ExxonMobil Research and Engineering Company v Chevron U.S.A. Inc - [2014] APO 40

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
ExxonMobil Research and Engineering Company v Chevron U.S.A. Inc. [2014] APO 40

Patent Application: 2005275311

Title:Process to make white oil from waxy feed using highly selective and active wax hydroisomerization catalyst

Patent Applicant:                   Chevron U.S.A. Inc.
Opponent:  ExxonMobil Research and Engineering Company
Delegate:  Dr S.D. Barker
Decision Date:  17 June 2014
Hearing Date:  7 April 2014 in Canberra
Catchwords:  PATENTS – opposition to the grant of a patent – claims found to be novel but not inventive – some claims lack fair basis – claims are clear

Representation: Patent applicant: Davies Collision Cave
Opponent:Richard Baddeley, patent attorney at Watermark

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2005275311

Title:Process to make white oil from waxy feed using highly selective and active wax hydroisomerization catalyst

Patent Applicant: Chevron U.S.A. Inc.
Date of Decision: 17 June 2014
DECISION
The opposition succeeds on the ground of lack of inventive step: claims 1-14, 18, 20-25, 27 do not involve an inventive step in the light of US 2004/65584.
The opposition succeeds on the ground of lack of fair basis: claims 23 to 25 and 27 lack fair basis in relation to the exclusion of hydrocracking.
I allow the applicant eight weeks from the date of this decision to propose amendments to overcome these deficiencies.
I award costs according to Schedule 8 against Chevron U.S.A. Inc.
REASONS FOR DECISION

Patent application number 2005275311 was filed on 8 July 2005 (as a PCT application designating Australia). The applicant is Chevron U.S.A. Inc. (Chevron). The application was examined and accepted by the Commissioner, and subsequently opposed by ExxonMobil Research and Engineering Company (ExxonMobil). A hearing was held on 7 April 2014 in Canberra to decide the opposition. Chevron did not appear at the hearing, and did not provide any written submissions. ExxonMobil was represented by Richard Baddeley, patent attorney at Watermark.
The opposition
The statement of grounds and particulars identified four grounds of opposition: novelty, inventive step, section 40(2) and section 40(3). On 31 March 2014, an amendment to the statement of grounds and particulars was filed.
The amendment introduces a new citation for the ground of inventive step, and some additional section 40 particulars. These amendments were still being processed at the date of the hearing. The hearing proceeded on the basis of the statement of grounds and particulars as proposed to be amended. The applicant was given an opportunity to object to the amendments but chose not to and as a result these amendments were allowed on the 22 April 2014.
The parties relied upon evidence by several declarants. Evidence in support consists of a declaration by Ian Alfred Cody. Evidence in answer consists of a declaration by John M Rosenbaum. Evidence in reply consists of a second declaration by Ian Alfred Cody and a declaration by Paul Joseph Berlowitz. I will refer to the relevant parts of the evidence where appropriate. Where I refer to the evidence of Dr Cody, it is a reference to his first declaration unless explicitly stated otherwise.
The specification
The specification relates to white oils, which are essentially colourless mineral oils composed of saturated aliphatic and alicyclic hydrocarbons. The invention specifically relates to a process for preparing white oils from waxy feeds by the use of catalysts. The specification ends with 2 Figures and 27 claims. Claims 1, 20, 23, 24, 25 and 26 are independent claims. The claims are reproduced in full in Annex 1.
What is the invention as described
Before commencing to construe the specification, I note what Middleton J said in Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214, 100 IPR 451 at [139]:
"It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date."
In order to construe the specification I will first consider what the specification says about the background to the invention, and then the aim of the invention.
The background to the invention
The present application lies in the field of chemical engineering. Chemical engineering processes take place on a large scale, often involving temperatures and pressures that are very different to ambient conditions. I will provide a brief overview of the background technology that is relevant to this invention. Annex 2 provides a pictorial representation of some of this information.
Hydrocarbons
Hydrocarbons are organic substances made up of carbon and hydrogen atoms. If the carbon chain of a hydrocarbon is very short, the substance will often be a gas. When the carbon chain is longer, the substance will be a liquid (sometimes called an oil). Very long chain hydrocarbons exist as solids, generally referred to as waxes. Saturated hydrocarbons are also known as paraffins.
Hydrocarbons have different uses depending on their precise composition. For instance, hydrocarbons are used as the basis of plastics, fuels and lubricants. White oils are a specific subset of hydrocarbons that are colourless mixtures of saturated hydrocarbons. White oils find use in foods and medicines.
How are hydrocarbons produced
Fossil fuels are a natural source of hydrocarbons. Hydrocarbons can also be obtained synthetically.
The Fischer-Tropsch process is a means to convert mixtures of carbon monoxide and hydrogen into hydrocarbons. These hydrocarbons are normally a mixture of saturated and unsaturated compounds (i.e. there may be double bonds in the compounds), and there can be aromatic components (containing benzene rings). However, the Fischer-Tropsch products are complex mixtures and need to be further modified to yield industrially valuable products.
How are hydrocarbons refined
Hydrocarbons can be transformed, often by the use of catalysts. The more important transformations are:
Hydrocracking – the breaking of hydrocarbon chains to produce shorter chain compounds, as well as the hydrogenation of aromatic and other unsaturated compounds.
Hydroisomerisation – selective addition of branching to long chain hydrocarbons. The process is sometimes called dewaxing because waxy hydrocarbons are converted to non-waxy branched hydrocarbons (also called isoparaffins).
Hydrofinishing – the removal of traces of aromatics, olefins and coloured bodies. This improves the stability of the mixture to UV and oxygen.
Distilling – the separation of liquid components based on their boiling points.
What are white oils
White oils are highly refined hydrocarbon oils. As their name suggests, they are essentially colourless. Dr Cody explains the nature of white oils at [4.2 – 4.3]:
"White oils are a highly refined form of oil, more refined than motor lubricant base oils. Though usually produced using feeds and process schemes similar, if not identical, to those used to make lubricant base oils, the applications to which white oils are put require a higher degree of refining, typically at the hydrofinishing stage.
White oils are classed broadly by compositional features, as being naphthenic or paraffinic, and by the extent of processing affecting the final quality as technical or medicinal grades (also called pharmaceutical) grades."
The aim of the invention
The specification commences at page 1 by noting the importance of white oils and their expense:
"White oils have high commercial value but generally are expensive to produce since they require a number of process steps including hydrocracking, high pressure hydrogen treatment, and treating by an adsorbent or a solvent. There is an incentive to produce oils which meet white oil specifications at lower processing cost. What is desired are processes not requiring hydrocracking, which will produce high quality technical and medicinal grade white oils in high yield. The desired processes would also reduce costs by requiring a lower hydrogen partial pressure for hydroisomerization dewaxing, and having a reduced number of process steps."
Prior art methods of producing white oils are stated to have problems. Those deficiencies are
- low yield of white oil when using hydrocracking of waxy feeds
- processes cannot utilise feeds with greater than 45% n-paraffins and very low sulphur and nitrogen
- processes are not optimised to produce high yields of white oil from waxy feeds
This problem is addressed by:
"a process for producing one or more white oils from waxy feed using a highly selective and active wax hydroisomerization catalyst, and the composition of the white oils produced" (page 1).
The nature of the invention
In broad terms the invention relates to producing a white oil from a waxy feed by hydroisomerisation with a specific catalyst and separation of the white oil.
Construction of claim 1
The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70, 81 IPR 228 at [118] – [120]:
"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear … while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole … it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification … terms in the claim which are unclear may be defined or clarified by reference to the body of the specification".
Claim 1 is an independent claim. It reads:
A process for producing one or more white oils, comprising:
a. hydroisomerization dewaxing a waxy feed over a highly selective and active wax hydroisomerization catalyst under conditions sufficient to produce a white oil;
i.wherein the highly selective and active wax isomerization catalyst has:
1)a 1-D 10-ring molecular sieve having channels with a minimum crystallographic free diameter of not less than 3.9 Angstrom and a maximum crystallographic free diameter of not more than 6.0 Angstrom, and no channels with a maximum crystallographic free diameter greater than 6.0 Angstrom;
2)a noble metal hydrogenation component; and
3)a refractory oxide support; and
ii.wherein the waxy feed has:
1)a T90 boiling point greater than 490 degrees C (915 degrees F);
2)greater than 40 weight percent n-paraffins; and
3)less than 25 ppm total combined nitrogen and sulphur; and
iii.wherein the hydroisomerization dewaxing is done directly on the waxy feed without a separate hydrocracking step; and
b. collecting one or more white oils from the hydroisomerization dewaxing step, wherein
i.the yield of the one or more white oils boiling from 343 degrees C and above (650°F+) is greater than 25 weight percent of the waxy feed; and
ii.the one or more white oils produced have a pour point less than zero degrees C and a Saybolt color of +20 or greater.
The process has two steps:
- hydroisomerization dewaxing of a waxy feed (without a separate hydrocracking step), and
- collecting one or more white oils from the hydroisomerization.
There are specific limitations on
- the hydroisomerization catalyst
- the composition of the waxy feed
- the yield and boiling point of the white oils
- the pour point and Saybolt color of the white oils.
The definition of the hydroisomerisation catalyst covers many well known molecular sieves, of which ZSM-48 is one example (page 12 of the specification).
The definition of the waxy feed covers the waxes prepared by the Fischer-Tropsch process (page 6 and 9 of the specification, and [6.30] of Cody).
The definition of the boiling point of the white oil is above 343 degrees. Dr Cody states at [6.82] that hydrocarbons boiling below 343 degrees:
"are not useful as lubricants or white oils"
The definition of the pour point and Saybolt color is regarded as within that typically obtained in white oils (Cody at [6.6] to [6.7]).
I conclude that the boiling point, pour point and Saybolt colour as defined in claim 1 do no more than refer to normal features of a white oil, and do not operate as a limitation on the white oil produced.
Claim 20 is a process for producing "one or more medicinal grade white oils" involving the same steps, but parts 2) and 3) of i of step a are deleted, and having an additional step of hydrofinishing the one or more technical grade white oils at conditions sufficient to produce one or more medicinal grade white oils that pass the RCS test.
Claim 23 is a process for producing "one or more white oils" involving the same steps as claim 1, but part iii of step a is deleted, and part ii of step b instead reads:
ii. the one or more white oils produced have a pour point less than zero degrees C, a Saybolt color of +20 or greater, and a viscosity index of greater than an amount calculated by the equation: Viscosity Index = 28 x Ln(Kinematic Viscosity at 100°C) + 95.
Claim 24 is a process for producing "one or more white oils" involving the same steps as claim 1, but parts 2) and 3) of i of step a are deleted, part iii of step a is deleted, step ii of part a instead reads:
ii. wherein the waxy feed has greater than 40 weight percent n-paraffins and a weight ratio of molecules having at least 60 or more carbon atoms and molecules having at least 30 carbon atoms less than 0.05
and step b instead reads:
b. collecting one or more white oils from the hydroisomerization dewaxing step, wherein the one or more white oils produced have a viscosity index greater than an amount calculated by the equation: Viscosity Index = 28 x Ln(Kinematic Viscosity at 100°C) + 95.
Claim 25 is a process for producing "one or more white oils" involving the same steps as claim 1, but part iii of step a is deleted, and part ii of step b instead reads:
ii. the one or more white oils produced have a pour point less than zero degrees C, a Saybolt color of +20 or greater, and a viscosity index of greater than an amount calculated by the equation: Viscosity Index = 28 x Ln(Kinematic Viscosity at 100°C) + 95.
Claim 26 is an omnibus claim directed to a process for producing white oils "substantially as hereinbefore described with reference to the Examples, excluding comparative Examples".
Novelty
It is a requirement of subsection 18(1) of the Patents Act (the Act) that the invention, so far as claimed in any claim, is novel. Subsection 7(1) states that an invention is taken to be novel unless it is not novel in the light of the prior art. A citation is part of the prior art base for the purposes of novelty if it was published before the priority date of the claim.
It is well established that the general test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20], 137 CLR 228 at 235:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement".
This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 517). Australian courts have often cited, with approval, the words of the UK Court of Appeal in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 (the General Tire case) at 485 – 486:
"If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee’s claim if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated."
If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee's claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented: Flour Oxidizing Co. Ltd. v. Carr & Co. Ltd. (1908) 25 R.P.C. 428 at 457, line 34, approved in B.T.H. Co. Ltd. v. Metropolitan Vickers Electrical Co. Ltd. (1928) 45 R.P.C. 1 at 24, line 1). As stated in the General Tire case:
"A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee."
ExxonMobil relied on 2 citations to allege lack of novelty: WO 2005/012460 and US 2004/065584. Both citations relate to production of oils by the use of catalysts. The key question, coming out of the General Tire case is whether the citations plant a flag at the subject matter of the present application. It can be helpful to ask whether the citations contain
"a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so".
WO 2005/012460
WO 2005/012460 (D1) was published on 10 February 2005, which is after the earliest priority date of the present application. Consequently, D1 is part of the prior art base if the present application is not entitled to its earliest priority date, or D1 is entitled to a priority date earlier than that of the present application (and is thus a whole of contents novelty citation).
I note that the priority document for D1 is not in evidence, so I am in no position to make an assessment whether any claims of D1 would be entitled to a priority date earlier than that of the present application. However, I have quickly considered the disclosure of D1 in any event.
D1 is published in French. Dr Cody annexed an English translation to his first declaration, and my comments are based on that translation. D1 discloses a process of treating products of the Fischer-Tropsch process. The process involves the use of zeolite ZBM-30 in a deparaffination process. ZBM-30 is listed on page 13 of the present application as a catalyst of the invention.
The key issue to my mind is whether the product of any of the processes in D1 is a white oil. The products are not described in simple terms. At page 12 there is reference to "gas oils and kerosene". At page 14 there is reference to "a cold gas oil", and "gasoline, kerosene and gas oil". At page 17 it is stated that the process can produce medicinal white oils:
"In a particularly interesting manner, therefore, the process of the invention also makes it possible to obtain white medicinal oils."

There is insufficient reporting of the properties of the products in the examples to establish whether or not they are white oils. Given the special significance of white oils, I think that the examples would have mentioned this fact if they had been white oils. Further, I consider that the passage of D1 at page 17 is indicating the possibility that the process could be used to prepare white oils, not that it is the normal product. At best, D1 discloses "a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so". It follows that the invention as claimed in all claims is novel in the light of D1.
US 2004/065584
US 2004/065584 (D2) was published on 8 April 2004, which is before the earliest priority date of the present application. Consequently D2 is part of the prior art base.
D2 discloses a process for preparing "heavy lube oil from Fischer-Tropsch wax" [page 1]. ExxonMobil asserts that D2 discloses the production of white oils, and refers specifically to paragraph [0004]. This paragraph starts with the statement:
"The invention relates to a process for producing a heavy lubricant base stock"
and ends with the statement:
"The dewaxed hydrocarbons comprising the heavy lubricant base stock have other uses, such as for example, a heavy white oil, a pharmaceutical oil, as a carrier or base for medicinal formulations, in chemical and pharmaceutical manufacturing, and the like."
It is uncertain whether this means that the base stock produced by the process is white oil. Dr Cody says at [6.19] that D2 describes "a process for producing white oils, among other possible lubricant boiling range oils".
There is a lengthy discussion of the nature of the base stock at para [0010] of D2. This paragraph gives information about the boiling point range, the pour and cloud point of the products. There is also the following statement:
"A lubricant or finished lubricant product (these two terms are used herein synonymously) is prepared by forming a mixture of the heavy lubricant base stock described herein and an effective amount of at least one additive or, more typically, an additive containing more than one additive."
Suitable additives are detergents, dispersants, antioxidants, antiwear agents, pour point depressants, friction modifiers, corrosion inhibitors. It is then stated:
"The heavy lubricant base stock used in forming the mixture is typically one that has been mildly hydrofinished and optionally dehazed after hydrodewaxing, to improve its color, appearance and stability."
The base stock appears to be the base for preparing commercial lubricants. However, it appears that the base stock can be refined to have enhanced properties (colour for instance), and I infer that paragraph [0004] is saying that the base stock can be refined to a white oil. I conclude that the base stock is not a white oil, but can be further refined to a white oil.
There is no evidence that a white oil is produced in any of the examples in D2. I believe that D2 discloses a process that produces a lubricant composition. I do not believe that the lubricant is a white oil, but the lubricant can be refined to produce a white oil. Using the language of the General Tire case, D2 is a signpost to white oils, but does not plant the flag at white oils. It follows that the invention as claimed in all claims is novel in the light of D1.
Inventive step
It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, involves an inventive step. Subsection 7(2) states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art. A document is prior art for this purpose if "a skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded [the document] as relevant" (subsection 7(3)).
The test for whether an invention is obvious is to ask whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd [1981] HCA 12 at [45], 148 CLR 262 at 286 Aickin J stated:
"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."
The High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59, 212 CLR 411 approved this approach.
In the present case the problem addressed by the specification is an improved yield of white oil when using hydroisomerization of waxy feeds with greater than 45% n-paraffins and very low sulphur and nitrogen. ExxonMobil argued that the invention lacks inventive step in the light of the common general knowledge, and also in the light of US 2004/065584 (D2) and US 7282137 (D3).
The common general knowledge alone
ExxonMobil argued that all of the elements of the process are part of the common general knowledge. Even if that is true, it must be established that it would have been a matter of routine to combine this information in the way that is claimed. Dr Cody's evidence does not establish this point and thus common general knowledge alone does not destroy the inventive step of the current claims.
US 2004/65584 (D2)
The threshold question is whether D2 would have been ascertained, understood and regarded as relevant. There is no evidence directly on this point. I note that chemical engineering is a technically sophisticated art, and it appears from the evidence that patents are widely used. All declarants discuss patent documents, including D2 and D3 without a suggestion that these are documents that they would or would not normally consider in the course of their work. On balance, it seems more likely than not that patent documents would be ascertained by persons working in this art. Given the technical content of D2, it is clearly relevant to the problem. I am satisfied that D2 would have been ascertained, understood and regarded as relevant.
Above I stated that the product produced in D2 is not a white oil, but it can be refined to produce a white oil. This refinement would be by further hydrofinishing "to remove trace amounts of heteroatom compounds, aromatics and olefins, to improve oxidation stability and color" (paragraph [0007]). A person reading D2 and wishing to produce a white oil would be instructed to use the process with further hydrofinishing of the product to white oil standard. The two important questions are whether the steps of the process of D2 are the same as that of the claims (apart from the hydrofinishing) and whether the product would be the same.
Are the steps of the process the same?
The process in D2 is broadly described in the SUMMARY OF INVENTION at [0004] as:
"hydrodewaxing Fischer-Tropsch wax … in multiple (e.g., at least two) stages, with interstage separation and removal of the lighter material"
At [0005] it is noted that the hydrodewaxing is carried out by hydroisomerization and not hydrocracking:
"By hydrodewaxing is meant the waxy feed and partially dewaxed heavy lubricant oil fraction are contacted with hydrogen and a hydrodewaxing catalyst that dewaxes mostly by hydroisomerization, and not by hydrocracking."
It is apparent that the process includes hydroisomerisation dewaxing (without a separate hydrocracking) and the collection of a product. The hydroisomerisation catalyst can be ZSM-48 (paragraph [0005]), and the feed a Fischer-Tropsch product. I conclude that the steps of the process are the same (apart from the hydrofinishing).
Is the product the same?
Since the product of the further hydrofinishing would be a white oil, it would have the boiling point, pour point and colour as defined in claim 1. The final question is whether a person would as a matter of routine obtain a yield of greater than 25%. The data presented in D2 shows that yields are variable, depending on the conditions used. Dr Cody states at [6.87]:
"US 2004065584 also produces a heavy white oil at yields in the range covered by claims 12 to 14. In Table 1, page 6 single and multiple stage processes are illustrated where conversion at 700°F- (370C-) ranges from 29 to 39%, meaning that yields of 370°C+ range from 60 to 71%. Yields of 343°C+ would be higher than this by a few percent, meeting Chevron claims 12 to 14."
While I can agree with Dr Cody that the yield of product with a boiling point above 343°C may be above 60%, it is not correct that this material is white oil. As discussed above, to produce white oil would require further hydrofinishing that is not done in D2. How would the yield of white oil be affected by the hydrofinishing? Logically the yield would be reduced, but would it be reduced to less than 25%? Dr Cody states at paragraph [6.5] that a 25% yield is "not particularly high", implying that it would be easily achieved in a conversion process. Overall, I consider that it is highly likely, and a matter of routine, that the process of D2, when extended to the production of white oils, would lead to a yield of at least 25%.
Claim 1
The process in D2 is the same as that in claim 1, except that it does not involve hydrofinishing to produce a white oil. It would be a matter of routine for a person wishing to produce a white oil to carry out a hydrofinishing step. If that hydrofinishing were carried out the process would produce a white oil as specified in claim 1. I conclude that claim 1 lacks inventive step in the light of D2.
Turning now to the claims that are appended to claim 1, many of the features that appear in these claims are explicitly disclosed in D2, and a person carrying out the process in D2 would utilise them. While it is monotonous, I will go through each claim in turn and consider the features.
Claim 2
Claim 2 specifies the use of a Fischer-Tropsch wax. D2 explicitly refers to the use of Fischer-Tropsch wax. Claim 2 lacks inventive step.
Claim 3
Claim 3 specifies that the waxy feed has greater than 50 weight percent n-paraffins. Cody says in his second declaration at [9.21]:
"Fischer-Tropsch waxes are known to be very high in n-paraffins meaning significantly more than 50 wt% n-paraffins"
and Berlowitz stated in evidence that:
“such feeds would have well above 40 % n-paraffins and most generally above 90%.”
Claim 3 lacks inventive step.
Claim 4
Claim 4 specifies that the waxy feed has less than 1.0 weight percent oxygen, and less than 25 ppm total combined metal (the metals being specified). Cody says at [6.52]:
"Fischer-Tropsch waxes typically have oxygen and metals content less than 1.0 weight percent and 25 ppm respectively. These low contents arise from the purity of gases, hydrogen and carbon monoxide from which Fischer-Tropsch waxes are synthesised."
Claim 4 lacks inventive step.
Claim 5
Claim 5 specifies that the metal hydrogenation component is a Group VIII noble metal. D2 states at [0020]:
"The hydrogenation component will comprise at least one Group VIII metal component and preferably a noble Group VIII metal component, as in Pt and Pd."
Claim 5 lacks inventive step.
Claim 6
Claim 6 specifies that the molecular sieve has channels of a diameter from 3.9 to 5.7 Angstroms. Table II in the present specification states that ZSM-48 has channel diameters of 5.3 x 5.6 Angstroms. Claim 6 lacks inventive step.
Claim 7
Claim 7 specifies that the molecular sieve has channels of a diameter from 3.9 to 5.4 Angstroms. While ZSM-48 would not satisfy this requirement, D2 talks about other molecular sieves that do meet this requirement. At [0016] it is stated that the hydrodewaxing can use ZSM-23, which has channels of 4.5 x 5.2 Angstroms according to Table II of the present specification. Claim 7 lacks inventive step.
Claim 8
Claim 8 specifies that the molecular sieve is selected from a group that includes ZSM-48 and TON. As already noted, ZSM-48 is discussed in D2. At [0016], D2 also discussed the use of TON. Claim 8 lacks inventive step.
Claim 9
Claim 9 specifies that the molecular sieve is selected from a group that includes SSZ-32, ZSM-23, ZSM-22, ZSM-35, ZSM-48 and ZSM-57. All of these molecular sieves are listed at [0016] of D2. Claim 9 lacks inventive step.
Claim 10
Claim 10 specifies that the hydrogen partial pressure is 0.1 to 6.55 MPa. Example 1 of D2 operates at a partial pressure of 1724 kPa, i.e. 1.724 MPa. At [0009] the partial pressure can range from 0.069 to 13.790 MPa, but more generally from 0.69 to 6.895 MPa. Claim 10 lacks inventive step.
Claim 11
Claim 11 specifies that the process is carried out at a temperature below 357 ºC the temperatures of the examples in D2 are all below this, the comparative example 1 is carried out at 336 ºC. Thus claim 11 does not involve an inventive step.
Claims 12-14
Claim 12-14 specify the yield of the process. Cody at [6.87] refers to the yields only for the dewaxing done on the 371 ºC feed and not the higher 538 ºC feed. However, the percentage conversion for this higher boiling point feed is higher than that of the 371 ºC feed and thus it would be within the range of these claims. Therefore these claims do not involve an inventive step.
Claims 15 and 16
Claim 15 and dependent claim 16 specify the features of the white oil produced. Including the viscosity and conditions for the hydrofinishing step. The viscosity is not given in D2, only cloud point and pour points (see tables). The opponents have submitted that the features are part of the common general knowledge rather than being inherent properties of white oils in general. As outlined above, I do not consider that the heavy lubricant oil produced in D2 is a white oil. However, the question to be asked on these particular claims is would the person be led to a white oil claimed which would have those features. D2 does mention the possible use of the products for white oils and it does state in paragraph [0006] that only mild hydrofinishing is required by the process and some general procedures at [0007]. The viscosity index is discussed in Exxon’s submissions at paragraph 78.
I will now look at the specific viscosities indexes (VI) in D2. D2 states that the kinemateic viscosity would be at least 8 cSt for feeds starting at 510 ºC. This would be 28 multiplied by Ln8 (2.07944) plus 105. Dr Cody also carried out a similar calculation. This would give thus require a viscosity index of 163 or higher to fall within the scope of claim 15. The VI of the products collected in the examples is given in the tables of D2. None are above 163 and despite viscosity indexes being part of the common general knowledge I cannot see any direction in the document, or provided as evidence, that a person skilled in the art would be led to one higher than 163.
Without a direction to lead the person skilled in the art to the high VI, I consider claim 15 and dependent claim 16 to involve an inventive step.
Claim 17
Claim 17 is to the process of claim 1 where a heterogeneous adsorbent is contacted with a heterogeneous adsorbent. There is no disclosure of this form of purification in D2. The document discusses dehazing using catalytic or absorptive methods. Dr Cody has said that absorptive includes adsorptive. I feel that the two are different as adsorption relates to adhesion to the surface of material whereas absorption penetrates or enters the material. Dr Cody also states that adsorption is common in the lubricant industry. However, even if I were to agree with Dr Cody it is a broad disclosure and not specific directions that would lead the person skilled in the art to use it to make the white oils. Given the broadness of the disclosure I do not find the requisite direction required to clearly invalidate the existence of an inventive step to this claim. Claim 17 is therefore considered to involve an inventive step.
Claim 18
Claim 18 is to the process of claim 1 where the high boiling point bottom cut is recycled. Although the comparative examples in D2 do not recycle the higher boiling point cut, the examples do, as these are fed into the subsequent stages of dewaxing. In example 1 the 510 ºC cut remaining is fed into another stage. The person skilled in the art would therefore be directly led by this to the claimed invention as a matter of routine. Claim 18 is not considered to involve an inventive step.
Claim 19
Claim 19 involves the process of claim 18 but also uses a heterogeneous adsorbent, given the above discussion on this point for claim 17. I do not feel this claim is clearly invalidated by D2 either alone or in combination with the common general knowledge. Thus claim 19 is considered to involve an inventive step.
Claim 20
Claim 20 is an independent claim. It is identical to claim 1 but adds the hydrofinishing steps to the technical grade white oils at conditions sufficient to pass the RCS test, i.e. give a medicinal grade white oil. The lubricant base oils of D2 are said to have uses for white oils, including pharmaceutical oils and base oils for medicinal compositions which would be required to pass the RCS test. Hydrofinishing is mentioned in D2 at [0006] but only to say that only very mild hydrofinishing is required. To the person skilled in the art this would mean that if the base oils are used as medicinal grade white oils mild hydrofinishing might be required and they would be directly led as a matter of routine to conduct mild hydrofinishing in order to pass the necessary RCS test. Claim 20 does not involve an inventive step.
Claims 21-22
Claims 21-22 specify the feature of the hydrofinishing catalyst being a noble metal and then it being platinum or palladium. D2 does give possible conditions for the hydrofinishing step in paragraph [0007] and platinum and palladium are listed. The list of possible metals is not long (only group VIB and or the Fe group). In order to select the platinum and palladium to arrive at claims 21-22 it would have to be an obvious selection. There is nothing in the evidence that would direct the person skilled in the art to one of these two metals (as claimed in claim 22). However, these are metals used in most hydrogenation processes and are used in the hydroisomerization. Therefore it would be a matter of routine to use platinum or palladium. Claim 21-22 lacks an inventive step.
Claims 23 and 25
Claims 23 and 25 are identical in scope and are the same as claim 1 but specify the viscosity index calculation of the product. This differs from claim 15 because instead of adding 105 they add 95 so the viscosity index claimed is 153. The indexes in D2 are around this figure with the single conversion in table 1, table 4 and table 5 being 153 and two stage being 155, the two stage in table 2 is 159 (this is the highest VI provided) and 1. Given that the lubricant will require further hydrofinishing to obtain a white oil as claimed it is difficult to determine whether the hydrofinishing is likely to result in a high viscosity index remaining. However, given that the VI disclosed fall within the scope of this claim and I do not have any evidence to show that they would be lower after hydrofinishing. I find that claims 23 and 25 are obvious and lack an inventive step.
Claim 24
Claim 24 is to a hydroisomerisation process where the catalyst is defined the same way as above but the waxy feed is 40 % n-paraffins and has a ratio the of 60 or more carbons in the chains to those with less than 30 carbons being 0.05. This was discussed by Dr Cody at [6.137 - 6.138] and it appears that the feed used in D2 would inherently have these features. Thus claim 24 lacks an inventive step.
Claim 26
Claim 26 is an omnibus claim “as hereinbefore described with reference to the examples excluding comparative examples”. The examples of D2 are clearly different from that of the opposed application in terms of specific catalysts used is SSZ-32 and despite it being known I see no direction to use it in place of the ZSM-48 used in D2. Therefore claim 26 is considered to involve an inventive step.
Claim 27

Claim 27 is a product by process claim and is construed as a claim to the product when the product is produced by the process of any of the claims 1-26. It follows that the inventive step of the product depends on whether the process is inventive. In view of the discussion of the inventive step of the process claims above, claim 27 does not involve an inventive step in the light of D2.
US 7282137 (D3)
In line with what I said above in relation to D2, I am satisfied that D3 would have been ascertained and understood. D3 states that it relates to "a process for preparing lubricating oil basestocks having a high viscosity index" [column 1]. There is no discussion of white oils. D3 would be regarded as relevant if a person seeking a solution to the problem of white oil production would have looked at documents relating to lubricating oils. While this is a proposition that I would not find surprising, I can find nothing in the evidence that provides sufficient support for me to be satisfied that it is correct. Consequently, I am not satisfied that D3 is a document that would have been regarded as relevant.
It follows that it has not been established that any claims lack inventive step in the light of D3.
Clarity
It is a requirement of subsection 40(3) of the Act that the claims must be clear. This requirement is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim" (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59).
ExxonMobil argued lack of clarity in two respects. First, some claims define a pour point of less than zero degrees. This is said to be unclear since a low pour point is required, and zero degrees is not a low pour point (Cody at [6.6]). While it may be true that zero degrees is not a particularly low pour point, a reader would be able to determine whether or not the pour point of a liquid was less than zero degrees. I consider that the claims are clear in this aspect.
The second aspect alleged is that the catalyst ZSM-57 is mentioned in claim 9. The specification asserts that ZSM-57 is a 1-D molecular sieve. Rosenbaum at [3.7] says "ZSM-57 is a 2-D structure rather than a 1-D structure". If I accept that ZSM-57 is not a 1-D molecular sieve, then the reference to ZSM-57 in claim 9 makes no sense. I consider that claim 9 must be read as if there was no reference to ZSM-57. Consequently, there would be no lack of clarity even if Rosenbaum is correct. This ground of opposition fails.
Fair basis
It is a requirement of subsection 40(3) of the Act that the claims must be fairly based on the matter described in the specification. The High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 at [69], 217 CLR 274 at 300 approved the words of Gummow J in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 95:
"the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification"
The aspects that ExxonMobil asserts lack fair basis are
- it is essential that the process excludes hydrocracking as a separate process step
- a high viscosity index is an essential requirement
- a low pour point is an essential requirement
- cycloparaffin functionality is an essential requirement
Hydrocracking
Much of this difficulty is caused by the way in which the specification is drafted. There are aspects of the invention in which hydrocracking is clearly excluded as a separate process step. There are also aspects of the invention in which, at least in broad terms, there is no such requirement. The absence of a reference to the exclusion of hydrocracking is not the same as a disclosure that hydrocracking is a permissible process step. The preferred statements and the examples do not contain an explicit hydrocracking step. The text on page 2 of the specification makes it apparent that to avoid the problems of the prior art, hydroisomerisation is used, and this appears to be in distinction to the prior art hydrocracking processes. I think there is a clear assertion that hydrocracking is to be avoided, and the whole thrust of the specification must be seen in this context.
To the extent that the claims do not reflect that hydrocracking as a separate step is to be avoided, they lack fair basis. Specifically, claims 23 to 25 and 27 do not contain this feature, and lack fair basis.
Viscosity index
At page 21 the specification says:
"They have a high viscosity index, preferably greater than an amount calculated by the equation: Viscosity Index = 28 x Ln(the Kinematic Viscosity at 100°C) + 95."
However, there are also broader statements of the invention that make no reference to the viscosity index. I do not believe that the specification as a whole is asserting a specific viscosity index as part of the invention. Put another way, there is a real and reasonably clear disclosure of the production of white oils without a viscosity index limitation. The opponent fails on this point.
Pour point

100. At page 22, the specification says:
"The white oils produced by the process of this invention have a low pour point, generally less than zero degrees C."

101. Dr Cody says that he considers zero degrees is not a low pour point. I think it is fair to interpret the specification as asserting that a pour point of less than zero degrees C is a feature of the invention, regardless of whether that would be regarded as low by other persons skilled in the art. The opponent fails on this point.
Cycloparaffin definition
102. The cycloparaffin functionality is just a discussion of the product produced and is not essential to the process itself. Any product of the process would inherently have these features and it is not essential to limit the process claims to inherent features of the product produced. The claims are fairly based in this regard.
Conclusion
103. The opposition fails on the grounds of novelty and clarity. However, the opposition is partly successful on the ground of lack of inventive step: claims 1-14, 18, 20-25, 27 do not involve an inventive step in the light of US 2004/65584. The opposition also succeeds in relation to fair basis (so far as it relates to the hydrocracking aspect). As these grounds can be overcome by amendment, I will allow the applicant an opportunity to amend.
Costs
104. The opponent has been successful in the opposition. Generally costs should follow the event, and costs should be awarded against the applicant. In this case the opponent filed its summary of submissions late, and the applicant did not provide a summary of submissions. According to regulation 5.20 these are matters that I can take into account in the award of costs.
105. In the circumstances, it is not appropriate to alter the award of costs. I will award costs against the applicant.
Dr S.D. Barker
Delegate of the Commissioner of Patents
ANNEX 1
THE CLAIMS DEFINING THE INVENTION ARE AS FOLLOWS:
1. A process for producing one or more white oils, comprising:
a. hydroisomerization dewaxing a waxy feed over a highly selective and active wax hydroisomerization catalyst under conditions sufficient to produce a white oil;
i. wherein the highly selective and active wax hydroisomerization catalyst has:
1) a 1-D 10-ring molecular sieve having channels with a minimum 10 crystallographic free diameter of not less than 3.9 Angstrom and a maximum crystallographic free diameter of not more than 6.0 Angstrom, and no channels with a maximum crystallographic free diameter greater than 6.0 Angstrom;
2) a noble metal hydrogenation component; and
3) a refractory oxide support; and

ii. wherein the waxy feed has:
1) a T90 boiling point greater than 490 degrees C (915 degrees F);
2) greater than 40 weight percent n-paraffins; and
3) less than 25 ppm total combined nitrogen and sulfur; and

iii. wherein the hydroisomerization dewaxing is done directly on the waxy feed without a separate hydrocracking step; and

b. collecting one or more white oils from the hydroisomerization dewaxing step, wherein
i. the yield of the one or more white oils boiling from 343 degrees C and above (650°F+) is greater than 25 weight percent of the waxy feed; and
ii. the one or more white oils produced have a pour point less than zero degrees C and a Saybolt color of +20 or greater.

2. The process of claim 1 wherein the waxy feed comprises a Fischer-Tropsch wax.
3. The process of claim 1, wherein the waxy feed has greater than 50 weight percent n-paraffins.
4. The process of claim 1, wherein the waxy feed additionally has:
a. less than 1.0 weight percent oxygen; and
b. less than 25 ppm total combined aluminum, cobalt, titanium, iron, molybdenum, sodium, zinc, tin, and silicon.
5. The process of claim 1, wherein the noble metal hydrogenation component is 10 a Group VIII noble metal.
6. The process of claim 1, wherein the 1-D 10-ring molecular sieve has channels with:
a. a minimum crystallographic free diameter of not less than 3.9 Angstrom and a maximum crystallographic free diameter of not more than 5.7 Angstrom.
7. The process of claim 6, wherein the 1-D 10-ring molecular sieve has channels with a minimum crystallographic free diameter of not less than 3.9 Angstrom and a maximum crystallographic free diameter of not more than 5.4 Angstrom.
8. The process of claim 1, wherein the molecular sieve is selected from the group consisting of ZSM-48, MTT, TON, EUO, MFS, FER group types of molecular sieves, and mixtures thereof.
9. The process of claim 8, wherein the molecular sieve is selected from the group consisting of SSZ-32, ZSM-23, ZSM-22, ZSM-35, ZSM-48, ZSM-57, and mixtures thereof.
10. The process of claim 1, wherein the hydroisomerization dewaxing is conducted at a hydrogen partial pressure from about 0.1 MPa (14.5 psia) to less than about 6.55 MPa (950 psia).
11. The process of claim 1, wherein the hydroisomerization dewaxing is conducted at a temperature below about 357 degrees C (675 degrees F).
12. The process of claim 1, wherein the conversion of the hydrocarbons in the waxy feed boiling at 343°C and higher (650°F+) to products boiling at 343°C and lower (650°F-) during the hydroisomerization dewaxing and any following process steps is greater than 20 wt% and less than 75 wt%.
13. The process of claim 1, wherein the yield of the one or more white oils boiling from 343 degrees C and above (650°F+) is greater than 35 wt% of the waxy feed.
14. The process of claim 13, wherein the yield of the one or more white oils boiling from 343 degrees C and above (650°F+) is greater than 45 wt% of the waxy feed.
15. The process of claim 1, wherein the one or more white oils produced have a viscosity index greater than an amount calculated by the equation: Viscosity Index = 28 x Ln(the Kinematic Viscosity at 100°C) + 105.
16. The process of claim 15, wherein the total pressure during mild hydrofinishing is from about 1.382 MPa (200 psig) to about 3.45 MPa (500 25 psig).
17. The process of claim 1, additionally comprising contacting the collected one or more white oils with a heterogeneous adsorbent.
18. The process of claim 1, additionally comprising distilling the collected one or more white oils to remove a high boiling bottoms cut.
19. The process of claim 18, additionally comprising contacting the high, boiling bottoms cut with a heterogeneous adsorbent.
20. A process for producing one or more medicinal grade white oils, comprising:
a. hydroisomerization dewaxing a waxy feed over a highly selective and active wax hydroisomerization catalyst under conditions sufficient to produce a white oil;
i. wherein the highly selective and active wax hydroisomerization catalyst has a 1-D 10-ring molecular sieve having channels with a minimum crystallographic free diameter of not less than 3.9 Angstrom and a maximum crystallographic free diameter of not more than 6.0 Angstrom, and no channels with a maximum crystallographic free diameter greater than 6.0 Angstrom; and
ii. wherein the waxy feed has:
1. a T90 boiling point greater than 490 degrees C (915 degrees F);
2. greater than 40 weight percent n-paraffins; and
3. less than 25 ppm total combined nitrogen and sulfur;

iii. wherein the hydroisomerization dewaxing is done directly on the waxy feed without a separate hydrocracking step; and

b. collecting one or more technical grade white oils from the hydroisomerization dewaxing step, wherein
i. the yield of the one or more technical grade white oils boiling from 343 degrees C and above (650°F+) is greater than 25 weight percent 25 of the waxy feed; and
ii. the one or more technical grade white oils produced have a pour point less than zero degrees C and a Saybolt color of +20 or greater; and

c. hydrofinishing the one or more technical grade white oils at conditions sufficient to produce one or more medicinal grade white oils that pass the RCS test.
21. The process of claim 20, wherein the hydrofinishing is conducted using a hydrofinishing catalyst comprising a noble metal.
22. The process of claim 21, wherein the noble metal is platinum, palladium, or mixtures thereof.
23. A process for producing one or more white oils, comprising:
a. hydroisomerization dewaxing a waxy feed over a highly selective and active wax hydroisomerization catalyst under conditions sufficient to produce a white oil;
i. wherein the highly selective and active wax hydroisomerization catalyst has:
1) a 1-D 10-ring molecular sieve having channels with a minimum crystallographic free diameter of not less than 3.9 Angstrom and 15 a maximum crystallographic free diameter of not more than 6.0 Angstrom, and no channels with a maximum crystallographic free diameter greater than 6.0 Angstrom;
2) a noble metal hydrogenation component; and
3) a refractory oxide support; and

ii. wherein the waxy feed has:
1) a T90 boiling point greater than 490 degrees C (915 degrees F);
2) greater than 40 weight percent n-paraffins; and
3) less than 25 ppm total combined nitrogen and sulfur; and

b. collecting one or more white oils from the hydroisomerization dewaxing step, wherein
i. the yield of the one or more white oils boiling from 343 degrees C and above (650° F+) is greater than 25 weight percent of the waxy feed; and
ii. the one or more white oils produced have a pour point less than zero 30 degrees C, a Saybolt color of +20 or greater, and a viscosity index greater than an amount calculated by the equation: Viscosity Index = 28 x Ln(Kinematic Viscosity at 100°C)+95.

24. A process for producing one or more white oils, comprising:
a. hydroisomerization dewaxing a waxy feed over a highly selective and active wax hydroisomerization catalyst under conditions sufficient to produce a white oil;
i. wherein the highly selective and active wax hydroisomerization catalyst has a 1-D 10-ring molecular sieve having channels with a minimum crystallographic free diameter of not less than 3.9 Angstrom and a maximum crystallographic free diameter of not more than 6.0 Angstrom, and no channels with a maximum crystallographic free diameter greater than 6.0 Angstrom; and
ii. wherein the waxy feed has greater than 40 weight percent n-paraffins and a weight ratio of molecules having at least 60 or more carbon atoms and molecules having at least 30 carbon atoms less than 0.05; and

b. collecting one or more white oils from the hydroisomerization dewaxing step, wherein the one or more white oils produced have a viscosity index greater than an amount calculated by the equation: Viscosity Index = 28 x Ln(Kinematic Viscosity at 100°C)+95.
25. A process for producing one or more white oils, comprising:
a. hydroisomerization dewaxing a waxy feed over a highly selective and active wax hydroisomerization catalyst under conditions sufficient to produce a white oil;
i. wherein the highly selective and active wax hydroisomerization catalyst has:
1) a 1-D 10-ring molecular sieve having channels with a minimum crystallographic free diameter of not less than 3.9 Angstrom and a maximum crystallographic free diameter of not more than 6.0 Angstrom, and no channels with a maximum crystallographic free diameter greater than 6.0 Angstrom;
2) a noble metal hydrogenation component; and
3) a refractory oxide support; and

ii. wherein the waxy feed has:
1) a T90 boiling point greater than 490 degrees C (915 degrees F);
2) greater than 40 weight percent n-paraffins; and
3) less than 25 ppm total combined nitrogen and sulfur;

b. collecting one or more white oils from the hydroisomerization dewaxing step, wherein
i. the yield of the one or more white oils boiling from 343 degrees C and above (650°F+) is greater than 25 weight percent of the waxy feed; and
ii. the one or more white oils produced have a pour point less than zero degrees C, a Saybolt color of +20 or greater, and a viscosity index greater than an amount calculated by the equation: Viscosity Index = 28 x Ln(Kinematic Viscosity at 100°C)+95.

26. A process for producing one or more white oils substantially as hereinbefore described with reference to the Examples, excluding comparative Examples.
27. One or more white oils when produced by a process as claimed in any one of claims 1 to 26.
ANNEX 2