 27% by weight or more of a branched … monocarboxylic acid". The specification includes examples where the "acid mixture" is 3,5,5-trimethylhexanoic acid alone. The delegate considered the meaning of "acid mixture" in his discussion under Section 40:
"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."
After considering the specification as a whole, the delegate came to the following conclusion:
"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."
That is, the delegate found that claim 1 included the case where the ester was prepared by reacting monopentaerythritol with a branched C₇-C₁₀ alkyl monocarboxylic acid, such as 3,5,5-trimethylhexanoic acid, in the absence of linear acid. The delegate gave similar constructions to the other independent claims. As noted by the delegate, this construction became relevant to his consideration of the ground of novelty.
Novelty
The delegate found that claims 1 and 7 lacked novelty in light of EP 435253 and AU 653572. As the issues are essentially the same, I will deal with claim 1 first.
In respect of EP 435253, the delegate found:
"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)."
In respect of AU 653572, the delegate found:
"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)."
The question to be answered now is whether the first decision decided that the prior art disclosure in the cited art was a narrow disclosure limited to the specific viscosities and molar ratios set out in the examples (as contested by the applicant) or a broader disclosure of esters of pentaerythritol or trimethylolpropane and 3,5,5-trimethylhexanoic acid (as contested by the opponent). In my view, it was the latter. The decision clearly states that the ester of pentaerythritol and 3,5,5-trimethylhexanoic acid is disclosed to be combined with refrigerant R-134a.
I note that AU 653572 describes the invention therein as a lubricant composition comprising polyol esters including … mono and di-pentaerythritol esters, made with branched carboxylic acids, which are miscible in the desired temperature range with non-chlorinated, fluorinated hydrocarbon refrigerants, and have unexpected viscosity-miscibility characteristics. The acids used may comprise blends of linear and branched acids. The specification of AU 653572 states at page 10 lines 22 to 25:
"Applicant has determined that multi-branched acids, such as 3,5,5 trimethyl hexanoic acid, including a tertiary butyl group, provide for excellent properties of miscibility."

The specification of AU 653572 further states at page 11 lines 11 to 23 (referred to by the delegate in the first decision):
"Applicant has determined that a preferred composition of the present invention includes branched acids wherein the branching is at a location other than the most distant carbon. That is, the branching is at least one carbon, maybe two or more carbons, that are not the terminal carbon. The examples herein showing miscibility with 3,5,5-trimethyl hexanoic acid illustrate this type of composition.
The percentage by weight of branched acids used can range as low as 20-50% or even up to 50-100% of the acids used in making the ester."
The first decision found that AU 653572 disclosed esters of pentaerythritol and 3,5,5-trimethylhexanoic acid. In coming to this finding, the delegate referred not only to the example but also to portions of the description. There is no suggestion in the decision that the anticipation is limited to a particular viscosity. I note, for example, that in discussing EP 435253, the delegate states:
“Where a preferred ester of 666346 is combined in a refrigerant working fluid with R134a I presume that it follows that the acid structure, viscosity and miscibility requirements specified in the corresponding claim(s) are met.”
I note that example 1 of the opposed specification exemplifies a viscosity of 114.02 cSt at 40°C for an ester of mono-pentaerythritol and 3,5,5-trimethylhexanoic acid, whereas example EXP-0504 of AU 653572 exemplifies a viscosity of 111.5 CSt at 40°C for the same ester. This difference appears to me to be experimental variation rather than novel subject matter for a patent.
In relation to EP 435253, the opponent argued that the proviso added to claim 1 only includes a pure tetraester made with fixed quantities of components. The opponent argued that the difficulty with this is that the ester may be made using more or less than 4 mol of 3,5,5-trimethylhexanoic acid. That is, not all of the acid or alcohol may react. The specification of EP 435253 makes it clear that there may be by-products and/or unreacted reactants (page 6 lines 34 to 37). I also note that page 12 of the opposed specification states that esters are prepared by reacting alcohols with preferably an excess of acid, using techniques well known in the art. I agree with the opponent that the delegate held that EP 435253 disclosed the ester of pentaerythritol and 3,5,5-trimethylhexanoic acid, and that this disclosure was not limited to the particular stoichiometric amounts contained in proviso (a)(i) to claim 1.
Proviso (b) of claim 1 appears to have been added by the applicant to exclude the ester disclosed in example 3 of EP 435253 from claim 1. The delegate did not find that claim 1 lacked novelty in light of the ester of example 3, and it is not open to me now to make such a finding. However, if the applicant believes the ester of example 3 is a disclosure based on the delegate’s reasoning in relation to example 2 of EP 435253, then the comments I have made in relation to proviso (a)(i) would apply equally to proviso (b) of claim 1.
The delegate’s findings in relation to claim 7 were similar to his findings in relation to claim 1. The most significant difference between claim 7 and claim 1 is that the esters are prepared from trimethylolpropane rather than monopentaerythritol. My findings above in relation to claim 1 apply equally to claim 7.
As the amendments made by the applicant do not fully address the findings of the delegate in the first decision, I find that claims 1 to 3 and 7 to 10 still lack novelty in light of AU 653572 and EP 435253.
Issues consequential upon the amendments
The opponent contended that a number of problems arose as a result of the amendments. Firstly, the opponent stated that claim 1 defined “about 95-45 parts by weight of a tetrafluoroethane refrigerant” whereas the word “about” had been deleted from the corresponding portion of the description. Further, claim 4 defines “up to 2% by weight tripentaerythritol” whereas the specification has been amended to now include up to 3% tripentaerythritol.
The applicant suggested that both issues arose as typographical errors. I note that at the hearing the applicant stated they would amend the specification to remove these minor inconsistencies. However, in my view neither of these problems gives rise to any objection under section 40 or any other ground of invalidity.
Of more significance, the opponent argued that the specification no longer described the best method of performance following the amendments. The opponent argued that the description described 3,5,5-trimethylhexanoic acid as the particularly preferred acid. Claims 1 and 7 had been amended to exclude this acid. The opponent submitted that this was not a case of merely narrowing the claims to avoid the prior art. Rather, the claims had been amended to remove a central compound of the invention. According to the opponent, the applicant cannot remove the central portion of the invention from the claims and still comply with section 40(2)(a). The opponent submitted that the best method was described as being an ester of 3,5,5-trimethylhexanoic acid and therefore the best method of performing the invention defined by claims 1 and 7 was no longer described.
The "Detailed Description of the Invention" at pages 9 and 10 states that, when the acid is esterified with monopentaerythritol (defined in claim 1), technical grade pentaerythritol (claim 4) or dipentaerythritol (claim 11), the acid must have at least 50% methyl branches based on the total number of branched alkyl groups. There is no such requirement described when the acid is esterified with trimethylolpropane (claim 7). The specification states at page 10 lines 13 to 15:
"Branched acids having 100% methyl branching are preferred and 3,5,5-trimethylhexanoic acid is particularly preferred for use in this invention."
The description at page 11 further sets out the preferred acids for use with the invention. These are:
(a)    3,5,5-trimethylhexanoic acid, which is useful only with trimethylolpropane, mono- and technical grade pentaerythritol (that is, the embodiments defined by claims 1, 4 and 7);
(b)   a defined mixture of C₇ acids, the C₇ mixture being useful only with trimethylolpropane; and
(c)    methylhexanoic acid, which is defined as an isomeric mixture of certain acids. Methylhexanoic acid is useful with all the polyol embodiments of the invention.
The specification includes four examples, exemplifying each of the embodiments defined in the four independent claims. Each of the examples provides experimental results for esters prepared from a particular alcohol with various acids. 3,5,5-trimethylhexanoic acid is one of the acids exemplified, however in each case alternatives are also exemplified.
The opponent conceded that, as claims 4 and 11 had not been amended to exclude 3,5,5-trimethylhexanoic acid, the problem did not arise in relation to those claims. I also note that the degree of methyl branching is not a requirement of claim 7 and that the specification clearly describes several alternate preferred acids for the embodiment defined by claim 7. In relation to the embodiment defined in claim 1, several alternate acids are exemplified in example 1. Therefore, while 3,5,5-trimethylhexanoic acid is described as a particularly preferred acid, I do not consider the removal of this acid from the claims gives rise to a lack of sufficiency in the description. The specification clearly discloses methods of carrying out the invention other than with 3,5,5-trimethylhexanoic acid. It is also clear that different esters satisfy the requirements of the invention, and the "best" ester will depend on the viscosity requirements of the end use. The fact that a particularly preferred embodiment has been excised from the claims does not, in my opinion, give rise here to an objection under section 40(2)(a).
The opponent also submitted that new novelty considerations arose as a result of the amendment. The opponent contended that a question arose as to whether the delegate was being exhaustive in the first decision in his discussion of the prior art. The opponent said that in his conclusion, the delegate gave a general finding that claims 1 to 3 and 7 to 10 lacked novelty in light of EP 435253 and AU 653572. While the opponent noted that there was a question over whether the amended claims overcame the specific disclosures noted by the delegate (which I have dealt with above), there was also a question over whether the cited art more generally disclosed the invention defined by the claims. The opponent pointed out that the issue of selection was raised but not dealt with in the first decision. According to the opponent, after having identified specific disclosures falling within the claims, it was not necessary for the delegate to further consider the issue of selection.
In my view, the opponent's argument here fails on two counts.
Firstly, there is no indication in the first decision that the delegate was reserving his opinion on any matter or leaving any issue undecided on the basis of any other finding. As such, I must take the first decision as having decided all matters that were capable of determination at that time, including dealing with and generally deciding the ground of novelty. In Iluka Midwest Ltd v Technological Resources Pty Limited [2002] FCA 49 (6 February 2002), Merkel J relevantly stated at [50]:
“50 In my view, in the context of the statutory scheme in respect of an opposition, the interim decision is to be taken as dealing with and generally deciding the grounds of novelty and fair basis under ss 18and 40 which were stated to be Iluka's grounds of opposition, rather than only with the specific grounds of novelty and fair basis particularised, argued or pressed by Iluka at the hearing before the Delegate. In that regard it is relevant that the opposition is a proceeding between the applicant and the opponent in which the Commissioner is to adjudicate on whether the patent application should be granted (see s 61(1)). A patent is not to be granted if the invention is not novel or the claims are not fairly based on the specification (ss 18 and 40). In that context it is appropriate to view the interim and final decisions as relating to the grounds of opposition of novelty and fair basis generally, and as not restricted to novelty and fair basis as particularised, argued or pressed at the hearing. A narrow approach to the decisions (ie deciding only the matters particularised, argued or pressed) is not consistent with their content, would tend to undermine the statutory objective of finality and expedition, is inconsistent with the approach to opposition proceedings taken in the English and Australian cases (and, in particular, with the view taken by Fullagar J at 147-148 in BHP v American Can) about matters decided by an interim decision and is not mandated by the Act. Thus, prima facie, it does not appear to be open to Iluka, without leave, to rely upon the grounds of novelty or fair basis not pursued at the first hearing, the grounds of novelty or fair basis pursued at the first hearing, or any new novelty or fair basis grounds that were only applicable to the unamended application, as such grounds must be taken as having been decided by the interim decision.”
If there was a broader question of whether the prior art more generally disclosed the claimed invention, in addition to the specific disclosures referred to by the delegate, then that was something capable of being determined in the first decision. I have given my views above on whether or not the amendments address the deficiencies identified in the first decision. The claims have been narrowed by amendment. Regardless of whether or not this is by disclaiming a central portion of the invention, I do not see how narrowing the claims can introduce broader novelty issues. If there is a broader question on the novelty of the claims, I cannot see how this arises as a consequence of the amendments. The opponent appears to be re-agitating issues that were capable of determination at the first hearing. In view of Ex parte Mole Engineering Pty Ltd (1981) 35 ALR 119, I do not appear to have the power to find a lack of novelty on the basis now put to me by the opponent.
Secondly, and in any case, the findings in the first decision in relation to the claimed invention do not support the opponent’s argument. The invention of the opposed specification is based on the discovery that, with respect to polyol esters of alkanoic acids, their suitability for use with tetrafluoroethane refrigerants is governed by the average effective chain length (AECL) of the acid and, when esters of mono-, di-, or tri-pentaerythritol are used, a minimum amount of methyl branching. I note here that the delegate found the manipulation of specific parameters relating to the acid structure and chain length to be inventive.
The opponent asserted that all of the esters falling within claim 1 were disclosed in AU 653372, except esters made from mixtures including C₈ linear acids. The opponent argued that this is because AU 653372 discloses esters of mono-pentaerythritol made with branched C₅ to C₁₀ carboxylic acids, and with C₇, C₉ and C₁₀ linear acids. The opponent conceded that some of the esters disclosed in AU 653372 fell outside claim 1, but argued that claim 1 was a sub-set of the prior art.
The first decision, in discussing AU 653572, concentrates on the examples where lack of novelty was established and gives little discussion of why other disclosures therein were considered not relevant. The delegate found that claims 1 and 7 lacked novelty in light of AU 653572 only in the case where the amount of linear acid is zero and the branched C₉ acid is 3,5,5-trimethylhexanoic acid. By implication, the delegate found that AU 653572 did not disclose other claimed esters. It appears from the delegate’s decision when read as a whole, that the delegate considered there were no clear and unmistakable directions to formulate specific compositions which it was unequivocally clear would satisfy the chain length requirements of claim 1. I note that the delegate was not satisfied by arguments put by the opponent that parameters such as the AECL were inherent in the esters disclosed in some of the prior art documents.
By implication, the delegate rejected the argument that all of the esters falling within claim 1, except esters made from mixtures including C₈ linear acids, were disclosed in AU 653372. In view of the delegate’s findings, claims 1 and 7 of the unamended application overlapped AU 653572, rather than being a sub-set of the prior art. Therefore, amending the claims to carve out 3,5,5-trimethylhexanoic acid does not raise selection as an issue squarely and for the first time as the opponent submits, but merely removes from claim 1 the overlap with the disclosure in AU 653572. Therefore the opponent has not established that there is a broader question of novelty to be overcome by the amended claims, either on the basis of the selection criteria or otherwise.
CONCLUSION
The first decision, as amended by Court Orders, found that claims 1 to 3 and 7 to 10 lacked novelty in light of AU 653572 and EP 435253. As I have found that the amendments made by the applicant do not fully address the findings of the delegate in the first decision, I find that claims 1 to 3 and 7 to 10 still lack novelty in light of AU 653572 and EP 435253.
The delegate found that, in the circumstances where the amount of linear acid was zero and the branched acid was 3,5,5-trimethylhexanoic acid, claims 1 and 7 were disclosed by EP 435253 and AU 653572. I agree with the opponent that proviso (a) in claim 1 should be amended to read “an ester of pentaerythritol and 3,5,5-trimethylhexanoic acid”, without further qualification. Similarly, proviso (a) of claim 7 should be amended to read “that the ester is not an ester of trimethylolpropane and 3,5,5-trimethylhexanoic acid”, without further qualification.
The opponent submitted that additional grounds under section 40 and novelty have arisen as a consequence of the amendments made to disclaim a central composition of the described invention. For the reasons set out above, I have found that no new grounds of invalidity have arisen under section 40 or novelty as a consequence of the amendments.
It is clear that there is patentable subject matter and that claims 1 and 7 are capable of being amended to overcome the deficiencies identified in the first decision. It is also apparent that the patent applicant has made a genuine attempt to amend the specification to overcome the delegate's findings. In my view, the applicant should be given a further opportunity in which to amend the specification to remove the grounds of objection.
Although there are appeal proceedings on foot, the parties agreed to a final determination in relation to independent claims 1 and 7. Therefore, I allow the applicant a period of sixty days from the date of this decision to propose amendments overcoming the ground of novelty.
COSTS
At the hearing, the applicant submitted that costs should follow the event. The opponent, on the other hand, argued that costs should be not only the costs in relation to the final determination but should also cover the costs of the amendment process.
I agree that costs should follow the event. However, I can see no reason why costs should include the amendment process. While the opponent provided comments on the amendments under regulation 10.2(7), they did not oppose the amendments. Even if they had opposed the amendments, that would be a separate issue to the final determination.
Therefore, I award costs against the applicant, ExxonMobil Chemical Patents Inc. These costs are the costs set out in schedule 8 of the Patents Regulations in relation to the hearing on the final determination.
Brendan Bourke
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Watermark, Perth
Patent attorneys for the opponent : Houlihan², Melbourne

[2003] APO 52

17 November 2003