ExxonMobil Upstream Research Company v Shell Internationale Research Maatschappij B.V - [2016] APO 51

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
ExxonMobil Upstream Research Company v Shell Internationale Research Maatschappij B.V. [2016] APO 51
Patent Application: 2008213739

Title:Process and apparatus for depleting carbon dioxide content in a natural gas feedstream containing ethane and C3+ hydrocarbons

Patent Applicant:                   Shell Internationale Research Maatschappij B.V.
Opponent:  ExxonMobil Upstream Research Company
Delegate:  Rhys Munzel
Decision Date:  27 July 2016
Hearing Date:  Written submissions filed on 17 May 2016

Catchwords: PATENTS – Final determination – whether amendments made overcome deficiencies previously identified – claims still considered to lack novelty and an inventive step – further amendments to claims suggested by applicant – further suggested amendments considered to overcome the deficiencies – a further opportunity to amend is provided – no award of costs – final determination hearing initiated by the Commissioner

Representation: Patent attorney for the applicant: FB Rice
Patent attorney for the opponent: Watermark

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2008213739
Title:Process and apparatus for depleting carbon dioxide content in a natural gas feedstream containing ethane and C3+ hydrocarbons

Patent Applicant: Shell International Research Maatschappij B.V.
Date of Decision: 27 July 2016
DECISION
The presently allowed amendments to the specification do not overcome the deficiencies identified in the earlier decision. It is clearly apparent that amendments could be made which would overcome those deficiencies. The applicant is afforded four (4) weeks from the date of this decision to make them.
No award of costs is made.
REASONS FOR DECISION
Background

Patent application 2008213739 (“the application”) in the name of Shell Internationale Research Maatschappij B.V. (“Shell”) was examined and accepted by the Commissioner. Grant of the patent was subsequently opposed by ExxonMobil Upstream Research Company (“Exxon”). That opposition was the subject of my earlier decision: ExxonMobil Upstream Research Company v Shell Internationale Research Maatschappij B.V.[1] In that decision Exxon established that claims 13-16 (as they then existed) lacked novelty and an inventive step. I also provided Shell with eight weeks to propose suitable amendments to overcome the deficiencies identified (“the identified deficiencies”).
[1] [2015] APO 39.
On 31 August 2015 Shell proposed amendments to the specification (“the amendments”) that I will later detail. On 22 September 2015 Exxon raised concerns over the allowability of those amendments, which I will also later discuss. Leave to amend the specification was granted by the Commissioner on 15 October 2015 and the amendments were advertised for opposition on 29 October 2015. The amendments were allowed without opposition on 11 January 2016.
After allowance of the amendments the Commissioner notified both parties that the matter was due for final determination and asked if either party wished to be heard. Neither party took up that opportunity. On 5 April 2016 I sent a letter to both parties raising my doubts as to whether the amendments overcame the identified deficiencies, and set the matter for hearing. Each party was provided with four weeks to provide submissions on whether and/or how the amendments overcame the identified deficiencies, and on the appropriate course of action should I find that the amendments did not overcome the identified deficiencies.
On 22 April 2016 Shell responded to my letter by requesting time to file further voluntary amendments and avoid the necessity of a hearing. Shell informally suggested amendments it believed would overcome the doubts I raised. I will also discuss those. On 27 April 2016 Exxon responded to my letter by generally agreeing with the doubts I raised and requesting costs on an indemnity basis should I allow Shell a further opportunity to amend the specification. On 3 May 2016 the Commissioner sent a letter to both parties extending the period to provide submissions by two weeks in view of the amendments Shell informally suggested. On 17 May 2016 Shell provided its submissions. Exxon made no further submissions, except with regard to costs.
The law
It is well established that the decision of the Delegate in the opposition proceedings is final, and determines all issues that were capable of determination at that time.[2] Thus, in a final determination the only questions are whether the amendments overcome the deficiencies identified in the earlier decision, and whether the amendments introduce any new deficiencies. New deficiencies are grounds of opposition that arise solely from the amendment of the specification (and exclude pre-existing deficiencies, whether or not these were argued at the original hearing).
[2] R v Smith; Ex parte Mole Engineering Pty Ltd [1981] HCA 25; (1981) 147 CLR 340 at 348-9.
The earlier decision
In my earlier decision I found that claims 13-16 (as they then existed) were not novel and lacked an inventive step in view of: WO 2004/070297 A1, which was renamed “D4” in my decision.
Beginning at paragraph [14] I summarised my understanding of the invention set out in the application:
“The broadly disclosed invention relates to a process and apparatus for removing CO2 from a natural gas feedstream containing ethane and higher hydrocarbons, the process comprising: cooling the natural gas feedstream to produce a liquid stream of CO2, ethane and higher hydrocarbons and a gas stream of reduced CO₂ concentration; separating the liquid stream from the gas stream; cooling the separated gas stream to produce a sweetened natural gas stream and a second liquid containing liquid carbon dioxide and/or carbon dioxide solids; and separating the sweetened natural gas stream from the second liquid.”
I then discussed the preferred embodiment from paragraph [15] to [19] with reference to the following figure that I prepared:
“Feed gas passes through dehydration unit 12. Dehydrated gas is then compressed in compressor 14 to 5,500-7,000 kPa. Compressed gas passes through a cooling apparatus 20 comprising several heat exchangers in series and a chiller to provide cooled gas at -15°C to -20°C. Some of the cooled gas condenses and the resulting liquid and vapour phases are separated in separator 30 before passing to separate trays of fractionating column 16. As it becomes relevant later, I note that the liquid stream from the separator 30 is described as comprising CO₂, ethane, C3+ hydrocarbons and potentially some methane…
The fractionating column 16 produces a gas stream of reduced CO₂ content, and a liquid stream containing liquid CO₂, ethane and C3+ hydrocarbons. The liquid stream may be further processed to recover the ethane and C3+ hydrocarbons. The preferred upper limit of CO₂ content in the gas stream is in the range of 20% to 25%.
The gas stream leaving the fractionating column is cooled in a heat exchange train 42 to just above the CO₂ solids formation temperature, and then further cooled in a cooling vessel 44 to form solid CO₂. Cooling in the cooling vessel 44 is achieved by expanding the gas as it enters the vessel using a Joule-Thomson valve or other suitable gas expander.”
At paragraph [30] I reproduced Fig. 2 of D4, which I again reproduce below. I explained Fig. 2 in paragraphs [31] and [32] as follows (footnotes omitted):
“A wet feedgas stream 15 is fed to a first flash tank 16 in which liquid hydrocarbons are condensed and removed. The exiting gas stream 20 is cooled before entering a first vessel 12 where it is further cooled such that hydrates are formed and removed to separate water from the gas. Dry sour gas 35 exiting the first vessel 12 is cooled via heat exchanger 36 and fed to a second flash tank 40 where condensate 43 is removed. The dry sour gas 45 is then further cooled and expanded via a Joule-Thomson valve 48 defining the inlet to a second vessel 14. Alternatively the dry sour gas may be cooled via spraying it with a sub-cooled liquid 49 as it enters the second vessel 14, or by both expansion and spraying. Solid sour species form in the second vessel 14 and a dry sweetened gas stream 65 exits via outlet 62, while a liquid stream containing melted sour species exits via outlet 52.
There is undisputed evidence that the second vessel 14 provides a cooling vessel in which solid CO₂ is formed and separated according to the present claims. Exxon submits that the heat exchanger 36 and the second flash tank 40 also provide the first cooling and separating steps in which a liquid stream (the condensate) of CO₂, ethane and C3+ hydrocarbons is removed. Shell disputes whether the liquid stream would inherently contain CO₂.”
Paragraph [40] provides my conclusion to the dispute identified above:
“Regarding apparatus claim 13 I am satisfied it is possible depending on processing conditions to separate a liquid stream of CO₂, ethane and C3+ hydrocarbons in the second flash tank 40. I again note the similarity between the heat exchanger 36 and second flash tank 40 of D4, and the cooling apparatus 20 and separator 30 of the specification. I am comfortably satisfied that there is no reason the heat exchanger 36 and second flash tank 40 cannot achieve the temperature and pressure conditions necessary for co-condensation of a not-insubstantial amount of CO₂. Exxon have established that claim 13 lacks novelty in view of D4.”
The allowed amendments
According to the amendments allowed on 11 January 2016, claim 13 is amended as follows (the newly incorporated feature is underlined) :
“ An apparatus for depleting the carbon dioxide content in a natural gas feedstream containing ethane and higher hydrocarbons, the apparatus comprising:
a first cooling apparatus for cooling the natural gas feedstream under a first set temperature and pressure conditions arranged to produce a liquid stream of carbon dioxide, ethane and C3+ hydrocarbons and a gas stream having a reduced carbon dioxide concentration in the range of 15 to 25%;
a separator for separating said liquid stream from said gas stream; and
a cooling vessel having an expansion device located at and/or defining a first inlet, the first inlet being in fluid communication with the separator and arranged to introduce the gas stream separated from the separator into the cooling vessel to produce carbon dioxide solids, a second inlet for introducing a sub-cooled liquid into the cooling vessel, a first outlet for the sweetened natural gas stream and a second outlet for a second liquid.”
The allowed amendments also introduce a new claim 14 as follows:
“The apparatus according to claim 13 further comprising a fractionating column for receiving said liquid stream and gas stream from the separator, the fractionating column being arranged to deplete the liquid stream of methane and enrich the gas stream with methane, wherein the first inlet of the cooling vessel is in fluid communication with the fractionating column.”
Pre-existing claims 14-20 were subsequently re-numbered as 15-21.
Exxon’s initial concerns regarding the amendments
In its letter dated 22 September 2015, Exxon raised concerns over whether the amendments overcame the identified deficiencies. At the time Exxon raised these particular concerns they could not be considered, as only the allowability of the amendments was being reviewed. I will now however consider them.
“Shell seeks to distinguish its apparatus from that of D4 for purposes of novelty and inventive step by a desired result or engineering parameter, i.e. the carbon dioxide concentration in the product gas (which was not the subject of any previous claim). Commenting generally, engineering parameters are not generally a fruitful distinguishing feature since they are easily achieved by a PSA through simple operational experience and trial and error.
This approach raises at least two issues in view of the 16 July decision:
a)“The D4 disclosure is not limited by carbon dioxide concentration in either the raw natural gas or treated natural gas. D4 is silent as to carbon dioxide concentration. In addition, the Delegate found it unproven that the PSA knew of the thermodynamic limitations of D4 to treating 15-25% content raw natural gas (please see para 75, page 17 of the decision; and para 84, page 19 of the decision).
b)In the context of D4 forming part of the prior art base for s 7(3) inventive step, and following the logic of the decision as ExxonMobil now must in this case (see, e.g. Ex Parte Mole Engineering) to construe D4 with certainty, the PSA (not appreciating thermodynamic limitations) would take D4 as being suitable for treating a natural gas with any content of carbon dioxide and reducing carbon dioxide content in treated gas to some unspecified level which could, without any inventive step and every prospect of success, fall in the range (a simple engineering parameter) specified by Shell. Claim 13 lacks inventive step.
Finally, an apparatus claim, to be clear, must distinguish D4 by an apparatus limitation. An apparatus claim claims an apparatus, not what it does. This issue is especially cogent when the limitation by desired result is the only asserted difference from the prior art. In particular, the claimed apparatus appears to be able to produce a natural gas stream with any range of percent carbon dioxide (as the PSA would expect) so the addition of a specific range does not distinguish from D4.”
At two stages Exxon expresses concern because the defined apparatus is claimed by result. There is no prohibition against claiming by a result to be achieved.[3] Exxon additionally provides that, because the PSA did not know that the device of D4 was limited in operation to treating natural gas with up to 15-25% CO₂, it would be obvious to try to treat natural gas having higher than 15-25% with the device. According to Exxon’s submissions the device of D4 is apparently novel (presumably because it is unsuitable to treat a gas stream with higher than 15-25% CO₂); however the invention claimed is obvious because the PSA did not know that the device of D4 was so unsuitable. This argument is unpersuasive, at least because (presuming for this purpose that the invention claimed is novel in view of D4) it does not explain how the PSA would actually modify the device of D4 to arrive at the invention.
[3] Lockwood v Doric (2004) 217 CLR 274, [59].
My letter raising doubts whether the amendments overcome the deficiencies
In my letter to both parties dated 22 April 2016 I noted:
“the amendment has therefore specified something of the feedstream composition (i.e. that it contain a carbon dioxide concentration somewhat above 15-25% such that the gas stream exiting the separator may have a reduced carbon dioxide concentration of between 15-25%). I still consider that the disclosed cooling apparatus 36 and separator 40 of D4 would be fully capable of providing such a result. Specifically, as a flash tank, I consider separator 40 to be equivalent to a single stage distillation device. My initial view is that a single stage distillation device may well – depending on temperature, pressure, and inlet composition – co-condense a not-insubstantial amount of carbon dioxide while providing an outlet gas composition as claimed.
I further note the present application’s discussion of D4 which provides that the system is thermodynamically limited to treating gas with a CO₂ content below 15-25% (as I discussed in my earlier decision at paragraphs 12, 37). My understanding while forming my earlier decision was that the thermodynamic issues relate specifically to the second vessel 14 and not necessarily to the overall system. To explain, a stream comprising a CO₂ content above 25% would, when entering the second vessel 14, affect its operation. However a similar stream entering the cooling apparatus 36 and separator 40 would only affect the operation of the overall system to the extent that the stream exiting the separator 40 also had a CO₂ content above 25%.
Regardless of the correctness of my above understanding, I for example initially consider that an apparatus suitable for operating on a stream such that a stream containing 25% CO₂ enters the separator 40 and a stream containing roughly 20-22% CO₂ exits the separator 40 (and enters the second vessel 14) would anticipate the subject matter claimed. In my initial view the device of D4 would capable of achieving this, or a similarly relevant result.
The amendments also introduce a new claim 14 which I initially consider overcomes my earlier novelty and inventive step findings in relation to claim 13. Claims 15-17 as filed are renumbered equivalents to claims 14-16 as considered in my earlier decision. As such I initially consider that these claims (i.e. 15-17) still lack novelty and an inventive step in view of D4.”
Shell’s submissions of 17 April 2016
As a first point Shell provided its submissions noting:
“The Applicant notes that it has written to the Office proposing amendments that it considers would, on any view, address the concerns of the Delegate. However, given the current deadline for filing submissions, the Applicant files these submissions to preserve its position.”
Moving to Shell’s substantive submissions, Shell provided:
“While the Applicant defers to the Delegate's view that the heat exchanger 36 and the second flash tank 40 of D4 could have been used to produce a liquid stream of carbon dioxide, ethane and C3+ hydrocarbons and a gas stream having a reduced carbon dioxide concentration in the range of 15-25%, D4 does not contain clear and unmistakeable directions to use it in this way.”
I agree with Shell’s submission, I applied similar reasoning in the earlier decision to determine that the process claims (i.e. claims 1-12 and 20) were novel and inventive. However, claim 13 (as it then existed and as currently found) is an apparatus claim. To anticipate an apparatus claim a document need not provide directions to use an apparatus in any given way. Rather, all that may be necessary (depending on claim construction), is to provide directions to produce an apparatus that would be suitable for a given use.
Shell also provided:
“While the heat exchanger 36 and the second flash tank 40 of D4 could have been used to produce a liquid stream of carbon dioxide, ethane and C3+ hydrocarbons and a gas stream having a reduced carbon dioxide concentration in the range of 15-25%, the person skilled in the art would need to carry out further experiments in order to arrive at that point. The operating temperature and pressure conditions described on page 7 disclose how the skilled person in the art may produce a condensate which is suitable for later use as a subcooled liquid. The skilled person would need to carry out further experiments in order to arrive at a first set temperature and pressure conditions where the apparatus would produce a gas stream having a reduced carbon dioxide concentration specifically in the range of 15-25%.”[5]
[5] Ibid, [30].
Again this submission could be relevant if claim 13 were a process claim, however it is an apparatus claim. The relevant point is therefore only that D4 provides an apparatus that could be used to treat a gas stream as claimed. To refer again to my earlier decision (footnotes omitted):
“I initially note a similarity between the heat exchanger 36 and second flash tank 40 of D4, and the cooling apparatus 20 and separator 30 of the specification. Each are provided such that natural gas containing CO₂, ethane and C3+ hydrocarbons is cooled, and condensed liquids are separated from the remaining gas. In D4 the condensate is described as containing C2-C4 hydrocarbons, while in the specification it is described as comprising CO₂, ethane, C3+ hydrocarbons and potentially some methane. The specification also notes that liquid ethane and C3+ hydrocarbons are an absorbent for CO₂, in that CO₂ is more soluble in those components than in natural gas. Craig Dugan declared that, when using cryogenic distillation processes to remove ethane and C3+ hydrocarbons from natural gas, the CO₂ may “split” between recovered ethane and the top product gas, potentially affecting specifications for both products. Evidence supporting this is found in D14, in which a stream of ethane and C3+ hydrocarbons condensed from natural gas contains 2 mol% CO₂. I surmise that it is possible to co-condense not insubstantial amounts of CO₂ when condensing ethane from natural gas.”[6]
[6] ExxonMobil Upstream Research Company v Shell Internationale Research Maatschappij B.V. [2015] APO 39, [33].

I am satisfied that the apparatus disclosed in D4 anticipates claims 13 and 15-17 in their present form.
Do the amendments give rise to any new deficiencies?
In responding to this question I will firstly consider the other matters raised by Exxon in its letter dated 22 September 2015. Exxon stated with respect to clarity:
“Claim 13 is unclear as to how carbon dioxide is solidified in the cooling vessel. Whilst claim 13 mentions a cooling vessel with an expansion device, the claim is ambiguous as to the precise method of carbon dioxide solidification which is an important issue in the context of the decision where cooling methods have been differentiated (see, for example, discussion of Haut (D14), paras 50 to 52). Claim 13 should clearly reflect this differentiation and so be amended to recite Shell's precise method of carbon dioxide solidification in a manner that differentiates the spray cooling methodology of the prior art. In this regard, expansion appears to be the dominant cooling mode and recited clearly as such.”
This concern has not arisen as a result of the amendments. To the extent it is relevant it should have been raised in the initial opposition. It is not a matter that I can now consider.
Exxon then stated with respect to fair basis:
“Claim 14 is a new claim and a 'real and reasonably clear disclosure' for it cannot be found at the references provided by Shell. The most pertinent reference appears to be page 13, lines 1-11 which read:
‘The apparatus of the present invention may be provided with an additional separator to separate the vapour and liquid phases and direct the vapour and liquid phases, respectively, to a fractionating column. The separator facilitates ingress of the vapour and liquid phases at appropriate regions in the fractionating column to improve the efficiency thereof. In this way, the fractionating column is arranged to fractionate the liquid stream and the gas stream to deplete the liquid bottoms of methane and enrich the top gas with methane.’
First, this terminology is not that used in claim 14 which raises a relatively minor clarity issue. Second, and more importantly, claim 14 does not refer to the italicised additional separator to that already recited in claim 13. That additional separator is also different from the fractionating column. To meet the s 102 requirement that the claim be "in substance disclosed", this additional separator must be recited in claim 14, as must its function (to facilitate ingress of vapour and liquid phases at appropriate regions in the fractionating column…).”
I am firstly unclear of what clarity issue Exxon might be referring to in the above statement. Differences in terminology between the claims and the description will not of itself lead to a lack of clarity. It may be that Exxon is concerned over use of the term “additional separator” in the cited paragraph whereas only a “separator” is defined in claims 13 and 14. If so this does not give rise to a lack of clarity.
In relation to fair basis it may again be that Exxon is concerned over use of the term “additional separator” whereas the claimed device is only defined as a “separator”. If so this does not of itself give rise to a lack of fair basis. The fractionator is a separator. Claim 14 includes a separator and a fractionator. The separator is additional (to the fractionator) whether or not it is so named. In any case the “additional separator” of the cited paragraph coincides with “separator 30” of the described preferred embodiment.[7] The terms “additional separator” and “separator” are used interchangeably in this very specific way. There is fair basis for a separator which feeds liquid and gas streams to a fractionating column.
[7] See for example page 17 line 33 to page 18 line 3 of the specification.
While Exxon’s submission does not persuade me that claim 14 lacks fair basis, it indirectly highlights a separate fair basis point that I will now address. Claim 14 defines an apparatus in which a gas feed-stream is cooled under a first set of temperature and pressure conditions to produce a gas stream having a reduced carbon dioxide concentration of 15-25%. This is ostensibly supported by page 6 lines 13 to 19 of the specification
“The gas stream produced by cooling the natural gas stream under the first set of temperature and pressure conditions has a reduced carbon dioxide concentration relative to the carbon dioxide concentration of the natural gas stream. In one embodiment of the invention the concentration of carbon dioxide in the gas stream is reduced to an amount in the range of about 15-25 %.”
According to claim 14 the gas stream is then separated from the liquid stream in a separator and then sent to a fractionating column. However, the description suggests that, under most operating conditions, it is the gas stream leaving the fractionator (instead of entering it) that has a carbon dioxide concentration of 15-25%. As set out in page 18 of the specification:
“The fractionating column 16 is operated under a first set of temperature and pressure conditions arranged to produce a gas stream with a carbon dioxide content less than the predetermined carbon dioxide concentration, and a liquid stream containing liquid carbon dioxide, ethane and C3+ hydrocarbons. Preferably, the predetermined concentration of carbon dioxide in the gas stream is an upper limit of carbon dioxide concentration in the gas stream at which a subsequent sweetening process for removal of carbon dioxide from the gas stream can effectively operate in the second cooling apparatus 40. Preferably, the upper limit of carbon dioxide concentration in the gas stream is in the range of 20 to 25%.”
Similarly, at page 20 lines 20-24 the specification states:
“The gas stream produced in the fractionating column 16 is rich in methane but still contains carbon dioxide in concentrations greater than typical sales gas specifications; for example, 15 to 20%.”
It is sensible to me that the gas stream would generally have a CO₂ composition of 15-25% only after leaving the fractionating column; it is otherwise not clear what purpose the fractionating column has, given the “cooling vessel” (shown as 44 in my Figure) is capable of handling a CO₂ content of 15-25%.[8] In other words, if the first cooling apparatus 20 and separator 30 can provide a reduced CO₂ concentration of 15-25%, and the cooling vessel 44 can handle natural gas with a CO₂ concentration of 15-25%, why is the fractionating column 16 needed?
[8] The specification, page 3 lines 7-20 and page 6 lines 21-29.
I believe this issue may have arisen because of confusion over the “separator” (i.e. “fractionating column 16”) and the “additional separator” (i.e. “separator 30”) generally described in the consistory statements. As set out at page 12 lines 8-14 of the specification:
“It will also be appreciated that the first cooling apparatus may be a serial combination of any one or more of a heat exchanger, chiller, or a gas expansion device.
In one embodiment, the separator comprises a distillation column or a fractionating column. Preferably, the separator is a fractionating column.”
Following this disclosure the first cooling apparatus is exemplified as a heat exchanger, a chiller, and/or a gas expansion device while the separator is exemplified as a fractionating column. The “additional separator” (separator 30) is not explicitly taught to provide a gas stream of reduced CO₂ content between 15-25%; instead the “separator” (i.e. fractionating column 16) provides it.[9]
[9] The specification, pages 17 and 18.
While there is a difference between what is explicitly disclosed in the description and what is defined in claim 14 I do not believe it gives rise to a lack of fair basis. Instead I am satisfied that a device as claimed is really and reasonably clearly disclosed in the specification. Similar to my discussion of D4 I am satisfied that the specification discloses a device that meets the criteria of the claims when appropriately operated. Were one to provide an initial natural gas stream comprising 25-27% CO₂to the cooling apparatus 20 and separator 30 then, subject to the cooling and pressure conditions applied, it would be possible to separate a gas stream having a reduced CO₂ content of 15-25%,which could then be sent to the fractionating column 16. Were this not true it would be difficult to reconcile my conclusions on novelty as set out above in relation to D4.
Returning to Exxon’s submissions – Exxon also submitted that the function of the additional separator must be set out: i.e. the claim must define that the separator facilitates ingress of vapour and liquid phases at appropriate regions of the fractionating column. Claim 14 defines “a fractionating column for receiving said liquid stream and gas stream from the separator”. The claim already defines that separated liquid and gas streams are sent to the fractionator. There is no lack of fair basis based on this submission.
Shell’s suggested amendments
I noted that Shell informally suggested amendments it believed would overcome the doubts I raised in my letter. Shell suggested that claim 14 as currently found be incorporated into claim 13. In my earlier decision I noted: “I am not satisfied it would be a matter of routine to add a bulk fractionator (as disclosed in the specification) to the system of D4.”[10] It is clear that the amendment overcomes the deficiencies identified in my earlier decision.
[10] ExxonMobil Upstream Research Company v Shell Internationale Research Maatschappij B.V. [2015] APO 39, [87].
In view of my discussion above it is also clear that the amendment would not give rise to any new deficiencies. While it may be possible to provide a claim which more closely ties to what is explicitly described, I am satisfied what is suggested would be fairly based.
Directions moving forward
While the present claims do not overcome the identified deficiencies Shell have suggested amendments that would overcome them. In view of that fact I am satisfied it would be appropriate to afford Shell a further opportunity to file amendments. Shell is provided with four (4) weeks from the date of this decision to formally propose further amendments. Shell should note however that this single opportunity is afforded because (a) it is clear that the identified deficiency can be easily overcome, and (b) it appears that Shell is earnest in its attempts to overcome the deficiencies. Should any further amendments not clearly overcome the deficiencies an inference may be raised that Shell is no longer being earnest in its attempts to overcome the deficiencies.
Costs
As I noted above, Exxon have requested costs in relation to this matter. However, for the following reasons, I do not believe any award of costs is appropriate:
· this hearing was not requested by either party, it was initiated by the Commissioner; and
· while Exxon did provide observations relevant to the present matter (dated 22 September 2015) I did not find them particularly helpful in concluding that the amendments did not overcome the identified deficiencies. Instead I found them largely unpersuasive.
In view of the above I make no award of costs.
Rhys Munzel
Delegate of the Commissioner of Patents

[4] Shell’s written submissions, [25].