ExxonMobil Research and Engineering Company v Shell Internationale Research Maatschappij B.V
[2014] APO 31
•20 May 2014
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
ExxonMobil Research and Engineering Company v Shell Internationale Research Maatschappij B.V. [2014] APO 31
Patent Application: 2004249899
Title:Gasoline Composition
Patent Applicant: Shell Internationale Research Maatschappij B.V.
Opponent: ExxonMobil Research and Engineering Company
Delegate: Karen Ayers
Decision Date: 20 May 2014
Hearing Date: 26 February 2014, in Canberra
Catchwords: PATENTS – opposed on the basis of section 40, novelty and inventive step – claims lack clarity because the term ‘hydrocarbon base fuel’ is ambiguous – applicant’s preferred construction overcomes novelty issues – regardless of construction, claims novel and inventive – citations not enabling – a skilled worker would not at once perceive the invention from the information provided in the citations – no clear and unmistakable directions to the claimed gasoline – insufficient evidence to establish a ‘typical’ gasoline had the claimed parameters – not clear that a skilled worker had recognised at the priority date that a high concentration of low MW olefins and low front-end volatility reduced engine sludge
Representation: Patent applicant: Katrina Howard (SC) instructed by Dr Andrew Blattman and Dr Michael Blake of Spruson & Ferguson, Sydney
Opponent:Helen Rofe of counsel instructed by Richard Baddeley of Watermark Patent and Trade Mark Attorneys, Melbourne
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2004249899
Title:Gasoline Composition
Patent Applicant: Shell Internationale Research Maatschappij B.V.
Date of Decision: 20 May 2014
DECISION
The opposition is partly successful in relation to section 40. Costs awarded against the applicant, Shell Internationale Research Maatschappij B.V.
REASONS FOR DECISION
Background
Patent application 2004249899 was filed in the name of Shell Internationale Research Maatschappij B.V. on 17 June 2004 under the provisions of the PCT. It claimed priority from an EP basic application (EP 03253829.0) filed on 18 June 2003. The Australian application was advertised accepted on 7 August 2008 and a notice of opposition was filed on 7 November 2008 by ExxonMobil Research and Engineering Company. The main evidence stages were finalised on 13 June 2013 and the matter was set for hearing on 26 February 2014 in Canberra. After the hearing, further evidence was filed by the applicant which has also been included in my consideration.
Evidence
The following evidence was filed in this matter:
(a)Evidence in support
Statutory declarations by:
Duncan Seddon dated 5 July 2010 (Seddon#1)
(b)Evidence in Answer
Statutory declarations by:
Leon Gerard Halliburton dated 28 April 2011 (Halliburton#1)
Leon Gerard Halliburton dated 27 August 2012 (Halliburton#2)
Andrew Nathaniel Blattman dated 30 August 2012(c)Evidence in Reply
Statutory declaration by:
Dr Duncan Seddon dated 12 June 2013 (Seddon#2)
(d)Further evidence (applicant)
Statutory declaration by:
Leon Gerard Halliburton dated 31 March 2014 (Halliburton#3)
Onus of Proof
The examination request for this patent application was filed on 27 March 2009. As a consequence, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present application. This includes the amendment to subsection 60 (3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists.
Consequently the former standard for opposition proceedings applies and the opponent must establish that it is clear or practically certain that the patent is invalid (F Hoffman La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] 92 FCR 106 at [17]).
Specification
The specification as accepted relates to the problem of reducing engine sludge in internal combustion engines. Engine sludge is a gel-like substance that forms in the oil and adheres to the internal surfaces of the engine. Because this blocks the passage of circulating oil in the engine, sludge contributes to engine wear and increases the risk of engine seizure [1].
[1] Halliburton at [12]
Engine sludge can be formed by a variety of mechanisms but is predominantly formed as the result of lubricating oil breaking down over time[2]. The invention resides in a specific gasoline composition which reduces this propensity.
[2] Halliburton at [10]
Conventional gasoline contains a mixture of more than 200 different hydrocarbon liquids ranging from those containing 4 carbon atoms to those containing 11 or 12 carbon atoms[3]. Hydrocarbons are organic compounds consisting entirely of hydrogen and carbon[4]. They include the following chemical sub-classes:
(a) Saturates which are saturated hydrocarbons (ie: contain no carbon-carbon double bonds);
(b) Aromatics which are compounds that contain a planar ring system in which there is a delocalised conjugated p-system (ie with alternating single and double bonds), such as benzene[5]; and
(c) Olefins (alkenes) which are unsaturated hydrocarbons containing at least one carbon-carbon double bond (dienes are olefins which contain 2 carbon-carbon double bonds).
[3] Halliburton at [50]
The type (and relative) proportions of these specific hydrocarbons will affect the boiling ranges and distillation profile of the final gasoline composition. In the specification, these properties are measured in terms of the following volatility (distillation) parameters (“volatilities”):
(a) the initial boiling point (IBP or Ti) – the temperature at which the gasoline start to distil;
(b) The temperatures at which a certain percentage of gasoline is distilled – T10 is the temperature at which 10% volume is distilled, T50 is the temperature at which 50% of the volume is distilled and so on; and
(c) The final boiling point (FBP) also referred to as EP (end point) or Tf – the temperature at which all the gasoline has been distilled.
A gasoline composition which has a low initial boiling point (Ti) and T10 figure is said to have a “high front-end” volatility. The opposed specification teaches that a gasoline composition with high front-end volatility (low T10) and a specified olefin content (10-20%) reduces the amount of “blow-by”[6] into the engine crank-case thereby enhancing the oxidative stability of engine lubricant (crank-case lubricant)[7]. The specification also notes that this gasoline composition may provide superior performance such as improved acceleration, higher maximum power output and/or improved fuel economy[8].
[6] During normal operation of an engine, a small amount of unburned fuel (combustible material) and exhaust gases escape around the piston rings and enter the crankcase. This is known as “blow-by”.
[7] Opposed specification page 6, lines 8-11
[8] Opposed specification at page 10, lines 27-28 and page 20, lines 1-9
There are four inventive embodiments of hydrocarbon base fuel compositions (examples 1-4) which were generated by adding a source of olefins to a base fuel (comparative examples A-F)[9]. This makes a substantial difference to the oxidative stability results as indicated in table 2 (page 14) which shows a 100% improvement in the TAN/TBN crossover results[10] in example 1 (compared to comparative example A).
[9] These relationships are summarised in Annex A.
[10] The opposed specification notes that the point at which TAN/TBN crossover occurs is considered to be an indicator of the point at which significant oxidative change point is occurring in the oil (page 14, lines 1-3)
The specification provided no details of the source or manufacture of the base fuels apart from noting that comparative fuels A and C were “widely employed in the Netherlands in 2002”[11]. Nonetheless, it concluded that a skilled worker would be able to derive a gasoline with the claimed parameters using known techniques[12].
[11] Opposed specification at page 12, lines 23-24 and page 14, lines 14-16
[12] Opposed specification at page 6, lines 19-28 and page 7, lines 31-35 – note that the specification did not contain any details of how the claimed parameters would be measured
The specification ends with 13 claims, two of which (claims 1 and 10) are independent. The most relevant independent claim is claim 1 which is outlined as follows:
Gasoline composition comprising a hydrocarbon base fuel containing 10 to 20%v olefins, not greater than 5%v olefins of at least 10 carbon atoms, and not greater than 5%v aromatics of at least 10 carbon atoms based on the fuel base fuel, initial boiling point in the range 24 to 45oC, T10 in the range 38 to 60oC, T50 in the range 77 to 110oC, T90 in the range 130 to 190oC and final boiling point not greater than 220oC.
The other independent claim (claim 10) is an omnibus claim which defines a gas composition as described in the examples.
The other claim which is relevant in this decision is claim 2 which reads as follows:
Gasoline composition according to claim 1 which contains 0-10%v of at least one oxygenate selected from methanol, ethanol, isopropanol and isobutanol.
Claim construction
Relevant Principles of Construction
The Full Court observed in Pfizer Overseas Pharmaceuticals v Eli Lilly [2005] FCAFC 224 at [247]) that underlying any approach to claim construction is that a patent is a document which confers a public monopoly and is not to be construed merely as a written document inter partes . The first (and most basic) rule of claim construction is therefore that claims are given their ‘plain meaning’. Sheppard J explained this rule as follows in Décor Corp v Dart Industries 13 IPR 385 at 400:
‘The claims define the invention which is the subject of the patent. These must be construed according to their terms upon ordinary principles. Any purely verbal or grammatical question that can be answered according to ordinary rules for the construction of written documents is to be resolved accordingly.’
It is also well-established law that where a claim is clear, it is not legitimate ‘to confine the scope of the claims by reference to limitations which may be found in the body of the specification but are not expressly or by proper inference reproduced in the claims themselves’[13]. This approach was ratified by the High Court in Interlego AG v Toltoys Pty Ltd [1973] HCA 1; (1972) 130 CLR 461 (at 478):
‘... the settled rule is that in ascertaining the width of a particular claim it is not permissible to vary or qualify the plain and unambiguous meaning of the claim by reference to the body of the specification.’
[13] Décor Corp v Dart Industries 13 IPR 385 at 400
The courts have however also recognised that where there is a genuine ambiguity in the claims, this should be generally resolved in the applicant’s favour. As noted by the Full Court in Pfizer Overseas Pharmaceuticals v Eli Lilly [2005] FCAFC 224 at [250][14]):
‘... it is right to construe a claim with an eye benevolent to the inventor and with a view to making the invention work – this is an application of the old doctrine ut res magis valeat quam pereat – and it is illustrated in Nobel’s Case [(1894) 11 RPC at 524].’
[14] Quoting Welch Perrin & Co Pty Ltd v Worrel [1961] HCA 91; (1961) 106 CLR 588 (at 610)
Construction of claim 1
The parties disagreed on the meaning of the phrase ‘hydrocarbon base fuel’ which is critical in determining the scope of claim 1. The applicant’s expert (Mr Halliburton) argued that the phrase referred to the initial blend of petroleum fractions together with additional (supplementary) hydrocarbons but no oxygenates. In contrast the opponent’s expert (Dr Seddon) suggested that the phrase could include a minor component of oxygenates as long as the major component of the fuel composition was hydrocarbons[15]. Oxygenates are commonly added to the initial gasoline blend to reduce carbon monoxide and soot levels generated in fuel combustion. They are chemical compounds with oxygen in their structure such as alcohols (eg: ethanol) or ethers (eg: MTBE[16]).
[15] Opponent’s submissions at [46] – note that the opponent distinguished this type of fuel from highly oxygenated gasolines (such as E85) where the hydrocarbon components form the minority of the fuel
[16] Methyl tert-butyl ether
Both experts were able to support their respective constructions using inferences drawn from different parts of the specification. The opponent’s strongest inference appeared in table 6 where the heading in the table refers to a ‘base fuel’ and the table reports compositional parameters in a fuel which contains an oxygenate (example 4). I agree that the specification would be more consistent if the preferred embodiments described the parameters in the same terms as defined in the claims. However I am not convinced that this necessarily resolves the ambiguity. The phrase has no clear technical meaning and there is no dictionary definition in the specification to explain the term. It is not clear that the skilled worker would necessarily construe a phrase based on a single example in isolation from the specification. As the applicant argued oxygenates are common gasoline additives and it is possible for the skilled person to read the term ‘hydrocarbon base fuel’ as excluding such additives. As a consequence, I am unable to resolve the differences in construction and find the phrase ambiguous and unclear.
From the legal precedents mentioned above, I note that the courts generally resolved genuine ambiguities in the claims in the applicant’s favour. I believe this principle can be applied in the current case where the applicant’s intended construction is otherwise consistent with the teaching of the specification. I will therefore proceed in this decision on the assumption that the applicant’s preferred construction applies (ie: a fuel composition including additional hydrocarbons). However I note that the term is still ambiguous and that this leads to a clarity problem in claim 1 (and its dependent claims).
Novelty
Relevant Law
The question of novelty is determined under the provisions of subsection 7(1) of the Patents Act 1990 (Cth) which relevant reads as follows:
(1) For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:
(a) prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;
(b) prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information;
(c) ……
The basic test for novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries [1977] HCA 19; (1977) 137 CLR 228 at page 235 where Aickin J stated:
"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 invention would if the patent were valid, constitute an infringement."
Infringement is said to occur where "each and every one of the essential features of that claim have been taken" (Rodi and Wienenberger AG v. Henry Showell Ltd (1969) RPC 367).
However it is not sufficient for a citation to contain all the essential features of the claim, there must be “clear and unmistakable” directions to the claimed invention [as per Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224 (see paragraphs 311 et seq]. In that regard, the Full Court referred to three key decisions:
(a) Canadian General Electric Co v Fada Radio Limited [1930] AC 97:
“...it is not enough to prove that an apparatus described in an earlier specification could have been used to produce this or that result. It must also be shown that the specification contains clear and unmistakeable directions to use it.”
(b) General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd [1972] RPC 45:
“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”
(c) ICI Chemicals v Lubrizol Corp [2000] FCA 1349; (2000) 106 FCR 214
‘... skilled addressees are not required to rummage through the prior patentee’s "flag locker" to find a "flag which the [prior patentee] possessed and could have planted".’
The ‘flag locker’ analogy recognises that generic disclosures will not necessarily anticipate a later, more specific claim. As noted in Apotex Pty Ltd v Sanofi-Aventis [2008] FCA 1194 at [91]:
“Anticipation is deadly but requires the accuracy of a sniper, not the firing of a 12 gauge shotgun.”
I also note that a prior publication which does not explicitly disclose all the integers of the claimed invention could still deprive the claimed invention of novelty if the missing integer is implicitly present such as where a missing integer is:
(a)inferable from information provided in the disclosure;
(b)an inherent property of an already existing product; or
(c)an inevitable or inexorable result of following the directions provided in the prior art.
For a feature to be ‘inferable’ from a citation, the skilled worker would need to be able to directly derive it from information in the disclosure or be able to understand the feature is present even if it is not explicitly mentioned. In such cases, the missing feature is present on a proper construction of the citation (see Bennett J’s summary of the general propositions on novelty at [173] in the Full Court decision in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 (11 June 2009) at [173]).
If the skilled person cannot infer a feature from the disclosure, then the onus is on the opponent to show that it was nonetheless an ‘inherent property’ of the disclosed product or method. This is sometimes referred to as the ‘law of inherency’. In such cases, the test for anticipation is necessarily a high one and an opponent has to prove either that:
(a)the prior art product necessarily had the claimed properties; or
(b)performing the prior art method would inevitably produce the same result.
As Lord Hoffman noted in SmithKline Beecham[17]:
“But the infringement must be not merely a possible or even likely consequence of performing the invention disclosed by the prior disclosure. It must be necessarily entailed. If there is more than one possible consequence, one cannot say that performing the disclosed invention will infringe. The flag has not been planted on the patented invention, although a person performing the invention disclosed by the prior art may carry it there by accident or (if he is aware of the patented invention) by design”.
[17] SmithKline Beecham Plc’s (Paroxetine Methanesulfonate) Patent [2006] RPC 10 (at [23])
Bennett J in the Full Court decision of H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; (2009) 177 FCR 151 concurred with Lord Hoffman’s approach noting at [182] that:
“It may be that the prior disclosure is of a method that produces the claimed product. If that method leads inexorably to the product, there is anticipation .... If it may or may not result in the claimed product, there is no anticipation”. (my emphasis).
Finally, as noted in the Pfizer [supra] decision, a citation to deprive a claim of its novelty must be the same as the claimed invention for the purposes of "practical utility". In other words, the citation has to "enable" the skilled worker to produce the invention from the written disclosure. The basic principle is explained in Hill v Evans (1862) 4 De G F & J 288; 45 ER 1195be where the court noted:
"...the antecedent statement must be such that a person of ordinary knowledge in the subject would at once perceive, understand, and be practically able to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful. If something remains to be ascertained which is necessary for the useful application of the discovery that affords sufficient room for another valid patent".
Relevant art
The opponent relied on the following documents for novelty at the hearing:
D1 (DS-3): Kopp V.R et al., SAE paper No. 930143, Heavy Hydrocarbon/Volatility Study:Fuel Blending and Analysis for the Auto/Oil Air Quality Improvement Research Program, SAE Technical Paper Series, Society of Automotive Engineers Congress, Detroit, March 1-5 1993 (Kopp)
D2 and D2a (DS-4 and DS-5 respectively) Pahl, RH and McNally MJ, SAE paper No. 902098 (D2) (published in October 1990) and Gerry FS et al SAE Paper No. 920324 (D2a) (published in February 1992) SP-920, Auto/Oil Quality Improvement Research Program, Society of Automotive Engineers.
D1, D2 and D2a are all part of a series of papers relating to the Auto/Oil Air Quality Improvement Research Program (AQIRP). AQIRP was a collaborative research program initiated in 1989 with the aim of improving fuel (exhaust) emissions in vehicles. All three publications looked at a range of fuel compositions to determine what effect these have on exhaust emissions.
The citations provide detailed volatility data and total olefin content for a range of fuel compositions. While these documents do not explicitly mention the percentage content of either C10 (or C10+) olefins or C10 (or C10+) aromatics, they contain a detailed analysis of over 140 individual chemical components in each gasoline composition (“fuel speciation” data) obtained by gas chromatography (GC). The opponent’s expert (Dr Seddon) used this data to determine the type and amount of low MW olefins and aromatics (containing 9 carbons or less). By subtracting this value from the total olefins or aromatics present (measured separately using FIA), he was able to determine a percentage value for the higher weight moieties.
The applicant’s expert (Mr Halliburton) argued that the methods used to measure (i) the content of total olefins or aromatics (FIA method) and (ii) the C1-9 olefin or aromatic content (GC content) are not consistent with each other and it was not possible to combine the data from different sources. Dr Seddon revised his calculations (for D1) in light of this criticism and recalculated the compositional parameters based on the GC data (alone). However he found no significant difference in the total olefin/aromatic concentrations measured using either GC or FIA[18] and the values obtained still fell within the scope of the claim regardless of the experimental method used.
[18] Sesson#2 at [8.21]-[8.22]
D1 (Kopp) is the closest art and the latest of the three papers (published in 1993). Table 13 in this document listed the total olefin/aromatic content as well as volatility parameters for 26 different gasoline compositions. The key fuel compositions were examples 1B, 5B and 7B (the Kopp examples) which contain 10-20% olefins and have a distillation profile within the scope of claim 1. The C10 (or C10+) olefins or C10 (or C10+) aromatics content was not explicitly disclosed but (as noted above) Dr Seddon derived this information based on fuel speciation data provided in the specification.
Based on his calculations, Dr Seddon’s view was that each of the Kopp examples would fall within the scope of claim 1 (as indicated in the table below):
Olefin content (%v) C10+ Olefins (%v) C10+ Aromatics (%v) Ti
(oC)T10
(oC)T50
(oC)T90
(oC)Tf
(oC)Eg 1B 15 (14.70*) 1.4 0.45 33 54 90 131 157 Eg 5B 15.3
(15.22*)1.2 3.20 34 51 80 131 156 Eg 7B 13.5
(13.50*)1.2 0.78 33 49 86 149 211 Claim 1 10-20 <5% <5% 24-45 38-60 77-110 130-190 <220 *based on GC data rather than FIA data – see Seddon#2 at [8.21]
Dr Seddon performed a similar analysis for fuel ‘P’ which was disclosed in both D2 and D2a[19]. The opponent noted that because D2a had specifically stated that their report supplements the fuel analysis data presented in their earlier paper (D2), there was a clear intention to combine the two sets of data to complete the property parameters for each fuel composition and hence these two documents can be combined as a single disclosure for the purposes of section 7(1)(b). Their combined data set for fuel P is as follows:
[19] Based on Opponent’s submissions [110]-[113] and Seddon#1 page 11
Olefin content (%v) C10+ Olefins (%v) C10+ Aromatics (%v) Ti
(oC)T10
(oC)T50
(oC)T90
(oC)Tf
(oC)Fuel P 18.3* 1.9** 0%** (1.6%)[20] 32* 52* 88* 140* 183* Claim 1 10-20 <5% <5% 24-45 38-60 77-110 130-190 <220 [20] The difference (0% cf 1.6%) depended on the method of calculation used but regardless, both results fell within the scope of the claim
*from table 10, D2
** from fuel speciation data in annex G, D2a
The applicant argued that Dr Seddon’s analyses were not based on ‘hydrocarbon base fuels’ (as the applicant had construed the term) because each of the prior art fuels contained an oxygenate (MTBE[21]). According to the applicant, this resulted in the citations failing to disclose an essential feature of the claims. In particular[22]:
(a)D1 does not disclose the physical integers of the gasoline composition of claim 1 because the distillation profiles have been performed on a base fuel that contained MTBE; and
(b)The combination D2/D2a does not disclose the chemical integers of the gasoline composition of claim 1 because 7% of the composition is missing and its effect is unknown; for example, if the missing 7% only contained C10 (or C10+) olefins or C10 (or C10+) aromatics, then the compositions would fall outside the scope of the claims.
[21] methyl tert-butyl ether
[22] Applicant’s submissions at [74]
I accept that these features are absent from the citations and agree that the applicant’s construction overcomes the novelty concerns raised by the opponent. However, even if these factors are left aside, I do not believe that the citations would have deprived the claims of their novelty for the following reasons.
Dr Seddon derived his information about the claimed parameters using a complex calculation with the express purpose of determining the levels of C10 (or C10+) olefins or C10 (or C10+) aromatics. Without knowledge of the claimed invention, the skilled person would not have performed a similar calculation and therefore could not have inferred the claimed parameters from the citation as a matter of course. The claimed parameters were therefore not the type of information that the skilled person would “at once perceive, understand, and be practically able to apply the discovery without the necessity of making further experiments and gaining further information”[23]. As Mr Halliburton argued, the information was “fragmented and buried deeply (if not cryptically)” in the citation[24].
[23]As per Hill v Evans (1862) 4 De G F & J 288; 45 ER 1195be
[24] Halliburton #2 at [434] for example
In considering whether information could deprive a claim of its novelty, the Full Court in Novozymes v Danisco [2013] FCAFC 6 at [17]:
“it is not the doing of [an act], nor even the ability to do it, that amounts to anticipation: it is the content of the information. If the information contains directions which if carried out, would constitute an infringement of the patent in suit, the invention under the latter is not novel”.
The fuel speciation data in D1 and D2/D2a is simply interesting information collected from a wide range of different gasoline compositions (20+ in both cases) for comparison and research[25]. When read as a whole, these documents do not contain any ‘clear and unmistakable’ directions to make a specific gasoline composition from among the range of formulations tested. The lack of guidance about particular (critical) parameters and the statistical variability in measuring such parameters would not allow the skilled worker to necessarily produce a gasoline composition which falls within the scope of the claims from the directions provided in the citations. The skilled worker also would not have used the speciation information to reverse engineer a gasoline composition. The information in the citations therefore does not enable the skilled worker to make a composition with the claimed parameters.
[25] D1 even specifically notes (see page 100, column 2, 2nd paragraph) that fuels 1B and 5B were on the distillation extremes for the A and B matrices
There is a secondary argument that the physical samples being analysed might nonetheless still have contained the claimed parameters. However this is an ‘inherency’ argument and (as noted above) the onus would then be on the opponent to show that the product inevitably contained the claimed parameters. In this case, the onus has not been discharged. As Mr Halliburton noted (and the opponent accepted), all the parameters were experimentally measured in the citation and therefore subject to (inherent) experimental variation (‘R’ values). This level of variation means that the physical gasoline sample could have fallen outside the scope of the claims. This is reflected in Mr Halliburton’s conclusion in which he states the ‘measured values’ are not ‘precise’ enough to ‘clearly and unambiguously divulge the claimed invention’[26].
[26] see, for example, Halliburton#2 at [44], [49]
As a consequence, none of the citations deprive the claims of their novelty
Inventive step
Relevant Law
The question of inventive step is determined under the provisions of subsections 7(2) and 7(3) of the Patents Act 1990 (Cth). For applications with examination requests filed before 15 April 2013, the relevant sections read as follows:
(2)For the purposes of this Act, an invention is taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to the person skilled in the art in light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3)The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information;being information that the skilled person... could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.’
The test for obviousness is whether it would have been a matter of routine to proceed to the claimed invention from the prior art.
“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.” (Aicken J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; (1981) 148 CLR 262 at 286)
The High Court in Aktiebolaget Hassle v Alphapharm Pty Limited [2002] HCA 59; 212 CLR 411 at [53] expressed this test more recently in terms of a reformulated “Cripps question” :
“Would the notional research group at the relevant date in all the circumstances … directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce [the desired result]?”
To provide some context for the Cripps question, the Courts commonly determine the “starting point” for consideration of inventive step often in terms of an existing problem for which the inventor found a solution. As noted by High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (no. 2) [2007] HCA 21 at [105]:
“While not every invention constitutes a solution to a problem, it is commonplace so to describe an invention where is appropriate to do so”
Recent Federal Court decisions have clearly followed this approach. Thus in Ranbaxy Laboratories Ltd v AstraZeneca AB [2013] FCA 368 at [203]-[218], Justice Middleton cited Jagot J’s comments in Apotex Pty Ltd v AstraZeneca AB (No 4) [2013] FCA 162 with approval:
“In assessing obviousness, it is necessary first to determine the nature of the claimed invention and the inventive step described in the Patent. This may involve ascertaining the “starting point” of the inventive step, sometimes described in terms of an existing problem for which the inventor found a solution. The obviousness of the invention as claimed is then assessed by reference to common general knowledge in Australia at the priority date.”
Problem to be Solved
The problem in the art to be solved is to improve the oxidative stability of engine crankcase lubricant and reduce the level of engine sludge in a fuel-spark engine. The skilled worker is a formulator of gasoline compositions.
Relevant Prior Art
The opponent relied on the following art in relation to inventive step:
(a)D1, D2 and D2a Reports of the Auto/Air Quality Improvement Research Program (AQIRP) including details of the AQIRP studies and their results (DS-3 – DS-5)
(b)D4: Galliard SAE Paper 922218 IR Galliard and JRF Lillywhite “Field Trial to investigate the effect of Fuel Composition and Fuel Lubricant Interaction on Sludge Formation in Gasoline Engines” SAE International Fuels and Lubricant Meeting and Exposition, San Francisco, California, USA, October 19-22, 1992 (Galliard) – (DS-14)
(c)American Society for Testing and Materials (ASTM) standard test methods including the standard test methods for conducting speciation and volatility measurements: S 1319 (olefin and aromatic content) and ASTM D-86 (volatility) (DS-9)
(d)The World Wide Fuel Charter as at December 2000 and the compositional guidelines therein (DS-6)
(e)The CRC handbook of Chemistry and Physics
(f)Summary Report of the Review of Fuel Quality Requirements for Australian Transport May 2000 (DS-7)
The opponent noted that each of these documents would have been widely read by the skilled worker at the priority date and argued that the documents must therefore have formed part of the CGK. Aickin J. explained the concept of CGK in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Limited (1980) 144 CLR 253 at page 292 as follows:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
However, as noted by the Full Court in Aktiebolaget Hassle and Astra Pharmaceuticals Pty Ltd v Alphapharm Pty Ltd 51 IPR 375; [2000] FCA 1303 (at [72]-[74])[27], while the CGK includes publications which containing technical and detailed information that are habitually consulted by the hypothetical skilled worker, this did not extend to any literature which “the skilled worker in the field would, as a matter of routine, read” otherwise the concept of CGK would lose much of its significance.
[27] This decision was appealed to the High Court(see Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59) with the CGK findings confirmed
In the current case, the documents listed above in groups (c)-(f) are well-known general references and I accept that they would be habitually consulted by the skilled worker. I therefore agree that some information in these documents would form part of the CGK. However, the documents listed in groups (a) and (b) (ie D1, D2, D2a and D4) are much more specific (research) publications. Even if this research had been based on commonly available fuels, the detailed data contained within the reference would not have formed part of ‘the background knowledge and experience which is available to all in the trade’[28] and there is no evidence that these types of publications would be routinely consulted for specific technical information. In my view, while the publications might be in journals which a skilled worker would routinely read, I do not agree that the documents themselves form part of the CGK.
[28] As per Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Limited (1980) 144 CLR 253 at page 292
Despite this, a document could still form part of the prior art base for inventive step under section 7(3) if it could have been ascertained, understood and regarded as relevant at the priority date of the current claims. As discussed under novelty, D1, D2 and D2a all relate to the problem of air quality emissions rather than improving the oxidative stability of engine crankcase lubricant. While Mr Halliburton conceded that soot formation was known to be related to sludge formation[29], there is no evidence that a skilled worker faced with the latter problem would routinely search documents related to the first problem. In any case, D1, D2 and D2a are generally concerned about air quality emissions and do not discuss a link between soot formation and olefin content. It seems unlikely that the skilled person would have been ascertained these documents or regarded them as relevant in light of the problem to be solved. As a consequence, I am not satisfied that any of these documents are part of the prior art base for inventive step under section 7(3).
[29] Halliburton#1 at [21]
In contrast, D4 (DS-14) also published by the Society of Automotive Engineers (SAE) is in a publication which was widely read by the skilled reader at the priority date[30]. Because it considers the interaction of fuel composition and lubricant on sludge formation in gasoline engines, the paper is highly relevant to the problem of improving the oxidative stability of engine crankcase lubricant. In my view, a skilled worker would have ascertained and regarded this publication as relevant at the priority date and I accept that this document is part of the prior art base for inventive step under section 7(3).
[30] Seddon#1 at [6.1.4]
Inventive step based on D4 (DS-14)
D4 (DS-14) was published in 1992 by the current applicant. The document compares a range of fuels and their impact on sludge formation in gasoline engines. The paper demonstrated that there were significant fuel, lubricant, and fuel-lubricant interactions, on the propensity to form sludge. Fuel end-point, the presence of fuel detergent and the presence of heavy aromatics were found to be particularly significant in the control of sludge formation[31].
[31] D4 - page 8, column 1, conclusion 4
The citation lists its “top 4” sludge forming parameters in the following order of significance:
(i)lubricant dispersant levels;
(ii)fuel dispersants;
(iii)fuel end-point and
(iv)an interaction between fuel end-point and hydrocarbon type (specifically heavy aromatics).
D4 concludes that high end-point fuels containing a large amount of heavy aromatics and no detergent showed the most marked sludge tendencies. The opponent relied on a particular passage in D4 which stated “both heavy aromatics and heavy olefins gave rise to poor sludging performance”[32] to suggest that heavy olefins were also known to increase engine sludge.
[32] D4- page 7, column 2
However, the applicant argued that the passage needs to be read in the context of the paragraph as a whole:
“For the lubricant with the lower performance level, and in the absence of the fuel detergent, fuels with both heavy aromatics and heavy olefins gave rise to poor sludging performance. Indeed, in the case of heavy aromatic fuel (which contains zero olefins), the onset occurred at a lower accumulated mileage…. ….”
I note that this conclusion is based on specific data (presented in figures 2 and 3) which compared the sludging performance of two different fuel base compositions described as “heavy aromatics” (figure 2) and “heavy olefins” (figure 3). Each figure compared four compositions which differed according to their gasoline end point and whether they contained a detergent:
(i)low gasoline end point (174oC) with detergent (LEPd);
(ii)low gasoline end point (174oC) without detergent (LEP);
(iii)high gasoline end point (208oC) with detergent (HEPd); and
(iv)high gasoline end point (208oC) without detergent (HEP).
The best results in both figures were obtained with a composition having a low gasoline endpoint plus detergent [LEPd]. The worst results were obtained from the fuel composition having a high endpoint without detergent (HEP). In other words, the poor performance in both figures is related to the absence of a detergent. The paragraph relied on by the opponent notes that when a detergent is absent, fuels with both heavy aromatics and heavy olefins gave rise to poor sludging performance. In the context of the document as a whole, the paragraph is not suggesting that heavy aromatics or heavy olefins cause the poor performance but simply noting that the absence of a detergent causes poor performance in both types of compositions.
This is consistent with the document as a whole. Olefins were not listed in its “top 4” significant sludge forming parameters and while the paper acknowledges that olefins (or more specifically di-olefins) were known to form sludge, it concludes that olefin content alone is not the determining factor[33]. As Mr Halliburton suggests, a skilled worker reading this document as a whole would therefore seek to improve the dispersant levels/fuel additives rather than target the olefins[34].
[33] D4 - page 7, column 2,
[34] Halliburton#2 at [459]
D4 also notes that the most important base fuel parameter is fuel end point and teaches that fuels with high end points are more prone to sludge formation[35]. The opponent argued that high molecular weight hydrocarbons (including olefins) are known to have high boiling points which would raise the end point in a composition[36]. They suggested that the skilled worker would therefore be directly led to reduce the level of heavy olefins in order to lower the gasoline end-point.
[35] D4 – page 7, column 2, see also figures 2 and 3
[36] Seddon#2 at [8.49]
However the opponent did not provide any evidence that minimising heavy olefins was a routine way of adjusting gasoline end-point and there appear to be other (simpler) ways of doing this[37]. Given that the citation itself suggests that olefins (in contrast to aromatics) are not important, I am not satisfied that the skilled worker would be directly led to lower the levels of heavy olefins from the teaching of D4.
[37] This can be inferred from table 1 in D4. The listed compositions had similar heavy olefin/aromatics content but still have different end-points. There were also compositions containing both high olefin and aromatics which have low end-points (in other words, the additional heavy component levels didn’t change the end-point)
The opponent argued that the claimed parameters can be derived by combining the teaching of D4 with particular examples in D1 (ie: 1B, 5B and 7B). However even if D1 were part of the CGK, it can’t be combined with D4 in the way that the opponent has suggested without ex post facto analysis. There is no motivation to combine D4 with particular gasoline compositions and the opponent has therefore failed to establish that the combination of claimed integers is obvious based on D4.
Inventive step based on the CGK alone
Although the opponent referred to a number of documents as part of the CGK[38], only two of these documents are actually relevant to their inventive step argument (DS-6 and DS-7). Both these documents provide properties and standards for typical gasoline compositions available at the priority date of the current application. DS-6 was the World Wide Fuel Charter (as at December 2002) and DS-7 was a 2-page excerpt from a Review of Fuel Quality Requirements for Australian Transport (May 2000).
[38] Opponent’s submissions at [123]
The world-wide fuel charter (DS-6) was first established in 1998 “to promote a greater understanding of the fuel quality needs of motor vehicle technologies and to harmonise fuel quality world-wide in accordance with vehicle needs”[39]. While the charter is initiated by car manufacturers in Asia, Europe and America, it recommends (harmonised) fuel standards which could be applied anywhere in the world. Australian manufacturers would therefore clearly be interested in these considered views.
[39] DS-6, page 1, lines 6-8
DS-6 provides the recommended distillation profiles of category 2, 3 and 4 gasolines[40] which overlap the volatility parameters defined in claim 1 (see table below). It discusses olefin content but notes that olefins in gasoline can lead to gum formation and deposits in an engine’s intake system and also lead to ozone formation and the production of toxic di-enes[41]. It therefore recommends the reduction of total olefins from 20% to 5% to significantly reduce ozone-forming potential in 3 critical cities (LA, Dallas and New York). DS-6 also notes that about 70% of this realised benefit would be by reducing low MW olefins. In other words, the clear teaching of this citation is to reduce total % olefin content (and in particular low MW olefins) which is contrary to the current claims.
[40] DS-6 page 11 second table
[41] DS-6, page 27, lines 16-28
In contrast, DS-7 (a 2-page excerpt of a much larger document) discloses the total olefin content of a range of typical gasolines produced by Australian refineries and their FBP in May 2000 (pre-dating the recommendations to reduce olefin content in DS-6). The range of total olefins was 1-21.3% but the Australian average was 13% with 14 out of 17 refineries producing a fuel composition within the claimed range (10-20%). DS-7 also disclosed that all the gasoline formulations being measured had a FBP under 220oC with the Australian average FBPs being 192oC. However DS-7 did not disclose any of the other volatility parameters or % C10 /C10+ olefins or %C10/C10+ aromatics.
As the applicant noted (and I accept) neither DS-6 nor DS-7 discloses a gasoline composition with all the claimed parameters. Nonetheless Dr Seddon argued that these documents support his proposition that a ‘typical’ (or standard) gasoline produced in Australia at the priority date would have fallen within the scope of the claim[42]. Thus, DS-6, for example, recommends the following distillation profile parameters in gasolines:
[42] Seddon#2 at [9.15]
Ti
(oC)T10
(oC)T50
(oC)T90
(oC)Tf
(oC)DS-6[43] ND 45-65 77-100 130-175 195 Claim 1 24-45 38-60 77-110 130-190 <220 [43] Set out in DS-6 [page 11] for Category 2,3 gasolines
Dr Seddon combined these distillation parameters with the teaching of DS-7 which showed the Australian average total olefin content in gasoline was 13%. While the % levels of C10/C10+ olefins or C10/C10+ aromatics were not disclosed in either document, Dr Seddon argued that the skilled person would understand these to be low because gasoline is made from the lower boiling fractions from crude oil and would not have a high proportion of high MW (‘heavy’) olefins or aromatics. In his view 95%+ of the total olefins in gasoline compositions would be classified as low MW olefins[44].
[44] Seddon#2 at [8.46]
As Dr Seddon has framed this inventive step argument, he is essentially alleging a lack of novelty based on ‘inherent’ properties he has assumed to be present in a ‘typical gasoline’ in Australia. However, without documentary evidence to support the assertions that the ‘typical gasoline’ inevitably contained the claimed parameters, the opponent has not discharged their onus of proof. As discussed under novelty, there was a range of gasoline compositions produced at the priority date and neither document (on its own or in combination) contains ‘clear and unmistakable directions’ to make a gasoline composition within the scope of the current claims.
Further Dr Seddon’s argument relies on combining elements from different parts of the CGK documents. This is ‘cherry picking’ from integers in the prior art to arrive at the claimed solution (as per Bayer Health Care AG v Novartis AG [2005] APO 35). It is well-established law that where an invention is a combination, the opponent has the onus to prove not only that the integers are well-known but that the combination of integers is obvious to the person skilled in the art in the context of solving the problem:
"The proper question is not whether it would have been obvious to the hypothetical addressee who was presented with an ex post facto selection of prior specifications that elements from them could be combined to produce a new product or process. It is rather whether it would have been obvious to a non-inventive skilled worker in the field to select from a possibly very large range of publications the particular combination subsequently chosen by the opponent in the glare of hindsight and also whether it would have been obvious to that worker to select the particular combination of integers from those selected publications. In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious. ... The opening of a safe is easy when the combination has been already provided."[45]
[45] Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Limited (1980) 144 CLR 253 at page 293
Dr Seddon also noted that heavy (ie: high boiling point) olefins and aromatics tend not to evaporate (especially in a cool engine when starting up) but will tend to mix with the oil film on the cylinder wall and thereby pass to the lubricating oil in the sump where they would react with free radicals in the blow-by gases and form sludge[46]. He argued that the skilled worker would therefore realise that heavy (high MW) olefins and aromatics in a gasoline promote the degradation of lubricating oil[47] which would directly lead the skilled worker to reduce these levels in a typical gasoline.
[46] Seddon#2 at [6.3.34]
[47] Seddon#1 at [6.3.34]
However, while Dr Seddon provided a good explanation for why high molecular weight olefins could be a problem in sludge formation[48], it is not clear that this had been recognised at the priority date because most (if not all) the focus had been on high MW aromatics. His opinion may have an extrapolation of Galliard’s work (D4)[49] but as discussed above, this citation never identified high MW olefins (as opposed to aromatics) as being a concern in engine sludge.
[48] Seddon#2 at [8.47]
[49] See his discussion in Seddon#1 at [6.3.1] and comments made in Seddon#2 at [8.49]-[8.50]
The applicant’s expert (Mr Halliburton) provided some evidence (before he saw the opposed specification) of how a skilled person (a gasoline formulator) would have approached the problem of sludge formation at the priority date[50]. He identified two components of a gasoline composition which were considered to be involved in sludge formation:
(i)low molecular weight olefins – these are more susceptible to thermal cracking and produce free radicals which react with more stable molecules in the engine oil[51]; and
(ii)high molecular weights molecules (ie: having a high carbon number) – these molecules have a higher propensity towards soot (and therefore sludge) formation[52].
[50] Halliburton#1[14]-[22]
[51] Halliburton#1 at [17]-[19]
[52] Halliburton#1 at [20]
Mr Halliburton concludes that the gasoline fuel formulator who aimed to reduce the formation of engine sludge in a combustion engine would therefore tend to keep the amount of these types of high molecular weight molecules to a minimum in their formulations where possible[53]. He makes no mention of any volatility parameters as being linked to sludge formation and apart from gasoline end-point (discussed below), there is no evidence that a skilled worker would adjust any of these parameters to reduce the problem of sludge formation.
[53] Halliburton#1 at [20]
Although Mr Halliburton’s conclusion suggests that (any) high molecular weight molecules are associated with soot formation, his following paragraph implies that the high molecular weight moieties of concern were not any high MW compounds but “high weight aromatics and napthenes”[54]. This is consistent with his view that you also needed to avoid low MW olefins.
[54] Halliburton#1 at [21]
Dr Seddon questioned whether thermal cracking would have been a significant problem in sludge formation[55] (as Mr Halliburton had suggested). Dr Seddon argued that the term ‘thermal cracking’ is used to describe the breakdown of molecules largely in the absence of oxygen (ie in a reducing environment). Because engines operate in conditions of excess oxygen, Dr Seddon did not believe that thermal cracking would be a major contributor to the sludge forming process. He also believed that olefins are little different to other components in a gasoline and would not be expected to show higher thermal cracking rates even if thermal cracking was a significant mechanism in engine sludge formation.
[55] Seddon#2 at [9.10]-[9.12]
However, if Dr Seddon’s analysis is correct, then the levels of low MW olefins should have no bearing on sludge formation. As a result, while the skilled worker might not be taught away from increasing the low MW olefin content, they would also not be directed towards this solution. They would therefore be equally surprised by the significant improvements in oxidative stability produced when higher concentrations of low MW olefins were tested as such results were against the expectation of the art[56].
[56]As discussed above, the key difference between the comparative and inventive examples is the level of low MW olefins [low (0-4%) versus high (10%+)]. There is a substantial difference between their oxidative stability results. Table 2 on page 14 of the opposed specification, for instance, shows example 1 has a 100% improvement in the TAN/TBN crossover results compared to comparative example A
As a consequence, my view is that the opponent has not established that the skilled worker faced with the problem of decreasing engine sludge in a fuel combustion engine would have directly been led to produce a gasoline composition with the claimed parameters from their CGK. The opponent has therefore not established that any of the claims lack inventive step based on the CGK.
Section 40
The opponent’s submissions raised a number of other section 40 arguments which I have dealt with individually below.
Sufficiency[section 40(2)]
The opponent argued that while the specification teaches that stabilisers may also be needed in gasoline compositions containing ethanol (see page 7, lines 3-5), example 4 (the only example which includes ethanol) does not specify whether or not a stabiliser was used. The invention is therefore insufficiently described insofar as claims 10-13 (referencing example 4) are concerned[57]. Similarly, stabilisers appear to be essential for the working of gasoline compositions containing methanol but have not been defined in claim 2[58].
[57] Opponent’s submissions at [173]
[58] Opponent’s submissions at [175]
I note that the purpose of the description is to fully describe an invention so that a skilled worker can understand the invention and be able to put the invention into practical effect. In that regard, a feature which is not essential to the invention may nonetheless be essential to make the invention work. As long as the skilled worker is able to supply the feature from the description or their CGK, then the specification will be fully described without it being necessary to include the feature in the claims.
In the current case, the description clearly indicates that oxygenates are an optional (or preferred) feature of the invention[59]. Oxygenates are a common additive and the skilled worker would therefore understand how to formulate a gasoline containing oxygenates. Without any evidence to the contrary, my view is that the skilled worker would be able recognise when and how stabilisers should be used. The specification is therefore fully described in regard to stabilisers.
Clarity [section 40(3)]
[59] Opposed specification at page 6, lines 28 and page 7, lines 8-10 (for example)
As noted above, the applicant had apparently intended the term “hydrocarbon base fuel” to mean a base fuel containing additional hydrocarbons but not oxygenates. This was not defined in the specification nor is it clear when reading the specification as a whole. The term is important in determining the scope of the claims 1-9 and without a clear meaning provided for this term, these claims are unclear.
The opponent also argued that the specification does not disclose the methods used to determine compositional parameters and without such the skilled worker could not determine whether they were infringing the claims. This argument was presented as the ‘flip-side’ to the applicant’s original novelty argument. According to the opponent, if it was not possible to determine whether a previous gasoline fell within the scope of the claims (‘reverse infringement’) because of the number of available tests which could be used to measure each parameter[60] (and the inherent statistical variability inherent in each test) then the same also must be true for determining ‘future infringements’ and hence the scope of the claims are unclear.
[60] In fact, they argued that LGH-8 discloses 10 different methods for determining compositional parameters of gasoline
I note that the ‘statistical variation’ argument was only relevant when the opponent had to demonstrate that a physical entity (a gasoline sample) inherently had the defined parameters. This is a high standard for novelty because it requires a missing feature to be necessarily present (‘inexorably’ or ‘inevitably’). However the same problem does not apply to clarity. A claim does not lack clarity because it uses inexact expressions or is difficult to construe, as long as it provides a ‘workable standard’ suitable to the intended use (as per Henrikson v Tallon Ltd [1965] RPC 434; Minnesota Mining & Manufacturing Co & 3M Australia Pty Ltd v Beiersdorf (Aust) Ltd [1980] HCA 9; (1980) 144 CLR 253 at 274. As noted by the Full Federal Court in Austal Ships Pty Ltd v Stena Rederi Aktiebolag [2005] FCA 805; (2005) 66 IPR 420:
“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to their intended use. The consideration is whether, on any reasonable view, the claim has meaning. In determining this, the expression in question must be understood in a practical, common sense manner. Absurd constructions should be avoided and mere technicalities should not defeat the grant of protection.”
While there may be a number of tests to measure compositional parameters, the evidence doesn’t suggest that these lead to markedly different results. The ASTM (American Society for Testing and Materials) provides standards for measuring gasoline properties and the skilled worker would use these where possible to measure a compositional parameter[61]. While there would be statistical variation in such experimental measures, they are also common parameters and the skilled worker would be aware of the limitations of such techniques and be able to work within them. The claimed (measured) parameters therefore provide a ‘workable standard’ and the claims do not fail for want of clarity under this basis.
Fair basis [section 40(3)]
[61] Seddon#1 at [6.1.3] acknowledges that ASTM standards included ASTM D-86 (volatility measurements) and D-1319 (olefin and aromatic content)
The specification defines a range of gasoline compositions with specified compositional parameters. However the opponent argued that there were only four examples (examples 1-4) and no basis to extrapolate from the preferred embodiments to the broad field now claimed[62].
[62] Opponent’s submissions at [155]-[170]
As both parties acknowledged, the test for fair basis was outlined by the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2004) 217 CLR 274. The test merely requires that the claims are consistent with what the specification as a whole describes as the invention. The specification clearly does not suggest that the invention is limited to the preferred embodiments and there is therefore no basis to assume that the invention has such a limited field of application. As a consequence, there is therefore no basis to restrict the claims to the preferred embodiments and my view is that the claims are therefore fairly based.
Utility [section 18(1)(c)]
The opponent argued that claim 2 lacks utility on the face of the specification. Claim 2 allows up to 10% v/v methanol but this seems not to be possible given the admission on page 7, lines 1-2 of the opposed specification which reads “…but if methanol is used it can only be in an amount up to 3% v/v and stabilisers will be required”[63]. The opponent raised a similar argument under the ground of fair basis[64].
[63] Opponent’s submissions at [177]
[64] Opponent’s submissions at [171]
I note that the relevant phrase appears in a section of the paragraph bridging pages 6 and 7 of the specification which reads as follows:
The ethers containing 5 or more carbon atoms per molecule may be used in amounts up to 15%v/v, but if methanol is used, it can only be in an amount up to 3%v/v and stabilisers will be required. Stabilisers may also be needed for ethanol which may be used up to 5% to 10% v/v. Isopropanol may be used up to 10% v/v, tert-butanol up to 7%v/v and isobutanol up to 10%v/v.
The applicant argued that the word ‘but’ links the discussion about methanol to the earlier comments about ether. According to the applicant, the upper limit (‘3% v/v’) is therefore referring to a formulation where both methanol and ether are present. However, the preceding sentence in the paragraph had noted that alcohols and ethers are both oxygenates which may be incorporated in gasolines as additives. From that context, the plainer construction is that the three sentences outlined above provide the maximum levels of each individual additive (ethers and alcohols). The word ‘but’ in the first sentence is simply used to highlight the difference between the maximum amounts of ether (15%) and methanol (3%) that can be added. I am not entirely clear from the structure of that sentence whether stabilisers are always required when methanol is included (and 3% is the maximum methanol allowed) or whether more than 3% of methanol can be added (as long as stabilisers are present). I will assume the latter given that the following paragraph suggests that up to 10% methanol can be added and note that the skilled worker may have understood this from their CGK.
Given the latter construction, the specification does not teach that compositions containing more than 3% methanol will not work. I therefore find that the invention as claimed in claim 2 is useful.
Conclusion
The applicant had apparently intended the term “hydrocarbon base fuel” to mean a base fuel containing additional hydrocarbons but not oxygenates. This was not defined in the specification nor is it clear when reading the specification as a whole. The term is important in determining the scope of the claims 1-9 and without a clear meaning provided for this term, these claims are unclear. As a consequence, claims 1-9 fail to comply with section 40(3) [clarity].
The applicant’s construction obviates the novelty concerns. However regardless of which construction was correct, my view is that the opponent has not established that any of the claims lack novelty or an inventive step.
100. As there are no other outstanding section 40 or section 18 problems, I believe there is patentable subject matter in the specification and allow the applicant 60 days in which to propose suitable amendments to overcome the deficiencies noted above.
Costs
101. The opposition is partly successful in relation to a significant clarity issue, the resolution of which is important to understand the scope of the claims. In these circumstances, I award costs against the applicant Shell Internationale Research Maatschappij B.V.
Karen Ayers
Delegate of the Commissioner of PatentsAnnex A
Comparison of Gasoline Compositions in Opposed Specification
Inventive examples
(examples 1,2,3,4)Comparative examples
(examples A, B, C and D)A and B C and D
E and F 1= comparative example A plus light cat-cracked gasoline[65]
A = base fuel
B = (A + aromatics[66])2 = comparative example C plus 15% (v/v) diisobutylene (a C8 diene)
C= base fuel
D= (C + aromatics)3 = comparative example C plus ex-refinery stream of C5 and C6 olefins (15%v/v)
C= base fuel
D= (C + aromatics)4= Comparative example C plus 10% (v/v) diisobutylene and 5% (v/v) ethanol E = “similar to Comparative example C”[67]
F= comparative example E plus 5% (v/v) ethanol[65] This is the lower boiling point fraction of a refinery stream produced by catalytic cracking of heavier hydrocarbons and was used to increase olefins in the example
[66] The aromatics were added by the addition of heavy platformate (the higher boiling point faction of a refinery stream manufactured by reforming naptha over a platinum catalyst)
[67] Opposed specification page 18, lines 7-8
Properties of each fuel composition compared with claim 1 (figures in bold indicate that the parameter is outside the scope of claim 1)
Fuel Olefin content (%v) C10+ Olefins (%v) C10+ Aromatics (%v) Ti
(oC)T10
(oC)T50
(oC)T90
(oC)Tf
(oC)Eg 1 16.4 0 0.46 30 46 83.5 143 168.5 Comp A 0.61 0 0.57 32.5 49.5 107.5 147.5 173 Comp B 0.43 0 7.10 35 54 109.5 168.5 205.5 Eg 2 17.97 0 0.57 35 56 102.5 142 172 Eg 3 17.63 0 0.98 32 46.5 87.5 143 170.5 Comp C 3.33 0 1.33 35 51.5 105.5 146 174.5 Comp D 1.92 0 6.83 35 57 105.5 166 196.5 Eg 4 13.02 0 0.49 40 52.5 100.5 138.5 168.5 Comp E 3.51 0 0.59 38 55 101 142 169 Comp F 3.33 0 0.55 35.5 50 97.5 141 167 Claim 1 10-20 <5% <5% 24-45 38-60 77-110 130-190 <220
13
0